Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA805291
`03/06/2017
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`85886579
`Inca Tea, LLC
`INCA TEA ORIGINAL 100% ALL NATURAL INGREDIENTS
`SANDRA M KOENIG
`FAY SHARPE LLP
`1228 EUCLID AVE , 5TH FLOOR
`CLEVELAND, OH 44115-1834
`UNITED STATES
`skoenig@faysharpe.com, chutter@faysharpe.com
`Appeal Brief
`Appeal Brief_FLOR 500004US01.pdf(404847 bytes )
`Rachel A. Smoot
`rsmoot@faysharpe.com, skoenig@faysharpe.com, chutter@faysharpe.com,
`docketing@faysharpe.com
`/s/ Rachel A. Smoot /s/
`03/06/2017
`
`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
`
`
`
`
`In re Application of
`
`For the Mark
`
`:
`
`:
`
`Inca Tea, LLC
`
`INCA TEA ORIGINAL
`NATURAL INGREDIENTS
`
`100% ALL
`
`
`
`
`
`
`: 85/886,579
`
`
`: March 26, 2013
`
`
`: Robert J. Struck
`
`
`: 109
`
`
`: January 3, 2017
`
`
`: FLOR 5 00004US01
`
` Cleveland, OH 44115
`March 6, 2017
`
`
`BRIEF FOR APPLICANT
`
`
`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
`
`
`
`
`

`

`Applicant seeks to register INCA TEA ORIGINAL 100% ALL NATURAL
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`BACKGROUND
`
`INGREDIENTS and design (
`
`) on the Principal Register for:
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`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
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`Application Serial No. 85/886,579 with a filing date of March 26, 2013. The application
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`originally identified:
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`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, Lindsey H. Ben, required Applicant to disclaim “INCA TEA,”
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`“100% ALL NATURAL INGREDIENTS,” and “ORIGINAL” as allegedly descriptive
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`wording. 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
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`application comply with the Controlled Substances Act. See Office Action mailing date
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`April 15, 2013.
`
`In Applicant’s response to the initial refusal to register filed on October 11, 2013,
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`Applicant argued a disclaimer of “INCA” would be inappropriate, as “INCA” is not
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`descriptive of Applicant’s goods. Applicant also responded that the identified goods do
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`not relate to any illegal or controlled substance and provided numerous examples of
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`INCA formatives. Further, Applicant addressed that individuals are accustomed to
`
`seeing the word INCA in connection with products that could be purchased in a grocery
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`

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`store or restaurant and that none of the provided registrations disclaimed INCA.
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`Applicant also amended the identification.
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`
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`In her non-final Office Action of November 22, 2013, the Examining Attorney
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`repeated her requirement that “INCA TEA” must be disclaimed, alleging that the goods
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`were misdescribed, as the Applicant’s identification includes Inca tea, while Applicant
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`asserted its goods do not include Inca tea.
`
`
`
`In response thereto on May 21, 2014, Applicant traversed the alleged deceptively
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`misdescriptive grounds for refusal and addressed the Controlled Substances Act
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`requirements. Applicant maintained that
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` is not descriptive but suggestive, as the
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`ancient term INCA, when used in conjunction with the term TEA, evokes a natural
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`product with roots or inspiration in ancient Andean civilizations and/or lands. The
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`identification was amended to “teas comprised of purple corn; tea blends comprised of
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`purple corn” in class 30 so as to clarify the nature of the product. Applicant further
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`asserted that coca leaves are not part of the product, and further, coca tea (i.e. coca
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`leaves) is not an equivalent to Inca tea, and “Inca tea.” The Examining Attorney was
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`only able to locate one citation relating Inca tea to coca tea: a WebMD article
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`suggesting the author’s view that “coca” may be known as “Inca tea.”
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`The
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`Examining Attorney provided no evidence of probative value to establish that
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`consumers could find INCA or INCA TEA to be descriptive. Even assuming that “Inca
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`tea” deceptively and directly describes tea with coca leaves, Applicant provided
`
`evidence that such deception would not be plausible, as consumers would more
`
`regularly encounter tea containing coca so that they might assume a trademark with the
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`word “coca” in it for tea describes an attribute of the tea, and no such attribution can be
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`made with
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`.
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`
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`On July 1, 2014, a new Examining Attorney, Robert J. Struck, issued another
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`non-final Office Action, withdrawing the disclaimer requirement but refusing registration
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`under Section 2(d) of the Lanham Act for the first time. The Examining Attorney alleged
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`that the mark is likely to be confused with the mark INCA’S FOOD and design (
`
`),
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`the subject of U.S. Reg. No. 4,110,531 for:
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`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.
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`
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`Applicant responded on December 30, 2014 and argued that the Section 2(d)
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`refusal should be withdrawn, as the initial and subsequent examinations were
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`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,
`
` is blatantly different
`
`from
`
`in pronunciation, meaning, and commercial impression. Particularly, when
`
`compared side-by-side, Applicant’s mark includes concentric circles, with a landscape
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`4
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`

