THIS OPINION IS NOT A
`PRECEDENT OF THE TTAB
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`Mailed:
`August 3, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
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`Trademark Trial and Appeal Board
`_____
`
`In re Inca Tea, LLC
`_____
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`Serial No. 85886579
`_____
`
`Sandra M. Koenig and Rachel A. Smoot of Fay Sharpe LLP for Inca Tea, LLC.
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`Robert J. Struck, Trademark Examining Attorney, Law Office 109
` (Michael Kazazian, Managing Attorney).
`_____
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`Before Bergsman, Masiello, and Hightower, Administrative Trademark Judges.
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`Opinion by Masiello, Administrative Trademark Judge:
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` Inca Tea, LLC (“Applicant”) filed an application for registration on the Principal
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`Register of the mark shown below for “Teas comprised of purple corn; tea blends
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`comprised of purple corn,” in International Class 30.1
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`1 Application Serial No. 85886579 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.
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`

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`Serial No. 85886579
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`
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`Applicant disclaimed the exclusive right to use TEA, 100% ALL NATURAL
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`INGREDIENTS, and ORIGINAL apart from the mark as shown. Color is not
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`claimed as a feature of the mark. The application describes the design elements as
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`“a sketch of mountains inside three concentric circles”; “a curved banner ribbon”;
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`and “a horizontal row of three stars …below the banner ribbon.”
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` The Trademark Examining Attorney refused registration under Section 2(d) of the
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`Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
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`in connection with Applicant’s goods, so resembles the registered mark shown below
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`as to be likely to cause confusion, or to cause mistake, or to deceive.2
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`2 Reg. No. 4110531, issued March 13, 2012.
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`2
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`

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`Serial No. 85886579
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`The cited mark is registered for “teas, namely, linden and chamomile,” as well as a
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`variety of other foods in International Classes 29 and 30.3 Registrant has disclaimed
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`the exclusive right to use FOOD apart from the mark as shown. The Registration
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`describes the figure depicted in the mark as “an upper portion of a Tumi, a
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`ceremonial knife of the pre-Incan cultures of Peru.” Color is not claimed as a feature
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`of the mark.
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` When the refusal was made final, Applicant appealed to this Board and filed three
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`requests for reconsideration. On remand, the Examining Attorney denied each of
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`them, and this appeal proceeded. Applicant and the Examining Attorney have filed
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`briefs.
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` Our determination under Section 2(d) is based on an analysis of all of the
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`probative facts in evidence that are relevant to the factors bearing on the issue of
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`likelihood of confusion as set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d
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`1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
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`key considerations are the similarities between the marks and the similarities
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`between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper
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`Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant and the
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`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.
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`
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`3
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`

`

`Serial No. 85886579
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`Examining Attorney have also presented evidence and arguments regarding trade
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`channels and the number and nature of similar marks in use in the marketplace.
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`(a)
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`The goods.
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` We will first consider the similarity or dissimilarity of the goods as identified in
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`the application and the cited registration. Stone Lion Capital Partners, LP v. Lion
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`Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014); Octocom
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`Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
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`(Fed. Cir. 1990). Applicant’s goods are teas and tea blends composed of purple corn.
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`Registrant’s goods include, among other things, “teas, namely, linden and
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`chamomile.” The goods are similar in nature, in that they are all teas; however,
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`they are not identical, and Applicant’s goods, in particular, are somewhat unusual
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`in that they are corn-based teas.
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` Applicant has submitted evidence regarding the nature of its business, which
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`shows that Applicant offers a variety of teas. Applicant produces a “Peruvian Spiced
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`Berry” tea under the mark.4 Applicant’s website indicates that the ingredients of
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`Peruvian Spiced Berry tea are “hibiscus petals, elderberries, currants, purple corn,
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`apple pieces, cinnamon, cloves and natural flavors.”5 Other flavors of tea offered
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`under the mark include “PICK ME UP PEACH,” a “combination of white tea, lush
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`peaches and sweet herbs”; “MOUNTAIN OF MANGO,” a “blend of mango, sweet herbs,
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`and citrus flavors”; and “TAWANTIN BLACK TEA,” a “combination of three quality
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`4 Applicant’s response of May 21, 2014 at 8. See also Response of May 20, 2016 at 34.
`5 Office Action of January 27, 2015 at 6-7.
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`4
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`

