Tuesday, September 28, 2010

Test Your TTAB Judge-Ability: Are "CRUSSH" for Restaurant Services and "CRUSH" for Beverages Confusingly Similar?

In this consolidated opposition and cancellation proceeding, Dr. Pepper/Seven Up challenged Krush Global's right to register the mark CRUSSH in standard character and design form for restaurant, snack bar, and cafe services. Plaintiff alleged a likelihood of confusion with its registered mark CRUSH for non-alcoholic beverages. Sure the marks are close, but what about the goods and services? Dr Pepper/Seven Up, Inc. v. Krush Global Limited, Opposition No. 91180742; and Cancellation No. 920484461 (September 13, 2010) [not precedential].

The Board found the word marks to be "highly similar," and it further deemed the word "CRUSSH" to be the dominant portion of the Defendant's design mark.

The key issue, then, was the relatedness of the involved goods and services. The Board noted for the umpteenth time that there is no per se rule that confusion is likely when "similar or even identical marks are used for food products and restaurant services." Jacobs v. International Multifoods Corp., 212 USPQ 641 (CCPA 1982). According to Jacobs, "something more" is required.

Plaintiff submitted evidence showing that "it is not uncommon for parties to utilize the same marks for restaurant services and food and beverage products." Examples are BEN & JERRY'S, BOB EVANS, CARVEL, DUNKIN' DONUTS, etc. Plaintiff also pointed out that it owns the marks STEWART'S and A & W, both used for beverages and restaurant services. Defendant's President testified that his company might venture into "bottled smoothies." [Open mouth, insert foot - ed.]

Finally, Plaintiff submitted several third-party use-based registrations that included both beverages and restaurant services.

The Board therefore concluded that the respective goods and services of the parties are related.

And so the Board ruled that confusion is likely, and it sustained the opposition to the design mark, and granted the petition to cancel the registration for the word mark.

TTABlog comment: I don't think these marks are confusingly similar, do you? Why would anyone in his or her right mind think that a restaurant with the unique spelling of CRUSSH is related to a soft drink? Come on, let's get real here!

I think the Jacobs "something more" requirement should be satisfied only if the marks are identical and the plaintiff's mark is particularly unique or famous. See, for example, the DELMONICO decision [TTABlogged here].

Text Copyright John L. Welch 2010.


At 8:44 AM, Anonymous Anonymous said...

I think in this case, the fame of the CRUSH mark should work against it. There is less likely to be confusion that restaurant services branded under CRUSSH are the from the same source or endorsed by CRUSH the more famous CRUSH is. I.e., why would CRUSH be changing their mark? Where the mark is not so famous, it might not be immediately apparent the mark is in fact, being changed.

At 10:28 AM, Blogger marty said...

I think, without spending several hundred thousand dollars on a survey to back it up, that as a matter of cognitive psychology, the consumer spots small differences that depart from a famous mark and reasons that a famous trademark owner wouldn't use both CRUSH and CRUSSH.

but see PLAY-DOH v FUN DOUGH, a Fed Cir. case from the early 90's, which as a matter of policy overrules the TTAB on that point, saying in effect: Don't punish the famous for being famous. This was before the dilution act. - marty

At 11:17 AM, Anonymous Orrin A. Falby said...

Anonymous, that theory goes against established legal precedence. The Federal Circuit -- in overturning a Board decision that fame of a mark diminishes, rather than magnifies significance of marks’ similarities -- has made clear that: "while scholars might debate as a factual proposition whether fame heightens or dulls the public’s awareness of variances in marks, the legal proposition is beyond debate. The driving designs and origins of the Lanham Act demand the standard consistently applied by this court -- namely, more protection against confusion for famous marks". Kenner Parker Toys v. Rose Art Indus., Inc., 22 U.S.P.Q.2d 1453, 1456 (Fed. Cir. 1992)

The Federal Circuit went on to reason that even pre-Lanham Act:
"it was well recognized that trademarks functioned to benefit both producers who invest their good will and capital in a trademark and consumers who rely on those symbols…. The manifold purposes and benefits of the Lanham Act only operate, however, if investments to secure a strong, recognizable mark bring the reward of certain legal protection. If investors forfeit legal protection by increasing a mark’s fame, the law would then countenance a disincentive for investments in trademarks. The law is not so schizophrenic. In consonance with the purposes and benefits of trademark protection, the Lanham Act provides a broader range of protection as a mark’s fame grows". Id.

At 12:09 PM, Anonymous Anonymous said...

Another joke from the TTAB. Using the formality of evidentiary submissions as a crutch, the TTAB has once again ignored how rudimentary common sense would enable consumers to readily distinguish these marks/sources.

At 2:24 PM, Anonymous Anonymous said...

I have not done a detailed check, but it appears to me that where there are restaurant services involved that the Board is a bit overboard in finding goods to be "related" (i.e. recent cases of Rice, Wine, Sauces).
I do not agree that drinks that are served in a restaurant are automatically associated with restaurants. There may be registrations that cover both, but there are many more that do not.
I am surprised at this decision, but perhaps there were some other issues raised in briefs or evidence that tipped in Opposer's favor.

At 3:59 PM, Anonymous Anonymous said...

From Original Anonymous:
I don't disagree that my comments are against established legal precedence, but couched my comments on how I believe, in this particular case, things SHOULD work. The overriding concern in any trademark argument is the likelihood of confusion. I believe here that consumers simply would not be confused into believing CRUSSH restaurant services emanate from the same source as CRUSH soda pop. And I believe that in no small measure that is because of the fame of the CRUSH soda pop. The legal precedent you cite is largely based on public policy and not the result of a conclusion based on likelihood of confusion.

At 5:14 PM, Anonymous Marta R. said...

I suspect that the Board here acknowledged the basic, er, um, laziness of the American public, whose eyes could very easily either (a) skip over the second "s" in CRUSSH or (b) not see a difference in spelling to begin with. Most consumers would never reach the question of whether or why CRUSH was changing its mark, and just go in for a burger and an orange soda. Confusing? You betcha -- with lettuce, pickles, and tomatoes.

At 10:09 AM, Anonymous Orrin A. Falby said...

Anonymous No. 1, how about COKKE restaurant's? Would you argue that due to the fame of the COKE trademark, consumers are NOT likely to be confused? After all, it is arguable that COKE is the most recognized trademark worldwide, so these minor variations should be enough to dispel any consumer confusion. Is that your argument?

At 10:16 AM, Blogger John L. Welch said...

What about CRUSSH for dog food? No problem, right? Probably no one would think of the beverage CRUSH. Would anyone really think of the beverage CRUSH when encountering a restaurant called CRUSSH? I doubt it. I think the same is true for COKKE for a restaurant.

At 11:21 AM, Anonymous Orrin A. Falby said...

John, I understand the argument being made here with regard to the issue of likelihood of confusion. My problem is using the fame of the mark against the owner in the analysis. Now whether more weight should be given to other factors in the analysis is a different issue, if that is what you are saying.


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