Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA770617
`09/14/2016
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`85886550
`Inca Tea, LLC
`INCA TEA
`SANDRA M KOENIG
`FAY SHARPE LLP
`1228 EUCLID AVE FL 5
`CLEVELAND, OH 44115-1834
`UNITED STATES
`skoenig@faysharpe.com, chutter@faysharpe.com
`Appeal Brief
`Appeal Brief FINAL_FLOR 500003US01.pdf(304247 bytes )
`Rachel A. Smoot
`rsmoot@faysharpe.com, skoenig@faysharpe.com
`/s/ Rachel A. Smoot
`09/14/2016
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK
`
`Inca Tea, LLC
`:
`
`
`:
`INCA TEA
`
`
`: 85/886,550
`
`
`: March 26, 2013
`
`
`: Robert J. Struck
`
`
`: 109
`
`
`: June 9, 2016
`
`
`: FLOR 5 00003
`
` Cleveland, OH 44115
`September 14, 2016
`
`
`BRIEF FOR APPLICANT
`
`
`
`
`In re Application of
`
`For the Mark
`
`Serial No.
`
`Filing Date
`
`Examining Attorney
`
`Law Office
`
`Last Office Action
`
`Attorney Docket No.
`
`
`
`
`
`Attention: TTAB
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`

`

`BACKGROUND
`
`Applicant seeks to register INCA TEA on the Principal Register for:
`
`Teas comprised of purple corn; tea blends comprise of purple corn in class 30.
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`This application was filed under Section 1(b) and received U.S. Trademark
`
`Application Serial No. 85/886,550 with a filing date of March 26, 2013. The application
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`originally identified:
`
`Teas; herbal and non-herbal tea; tea beverages; beverages made with a
`base of tea; iced tea; ready-to-drink tea; low calorie tea; diet tea; fruit
`flavored beverages; tea with fruit flavorings; tea related products and
`accessories; clothing; and clothing, namely t-shirts, hats, jackets and
`sweatshirts in class 30.
`
`The Examining Attorney refused registration under Section 2(e)(1) of the Lanham Act,
`
`alleging that the mark is merely descriptive. See Office Action mailing date April 9,
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`2013. The Examining Attorney also required clarification of the identification of goods
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`and additional information about the goods, namely, whether the goods identified in the
`
`application comply with the Controlled Substances Act.
`
`In Applicant’s response to the initial refusal to register filed on October 9, 2013,
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`Applicant argued the mark cannot be descriptive as INCA does not refer to any existing
`
`peoples, and use of ancient/historical terms is appropriate for trademark use. Applicant
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`also responded that the identified goods do not relate to any illegal or controlled
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`substance and provided numerous examples of INCA formatives. Further, Applicant
`
`addressed that individuals are accustomed to seeing the word INCA in connection with
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`products that could be purchased in a grocery store or restaurant and that none of the
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`provided registrations disclaimed INCA. Applicant also amended the identification.
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`
`
`In his non-final Office Action of October 31, 2013, the Examining Attorney
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`repeated his reasoning that the mark is merely descriptive. The Examining Attorney also
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`cited the test for whether a mark is deceptively misdescriptive. The Examining Attorney
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`alleged that the goods were misdescribed, as the Applicant’s identification includes Inca
`
`tea, while Applicant asserted its goods do not include Inca tea. With respect to the
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`second part of the test, the Examining Attorney alleged that consumers are likely to
`
`believe that the goods associated with the applied-for mark may have medicinal
`
`properties.
`
`
`
`In response thereto on April 30, 2014, Applicant traversed the alleged descriptive
`
`and deceptively misdescriptive grounds for refusal and addressed the Controlled
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`Substances Act requirements. Applicant maintained that INCA TEA is not descriptive
`
`but suggestive, as the ancient term INCA, when used in conjunction with the term TEA,
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`evokes a natural product with roots or inspiration in ancient Andean civilizations and/or
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`lands. The identification was amended to “teas comprised of purple corn; tea blends
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`comprised of purple corn” in class 30 so as to clarify the nature of the product. Applicant
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`further asserted that coca leaves are not part of the product, and further, coca tea (i.e.