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`Serial No. 85886579
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`black tea leaves and purple corn.”6 Applicant’s Twitter page includes a posting by
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`Applicant that appears to indicate that Applicant offers a tea that combines purple
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`corn with chamomile:
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`Cusco Chamomile is a soothing blend of Chamomile,
`Purple Corn, Blood orange, vanilla & Citrus. #yummy
`#organic.7
`Applicant’s Facebook page includes an image of “Pachama Green” tea bearing the
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`mark.8 The fact that Applicant itself markets herbal teas, fruit teas, green tea and
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`black tea under the mark indicates that purple corn tea is commercially related to
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`other forms of tea.
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` In order to demonstrate that the goods of Applicant and Registrant are related,
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`the Examining Attorney has submitted evidence from the Internet showing that
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`various types of teas and herbal teas have been marketed under the same mark.
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`Examples follow:
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`BRAND
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`TYPES OF TEA
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`ASSI
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`BADIA
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`Roasted corn tea; roasted barley tea.9
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`Chamomile, eucalyptus, green, linden, mint, anise, and yerba
`mate teas.10
`
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`GOOD NATURE Chamomile tea, linden blossom tea, elderflower tea, and rose hip
`and hibiscus tea.11
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`
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`6 Request for Remand of October 23, 2015 at 17.
`7 Applicant’s response of May 20, 2016 at 56.
`8 Response of May 20, 2016 at 25.
`9 Office Action of January 3, 2017 at 3-10.
`10 Office Action of January 27, 2015 at 8-9.
`11 Id. at 10-11.
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`5
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`Serial No. 85886579
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`LIPTON
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`Chamomile tea; Green tea; white tea; orange blossom hibiscus
`tea; jasmine tea; ginseng tea; purple acai blueberry tea.12
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`Chamomile tea, green tea, Darjeeling tea.13
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`TAZO
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`TEAVANA
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`Chamomile, peach, peach-berry-jasmine, mango-black tea,
`white, black, oolong, green, jasmine.14
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`This evidence, combined with the fact that Applicant itself offers its purple corn tea
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`alongside peach, mango, black and green teas under the same mark, indicates a
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`strong commercial relationship between the goods of Applicant and Registrant.
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` The record indicates that Applicant’s and Registrant’s goods are similar in
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`another way, inasmuch as both are perceived as having healthful benefits. See the
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`articles, “The Healing Properties of Purple Corn” and “The Potential Health
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`Benefits of Purple Corn,”15 which extol the corn as “Packed with Phytonutrients and
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`Antioxidants.” Applicant makes similar health claims in its brief.16 Compare to the
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`article “Chamomile Health Benefits,”17 which states that “Both the fresh and dried
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`flowers of chamomile have been used to create teas for centuries to cure a number of
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`health problems”; and indicates that chamomile tea can be used to treat insomnia,
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`anxiety, skin conditions, and cramps. See also “Linden Tea” and “Benefits of Linden
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`12 Office Action of August 24, 2015 at 4-17.
`13 Id. at 23.
`14 Id. at 32, 39, 42, 44-46, 51, 61.
`15 Applicant’s response of July 27, 2015 at 13-18.
`16 Applicant’s brief at 22, 18 TTABVUE 23 (“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 Applicant’s response of July 27, 2015 at 20-21.
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`6
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`

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`Serial No. 85886579
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`Flower Tea,”18 which discuss “medicinal properties” and “traditional uses ... to help
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`treat flu or cough, or to relieve nervous tension and digestive problems.” Applicant’s
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`Facebook page also touts the health benefits of its product:
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`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
`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
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`Registrant are commercially related, such that if they were offered under similar
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`marks, customers would believe that they could come from the same source.
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`Accordingly, the du Pont factor of the similarity or dissimilarity of the goods weighs
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`in favor of a finding of likelihood of confusion.
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` (b) Trade channels.
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` With respect to trade channels, the Examining Attorney has shown that herbal
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`teas like chamomile and linden tea can be purchased online through the websites of
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`supermarkets such as Harris Teeter, Safeway, and Peapod by Giant.21 Applicant’s
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`website shows that Applicant offers its tea through its own café located in the
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`18 Id. at 23-26; see also id. at 32.
`19 Applicant’s response of May 20, 2016 at 15.
`20 Id. at 23.
`21 Office Action of August 24, 2015 at 69-97.
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`7
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`

