QUERCUS COFFEE V. QUERCUS

In a 2021 non-precedential case, the Trademark Trial and Appeal Board affirmed a §2(d) refusal of registration for the Applicant’s mark QUERCUS COFFEE (COFFEE disclaimed) for coffee and found it to be highly confusable with the already-registered mark QUERCUS for wine.

The Board began its analysis of the marks starting with the first DuPont factor, the similarity or dissimilarity of the marks in their entireties. Though the marks are to be considered as a whole, in this case, the term QUERCUS is the dominant portion of each mark, and in the Applicant’s mark, the term COFFEE is generic and was disclaimed. Since the term COFFEE was disclaimed, the Board found that it had little weight in its overall determination. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004). The Board then looked at the position of the term QUERCUS the mark and found it reinforced its dominance as it was the first element of the mark. Citing Presto Products, Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988), the Board stated, “It is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.” The Board glanced once again at the generic, disclaimed term COFFEE and found that it failed to distinguish the mark. “[I]f the dominant portion of both marks is the same, then confusion may be likely notwithstanding peripheral differences.” See In re Denisi, 225 USPQ 624, 624 (TTAB 1985).

Turning to the second portion of the first DuPont factor, the connotation and commercial impression of the mark, the Board started with the definition of the term QUERCUS. Quercus is defined as “a genus of hardwood often evergreen trees or shrubs (family Fagaceae) that comprise the typical oaks and include sources of nutgall.” The Applicant’s website claims that the coffee is called QUERCUS after the Andean Oak it used to create the rum barrels, in which the Applicant’s coffee is “barrel-aged.” Turning to the already-registered mark, QUERCUS, the Board quickly surmised that wine is occasionally aged in barrels as well. Therefore, consumers of goods under both marks would most likely assume that the term QUERCUS would have the same meaning in referencing the barrels used to age both coffee and wine. “We find that in their entireties, the marks are not only highly similar in appearance and sound due to common term QUERCUS but that they are also highly similar in connotation and convey a substantially similar commercial impression.”  The Board concluded that the first Dupont factor, in both parts, weighed in favor of finding confusion likely.

The Board then looked at additional DuPont factors, the similarity of the goods, channels of trade and classes of consumers. Before beginning its analysis, the Board reiterated that it is not necessary for the goods to be identical or competitive or be sold in the same trade channels to support a finding of likelihood of confusion. What does matter is they are related in some manner or the conditions/activities surrounding the marketing of the goods are similar enough that they may be encountered by similar consumers who would be led to believe that the goods originate from the same source. See Coach Servs. v. Triumph Learning 101 USPQ2d 1713 at 1723. In sum, the issue at hand is not whether the consumers would confuse the coffee with the wine, but whether or not there would be a likelihood of confusion that the coffee and wine came from the same source. The Examining Attorney submitted 20 use-based, third-party registrations showing registration of a mark by a single entity for both wine and coffee. The Board found that the third-party registrations were relevant evidence as they serve as proof that the goods are such that they may originate from one source under one mark. See, e.g., In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001). So, as it was evident that both coffee and wine may be offered under one mark, and potentially found in similar trade channels, the Board found that the Applicant’s coffee and the Registrant’s wine were commercially related for the purpose of finding a likelihood of confusion holding. Therefore, the second DuPont factor favors a finding of likelihood of confusion.

After finding the other relevant DuPont factors neutral, the Board concluded that confusion was likely between the Applicant’s mark QUERCUS COFFEE and the Registrant’s mark QUERCUS. It found that confusion was likely given that the term QUERCUS was the dominant portion of each mark, the connotation and commercial impression of the term QUERCUS was similar enough to confuse consumers, the relatedness of the goods – as to the fact that they may be sold under one mark and can both be aged in barrels and the overlapping trade channels and classes of consumers. Therefore, the Board affirmed the §2(d) refusal for registration of the mark QUERCUS COFFEE.

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