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`coca leaves) is not an equivalent to Inca tea, and “Inca tea.” The Examining Attorney
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`was only able to locate three citations relating Inca tea to coca tea and vice versa;
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`however, all fail to immediately convey to consumers that INCA TEA does or does not
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`contain coca leaves.
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`Applicant
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`further argued
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`that even
`
`if
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`the Examining
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`Attorney’s few irrelevant citations are deemed relevant, the citations do not establish
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`that consumers would find the mark descriptive. Particularly, the Internet evidence cited
`
`by the Examining Attorney is non-probative given that the Internet can return uses of
`
`almost any term, no matter how isolated. Even assuming that “Inca tea” deceptively and
`
`directly describes tea with coca leaves, Applicant provided evidence that such
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`deception would not be plausible, as consumers would more regularly encounter tea
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`containing coca so that they might assume a trademark with the word “coca” in it for tea
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`describes an attribute of the tea, and no such attribution can be made with INCA TEA.
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`
`
`On May 22, 2014, the Examining Attorney issued another non-final Office Action,
`
`withdrawing his Section 2(e)(1) refusal but requiring Applicant to disclaim the word “tea.”
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`
`
`
`
`On June 2, 2014, Applicant filed an Allegation of Use and submitted a disclaimer.
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`On July 1, 2014, the Examining Attorney issued a non-final Office Action,
`
`refusing registration under Section 2(d) of the Lanham Act for the first time. The
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`Examining Attorney alleged that the mark is likely to be confused with the mark INCA’S
`
`FOOD and design (
`
`), the subject of U.S. Reg. No. 4,110,531 for:
`
`Hot pepper sauces, carob syrup; processed dried herbs, spices, flours,
`wheat hominy, and white corn hominy; dried prepared wheat; laurel
`leaves; processed herbs, namely, mint, white rosemary; spices, namely,
`oregano, ground ginger, ground paprika, ground annatto, tumeric; teas,
`namely, linden and chamomile in class 30
`
`because INCA is contained in Applicant’s mark and the goods are ostensibly related.
`
`The Examining Attorney reasoned that the differences in the marks are minor and do
`
`not change the commercial impression of the marks. Further, the Examining Attorney
`
`reasoned that Applicant’s goods are related because they all consist of tea.
`
`
`
`Applicant responded on December 30, 2014 and argued that the Section 2(d)
`
`refusal should be withdrawn, as the initial and subsequent examinations were
`
`incomplete, and the Examining Attorney could not show clear error. Applicant further
`
`argued that the applied-for mark and cited registration are not confusingly similar.
`
`Namely, Applicant argued that on its face, and in its entirety, INCA TEA is blatantly
`
`different from
`
`in pronunciation, meaning, and commercial impression. The
`
`4
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`

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`disclaimed portion of the cited registration, “food,” is a descriptive term and denotes that
`
`a wide variety of goods is offered. Applicant offered definitions of “food” as well as
`
`definitions of “tea” into evidence so as to delineate between the two terms.
`
`
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`Applicant argued that the term INCA is suggestive, as the literal definition of Inca
`
`is a member of an ancient South American Indian people that died in the early 1530s.
`
`Additionally, the term INCA may refer to the language of the Incas, or as an adjective,
`
`INCA connotes the quality of being native to the Andes, of having properties related to
`
`the Andes region, and/or of having some quality related to the Incan people. Applicant
`
`further supplied evidence of numerous registrations containing INCA or INKA, alleging
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`that people are accustomed to seeing INCA in many different variations as a trademark
`
`or brand identifier with respect to foods, beverages, supplements, and other products
`
`and services, and have no problem distinguishing among the sources of the products.
