THIS OPINION IS NOT A
`PRECEDENT OF THE TTAB
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mailed:
`February 3, 2017
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re Inca Tea, LLC
`_____
`
`Serial No. 85886550
`_____
`
`Sandra M. Koenig and Rachel A. Smoot of Fay Sharpe LLP for Inca Tea, LLC.
`
`Robert J. Struck, Trademark Examining Attorney, Law Office 109
` (Michael Kazazian, Managing Attorney).
`_____
`
`
`Before Bergsman, Masiello, and Hightower, Administrative Trademark Judges.
`
`Opinion by Masiello, Administrative Trademark Judge:
`
` Inca Tea, LLC (“Applicant”) filed an application for registration on the Principal
`
`Register of the mark INCA TEA in standard characters for “Teas comprised of
`
`purple corn; tea blends comprised of purple corn,” in International Class 30.1
`
`Applicant disclaimed the exclusive right to use TEA apart from the mark as shown.
`
`
`1 Application Serial No. 85886550 was filed on March 26, 2013 under Trademark Act
`Section 1(b), 15 U.S.C. § 1051(b), on the basis of Applicant’s bona fide intention to use the
`mark in commerce. Applicant later filed an allegation of use, stating January 13, 2014 as
`the date of first use and first use in commerce.
`
`
`PRECEDENT OF THE TTAB
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mailed:
`February 3, 2017
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re Inca Tea, LLC
`_____
`
`Serial No. 85886550
`_____
`
`Sandra M. Koenig and Rachel A. Smoot of Fay Sharpe LLP for Inca Tea, LLC.
`
`Robert J. Struck, Trademark Examining Attorney, Law Office 109
` (Michael Kazazian, Managing Attorney).
`_____
`
`
`Before Bergsman, Masiello, and Hightower, Administrative Trademark Judges.
`
`Opinion by Masiello, Administrative Trademark Judge:
`
` Inca Tea, LLC (“Applicant”) filed an application for registration on the Principal
`
`Register of the mark INCA TEA in standard characters for “Teas comprised of
`
`purple corn; tea blends comprised of purple corn,” in International Class 30.1
`
`Applicant disclaimed the exclusive right to use TEA apart from the mark as shown.
`
`
`1 Application Serial No. 85886550 was filed on March 26, 2013 under Trademark Act
`Section 1(b), 15 U.S.C. § 1051(b), on the basis of Applicant’s bona fide intention to use the
`mark in commerce. Applicant later filed an allegation of use, stating January 13, 2014 as
`the date of first use and first use in commerce.
`
`
`
`Serial No. 85886550
`
` The Trademark Examining Attorney refused registration under Section 2(d) of the
`
`Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
`
`in connection with Applicant’s goods, so resembles the registered mark shown below
`
`as to be likely to cause confusion, or to cause mistake, or to deceive.2
`
`
`The cited mark is registered for “teas, namely, linden and chamomile,” as well as a
`
`variety of other foods in International Classes 29 and 30.3 Registrant has disclaimed
`
`the exclusive right to use FOOD apart from the mark as shown. The Registration
`
`describes the figure depicted in the mark as “an upper portion of a Tumi, a
`
`
`2 Reg. No. 4110531, issued March 13, 2012.
`3 The full identification of goods in the cited Registration is as follows:
`Canned or dried prepared food, namely, fruits, vegetables; canned or dried white corn,
`canned or dried hot peppers, namely, rocoto, panca, and amarillo; Dried prepared foods,
`namely, canary beans and potatoes; Canned or bottled food, namely, asparagus and olives
`in brine; fried chick peas; dried peaches; fried bananas; fried fava beans; and fried cassava;
`processed lemon grass, in International Class 29;
`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 International Class 30.
`
`
`
`2
`
`
`
`Serial No. 85886550
`
`ceremonial knife of the pre-Incan cultures of Peru.” Color is not claimed as a feature
`
`of the mark.
`
` When the refusal was made final, Applicant filed two requests for reconsideration,
`
`both of which the Examining Attorney denied. Applicant appealed to this Board,
`
`and subsequently requested that the Application be remanded to the Examining
`
`Attorney for consideration of additional evidence. Upon remand, the Examining
`
`Attorney again maintained his refusal of registration, and this appeal proceeded.
