Monday, June 04, 2018

TTAB Affirms Trifusal of NRG for Coffee: 2(d), 2(e)(1) Descriptiveness and Deceptive Misdescriptiveness

Hitting the trifecta is a good thing, right? Don't bet on it. Applicant Trilliant was hit with a "trifusal" (TM The TTABlog), in its application to register the mark NRG (in standard character form) for "coffee for use in single-serve brewing machines" [COFFEE disclaimed]. The Board found the mark (1) likely to cause confusion with the mark shown immediately below, registered for "coffee and tea," (2) merely descriptive of the goods, and alternatively (3) deceptively misdescriptive of the goods under Section 2(e)(1). In re Trilliant Food and Nutrition, LLC, Serial No. 86850804 (June 1, 2018) [not precedential] (Opinion by Judge Susan J. Hightower).


Likelihood of Confusion: The goods of the cited registration encompass applicant's more narrowly identified goods. Extensive evidence of third-party use (e.g., Starbucks. Dunkin Donuts) submitted by Examining Attorney Maureen Dall Lott, along with 17 use-based third-party registrations, demonstrated that "the goods are of a type that may emanate from a single source under the same mark."

Applicant Trilliant argued that "ENERGY" and variations thereof are weak formatives for coffee-related products, but its evidence did not meet the "voluminous" standard of Jack Wolfskin and Juice Generation. The Board found, however, that because of the meaning of "energy" in relation to coffee, the strength of the cited marks is "somewhat limited and the mark is entitled to a relatively narrow scope of protection."

As to the marks, since the goods are legally identical a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Trilliant did not dispute that NRG is "an abbreviation for energy." The Board found that consumers would be "highly likely to view and verbalize both NRG, the lead term in Applicant’s mark, and the cited mark identically to the phonetically equivalent term “"energy."

The Board agreed with applicant that the marks are visually distinguishable, but Trilliant's lightning bold design "underscores rather than alters the overall impression of the cited mark." Moreover, the literal portion of a word + design mark is given more weight in the likelihood of confusion analysis because it is the part to be verbalized and used by consumers to call for the goods.

Observing that "even a 'weak' mark is entitled to protection against a confusingly similar mark for legally identical goods," the Board affirmed the Section 2(d) refusal.

Mere Descriptiveness: In response to the Examining Attorney's inquiries, applicant stated that "[t]he goods may contain energy-boosting ingredients such as guarana and ginseng," and it submitted third-party materials for "similar goods," which materials showed the use of the term "energy" to describe the goods. The Examining Attorney submitted additional examples of third-party use. The Board concluded that:

to the extent that Applicant’s “coffee for use in single-serve brewing machines” contains energy-boosting ingredients, each term constituting Applicant’s mark is descriptive and retains its descriptive significance in combination. NRG COFFEE, considered as a whole, thus forms a composite that is itself merely descriptive of coffee with energy-boosting ingredients.

Deceptive Misdescriptiveness: "To the extent Applicant’s goods do not feature energy-boosting ingredients, NRG COFFEE misdescribes those goods." The Board found it plausible that consumers would believe that NRG COFFEE contains energy-boosting ingredients. Therefore the Board affirmed the alternative Section 2(e)(1) refusal.

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TTABlog comment: After the appeal was filed, the application was remanded to the Examining Attorney, who then entered the Section 2(e)(1) refusals. For some reason, applicant did not address those refusals in a supplemental appeal brief.

Text Copyright John L. Welch 2018.

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