`
`
`
`On January 27, 2015, the Examining Attorney issued a Final Office Action,
`
`maintaining his Section 2(d) refusal. Namely, the Examining Attorney asserted the
`
`dominant portions of the marks (INCA and INCA’S) are nearly identical, the difference in
`
`generic wording (TEA and FOOD) does not change the commercial impressions of the
`
`marks, and the design portion of the registrant’s mark does not change its commercial
`
`impression. The Examining Attorney further asserted that the term INCA is not diluted or
`
`weak.
`
`
`
`The Examining Attorney went on to assert that the goods are related, as the
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`goods of both the applicant and the registration include teas and are presumed to travel
`
`in the same trade channels, thereby being available to the same class of purchasers.
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`The Examining Attorney further stated that the omission of a refusal in the first Office
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`5
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`

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`Action was inadvertent, and failure to issue and maintain the refusal would constitute
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`clear error.
`
`
`
`Applicant responded with a Request for Reconsideration after Final Action on
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`June 11, 2015. Applicant asserted three arguments: 1) the goods are distinctly different;
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`2) the marks have different connotations; and 3) INCA is a weak trademark formative.
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`As argued in the Request for Reconsideration, Applicant has amended its identification
`
`of goods to clarify that its teas and tea blends are comprised of purple corn, which
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`grows only in Peru in the Peruvian Andes and has been dubbed a “super food,” due to
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`its phytonutrients and antioxidants. Unlike Applicant’s goods, registrant’s goods only
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`identified teas of the linden and chamomile variety, which differ from purple corn.
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`
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`Applicant also argued the marks have different connotations. Namely, the cited
`
`mark is
`
`, which includes stylized, underlined letter along with an image of an
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`upper portion of a tumi, which is a ceremonial knife of the pre-Incan cultures of Peru. As
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`INCA may be defined as a ruler of member of the royal family in the Inca Empire, the
`
`mark
`
`suggests that the food (i.e. linden and chamomile tea) is fit for royalty.
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`Further, the mark is possessive, alluding that the food belongs to the royal Inca. This is
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`in direct contrast to INCA TEA, which suggests a tea that may have been consumed by
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`certain groups of people.
`
`
`
`Applicant concluded the Request for Reconsideration with the argument that
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`INCA is a weak trademark formative. Namely, the Examining Attorney had attempted to
`
`distinguish Class 5 third party marks by arguing that the cited registration is the only live
`
`registration for non-medicated teas; however, the cited registrant’s linden and
`
`6
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`

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`chamomile teas likewise contain medical benefits. Further, Applicant reiterated that
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`people are accustomed to seeing INCA formatives in a wide variety of goods and
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`services, including several already owned by the Applicant.
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`
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`The Examining Attorney denied the Request for Reconsideration on July 10,
`
`2015, asserting that Applicant’s request did not resolve all the outstanding issues, raise
`
`a new issue, or provide any new or compelling evidence with regard to the outstanding
`
`issues in the Final Office Action. Essentially, all the applicant’s contentions were not
`
`deemed persuasive by the Examining Attorney.
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`
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`On July 27, 2015, Applicant filed a second Request for Reconsideration after
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`Final Action as well as a Notice of Appeal. Namely, Applicant argued that no actual
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`confusion has ever occurred, and Applicant has a family of marks, requiring consistent
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`examination. Applicant owns several marks containing INCA that exist on the Principal
`
`Register in light of
`
`. Further, Applicant reiterated that INCA is a weak trademark
`
`formative, given the numerous INCA formative marks in the food and beverage
`
`category.
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`
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`On August 24, 2015, the Examining Attorney again denied the Request for
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`Reconsideration. In view of the decision of the Examining Attorney, the Trademark Trial
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`and Appeal Board (TTAB) resumed the appeal on September 2, 2015 and allowed
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`Applicant sixty (60) days to file an appeal brief.
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`Applicant transferred the subject application to Inca Tea LLC, an Ohio
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`Corporation, on August 1, 2014, which was recorded at the United States Patent and
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`Trademark Office Assignments Branch on October 5, 2015.