`
`The case is fully briefed.
`
` Our determination under Section 2(d) is based on an analysis of all of the
`
`probative facts in evidence that are relevant to the factors bearing on the issue of
`
`likelihood of confusion as set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d
`
`1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
`
`key considerations are the similarities between the marks and the similarities
`
`between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper
`
`Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant and the
`
`Examining Attorney have also presented evidence and arguments regarding trade
`
`channels, the number and nature of similar marks in use in the marketplace, lack
`
`of actual confusion, and the need for consistent examination practice.
`
`(a)
`
`The goods.
`
` We will first consider the similarity or dissimilarity of the goods as identified in
`
`the application and the cited registration. Stone Lion Capital Partners, LP v. Lion
`
`Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014); Octocom
`
`
`
`3
`
`
`
`Serial No. 85886550
`
`Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
`
`(Fed. Cir. 1990). Applicant’s goods are teas and tea blends comprised of purple corn.
`
`Registrant’s goods include, among other things, “teas, namely, linden and
`
`chamomile.” The goods are similar in nature, in that they are all teas; however,
`
`they are not identical, and Applicant’s goods, in particular, are somewhat unusual
`
`in that they are corn-based teas.
`
` Applicant has submitted evidence regarding the nature of its product, which
`
`shows that purple corn is not always the only component of the tea. Applicant
`
`produces a “Peruvian Spiced Berry” tea under the mark.4 Applicant’s website
`
`indicates that the ingredients of Peruvian Spiced Berry tea are “hibiscus petals,
`
`elderberries, currants, purple corn, apple pieces, cinnamon, cloves and natural
`
`flavors.”5 Other flavors of tea offered under the mark include “PICK ME UP PEACH,”
`
`a “combination of white tea, lush peaches and sweet herbs”; “MOUNTAIN OF MANGO,”
`
`a “blend of mango, sweet herbs, and citrus flavors”; and “TAWANTIN BLACK TEA,” a
`
`“combination of three quality black tea leaves and purple corn.”6 Applicant’s Twitter
`
`page includes a posting by Applicant that appears to indicate that Applicant offers a
`
`tea that combines purple corn with chamomile:
`
`Cusco Chamomile is a soothing blend of Chamomile,
`Purple Corn, Blood orange, vanilla & Citrus. #yummy
`#organic.7
`
`
`4 Applicant’s response of April 30, 2014 at 8. See also Response of May 20, 2016 at 34.
`5 Office Action of January 27, 2015 at 6-7
`6 Request for Remand of October 23, 2015 at 17.
`7 Applicant’s response of May 20, 2016 at 56.
`
`
`
`4
`
`
`
`Serial No. 85886550
`
`Applicant’s Facebook page includes an image of “Pachama Green” tea bearing the
`
`mark.8 The fact that Applicant itself markets herbal teas, fruit teas, green tea and
`
`black tea under the mark indicates that purple corn tea is commercially related to
`
`other forms of tea.
`
` In order to demonstrate that the goods of Applicant and Registrant are related,
`
`the Examining Attorney has submitted evidence from the Internet showing that
`
`various types of teas and herbal teas have been marketed under the same mark.
`
`Examples follow:
`
`BRAND
`
`
`
`TYPES OF TEA
`
`Roasted corn tea; ginger tea.9
`
`Korea purple corn tea; corn tea; green tea; roasted barley tea.10
`
`ASSI
`
`DONG SUH
`
`GOOD NATURE Chamomile tea, linden blossom tea, elderflower tea, and rose hip
`and hibiscus tea.11
`
`
`LIPTON
`
`
`TAZO
`
`TEAVANA
`
`Chamomile tea; Green tea; white tea; orange blossom hibiscus
`tea; jasmine tea; ginseng tea; purple acai blueberry tea.12
`
`Chamomile tea, green tea, Darjeeling tea.13
`
`Chamomile, peach, peach-berry-jasmine, mango-black tea,
`white, black, oolong, green, jasmine.14
`
`
`
`
`8 Response of May 20, 2016 at 25.
`9 Office Action of July 10, 2015 at 3-6.
`10 Id. at 9-12.
`11 Office Action of January 27, 2015 at 10-11.
`12 Office Action of August 24, 2015 at 4-17.
