Friday, March 02, 2012

Precedential No. 10: TTAB Finds COLOMBIANO COFFEE HOUSE Confusingly Similar to COLOMBIAN Certification Mark for Coffee

The Board affirmed two refusals to register the mark COLOMBIANO COFFEE HOUSE for "providing food and drink" [coffee house disclaimed]. First, it found the applied-for mark likely to cause confusion with the certification mark COLOMBIAN for "coffee." Second, the Board found the mark merely descriptive of Applicant's services under Section(2)(e)(1). In re Accelerate s.a.l., 101 USPQ2d 2047 (TTAB 2012) [precedential].

Likelihood of confusion: The same test for likelihood of confusion applies to certification marks as to trademarks: the duPont analysis. But because the certification mark owner does not use the mark, the Board considers the mark as applied to the goods or services of the users of the certification mark.

Not surprisingly, the Board found the dominant portion of the applied-for mark to be the word COLOMBIANO, the marks to be very similar in appearance and sound, and the connotations and commercial impressions of the marks to likewise be very similar. Spanish-speaking consumers will recognize COLOMBIANO as the Spanish equivalent of "Colombian," both words denoting something from the country of Colombia. Other consumers, because of the near visual and aural identity of the terms, will likely conclude that they have similar meanings.

Because Colombia is renowned for coffee beans, consumers will perceive Applicant's mark as indicating that Applicant serves Colombian coffee. The certification mark likewise connotes that the coffee bearing the mark comes from Colombia.

And so the Board found the marks to be "overall very similar."

As to the involved goods and services, the Board recognized that, under Jacobs v. International Multifoods, food items and restaurant services are not automatically considered to be related for Section 2(d) purposes. "Something more" is required. Here, Applicant's website indicated that it renders coffee house services. Third-party registrations showed that services of the type identified by Applicant may emanate from the same source as coffee products. That was enough to meet the Jacobs requirement.

The Board concluded that consumers encountering Applicant's services offered under the mark COLOMBIANO COFFEE HOUSE would likely believe that Applicant was authorized to use the certification mark, and assume that Applicant is licensed by or associated with the Registrant.

Mere descriptiveness: The Examining Attorney maintained that COLOMBIANO COFFEE HOUSE immediately describes the nature of, or a key feature of, Applicant's services: a coffee house offering Colombian coffee. The Board agreed. Based on the record evidence, it found that consumers will immediately understand the term COLOMBIANO to describe a particular type of coffee that Applicant will serve, i.e., coffee that has certain qualities and characteristics associated with authentic Colombian coffee.

The Board noted that the Examining Attorney did not refuse registration on the ground of geographical descriptiveness under Section 2(e)(2), or deceptive misdescriptiveness under Section 2(e)(3), although those grounds were conceivably applicable, but rather on non-geographical grounds.

And so the Board affirmed both refusals.

TTABlog comment: What about a joint on the Upper West Side of New York City, around 116th and Broadway, called Columbia Coffee House? Grounds for complaint?

Text Copyright John L. Welch 2012.


At 12:43 PM, Anonymous Mike R. said...

I don't think any geographical refusal would have been affirmed. Since the services are "providing food and drink," they do not originate in Colombia nor would a purchaser wrongly think the services originate in Colombia. 2(e)(1) seems the only plausible descriptiveness refusal.

At 1:11 PM, Blogger John L. Welch said...

I don't think that's the question. It's whether the customer would expect the coffee to be from Colombia.


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