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`On October 23, 2015, Applicant filed a Request to Suspend and Remand,
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`requesting consideration for additional evidence. Prior to filing the appeal, Applicant’s
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`mark INCA TEA CAFÉ  CLE w/Design issued as U.S. Registration No. 4,819,749 on
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`September 22, 2015. Applicant owns a family of INCA formative marks, all which have
`
`been approved for publication and/or registered for products and services closely
`
`associated with tea. Particularly, the mark INCA TEA CAFÉ  CLE w/Design is highly
`
`similar to the applied-for mark, and the goods are very similar (i.e. INCA TEA CAFÉ 
`
`CLE w/Design relates to a service that sells tea ready made and boxed). The dominant
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`portions of both marks (INCA TEA) are identical.
`
`
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`The TTAB found good cause had been shown for remand and granted the
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`request on October 23, 2015, thereby suspending the appeal and remanding the file to
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`the Examining Attorney for consideration.
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`
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`The Examining Attorney issued a non-final Office Action on November 25, 2015,
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`continuing and maintaining his Section 2(d) refusal. Applicant responded on May 20,
`
`2016, asserting no actual confusion between INCA TEA and the cited registration has
`
`occurred. Applicant argued that the lack of actual confusion is most evident given the
`
`large fan base Applicant has acquired through its social media accounts, to which
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`followers subscribe and post reviews and pictures of the products. Unlike the Applicant,
`
`the registrant has a single social media account with much fewer followers, did not
`
`contain any reviews, and had not exhibited any activity in nearly two years. Therefore, it
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`was argued that Applicant’s consumers would be extremely unlikely to be confused as
`
`to the source of the goods. Similar to the social media reviews, “tags,” or specific call
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`outs, to the Applicant across Facebook, Instagram, and Twitter indicated that
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`consumers actively sought out Applicant as the source of their purchased products.
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`8
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`

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`Applicant’s growing prominence was compounded by unsolicited media stories.
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`Applicant also argued that the USPTO has allowed marks containing names of
`
`indigenous peoples to coexist on the Principal Register for similar goods and services
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`and provided a non-exhaustive list of some registrations.
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`
`
`On June 9, 2016, the Examining Attorney issued a Final Office Action,
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`maintaining his Section 2(d) refusal, incorporating the arguments and evidence provided
`
`in the Office Action of July 1, 2014 and the Final Office Action dated January 27, 2015.
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`The Examining Attorney indicated that the similarity of the marks, similarity and nature
`
`of the goods and/or services and similarity of the trade channels of the goods and/or
`
`services were the most relevant.
`
`
`
`The court in Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
`
`En 1772, 396 F.3d 1369 (Fed. Cir. 2005) reiterated the hard and fast rule that one must
`
`consider the appearance, sound, connotation and commercial impression of each mark
`
`in determining a likelihood of confusion. Applicant submits that the differences in the
`
`marks, taken as a whole, render confusion unlikely. Evaluating the marks in their
`
`entireties reveals obvious differences in the marks. The total impression created by
`
`Applicant’s mark is different from that created by the cited mark. When viewed in their
`
`entireties, as they must be, INCA TEA and
`
`are entirely different.
`
`ARGUMENT
`
`The Examining Attorney has characterized Applicant’s mark INCA TEA as being
`
`unregisterable over the mark in U.S. Reg. No. 4,110,531, citing Section 2(d) of the
`
`Lanham Act. It is submitted that there is no likelihood of confusion and that Applicant’s
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`mark should proceed to publication and registration.
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`9
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`Marks Must be Evaluated in Their Entireties
`
`
`
`In evaluating a mark for registration, all circumstances must be examined. In re
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`E.I. DuPont de Nemours Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). The
`
`Court went on to hold:
`
`we find no warrant, in the statute or elsewhere, for discarding any
`evidence bearing on the question of likelihood of confusion . . . In every
`case turning on likelihood of confusion, it is the duty of the Examining
`Attorney, the board and this court to find, upon consideration of all the
`evidence, whether or not confusion is likely.