`13 Id. at 23.
`14 Id. at 32, 39, 42, 44-46, 51, 61.
`
`
`
`5
`
`
`
`Serial No. 85886550
`
`This evidence, combined with the fact that Applicant itself offers its purple corn tea
`
`alongside peach, mango, black and green teas under the same mark, indicates a
`
`strong commercial relationship between the goods of Applicant and Registrant.
`
` The record indicates that Applicant’s and Registrant’s goods are similar in
`
`another way, inasmuch as both are perceived as having healthful benefits. See the
`
`articles, “The Healing Properties of Purple Corn” and “The Potential Health
`
`Benefits of Purple Corn,”15 which extol the corn as “Packed with Phytonutrients and
`
`Antioxidants.” Applicant makes similar health claims in its brief.16 Compare to the
`
`article “Chamomile Health Benefits,”17 which states that “Both the fresh and dried
`
`flowers of chamomile have been used to create teas for centuries to cure a number of
`
`health problems”; and indicates that chamomile tea can be used to treat insomnia,
`
`anxiety, skin conditions, and cramps. See also “Linden Tea” and “Benefits of Linden
`
`Flower Tea,”18 which discuss “medicinal properties” and “traditional uses ... to help
`
`treat flu or cough, or to relieve nervous tension and digestive problems.” Applicant’s
`
`Facebook page also touts the health benefits of its product:
`
`I am trying to fill my body with as many antioxidants as I
`can on my journey to feel better and look better. I am
`thrilled to be trying out “Inca Tea” chock full of Peruvian
`purple corn, …19
`
`15 Applicant’s response of June 11, 2015 at 8-14; see also id. at 26.
`16 Applicant’s brief at 19, 15 TTABVUE 20 (“Purple corn … has been dubbed a super food
`due to its phytonutrients, anthocyanins, and antioxidants. Anthocyanins provide anti-
`inflammatory effects and are said to promote tissue regeneration, while antioxidants help
`to prevent disease, improve blood circulation and reduce cholesterol.”).
`17 Id. at 16-17.
`18 Id. at 19-24; see also id. at 28.
`19 Applicant’s response of May 20, 2016 at 15.
`6
`
`
`
`
`
`Serial No. 85886550
`
`
`Tea as a dehydrator is a myth as reported by the Mayo
`Clinic and other sources and our teas are packed with the
`powerful anti-inflammatory -purple corn- which aides in
`connective tissue regeneration and blood flow regulation ..
`so throw a Pick Me Up Peach in your fuel belt - you’ll
`thank us later!20
` The evidence of record is sufficient to show that the goods of Applicant and
`
`Registrant are commercially related, such that if they were offered under similar
`
`marks, customers would believe that they could come from the same source.
`
`Accordingly, the du Pont factor of the similarity or dissimilarity of the goods weighs
`
`in favor of a finding of likelihood of confusion.
`
` (b) Trade channels.
`
` With respect to trade channels, the Examining Attorney has shown that herbal
`
`teas like chamomile and linden tea can be purchased online through the websites of
`
`supermarkets such as Harris Teeter, Safeway, and Peapod by Giant.21 Applicant’s
`
`website shows that Applicant offers its tea through its own café located in the
`
`Cleveland airport22 and has sought to place its goods with the supermarkets Whole
`
`Foods23 and Heinen’s Grocery Store,24 and the home accessories store Bed Bath &
`
`Beyond.25 It is also clear that Applicant has sought to publicize its product through
`
`a wide range of media. There are obvious similarities between channels such as
`
`Whole Foods and Harris Teeter, and supermarkets like Safeway, Giant and
`
`20 Id. at 23.
`21 Office Action of August 24, 2015 at 68-96.
`22 Response of May 20, 2016 at 17, 29.
`23 Id. at 19-20.
`24 Id. at 21, 34-35.
`25 Id. at 27, 30, 34.
`
`
`
`7
`
`
`
`Serial No. 85886550
`
`Heinen’s. Moreover, because there are no limitations as to trade channels in the
`
`identifications of goods in the application and the cited registration, we presume
`
`that the goods move in all normal channels of trade for such goods. Coach Servs.
`
`Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir.
