Tulip International, Inc.

Trademark Trial and Appeal Board

Jan 28, 2013

No. 76696276 (T.T.A.B. Jan. 28, 2013)

Mailed: 1/28/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tulip International, Inc.
________

Serial No. 76696276
_______

Timothy J. Zarley of Zarley Law Firm for Tulip International,
Inc.

Brian Brown, Trademark Senior Attorney, Law Office 102 (Karen M.
Strzyz, Managing Attorney).
_______

Before Quinn, Grendel and Gorowitz,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Tulip International, Inc. filed, on March 12, 2009, an
application to register the mark shown below

for “nonalcoholic drinks, namely, citron juice, jujube drink,
Chinese quince juice, aloe vera juice, aloe vera drink, apple
juice, pomegranate drink, lemon juice, carrot juice, soft drinks
containing ginger, soft drinks containing ginseng, soft drinks
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser. No. 76696276

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containing Korean ginseng, soft drinks containing red ginseng,
soft drinks containing Korean mountain ginseng” in International
Class 32.1
The 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, when used in connection with applicant’s
goods, so resembles the previously registered mark ACE (in
standard characters) for “beverages, namely, soft drinks;
carbonated soft drinks; carbonated energy drinks; carbonated
fruit juice drinks; soft drinks, carbonated soft drinks,
carbonated energy drinks, and carbonated fruit juice drinks all
enhanced with vitamins, minerals, nutrients, amino acids, and/or
herbs” in International Class 32 as to be likely to cause
confusion.2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues that the marks are different in
appearance, and convey different commercial impressions inasmuch
as its mark includes the term “FARM,” stylized lettering and
design features. Applicant also contends that “ACE” is commonly

1 Application Serial No. 76696276, filed March 12, 2009, alleging first
use anywhere and first use in commerce on July 28, 2007. The
application includes the following description of the mark: “The mark
consists of the underlined phrase ACE FARM against a jagged edge
background. The ‘A’ in ‘ACE’ contains the design of grass and the ‘R’
in ‘FARM’ contains leaves.”
2 Registration No. 3573936, issued February 10, 2009.
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used in trademarks for beverages. As for the goods, although
applicant recognizes that “both [are] generally directed to
drinks,” there are “meaningful differences” between the goods.
Applicant states that registrant’s goods, with the exception of
“carbonated fruit juice drinks,” are directed to soft drinks and
energy drinks in general, as well as drinks enhanced with
vitamin and nutrient additives, whereas applicant’s drinks are
nonalcoholic, specific types of juices or drinks containing
natural additives, which are “uniquely Asian or Korean
products.” (Brief, p. 16). Applicant has introduced excerpts
retrieved from its website and registrant’s website.
The examining attorney maintains the marks are similar in
that both share the identical term “ACE,” and that the inclusion
of “FARM” in the literal portion of applicant’s mark is
insufficient to distinguish the marks in view of the latter
term’s routine use in the industry. Insofar as the goods are
concerned, the examining attorney asserts that they are related,
and that registrant’s juice and soft drink descriptions are
broad enough to encompass applicant’s more specific juice and
soft drink beverages. In support of his arguments, the
examining attorney submitted dictionary definitions, third-party
registrations, and portions of third-party websites.
Before turning to the substantive merits of the appeal, we
direct our attention to an evidentiary matter. Applicant, in
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its November 18, 2009 response, referred to a list of third-
party registrations of marks comprising in part the term “ACE”
for beverages. The listing provides relevant information about
the registrations, with applicant referring to this material as
“printouts from the PTO website.” So as to be clear, however,
applicant did not submit actual hard copies of the referenced
registrations.
In a responsive notice of suspension mailed on December 20,
2009, the examining attorney stated the following: “The
applicant should note that the registrations discussed in the
response were not considered. Third-party registrations may be
made of record when accompanied by legible, soft copies of the
registrations themselves or the electronic equivalent thereof,
i.e. printouts of the registrations from the electronic records
of the Patent and Trademark Office’s automated search system.”
(citation omitted).
During the remainder of prosecution, applicant did not
submit copies of the referenced registrations. The examining
attorney, in her brief (unnumbered p. 7, n.4), again noted this
failure, reiterating that the mere submission of a list of
registrations does not make the registrations of record.
Applicant’s reply brief is silent on this evidentiary point.
The examining attorney’s position is correct. See TBMP §
1208.02 (3d ed. rev. June 2012). To make a third-party
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registration of record, a copy of the registration, either a
copy of the paper USPTO record, or a copy taken from the
electronic records of the Office, should be submitted during
prosecution/examination of the application. In re Jump Designs
LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006). Mere listings of
registrations, as applicant has done in this case, are not
sufficient to make the registrations of record. In re Hoefflin,
97 USPQ2d 1174, 1177 (TTAB 2010). The examining attorney
advised applicant of this failure during examination, yet
applicant did not cure the defect. Accordingly, the third-party
registrations of ACE marks are not of record, and this evidence
has not been considered.
We now turn to the likelihood of confusion issue. 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. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). See also, In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences
Ser. No. 76696276