`
`While one person will give greater weight to one factor than another person might, it is
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`the Examining Attorney’s duty to look at all the evidence. Applicant believes that the
`
`Examining Attorney has impermissibly focused on a few aspects of the mark while
`
`blatantly disregarding others.
`
`
`
`Marks must be evaluated as they are perceived – in their entireties. In re Hearst
`
`Corp., 983 F.2d 492, 25 U.S.P.Q.2d 1238, 1239 (Fed. Cir. 1992) (stating that marks are
`
`perceived in their entireties and therefore all components must be given appropriate
`
`weight); Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538 (1920)
`
`(holding composite conflicting marks are to be compared by looking at them in their
`
`entireties rather than their component parts, as the commercial impression of a mark is
`
`created by the mark as a whole). The test is not whether the marks can be distinguished
`
`when subjected to a side-by-side comparison but rather whether the marks are
`
`sufficiently similar in terms of their overall commercial impression that confusion is likely
`
`to result as to the source of the goods or services offered under the respective marks.
`
`Miss Universe v. Community Marketing, 82 U.S.P.Q.2d 1562, 1570 (TTAB 2007).
`
`Additionally, when determining the degree of similarity, rather than dissecting a mark by
`
`minute comparison of its elements, courts look to the mark as a whole, including any
`
`10
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`

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`disclaimed terms to determine the level of similarity between them. See In re Shell Oil
`
`Co., 992 F.2d 1204, 1206 (Fed. Cir. 1993). See also In re National Data Corp., 753 F.2d
`
`1056, 1059 (Fed. Cir. 1985) (noting the public is unaware that one or more words have
`
`been disclaimed during prosecution of an application); Specialty Brands, Inc. v. Coffee
`
`Bean Distrib., Inc., 748 F.2d 669, 672 (Fed. Cir. 1984) (“Although applicant disclaimed
`
`the word ‘spice’ apart from SPICE VALLEY as a whole, the marks are viewed in their
`
`entireties.”).
`
`
`
`The Examining Attorney claims that INCA and INCA’S are the dominant portions
`
`of the marks, and the differences in the marks are minor, failing to change the
`
`commercial impressions of the marks. This reasoning is flawed, as the marks in their
`
`entireties are distinctly different. In his Final Office Action of January 27, 2015, the
`
`Examining Attorney asserted that “a trademark attorney may weigh the individual
`
`components of a mark to determine its overall commercial impression.” However, the
`
`Examining Attorney cited Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
`
`1317, 1322, 110 U.S.P.Q.2d 1157, 1161 (Fed. Cir. 2014) and internally quoted In re
`
`National Data Corp., 753 F.2d 1056, 1058, 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985). This
`
`internal quotation was as follows:
`
`[I]n articulating reasons for reaching a conclusion on the issue of
`confusion, there is nothing improper in stating that, for rational reasons,
`more or less weight has been given to a particular feature of a mark,
`provided the ultimate conclusion rests on consideration of the marks in
`their entireties
`
`
`(emphasis added). Despite this assertion, the Examining Attorney has declined to follow
`
`the emphasized portion of the court’s holding without any rationale.
`
`Consumers do not stop to dissect and analyze marks. They are impressed by a
`
`11
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`

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`mark as they see or hear it. Ex Parte Maya De Mexico, 103 U.S.P.Q. 158, 154 WL 5556
`
`(Comm’r Pat. & Trademarks 1954); Supply Mfg. Co. v. King Trimmings, Inc., 220 F.
`
`Supp. 947, 139 U.S.P.Q. 163 (S.D.N.Y. 1963). Consumers will not pick the INCA TEA
`
`mark apart and believe that the associated goods are sourced from the broad number of
`
`foods and beverages marked with
`
`.