`
`2012). The teas of Applicant and Registrant are types of goods that would normally
`
`be offered in food stores and they are, in fact, offered in similar food outlets. We see
`
`substantial overlap between the established and likely to continue trade channels of
`
`Applicant and Registrant. This du Pont factor favors a finding of likelihood of
`
`confusion.
`
`(c)
`
`Similar marks in use.
`
` Applicant contends that the INCA portion of Registrant’s mark is weak and
`
`entitled only to a narrow scope of protection because there are many marks that
`
`include the term INCA or its equivalent INKA in use in the marketplace. Applicant
`
`has submitted copies of a number of U.S. registrations,26 showing registration of the
`
`following marks for the goods and services indicated:27
`
`Reg. No. Mark
`
`4186935
`
`Relevant Goods and
`Services
`
`Coffee, coffee substitutes,
`coffee-based beverage,
`vegetal preparations for
`use as coffee substitutes
`
`
`26 Response of October 9, 2013 8-33; Response of December 30, 2014 at 26-39.
`27 Where the identification of goods or services is not set within quotation marks, it is a
`paraphrase.
`
`
`
`8
`
`
`
`Serial No. 85886550
`
`3939703
`
`0731229
`
`INCA KOLA
`
`4615976
`
`“Non-alcoholic beverages
`derived from grains,
`fruits, and spices, namely,
`cocktail bases, fruit-juice
`beverages, and punch”
`
`“Soft drinks”
`
`“Roasted corn”
`
`4048013
`
`4048012
`
`IMPERIAL INKA QUINOA THE
`ORIGINAL
`
`
`“Processed quinoa”
`
`“processed quinoa, sesame
`seeds, namely, roasted
`and ground sesame seeds”
`
`2754267
`
`INCA RED
`
`4054809
`
`TIERRA DEL INCA
`
`3901100
`
`3518101
`
`INCA SWEETS PERUVIAN SWEET
`ONIONS
`
`INCA GOLD
`
`
`
`9
`
`“unprocessed grains for
`eating”
`
`Beans, bean paste, rice,
`gravies, seasoning mixes
`
`“fresh sweet onions”
`
`“Beer”
`
`
`
`
`Serial No. 85886550
`
`4001479
`
`“Wine”
`
`3590002
`
`INCA
`
`4819749
`
`“Wine”
`
`“Restaurant services”
`
`4010851
`
`4298601
`
`“Restaurants”
`
`“restaurant, carry-out food
`and bar services”
`
`
`
`10
`
`
`
`Serial No. 85886550
`
`3959490
`
`2628769
`
`INCA GOLD
`
`3989204
`
`INCA BEAN SALAD
`
`4555207
`
`4559345
`
`INCA LINK
`
`“restaurant, carry-out food
`and bar services”
`
`Herbal supplements,
`dietary supplements,
`nutritional supplements
`
`“pet food, namely, bird
`food”
`
`Cocoa, chocolate, chocolate
`substitutes, confectionery,
`pastry, ices, candy.
`
`Charitable services,
`volunteer programs,
`compassion ministry
`
`
` Evidence of extensive registration and use by others of a term on the same or very
`
`
`
`similar goods can be “powerful” evidence of weakness. See Jack Wolfskin
`
`Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
`
`797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v.
`
`GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). The
`
`purpose of introducing third-party uses is to show that customers have become so
`
`conditioned by a plethora of such similar marks that they have been educated to
`
`distinguish between different marks on the basis of minute distinctions. Palm Bay
`
`Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
`
`73 USPQ2d 1689 (Fed. Cir. 2005).
`
`
`
`11
`
`
`
`Serial No. 85886550
`
` In this case, Applicant’s evidence of purported weakness is not particularly
`
`persuasive. None of the third-party registrations relates to tea, so they are, at best,
`
`of peripheral relevance to the strength or weakness of a mark in the field of tea.
`
`Further, Applicant has not presented evidence showing that the third-party marks
`
`are in actual use, but only that they are registered. While we may assume that use-
`
`based registrations issued only after their owners asserted to the USPTO that the
`
`marks were in use, the registrations themselves do not directly demonstrate that
`
`the marks are in fact present in the marketplace, the extent to which they have
`
`been used, or the extent to which customers have been exposed to them. See Palm
`
`Bay v. Veuve Clicquot Ponsardin, 73 USPQ2d at 1693 (quoting Scarves by Vera, Inc.