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`Serial No. 85886579
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`Cleveland airport22 and has sought to place its goods with the supermarkets Whole
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`Foods23 and Heinen’s Grocery Store,24 and the home accessories store Bed Bath &
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`Beyond.25 It is also clear that Applicant has sought to publicize its product through
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`a wide range of media. There are obvious similarities between channels such as
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`Whole Foods and Harris Teeter, and supermarkets like Safeway, Giant and
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`Heinen’s. Moreover, because there are no limitations as to trade channels in the
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`identifications of goods in the application and the cited registration, we presume
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`that the goods move in all normal channels of trade for such goods. Coach Servs.
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`Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir.
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`2012). The teas of Applicant and Registrant are types of goods that would normally
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`be offered in food stores and they are, in fact, offered in similar food outlets. We see
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`substantial overlap between the established and likely to continue trade channels of
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`Applicant and Registrant. This du Pont factor favors a finding of likelihood of
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`confusion.
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`(c)
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`Similar marks in use.
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` Applicant contends that the INCA portion of Registrant’s mark is weak and
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`entitled only to a narrow scope of protection because there are many marks that
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`include the term INCA or its purported equivalent INKA in use in the marketplace.
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`22 Response of May 20, 2016 at 17, 29-30.
`23 Id. at 19-20.
`24 Id. at 21, 34-35.
`25 Id. at 27, 30, 34.
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`8
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`

`

`Serial No. 85886579
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`Applicant has submitted copies of a number of U.S. registrations,26 showing
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`registration of the following marks for the goods and services indicated:27
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`Reg. No. Mark
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`4186935
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`3939703
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`0731229
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`INCA KOLA
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`4615976
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`Relevant Goods and
`Services
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`Coffee, coffee substitutes,
`coffee-based beverage,
`vegetal preparations for
`use as coffee substitutes
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`“Non-alcoholic beverages
`derived from grains,
`fruits, and spices, namely,
`cocktail bases, fruit-juice
`beverages, and punch”
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`“Soft drinks”
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`“Roasted corn”
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`4048013
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`IMPERIAL INKA QUINOA THE
`ORIGINAL
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`“Processed quinoa”
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`26 Response of October 11, 2013 9-34; 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.
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`9
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`

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`Serial No. 85886579
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`4048012
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`2754267
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`INCA RED
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`4054809
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`TIERRA DEL INCA
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`INCA SWEETS PERUVIAN SWEET
`ONIONS
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`INCA GOLD
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`3901100
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`3518101
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`4001479
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`3590002
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`INCA
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`10
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`“processed quinoa, sesame
`seeds, namely, roasted
`and ground sesame seeds”
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`“unprocessed grains for
`eating”
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`Beans, bean paste, rice,
`gravies, seasoning mixes
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`“fresh sweet onions”
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`“Beer”
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`“Wine”
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`“Wine”
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`Serial No. 85886579
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`4819749
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`“Restaurant services”
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`4010851
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`4298601
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`3959490
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`2628769
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`INCA GOLD
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`3989204
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`INCA BEAN SALAD
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`4555207
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`11
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`“Restaurants”
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`“restaurant, carry-out food
`and bar services”
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`“restaurant, carry-out food
`and bar services”
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`Herbal supplements,
`dietary supplements,
`nutritional supplements
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`“pet food, namely, bird
`food”
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`Cocoa, chocolate, chocolate
`substitutes, confectionery,
`pastry, ices, candy.
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`Serial No. 85886579
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`4559345
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`INCA LINK
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`Charitable services,
`volunteer programs,
`compassion ministry
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` Evidence of extensive registration and use by others of a term on the same or very
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`similar goods can be “powerful” evidence of weakness. See Jack Wolfskin
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`Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
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`797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v.
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`GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). The
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`purpose of introducing third-party uses is to show that customers have become so
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`conditioned by a plethora of such similar marks that they have been educated to
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`distinguish between different marks on the basis of minute distinctions. Palm Bay
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`Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
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`73 USPQ2d 1689 (Fed. Cir. 2005).
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` In this case, Applicant’s evidence of purported weakness is not particularly
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`persuasive. None of the third-party registrations relates to tea, so they are, at best,
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`of peripheral relevance to the strength or weakness of a mark in the field of tea.
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`Further, Applicant has not presented evidence showing that the third-party marks
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`are in actual use, but only that they are registered. While we may assume that use-
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`based registrations issued only after their owners asserted to the USPTO that the
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`marks were in use, the registrations themselves do not directly demonstrate that
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`the marks are in fact present in the marketplace, the extent to which they have
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`been used, or the extent to which customers have been exposed to them. See Palm
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`12
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`