`
`
`
`Moreover, when two dominant terms are considered or compared, the relevant
`
`strength or weakness of those terms should be considered. Alpha Indus., Inc. v. Alpha
`
`Tube & Shapes, Inc., 616 F.3d 440, 445-46 (9th Cir. 1980). Strong marks, due to their
`
`unique usages, are widely protected as contrasted to weak marks. Amstar Corp. v.
`
`Domino’s Pizza, Inc., 615 F.2d 252, 259 (C.A. Ga. 1980). A weak mark is a meaningful
`
`word in common usage or is merely suggestive or descriptive.
`
`
`
`Extensive use of a trademark term by third parties supports a showing of dilution
`
`because “[t]hird party uses of a mark on similar goods are relevant for the purposes of
`
`showing a ‘crowded field’ and that the mark is therefore weak.” Lexington Management
`
`Corp. v. Lexington Capital Partners, 10 F.Supp.2d 271, 281 (S.D.N.Y. 1998). When
`
`multiple marks coexist in a crowded field, there is further support for finding a mark to
`
`be weak. See Western Publishing Co. v. Rose Art Industries, Inc., 910 F.2d 57, 61 (2d
`
`Cir. 1990) (finding the strength of a mark is weakened by coexistence on the federal
`
`trademark registry with a number of similar marks in the same field). Moreover, when a
`
`field is crowded, customers are unlikely to confuse any two marks in the crowd. See
`
`e.g., In re Lucky Co., 209 U.S.P.Q. 442 (T.T.A.B. 1980) (finding a crowded field for
`
`stripe designs for athletic footwear).
`
`Where the primary term is considered a weak mark, minor alterations could
`
`12
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`effectively negate any confusing similarity between the two. Freedom Sav. & Loan
`
`Ass’n., 757 F.2d 1176, 1183 (C.A. Fla. 1985). Despite the Examining Attorney’s
`
`assertion in the July 1, 2014 Office Action that there only “minor differences” between
`
`INCA TEA and
`
`, use of identical components within different trademarks does not
`
`automatically mean that two marks are confusingly similar. Indeed, even identical words
`
`in marks of the same class do not preclude registration. TMEP § 1207.01(b)(ix).
`
`
`
`The word INCA and its phonetic equivalent INKA are commonly used terms as
`
`trademark components for a wide variety of food-related goods. Consumers are
`
`accustomed to seeing INCA as a trademark component on many goods. As a result, it
`
`is unlikely that consumers would experience confusion regarding the source of their
`
`goods, as they are used to seeing INCA in many different variations as a component of
`
`a trademark or brand identifier with respect to foods, beverages, supplements, and
`
`other products and services. Consumers could potentially see the same term as a
`
`trademark, or part of a trademark, many times throughout a given day, yet be able to
`
`distinguish among the sources of the products. A few examples of registered marks
`
`containing INCA or INKA are disclosed in Exhibit D of Applicant’s Response of
`
`December 30, 2014.
`
`
`
`Applicant owns multiple INCA-containing marks across several food-related
`
`classes of goods and services. For example, Applicant owns INCA TEA CAFÉ  CLE
`
`w/Design as stated above, U.S. Ser. No. 86/457,184 for INCA POP published for
`
`opposition January 20, 2015, and U.S. Ser. No. 86/457,218 for INCAN MEAL published
`
`for opposition April 7, 2015. These represent only a small number of INCA marks in the
`
`food and beverage category. Based on the number of INCA or INKA marks on the
`
`13
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`

`

`Principal Register, undoubtedly, customers are accustomed to seeing other INCA marks
`
`in association with food and beverages and would have no problem distinguishing
`
`sources from one another.