`
`v. Todo Imports, Ltd., 544 F.2d 1167, 192 USPQ 289, 294 (2d Cir. 1976) (“The
`
`significance of third-party trademarks depends wholly upon their usage. Defendant
`
`introduced no evidence that these trademarks were actually used by third parties,
`
`that they were well promoted or that they were recognized by consumers.”)).
`
`Nevertheless, the third-party marks are probative with respect to the suggestive
`
`meaning of the word INCA. Juice Generation v. GS Enters., 115 USPQ2d at 1675.
`
`The registrations demonstrate that INCA suggests a connection with Peru or South
`
`America where the Inca civilization once flourished.
`
` Applicant argues that Registrant has made only limited use of its mark and
`
`“[s]uch limited use in a crowded field of third party registrants also implies the
`
`weakness of Registrant’s mark.”28 However, there is nothing in the record to show
`
`
`28 Applicant’s reply brief at 4, 18 TTABVUE 8.
`
`
`
`12
`
`
`
`Serial No. 85886550
`
`that Applicant is reliable source of information regarding the extent to which
`
`Registrant’s mark has been used and promoted. We therefore have no basis for
`
`finding that Registrant’s mark is lacking in commercial strength.
`
` The evidence submitted by Applicant does not rise to the level of demonstrating
`
`that third-party use of the term INCA is so widespread as to “condition” the
`
`consuming public such that customers are used to seeing marks containing the term
`
`INCA for tea, undermining the strength of Registrant’s mark. However, in view of
`
`the suggestive nature of INCA, Registrant’s mark is not entitled to such a broad
`
`scope of protection that it will bar the registration of every mark comprising, in
`
`whole or in part, the word INCA. It will bar the registration of marks “as to which
`
`the resemblance to [Registrant’s mark] is striking enough to cause one seeing it to
`
`assume that there is some connection, association or sponsorship between the two.”
`
`Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271,
`
`1278 (TTAB 2009), aff’d, 415 Fed. Appx. 222 (Fed. Cir. 2010) (quoting Pizza Inn,
`
`Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983)).
`
`The marks.
`(d)
` We next consider the similarity or dissimilarity of the marks in their entireties as
`
`to appearance, sound, connotation and commercial impression. See Palm Bay v.
`
`Veuve Clicquot 73 USPQ2d at 1689. “The proper test is not a side-by-side
`
`comparison of the marks, but instead ‘whether the marks are sufficiently similar in
`
`terms of their commercial impression’ such that persons who encounter the marks
`
`would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
`
`Triumph Learning LLC, 101 USPQ2d at 1721.
`13
`
`
`
`
`
`Serial No. 85886550
`
` The marks are similar in appearance and sound to the extent that each includes
`
`the initial word INCA. There are a number of visual and phonetic differences
`
`between the two marks: the word TEA in Applicant’s mark; and, in Registrant’s
`
`mark, the possessive ’S, the word FOOD, the stylization of the wording and the
`
`design element. All are points of visual and/or phonetic difference. However, with
`
`respect to the stylization of the lettering in Registrant’s mark, we bear in mind that
`
`Applicant seeks to register its mark in standard character form, such that it would
`
`not be limited to any particular form of display, Squirtco v. Tomy Corp., 697 F.2d
`
`1038, 216 USPQ 937, 939 (Fed. Cir. 1983), and could be displayed in a manner that
`
`resembles the style of Registrant’s mark.
`
` With respect to the sound of the marks, Applicant makes much of the last two
`
`syllables of each mark, essentially inviting us to compare the phonemes “kah-tee”
`
`and “kahz-food.”29 This is not a sound approach. The most distinctive elements of
`
`the two marks are INCA and INCA’S, respectively, and it is not plausible to suggest
`
`that customers will ignore the first syllable of these words in order to focus only on
`
`the marks’ latter portions, -CA TEA and –CA’S FOOD. In any event, we have given
`
`full consideration to the phonetic differences between the marks.
`
` With respect to the meanings of the marks, the dictionary definition of INCA is as
`
`follows:
`
`1. a member of any of the dominant groups of South
`American Indian peoples who established an empire in
`Peru prior to the Spanish conquest.
