Wednesday, December 21, 2016

TTAB Test: Are These Two "Black" Labels Confusable for Energy Drinks?

The USPTO refused registration of the "label" mark shown below left, finding it likely to cause confusion with the mark shown below right, both for energy drinks. Applicant pointed to 11 third-party registrations for marks containing the word BLACK, for energy drinks, in arguing that BLACK is a weak formative. How do you think this came out? In re Foodcare SP. Z.O.O., Serial No. 85699749 (December 19, 2016) [not precedential).

Of course, with the goods identical it all came down to the marks. The Board pooh-poohed the significance of the third-party marks because applicant's mark and the cited mark are "closer to each other than any of the other third-party marks because the word 'Black' creates the dominant commercial impression of those [two] marks."

In the third-party marks such as BLACK DOG, BLACK MAMBA, BLACK STEEL, BLACK DEATH, BLACK SUN, BLAK MAX, and BLACK LABEL, the word “Black” is used to modify the word that follows “Black” creating a unitary mark engendering the commercial impression of a black colored object. *** With respect to the mark BIG BLACK M JAVA MONSTER and design, the letter “M” and the term JAVA MONSTER are the dominant elements. Even if we include BIG BLACK M JAVA MONSTER and design, three registrations incorporating the word “Black” does not substantially dilute the word “Black” in connection with energy drinks.

Nonetheless, the Board recognized that "black" is a color and is often used to modify the word it precedes, and so the cited mark is not entitled to a scope of protection that bars all other uses of "black" for energy drinks.

The Board found that BLACK is the dominant portion of the marks at issue because the term “Energy Drink” is the generic term for the goods at. The term "cola energy drink" in the cited mark describes the product, and the term "Original Premium" in applicant's mark is laudatory. "Consumers encountering Applicant’s ORIGINAL PREMIUM BLACK ENERGY DRINK are likely to shorten the mark to BLACK ENERGY DRINK. Likewise, consumers familiar with Registrant’s product are likely to shorten its name to BLACK COLA."

In view of the foregoing, the Board found the marks to be similar in appearance, sound, meaning and commercial impression.

The Board therefore found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: I don't think the marks look anything alike. I think I need a non-black energy drink.

Text Copyright John L. Welch 2016.


At 8:13 AM, Anonymous Bob O'Connell said...

Perhaps the Board had a few too many Carling's Black Label.

At 8:59 AM, Anonymous Anonymous said...

That Black Cola package seems a lot like the Coca-Cola trade dress.

At 10:44 AM, Anonymous Anonymous said...

When a business adopts a mark incorporating a weak or descriptive term, it assumes the risk that competitors may also use that weak or descriptive term. Milwaukee Nut Co. v. Brewster Food Serv., 277 F.2d 190, 125 U.S.P.Q. 399, 401 (CCPA 1960) (opposer acted at its peril in choosing a highly suggestive mark). See also Sure-Fit Prods. Co. v. Saltzon Drapery Co., 254 F.2d 158, 117 U.S.P.Q. 295, 296 (CCPA 1958) (“Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights.”).

At 11:39 AM, Anonymous Anonymous said...

As an avid energy drink consumer I found this decision to be interesting. “Black” for energy drinks and “Black Cola” for energy drinks. The TTAB focused its analysis on the similarity of the marks. As the TTAB noted, the ‘Black” in each of the marks established the dominant commercial impression. “The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721; see also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The similarity in site, particularly in the same color schemes used on the labels (red, black, white and grey), is also an important piece of evidence overlooked by the TTAB. Even an unsophisticated consumer would be aware that manufactures of consumer packaged goods utilize product line extensions with variations in labeling. The likelihood of a consumer confusingly believing that both marks indicated the same source is high since a consumer (especially an energy drink connoisseur like myself) would believe the marks simply indicated differences in product characteristics, i.e. a regular flavored energy drink and a cola flavored energy drink. The TTAB concluded the nature of the good analysis once it determined that “the goods are in part identical”, but an analysis of the “bridging the gap” factor would have been noteworthy for me.


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