Wednesday, August 30, 2017


Okay, are you ready for another test? No? Too TTABad! The USPTO refused registration of the mark BIG KAHUNA DONUTS for "donuts" and "retail store services featuring donuts" [DONUTS disclaimed], finding a likelihood of confusion with the registered mark BIG KAHUNA CLIFF'S HAWAIIAN COFFEE for "coffee" and "on-line retail store services featuring coffee; retail store services featuring coffee" [HAWAIIAN COFFEE disclaimed]. Applicant argued on appeal that "Big Kahuna" is a weak formative in view of its widespread use for food services. How do you think this came out? In re Big Kahuna Donuts, Serial No. 86774996 (August 28, 2017) [not precedential] (Opinion by Judge Anthony R. Masiello).

The Goods and Services: The Examining Attorney maintained that donuts and coffee are complementary food items, submitting third-party registrations, media articles, and Internet evidence showing donuts and coffee offered under the same mark (Dunkin' Donuts, Starbucks, and Krispy Kreme). The Board found this complementary relationship to be relevant to the Section 2(d) analysis, although the Board perceptively noted that donuts and coffee are different in nature, one being a baked or fried food, the other a beverage.

Similar evidence established the stores that sell donuts are commercially related, for Section 2(d) purposes, to stores that sell coffee, although there may be some distinction between stores that specialize in coffee (Starbucks) but also sell donuts, and those that specialize in donuts (Doughnut Vault) but also sell coffee.

The Marks: Applicant argued that the cited mark refers to an individual (Cliff), but its mark does not refer to a person. The Board agreed that CLIFF'S is the "most specific source-identifying component" of the cited mark, and it also agreed that applicant' mark gives the impression that applicant's DONUTS are "great, preeminent, and perhaps large." The term HAWAIIAN COFFEE suggests a store that specializes in coffee, while DONUTS indicates a donut shop or bakery.

As to applicant's evidence of third-party uses of BIG KAHUNA in the names of restaurants, the Board was not impressed, since the evidence did not show that BIG KAHUNA is weak for donut shops or coffee shops. However, it did show, together with the dictionary definitions of record, that BIG KAHUNA has a laudatory suggestiveness. Consequently, the cited mark "is not entitled to such a broad scope of protection that will necessarily bar the registration of every mark comprising, in whole or in part, the expression BIG KAHUNA."

Decision: Noting that this is a "very close case," the Board found the marks to be sufficiently different to coexist, without creating a likelihood of confusion.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do? I think the Board got it right, but what do I know?

Text Copyright John L. Welch 2017.


At 7:44 AM, Blogger Gene Bolmarcich, Esq. said...

Interesting how sometimes the Board will give some significance to the generic part of marks to differentiate them (as it did here) and sometimes will treat them as if they're not there. I suppose everything counts in a "close case". I give the Board credit here for distinguishing between restaurants that feature donuts vs. restaurants that feature coffee. They're clearly different animals in consumer's minds (and never related in the sense that either expands into the other) even though they all serve both coffee and donuts.

At 12:39 PM, Anonymous Anonymous said...

I thought doubt goes to the registrant.

At 12:44 PM, Blogger TMAttorneyHeller said...

I also got it right!


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