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in the essential characteristics of the goods and differences in
the marks”).
We first turn to consider the second du Pont factor
regarding the similarity/dissimilarity between the goods. It is
not necessary that the respective goods be competitive, or even
that they move in the same channels of trade to support a
holding of likelihood of confusion. It is sufficient that the
respective goods are related in some manner, and/or that the
conditions and activities surrounding the marketing of the goods
are such that they would or could be encountered by the same
persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief that
they originated from the same entity. In re Melville Corp., 18
USPQ2d 1386 (TTAB 1991). The issue, of course, is not whether
purchasers would confuse the goods, but rather whether there is
a likelihood of confusion as to the source of the goods. In re
Rexel Inc., 223 USPQ 830 (TTAB 1984).
When comparing the goods, the respective identifications in
the application and the cited registration control the analysis.
In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
Applicant’s identification of goods reads “nonalcoholic drinks,
namely, citron juice, jujube drink, Chinese quince juice, aloe
vera juice, aloe vera drink, apple juice, pomegranate drink,
lemon juice, carrot juice, soft drinks containing ginger, soft
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drinks containing ginseng, soft drinks containing Korean
ginseng, soft drinks containing red ginseng, soft drinks
containing Korean mountain ginseng”; registrant’s identification
reads “beverages, namely, soft drinks; carbonated soft drinks;
carbonated energy drinks; carbonated fruit juice drinks; soft
drinks, carbonated soft drinks, carbonated energy drinks, and
carbonated fruit juice drinks all enhanced with vitamins,
minerals, nutrients, amino acids, and/or herbs.”
Registrant’s identification includes the broadly worded
“soft drinks,” which encompasses applicant’s “soft drinks
containing ginger, soft drinks containing ginseng, soft drinks
containing Korean ginseng, soft drinks containing red ginseng,
soft drinks containing Korean mountain ginseng.” Thus, to that
extent, the goods are legally identical for purposes of our
comparison. Further, registrant’s “carbonated fruit juice
drinks” and “carbonated fruit juice drinks all enhanced with
vitamins, minerals, nutrients, amino acids, and/or herbs” are
highly similar, if not virtually identical to applicant’s
“Chinese quince juice, apple juice, pomegranate drink, [and]
lemon juice.” The examining attorney’s evidence also shows that
energy drinks, a beverage listed in registrant’s identification,
often include as an ingredient the herb ginseng, an ingredient
specifically listed in several of applicant’s beverages.
Ser. No. 76696276

