TTABlog Test: Are Mugs, Pastries, and Coffee Shops Related to Tote Bags and Shirts for Section 2(d) Purposes?

The USPTO refused to register the mark FRANKIE ROSE for "Cups and mugs" in International Class 21, "Pastries; Sandwiches; Coffee beans; Ground coffee beans," in International Class 30, "Online retail store services featuring coffee featuring in-store order pickup, in International Class 35; and"Catering services; Coffee shops, in International Class 43, finding confusion likely with the identical mark registered for "tote bags" in International Class 18 and "shirts" in International Class 25. Applicant argued that its goods and services “are all related to food and beverage items” while Registrant’s goods are “ancillary goods to [Registrant’s] cosmetics products.” How do you think this came out? In re AVR Realty Company, LLC, Serial No. 90699970 (September 25, 2023) [not precedential] (Opinion by Judge Robert H. Coggins).

Applicant feebly argued that the connotation and commercial impression of the marks differ because when the ROSE portion of its mark is "considered in the context of coffee, [it] suggests that someone has ‘risen’ after having their coffee, i.e., from the effects of caffeine." However, there was no evidence or reason why the mark FRANKIE ROSE would have different meanings for coffee, tote bags, and shirts. Moreover, the Board noted, applicant's mark would have no such meaning when used with its non-coffee goods and services, or with decaffeinated coffee.

The Board found that the identity of the marks "weighed heavily" in favor of affirmance of the refusal.

To show the relatedness of the involved goods and services, Examining Attorney Uloma Ukaoma relied on third-party webpages - including those of Pete's coffee, Starbucks, and Dunkin' Donuts - showing use of the same mark for tote bags, mugs, coffee beans, shirts, etc.  

As to applicant's arguments about its food items versus registrant's allegedly ancillary goods for cosmetics, the Board observed that it is "not concerned with 'extrinsic evidence regarding Applicant and Registrant themselves'" and "it is not dispositive that Applicant itself might not sell shirts or tote bags, or that Registrant itself might not offer any of Applicant’s goods or services." 

Rather, . . . the evidence need only establish that the goods and services [as identified] are related in some manner, or the conditions surrounding their marketing are such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the services come from a common source.

The evidence showed that the involved goods and services "may be encountered by the same classes of consumers under the same marks in at least two common trade channels – the websites and physical locations of the coffee shops." Moreover, there were no restrictions as to channels of trade in the application or cited registration.

As to purchaser sophistication, applicant again barked up the wrong tree, attempting to narrow registrant's identified goods to the cosmetics field and insisting that cosmetics are "highly relevant to the sophistication question." Moreover, the application and registration have no limitation on price points for the goods and services at issue, "we must treat the goods as including inexpensive shirts, tote bags, mugs, coffee beans, and pasties [sic], and the services as including inexpensive coffee beverages, and therefore presume that purchasers for these goods and services include ordinary consumers who may buy inexpensive items on impulse."

The Board concluded that confusion is likely as to all of applicant's goods, and so it affirmed the refusal.

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TTABlogger comment: So, coffee is related to everything sold in Starbucks? How do you like them apples?

Text Copyright John L. Welch 2023.