`
`
`29 Applicant’s brief at 15, 15 TTABVUE 16.
`
`
`
`14
`
`
`
`Serial No. 85886550
`
`
`2. a ruler or member of the royal family in the Incan
`empire.30
`Customers are likely to perceive INCA and INCA’S to have essentially the same
`
`meaning in the two marks. The possessive formative ’S causes the first term of
`
`Registrant’s mark to mean of, relating to or owned by INCA. However, every
`
`trademark suggests “of or relating to,” because the trademark’s purposes is to
`
`identify source. We therefore find the ’S in Registrant’s mark to have very little
`
`effect in distinguishing the cited mark from Applicant’s mark. In re Binion, 93
`
`USPQ2d 1531, 1534 (TTAB 2009).
`
` The dictionary definitions of TEA and FOOD are of record, and it is obvious that
`
`they have different meanings which must be considered. However, customers are
`
`likely to perceive some relationship between the meanings of TEA and FOOD, as
`
`both words describe comestible goods for human consumption. Thus, the different
`
`meanings of these terms does not create the type of incongruity between the marks
`
`that might arise between more starkly unrelated words. Overall, the meanings of
`
`the two marks are somewhat similar: one suggests tea having a connection to a
`
`South American Indian people; and the other suggests food having a connection to
`
`the same Indian people.
`
` Applicant argues that the words FOOD and TEA in two marks tell customers that
`
`one company is a “food” company and that the other is a “tea” company, and that
`
`“while one may expect a tea supplier to carry a wide variety of teas, they may not
`
`
`30 Definition from <Dictionary.com>, Applicant’s Response of December 30, 2014 at 22.
`
`
`
`15
`
`
`
`Serial No. 85886550
`
`necessarily expect a food supplier.”31 However, the better question is whether
`
`customers would expect that one supplier of a type of tea (a food company offering
`
`chamomile tea) might also offer another kind of tea (purple corn tea).
`
` The image of the “tumi” in Registrant’s mark adds to the meaning of the mark. If
`
`it is recognized by customers as a Peruvian ceremonial knife, it will have the effect
`
`of reinforcing the idea of a connection to South America, an idea that is inherent in
`
`the word INCA, as defined above, which appears in both marks. For customers who
`
`do not recognize the significance of the “tumi,” this design will have a reduced
`
`impact on the perceived meaning of Registrant’s mark. In any event, we generally
`
`give less weight to the design elements of a mark than to its wording, because the
`
`wording would be used by consumers to request the goods. In re Dakin’s Miniatures,
`
`Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also Sweats Fashions Inc. v. Pannill
`
`Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc.
`
`v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983).
`
` Applicant contends that, in overall commercial impression, the two marks are
`
`very different. Regarding Registrant’s mark, Applicant argues:
`
`
`
`As INCA may be defined as a ruler o[r] member of the
`royal family in the Inca Empire, the [cited mark] suggests
`that the food (i.e., linden and chamomile tea) is fit for
`royalty. Further, the mark is possessive, alluding that the
`food belongs to the royal Inca.32
`
`
`31 Applicant’s brief at 20, 15 TTABVUE 21.
`32 Applicant’s brief at 6, 15 TTABVUE 7.
`
`
`
`16
`
`
`
`Serial No. 85886550
`
`
`The impression [of the cited mark] is that “food” included
`in the mark would be consumed by the Incas, or Incan
`royalty in particular, as tumis were historically known to
`be buried with Incan nobility.33
`Along with the possessive form of the INCA, the cited
`registration implies Registrant supplies high end or
`“royal” goods.34
`With respect to Applicant’s mark, Applicant contends:
`INCA TEA ... evokes a natural product with roots or
`inspiration in ancient Andean civilizations and/or lands.35
`… INCA TEA … suggests a tea that may have been
`consumed by certain groups of people.36 (p. 6)
`… Applicant’s mark has no such connotation [of nobility],
`instead implying tea of Incan origin. … Without the
`addition of the noble tumi, Applicant’s mark connotes a
`more common or regional interpretation of “Inca.” … In
`contrast [to the impression of “royal” goods], INCA TEA
`suggests a reminiscence of the Andes mountains.37
` Applicant’s contentions regarding the distinct overall impressions created by the
`
`marks are unsupported and do not persuade. While the common element INCA is
`
`suggestive (and therefore somewhat weak), we see no reason why the two marks
`
`would not be suggestive of South American Indian culture in the same ways.