`
`Specifically regarding INCA TEA CAFÉ  CLE w/Design mark–which is
`
`registered–, Applicant sells its INCA TEA products through the services associated with
`
`INCA TEA CAFÉ  CLE w/Design. “It is not unusual for restaurants to be identified with
`
`particular food or beverage items that are produced by the same entity that provides the
`
`restaurant services or are sold by the same entity under a private label.” In re Coors
`
`Brewing Co., 343 F.3d 1340, 1346 (Fed. Cir. 2003). The very fact that Applicant sells its
`
`INCA TEA products in Applicant’s restaurants registered under INCA TEA CAFÉ  CLE
`
`w/Design is indicative of a strong nexus between the restaurant services and goods.
`
`“The fact that applicant’s restaurant serves the type of goods (indeed the actual goods)
`
`identified in the cited registration is certainly probative evidence which supports a
`
`finding . . . that applicant’s services and [registrant’s] goods are related.” In re Opus One
`
`Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). Therefore, given that INCA TEA goods are
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`sold in conjunction with Applicant’s registered INCA TEA CAFÉ  CLE w/Design
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`restaurant services, INCA TEA should also be allowed to exist on the Principal Register.
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`Recently, the Board reversed a Section 2(d) refusal to register the mark THE
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`RAIL & Design for “restaurant and bar services,” finding the mark not likely to cause
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`confusion with the registered mark RAILS STEAKHOUSE for “bar and cocktail lounge
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`services, restaurant.” In re Mariola Burgers, LLC, Serial No. 85131831 (Sep. 6, 2016).
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`The majority of the Board found the applicant’s mark to be dominated by the design and
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`the only similarity between the marks is one word, but to “[f]ocus[] on that one small
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`similarity . . . to the exclusion of all else, would be a dissection of the marks.” (emphasis
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`added). Therefore, taken in their entireties, the two marks look and sound different, as
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`the word STEAKHOUSE in the cited registration must be sounded out even though
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`disclaimed. Likewise, in the present case, the Examining Attorney has neglected to take
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`into account the marks in their entireties, focusing on only a single word, thereby
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`improperly dissecting the marks.
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`The Marks at Issue are Different in Sound, Appearance, and Commercial
`Impression
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`To reiterate, “[w]hen considering the similarity of the marks, ‘[a]ll relevant facts
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`
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`pertaining to the appearance and connotation must be considered.’” Recot, Inc. v. M.C.
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`Becton, 214 F.3d at 1329, 54 U.S.P.Q.2d at 1897. TMEP § 1207.01(b). Applicant
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`maintains that the Examining Attorney did not consider all these factors in finding a
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`likelihood of confusion.
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`The Marks are Different in Sound
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`
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`The marks INCA TEA and
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`only share a single initial syllable. When one
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`says the words of the marks out loud, one hears INN KAH TEE compared to INN KAHZ
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`FOOD. However, the Examining Attorney failed to evaluate the applied-for mark in its
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`entirety, instead placing emphasis on the word “INCA” as similar enough to find a
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`likelihood of confusion. The latter two syllables in INCA TEA (i.e. KAH TEE) is enough
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`to provide a new and relevant dimension to the sound of the mark. The marks in their
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`entireties do not sound alike.
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`The Marks are Different in Appearance and Commercial Impression
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`Similarly, the marks INCA TEA and
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`do not look the same. The cited mark is
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`stylized and includes an image of a tumi. The impression is that “food” included in the
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`mark would be consumed by the Incas, or Incan royalty in particular, as tumis were
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`historically known to be buried with Incan nobility. See In re Taylor Brands, LLC, 2007
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`WL 4616263 (finding that OLD TIMER and OLDTIMERS HOCKEY CHALLENGE w/
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`Design “look different due to the presence of the prominent design element and the
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`additional words HOCKEY CHALLENGE in the cited registered mark, and they sound
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`different due to the presence of the words HOCKEY CHALLENGE in the cited
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`registered mark.”) The In re Taylor Brands, LLC panel also found:
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`Any similarity which results from the presence of the words OLD TIMER in
`applicant's mark and the plural possessive OLDTIMERS' in the cited
`registered mark is greatly outweighed by the presence in the cited
`registered mark of the words HOCKEY CHALLENGE and the hockey puck
`design element. These features impart to the registered mark an overall
`meaning and commercial impression which are totally absent from
`applicant's mark. The cited registered mark specifically calls to mind a
`hockey game or exhibition featuring a reunion of once-active but now-
`retired former hockey players. The words OLD TIMER in applicant's mark
`have no such sports connotation (much
`less a specific hockey
`connotation).