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Because the goods identified in the application and the
cited registration are in-part identical, we must presume that
the channels of trade and classes of purchasers are the same.
See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)
(“Given the in-part identical and in-part related nature of the
parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,
these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade.”); and
In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be presumed
to travel in the same channels of trade, and be sold to the same
class of purchasers.”). Further, we note that there are no
limitations in either applicant’s or registrant’s identification
of goods. Thus, given that the identifications are legally
identical to the extent that both include soft drinks and fruit
juice drinks, the beverages are presumed to move through the
same trade channels (e.g., grocery stores, natural food stores,
and the like), and are presumed to be purchased by the same
classes of purchasers, including ordinary consumers.
Further, the types of beverages involved in this appeal are
relatively inexpensive (as shown by the examining attorney’s
Internet evidence) and would be subject to frequent replacement
and impulse purchase. In such circumstances, the likelihood of
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confusion is increased. See Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) (“When products are
relatively low-priced and subject to impulse buying, the risk of
likelihood of confusion is increased because purchasers of such
products are held to a lesser standard of purchasing care.”).
The identity or otherwise high similarity between the
goods, trade channels and classes of purchasers, as well as the
conditions of sale, weigh heavily in favor of a finding of
likelihood of confusion.
We next turn to the first du Pont factor focusing on the
similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. In
re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In
comparing the marks, we are mindful that the test is not whether
the marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando Electric
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196
USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086
(Fed. Cir. June 5, 1992). The proper focus is on the
recollection of the average customer, who retains a general
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rather than specific impression of the marks. Winnebago
Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344
(TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975). Moreover, In comparing the marks, we are
mindful that where, as here, the goods are legally identical in
part, the degree of similarity necessary to find likelihood of
confusion need not be as great as where there is a recognizable
disparity between the goods. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007); and Schering-Plough HealthCare Products
Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
It is well settled that one feature of a mark may be more
significant than another, and it is not improper to give more
weight to this dominant feature in determining the commercial
impression created by the mark. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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. Indeed, this type of analysis
appears to be unavoidable.”).
Where both words and a design comprise the mark (as in
applicant’s mark), then the words are normally accorded greater
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weight because the words are likely to make an impression upon
purchasers, would be remembered by them, and would be used by
them to request the goods and/or services. CBS, Inc. v. Morrow,
708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in a
composite mark comprising a design and words, the verbal portion
of the mark is the one most likely to indicate the origin of the
goods to which it is affixed”); In re Appetito Provisions Co., 3
USPQ2d 1553, 1554 (TTAB 1987); and Kabushiki Kaisha Hattori
Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). See also
Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565,
218 USPQ 390 (Fed. Cir. 1983). In applicant’s mark, the literal
portion of the mark, namely ACE FARM, is the dominant portion,
and is accorded greater weight over the design features when
comparing this mark to the cited mark ACE.
Applicant and the examining attorney then spar over the
significance of FARM in applicant’s mark. Applicant argues that
the addition of “FARM” gives its mark a different connotation,
namely that the products sold thereunder are natural or contain
natural ingredients, whereas the examining attorney contends
that “FARM” is diluted, thereby diminishing the source-
identifying role of this word in the mark.
The word “ACE” in the literal portion of applicant’s mark
is dominant over “FARM”; it is the first word, and is the one
most likely to be impressed upon a purchaser’s mind. See Presto
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Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB
1988). The second word, “FARM,” is subordinate. As shown by
the examining attorney’s third-party registration and website
evidence, the word “FARM” or “FARMS” is commonly adopted as a
part of trademarks for fruit beverages, presumably to suggest
the idea of being natural and fresh.
Although the dominant portion of applicant’s mark is very
similar to the entirety of registrant’s mark, we must, of
course, compare the marks in their entireties. When we make
this comparison, we find that the marks are very similar in
sound, ACE versus ACE FARM. As to meaning, the word “FARM” and
the grass/leaf design features of applicant’s mark serve to
suggest that applicant’s goods are natural and fresh, a
connotation that is missing from the cited mark. Further, these
additions give applicant’s mark a different appearance from that
of registrant’s standard character mark. However, despite the
specific differences between the marks ACE and ACE FARM and
design, the inclusion of the distinctive word ACE engenders
similar overall commercial impressions, particularly since the
marks are used in connection with identical and/or highly
similar goods.
The similarity between the marks is a factor that weighs in
favor of a finding of likelihood of confusion.
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In sum, the relevant du Pont factors weigh in favor of
affirming the refusal. We conclude that consumers familiar with
registrant’s beverages, including soft drinks and fruit juice
drinks sold under the mark ACE would be likely to believe, upon
encountering applicant’s mark ACE FARM and design for soft
drinks containing herbs and fruit juice drinks, that the goods
originated with or are somehow associated with or sponsored by
the same entity.
To the extent that any of applicant's points raises a doubt
about likelihood of confusion, that doubt is required to be
resolved in favor of the prior registrant. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and
In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.