`
`Although the marks are in some ways different in appearance, sound, and meaning,
`
`we find that the similarities outweigh the differences, and the overall commercial
`
`impressions created by the marks are sufficiently similar that, if used in connection
`
`
`33 Id. at 15-16, 15 TTABVUE 16-17.
`34 Id. at 18, 15 TTABVUE 19.
`35 Id. at 3, 15 TTABVUE 4.
`36 Id. at 6, 15 TTABVUE 7.
`37 Id. at 16-18, 15 TTABVUE 17-19.
`
`
`
`17
`
`
`
`Serial No. 85886550
`
`with similar goods, customers would be likely to perceive a connection between
`
`them. Accordingly, the du Pont factor of the similarity or dissimilarity of the marks
`
`weighs in favor of a finding of likelihood of confusion.
`
`(e)
`
`Lack of actual confusion.
`
` Applicant argues that it has been actively marketing and selling its goods “for
`
`over two years” without “a single instance of confusion” relating to the cited
`
`registered mark. Applicant points out that it has acquired thousands of followers
`
`through its social media accounts who have become aware of Applicant’s marked
`
`goods without experiencing confusion as to the source of Applicant’s goods.38
`
` In this ex parte proceeding, in which Registrant is not a participant and cannot
`
`respond to Applicant’s claims, Applicant’s uncorroborated statement that there are
`
`no known instances of actual confusion is of little or no evidentiary value. In re
`
`Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
`
`Moreover, the record contains little evidence to suggest that there have been
`
`meaningful opportunities for actual confusion to occur in the marketplace.
`
`Applicant has used its mark for a relatively short time, and there is extremely little
`
`information regarding the extent to which Registrant has used and promoted its
`
`mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847
`
`(Fed. Cir. 2000); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
`
`1992). Accordingly, the du Pont factor of the length of time during and conditions
`
`
`38 Applicant’s brief at 20-21, 15 TTABVUE 21-22.
`
`
`
`18
`
`
`
`Serial No. 85886550
`
`under which there has been contemporaneous use without evidence of actual
`
`confusion is considered neutral.
`
`(f)
`
`Consistency of examination.
`
` Applicant argues that “[t]o deny Applicant’s registration of the applied-for mark
`
`would be inconsistent with the USPTO’s historical treatment of similar marks.”39
`
`Applicant points out that it has obtained Reg. No. 4819749 for an INCA-formative
`
`mark for restaurant services; and that other such marks have been registered, such
`
`as TIERRA DEL INCA for beans and GOLD OF THE INKAS for quinoa, “even
`
`though these marks identify similar goods or services that could be confused with
`
`those of the cited registration.”40 This argument is not well-taken. While consistency
`
`of examination is desirable, the Board must decide each case on its own merits.
`
`Even if some prior registrations had some characteristics similar to Applicant’s
`
`application, the USPTO's allowance of such prior registrations does not bind the
`
`Board. In re Nett Designs Inc., 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
`
` Applicant also suggests that the USPTO has shown a pattern of “allow[ing] marks
`
`containing names of indigenous peoples to coexist on the Principal Register for
`
`similar goods and services. Applicant points to the registration of MAYA TEA
`
`alongside MAYA CHAI; yet the record indicates that these two registrations are
`
`owned by the same entity. We see no plausible support in the record for the
`
`existence of any such USPTO practice relating to the names of indigenous peoples.
`
`
`39 Applicant’s brief at 23, 15 TTABVUE 24.
`40 Id.
`
`
`
`19
`
`
`
`Serial No. 85886550
`
` (g) Conclusion.
`
` We have considered all of the arguments and evidence of record, including those
`
`not specifically discussed herein, and all relevant du Pont factors. The marks create
`
`similar commercial impressions, and the goods at issue are similar in nature, are
`
`commercially closely related, and travel through similar channels of trade. Overall,
`
`we find that Applicant’s mark, as used on its identified goods, so resembles the cited
`
`registered mark as to be likely to cause confusion or mistake or to deceive.
`
` Decision: The refusal under Section 2(d) is affirmed.
`
`
`
`20
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