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`The present case essentially mirrors In re Taylor Brands; however, in the present case,
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`it is the cited registration that contains the possessive wording and design element,
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`thereby imparting an overall meaning and commercial impression which are totally
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`absent from Applicant’s mark. The cited registration particularly calls to mind food that
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`belong to Incas, namely Inca nobility, while INCA TEA in Applicant’s mark has no such
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`connotation, instead implying tea of Incan origin.
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`Further, the word INCA alone is suggestive. The literal definition of Inca is a
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`member of a South American Indian people whose great empire centered on Peru
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`lasted from about 1100 AD to the Spanish conquest in the early 1530s and is famed for
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`its complex culture. Inca may also refer to the language of the Incas, or as an adjective,
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`it may imply the quality of being indigenous to the Andes (particularly to Peru), of having
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`properties related to the Andes region, and/or of having some quality related to the
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`ancient Incan people. See Exhibit C attached to Applicant’s Response of December 30,
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`2014. Without the addition of the noble tumi, Applicant’s mark connotes a more
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`common or regional interpretation of “Inca.”
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`
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`“It is well settled that marks must be considered in their entireties, not dissected
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`or split into component parts and each part compared with the other parts.” Genesco
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`Inc. v. Martz, 66 U.S.P.Q.2d 1260, 1260 (T.T.A.B. 2003); Franklin Mint Corp. v. Master
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`Mfg. Co., 667 F.2d 1005, 1007, 212 U.S.P.Q.2d 233 (C.C.P.A. 1981); Sun-Fun Prods.,
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`Inc. v. Suntan Research & Dev. Inc., 656 F.2d 186, 213 U.S.P.Q. 91 (5th Cir. 1981).
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`The visual appearance of the marks is undeniably different, as evidenced by the
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`following.
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`
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`Registrant’s mark:
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`
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`
`
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`
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`
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`
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`Applicant’s mark:
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`INCA TEA
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`A side-by-side comparison is certainly not determinative in and of itself; however,
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`Applicant submits that a consumer, encountering both marks at different times would
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`not recall one as associated with the other simply because the first syllables and
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`portions of the second syllables are the dominant and remembered portions of the
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`marks.
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`
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`Applicant asserts that rather than examining the marks as a whole for visual
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`similarities, the Examining Attorney improperly dissected the marks and focused solely
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`on the separate words INCA’S and FOOD rather than the overall mark. Yet despite that
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`the respective marks share only four letters, the Examining Attorney believes the INCA
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`TEA mark as a whole creates the same commercial impression for the consuming
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`public as INCA’S FOOD alone (i.e. even without the distinctive design), allegedly
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`making the marks confusingly similar. Applicant maintains that this is precisely the sort
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`of piecemeal comparison the courts reject. See China Healthways Inst., Inc. v. Wang,
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`491 F.3d 1337, 1340 (Fed. Cir. 2007) (“The marks must be compared in their entirety, at
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`least when the overall commercial impression is reasonably based on the entirety of the
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`marks.”). When comparing the visual similarities of the marks, an Examining Attorney
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`must ask whether the overall appearance of the applied-for mark, when compared in its
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`entirety, resembles that of the cited mark.
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`
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`Further, as noted above, no element of a mark is ignored. It is the impression the
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`mark as a whole created on the ordinary prospective buyer and not the impression of
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`the individual parts thereof. Little Caesar Enterprises, Inc. v. Pizza Caesar, Inc., 834
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`F.2d 568 (6th Cir. 1987); 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
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`Competition 23.41 at 23-173 (4th ed. 20