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`of mountains and a ribbon across the middle with the words “100% All Natural
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`Ingredients” written in the ribbon. The words INCA TEA and ORIGINAL appear between
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`the circles. In contrast, the cited mark includes the image of a person wear royal regalia
`
`and bearing the term INCA’S in the personal possessive form. Further, the 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
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`“tea” into evidence so as to delineate between the two terms.
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`
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`Applicant argued that the term INCA is suggestive, as the literal definition of Inca
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`is a member of an ancient South American Indian people that died in the early 1530s.
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`Additionally, the term INCA may refer to the language of the Incas, or as an adjective,
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`INCA connotes the quality of being native to the Andes, of having properties related to
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`the Andes region, and/or of having some quality related to the Incan people. Applicant
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`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
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`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.
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`
`
`On January 27, 2015, the Examining Attorney issued a Final Office Action,
`
`maintaining his Section 2(d) refusal. Namely, the Examining Attorney asserted the
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`dominant portions of the marks (INCA and INCA’S) are nearly identical, the difference in
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`generic wording (TEA ORIGINAL 100% ALL NATURAL INGREDIENTS and FOOD)
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`does not change the commercial impressions of the marks, and the design portions of
`
`the Applicant’s and the registrant’s marks do not change their commercial impression.
`
`The Examining Attorney further alleged that the term INCA is not diluted or weak.
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`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
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`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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`Action was inadvertent, and failure to issue and maintain the refusal would constitute
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`clear error.
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`
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`Applicant responded with a Request for Reconsideration after Final Action and
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`Notice of Appeal on July 27, 2015. Applicant asserted five arguments: 1) no actual
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`confusion has occurred; 2) Applicant’s family of marks calls for consistent examination;
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`3) the goods are distinctly different; 4) the marks have different connotations; and 5)
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`INCA is a weak trademark formative. As argued in the Request for Reconsideration,
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`Applicant has amended its identification of goods to clarify that its teas and tea blends
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`are comprised of purple corn, which grows only in Peru in the Peruvian Andes and has
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`been dubbed a “super food,” due to its phytonutrients and antioxidants. Unlike
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`Applicant’s goods, registrant’s goods only identified teas of the linden and chamomile
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`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
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`mark is
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`, 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
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`mark
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`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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`6
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`in direct contrast to
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`, which suggests a tea that may have been consumed by
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`certain groups of people.
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`
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`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
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`distinguish Class 5 third party marks by arguing that the cited registration is the only live
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`registration for non-medicated teas; however, the cited registrant’s linden and
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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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`In view of the request for reconsideration, the TTAB suspended the appeal on
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`July 27, 2015 and remanded the file to the Examining Attorney for consideration.
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`
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`The Examining Attorney denied the Request for Reconsideration on August 24,
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`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
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`issues in the Final Office Action. Essentially, the Examining Attorney did not deem all
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`the Applicant’s contentions persuasive.
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`Applicant transferred the subject application to Inca Tea LLC, an Ohio
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`Corporation, on October 6, 2015, which was recorded at the United States Patent and
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`Trademark Office Assignments Branch on October 6, 2015 at reel 5638, frame 0425.
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`
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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.
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`7
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`