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`Serial No. 85886579
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`Bay v. Veuve Clicquot Ponsardin, 73 USPQ2d at 1693 (quoting Scarves by Vera, Inc.
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`v. Todo Imports, Ltd., 544 F.2d 1167, 192 USPQ 289, 294 (2d Cir. 1976) (“The
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`significance of third-party trademarks depends wholly upon their usage. Defendant
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`introduced no evidence that these trademarks were actually used by third parties,
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`that they were well promoted or that they were recognized by consumers.”)).
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`Nevertheless, the third-party marks are probative with respect to the suggestive
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`meaning of the word INCA. Juice Generation v. GS Enters., 115 USPQ2d at 1675.
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`The registrations demonstrate that INCA suggests a connection with Peru or South
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`America where the Inca civilization once flourished.
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` The evidence submitted by Applicant does not rise to the level of demonstrating
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`that third-party use of the term INCA is so widespread as to “condition” the
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`consuming public such that customers are used to seeing marks containing the term
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`INCA for tea, undermining the strength of Registrant’s mark. However, in view of
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`the suggestive nature of INCA, Registrant’s mark is not entitled to such a broad
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`scope of protection that it will bar the registration of every mark comprising, in
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`whole or in part, the word INCA. It will bar the registration of marks “as to which
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`the resemblance to [Registrant’s mark] is striking enough to cause one seeing it to
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`assume that there is some connection, association or sponsorship between the two.”
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`Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271,
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`1278 (TTAB 2009), aff’d, 415 Fed. Appx. 222 (Fed. Cir. 2010) (quoting Pizza Inn,
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`Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983)).
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`13
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`

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`Serial No. 85886579
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`The marks.
`(d)
` We next consider the similarity or dissimilarity of the marks in their entireties as
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`to appearance, sound, connotation and commercial impression. See Palm Bay v.
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`Veuve Clicquot 73 USPQ2d at 1689. “The proper test is not a side-by-side
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`comparison of the marks, but instead ‘whether the marks are sufficiently similar in
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`terms of their commercial impression’ such that persons who encounter the marks
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`would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
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`Triumph Learning LLC, 101 USPQ2d at 1721.
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` The marks are similar in appearance, sound and meaning to the extent that each
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`includes the word INCA. Aside from this point of similarity, there are many
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`differences between the two marks. The wording TEA, ORIGINAL, and 100% ALL
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`NATURAL INGREDIENTS in Applicant’s mark, and the word FOOD and the
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`possessive ’S in Registrant’s mark all affect the marks’ appearance, sound, and
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`meaning, although we appreciate that customers will perceive a relationship in
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`meaning between TEA and FOOD. The graphic style and design elements of the
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`marks are also very different. The wording in Registrant’s mark is presented in a
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`very unusual typeface. The design, which might be perceived as a representation of
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`a human figure or of the handle of a “Tumi, a ceremonial knife of the pre-Incan
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`cultures of Peru,”28 is geometrically complex and presented in a two-dimensional,
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`schematic manner. In Applicant’s mark, the lettering resembles typical modern
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`typefaces. The central design element represents a view of mountains, presented in
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`28 See the description of the mark in the Registration.
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`14
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`

`

`Serial No. 85886579
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`perspective (i.e., with the illusion of three dimensions); and the entire mark is
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`organized within concentric circular carriers with a banner and the added feature of
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`three stars. In overall visual style, the two marks are very different.
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` Turning to the overall commercial impressions created by the marks, both share
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`the suggestion of a connection with Peru or South America arising from the common
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`term INCA. However, Registrant’s mark, with its flat, geometric image of an
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`ancient artifact and unusual lettering, creates an impression of antiquity, while
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`Applicant’s mark creates a more modern impression. The image of the mountain
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`peak in Applicant’s mark, combined with the wording 100% ALL NATURAL and
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`TEA, suggests mountain-grown tea; while the design of Registrant’s mark,
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`combined with the word FOOD, engenders the impression of an ancient civilization
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`and perhaps food of a South American type.
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` The Examining Attorney has ably argued that, for many reasons, the term INCA
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`should be considered the dominant element of both marks at issue. We agree that
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`the term INCA plays a special role in each mark. However, we must consider the
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`marks in their entireties and, in this case, there are so many differences between
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`the marks in appearance, sound, meaning, and overall commercial impression that
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`we find them dissimilar. Accordingly, the du Pont factor of the similarity or
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`dissimilarity of the marks weighs against a finding of likelihood of confusion.29
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`29 This case is distinguishable from the Examining Attorney’s refusal to register Applicant’s
`word mark INCA TEA on the basis of the same cited registration, which we affirmed. In re
`Inca Tea, LLC, Serial No. 85886550 (Feb. 3, 2017).
`
`
`
`15
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`

`

`Serial No. 85886579
`
`(e)
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`Conclusion.
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` We have considered all of the arguments and evidence of record, including those
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`not specifically discussed herein, and all relevant du Pont factors. The goods at
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`issue are similar in nature, are commercially closely related, and travel through
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`similar channels of trade. On the other hand, we have found the marks to be
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`dissimilar in overall commercial impression, and we have found their common
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`element, INCA, to be suggestive and therefore somewhat weak. Overall, we find
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`that confusion is not likely as to the source of Applicant’s goods.
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` Decision: The refusal under Section 2(d) is REVERSED.
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`
`16
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`