Thursday, February 03, 2011

Test Your TTAB Judge-Ability: Is Candy Related to Chocolate Drink Mix? Cookies?

Examining Attorney Fred Carl III issued two Section 2(d) refusals of the mark CHOKI for "candy, namely confections prepared from chocolate and aronia berries, containing no fillers, waxes or artificial ingredients, and marketed by direct sales," finding the mark likely to cause confusion with two registered marks: CHOKI for powdered chocolate drink mix and CHOKIS for cookies. What do you think the Examining Attorney relied on to proof of relatedness of the goods? In re Orenda International, LLC, Serial No. 77639103 (January 7, 2011) [not precedential].

The Board readily found the marks to be "highly similar in appearance, pronunciation, connotation (or lack thereof) and commercial impression."

Chocolate Drink Mix: As to the first of the cited goods, the Examining Attorney relied on third-party registrations and website evidence showing, for example, that Starbucks and Nestle sell chocolate bars and cocoa mixes. Applicant Orenda argued that its candy is a "specially-formulated, high quality food product …[for] consumers who want to take advantage of the apparent health benefits of consuming products with high antioxidant content," while the cited goods are "inexpensive chocolate-flavored drink mix … for consumption by children." The problem, however, was that there were no such restrictions in the application or cited registrations: "applicant’s goods can include inexpensive candy sold to children who want a sugary concoction, and the registrant’s goods can include an expensive product that is purchased by people seeking the health benefits of chocolate."

Moreover, Orenda's goods "include candy purchased on impulse by the general public," and so "the du Pont factor of the conditions of purchase favors a finding of likelihood of confusion."

Lastly, Orenda contended that the channels of trade are different, since its goods are "marketed by direct sales." The Board, however, concluded that, even if Registrant's goods were not sold by direct sales, "the purchasers of applicant’s and the registrant’s products, as those goods are identified, would be the same."

Whether [the] confusion is reverse confusion, with their believing that the CHOKI powdered chocolate drink mix that they see in a supermarket is a product of the same company that sells CHOKI candy marketed through direct sales, or that the CHOKI candy offered to them through direct sales is from the same source as the CHOKI powdered chocolate drink mix they are familiar with from retail stores, the result is the same.

And so the Board affirmed this refusal.

Cookies: The cookie story crumbled in the same way as the chocolate drink mix story: third-party registrations and website evidence convinced the Board that the goods are related:

For the same reasons that we have found applicant’s goods and powdered chocolate drink mix to be related, to be sold to the same classes of purchasers, and to be the subject of impulse purchase, we find that the du Pont factors of the relatedness of the goods, classes of purchasers and conditions of purchase to favor a finding of likelihood of confusion with respect to Registration No. 3601353.

And so the Board affirmed the second refusal as well.

TTABlog comment: One suspects that PTO registration evidence could be mustered to show that pretty much every snack item is related to every other snack item.

And by the way, isn't "choki" a strange word choice for candy or cookies?

Text Copyright John L. Welch 2011.


At 10:52 AM, Blogger Robert said...

I think "choki" is an Anglicized spelling of "csoki." "Csoki" is the Hungarian diminuitive for chocolate and is pronounced "choki."

The examining attorney, I suppose, could have applied the doctrine of foreign equivalents and found the mark descriptive when used in connection with candy. The question then would be if consumers would translate a misspelling of a Hungarian diminuitive for chocolate.

Robert P.

At 1:57 PM, Blogger Bob Cumbow said...

I agree "choki" is supposed to invoke "chocolate." But since it could be pronounced so as to invoke "chokey" or "chalky," it is an odd choice.

Did Applicant raise, or the Board address, the obvious question: If these goods are so closely related, how is it that the cookie and chocolate powder marks can coexist without confusion but the candy mark can't? Unless the two cited registrations are owned by the same entity, it seems to me inexcusable not to address this--especially in light of the PTO's recent interest in consistency.


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