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`4,819,749 on September 22, 2015. Applicant owns a family of INCA formative marks,
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`most of which have been approved for publication and/or registered for products and
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`services closely associated with tea. Particularly, the mark
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` is highly similar to the
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`applied-for mark, and the goods are very similar (i.e.
`
` relates to restaurant
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`services that sell tea readymade and boxed for use at home). The dominant portions of
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`both marks (INCA TEA) are identical. Moreover, both marks contain identical mountain
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`range images in concentric rings with the stylized wording INCA TEA between the
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`circles and disclaimed wording centered below.
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`
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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,
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`2016, asserting no actual confusion between Applicant’s mark and the cited registration
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`has occurred. Applicant argued that the lack of actual confusion is most evident given
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`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,
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`the registrant has a single social media account with much fewer followers, did not
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`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
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`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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`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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`
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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
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`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
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`of the goods and/or services and similarity of the trade channels of the goods and/or
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`services were the most relevant. On January 3, 2017, the Examining Attorney again
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`denied Applicant’s Request for Reconsideration.
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`
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`During these proceedings, Applicant was also pursuing registration for the word
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`mark INCA TEA (Ser. No. 85/886,550). The TTAB issued an opinion on February 3,
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`2017, affirming the Examining Attorney’s refusal of registration under Section 2(d). The
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`Examining Attorney had alleged a likelihood of confusion with
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`. A Request for
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`Reconsideration is pending.
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`
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`The court in Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
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`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
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`in determining a likelihood of confusion. Applicant submits that the differences in the
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`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
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`Applicant’s mark is different from that created by the cited mark. When viewed in their
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`entireties, as they must be,
`
` and
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`are entirely different.
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`ARGUMENT
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`The Examining Attorney has characterized Applicant’s mark
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` as being
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`unregisterable over the mark in U.S. Reg. No. 4,110,531, citing Section 2(d) of the
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`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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`Marks Must be Evaluated in Their Entireties
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`
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`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
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`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.
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`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
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`Examining Attorney has impermissibly focused on a few aspects of the mark while
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`blatantly disregarding others.
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`
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`Marks must be evaluated as they are perceived – in their entireties. In re Hearst
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`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. Comm’r of Patents, 252 U.S. 538 (1920)
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`10
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`

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`(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
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`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.
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`Miss Universe v. Cmty. Mktg., 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
`
`disclaimed terms to determine the level of similarity between them. See In re Shell Oil
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`Co., 992 F.2d 1204, 1206 (Fed. Cir. 1993). See also In re National Data Corp., 753 F.2d
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`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 the Applicant’s mark is similar to registrant’s mark
`
`because both contain the term INCA, and the differences in the marks are minor and do
`
`not change the commercial impression of the marks. The Examining Attorney further
`
`stated, “a trademark attorney may weigh the individual components of a mark to
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`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
`
`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
`
` mark
`
`apart and believe that the associated goods are sourced from the broad number of
`
`foods and beverages marked with
`
`. The respective terms INCA and INCA’S
`
`comprise minor elements of each mark, particularly Applicant’s mark, which also
`
`contains additional wording, shapes, and scenery.
`
`
`
`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.
`
`12
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`

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`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.
`
`
`
`Where the primary term is considered a weak mark, minor alterations could
`
`effectively negate any confusing similarity between the two. Freedom Sav. & Loan
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`Ass’n., 757 F.2d 1176, 1183 (C.A. Fla. 1985). Despite the Examining Attorney’s
`
`assertion in the January 27, 2015 Office Action that there only “minor differences”
`
`between Applicant’s mark 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.
`
`Indeed, several marks for tea and/or coffee were either pending or published on
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`13
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`the Register in addition to
`
` at the time of Applicant’s filing. Namely, INCA GOLD
`
`(Reg. No. 2,628,769) registered on October 1, 2002 and identified herbal teas for
`
`nutritional purposes (containing Maca herb) as claimed goods. Similarly, INCA INCHI
`
`(Reg. No. 3,185,896) registered on December 19, 2006, identifying “tea” as goods.
`
`However, Registrant did not file its application for
`
` until July 6, 2010, nearly a
`
`decade after INCA GOLD, and was allowed registration even though the mark
`
`
`
`clearly identifies “teas” as a good. While INCA INCHI has now been cancelled, both
`
`INCA GOLD and INCA INCHI were registered on the Principal Register with the INCA
`
`formative in connection with tea prior to
`
`, yet all the marks were allowed to
`
`coexist. As a result, Applicant’s mark entered a crowded field upon filing, in which
`
`multiple INCA formatives coexisted. The delay in examination allowed for certain
`
`trademark records to cancel or abandon. Apart from the initial refusal based on alleged
`
`descriptiveness – which was ultimately withdrawn – and the queries regarding cannabis
`
`– which were satisfied – the Examining Attorney was prepared to approve the mark for
`
`publication since the original Office Action stated, “[t]he trademark examining attorney
`
`has searched the Office’s database of registered and pending marks and has found no
`
`conflicting marks that would bar registration under Trademark Act Section 2(d).” See
`
`Office Action dated April 13, 2013 (emphasis added). The cited registrant’s mark was
`
`among those marks searched, and the Examining Attorney concluded there was no
`
`confusion.
`
`Applicant owns multiple INCA-containing marks across several food-related
`
`14
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`classes of goods and services. For example, Applicant owns
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` as stated above,
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`U.S. Ser. No. 86/457,184 for INCA POP published for opposition January 20, 2015, and
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`U.S. Ser. No. 86/457,218 for INCAN MEAL published for opposition April 7, 2015.
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`These represent only a small number of INCA marks in the food and beverage
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`category. Based on the number of INCA marks on the Principal Register, undoubtedly,
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`customers are accustomed to seeing other INCA marks in association with food and
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`beverages and would have no problem distinguishing sources from one another.
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`Specifically regarding
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` –which is registered–, Applicant sells its
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`
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`products through the services associated with
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`. “It is not unusual for restaurants
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`to be identified with particular food or beverage items that are produced by the same
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`entity that provides the restaurant services or are sold by the same entity under a
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`private label.” In re Coors Brewing Co., 343 F.3d 1340, 1346 (Fed. Cir. 2003). The very
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`fact that Applicant sells its
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` products in Applicant’s restaurants registered under
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` is indicative of a strong nexus between the restaurant services and goods. “The
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`fact that applicant’s restaurant serves the type of goods (indeed the actual goods)
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`identified in the cited registration is certainly probative evidence which supports a
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`finding . . . that applicant’s services and [registrant’s] goods are related.” In re Opus One
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`Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). Therefore, given that
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` goods are sold
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`in conjunction with Applicant’s registered
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` restaurant services, Applicant’s mark
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`should also be allowed to exist on the Principal Register.
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`As the Board stated in In re Inca Tea, LLC:
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`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 the 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.
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`Ser. No. 85/886,550 at 13 (Feb. 3, 2017) (citing Anthony’s Pizza & Pasta Int’l Inc. v.
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`Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009), aff’d, 415 Fed.
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`Appx. 222 (Fed. Cir. 2010) (quoting Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283
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`(TTAB 1983))) (emphasis added).
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`
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`Applicant’s mark depicts the scenic Andes mountains centered within two
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`concentric circles. The wording associated with the mark is partially depicted in stylistic
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`text within the concentric circles and above the Andes Mountains, while most of the text
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`is displayed in a ribbon that runs across the bottom of the design. However, the
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`registrant’s mark consists only of stylized text centered above a tumi. As such,
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`Applicant’s mark should not be barred from registration, as there is not even a passing
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`resemblance to registrant’s mark, let alone a striking resemblance. Such a minimal
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`resemblance would not cause one seeing
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` to assume that there is some
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`connection, association, or sponsorship between
`
` and
`
`.
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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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`16
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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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`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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`The marks
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` and
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`only share a single initial syllable. When one says
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`the words of the marks aloud, one hears INN KAH TEE OH RIDGE INN ALL WON HUN
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`DRED PER SENT ALL NATCH ER ALL INN GREE DEE ENTZ 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” versus “INCA’S” as similar
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`enough to find a likelihood of confusion. The latter seventeen syllables in Applicant’s
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`mark are enough to provide a new and relevant dimension to the sound of the mark.
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`The marks in their entireties do not sound alike.
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`17
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`The Marks are Different in Appearance and Commercial Impression
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`
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`Similarly, the marks
`
` and
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`do not look the same. The cited mark
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`includes highly stylized text and an image of a tumi, while Applicant’s mark is a
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`depiction of the Andes Mountains in two concentric circles, surrounded by and overlaid
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`with stylized text. The impression of registrant’s mark is that “food” included in the mark
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`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 that are totally absent
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`from Applicant’s mark. The cited registration particularly calls to mind food that belongs
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`to Incas, namely Inca nobility, while Applicant’s mark has no such connotation, instead
`
`18
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`

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`implying tea of Incan origin, given the depicted Andes mountain range.
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`
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`Indeed, Applicant’s mark further contains the wording ORIGINAL 100% ALL
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`NATURAL INGREDIENTS beyond the first two words, which indicate the type and
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`quality of product a consumer will expect to receive. While these words are disclaimed,
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`as stated above, courts look to the mark as a whole, including any disclaimed terms to
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`determine the level of si