Mark for coffee house likely to cause confusion with coffee certification mark

United States of America

In In re Accelerate sal (Serial No 77522433, February 22 2012), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has affirmed the examining attorney’s refusal to register the mark COLOMBIANO COFFEE HOUSE on the grounds that it was merely descriptive and that it was likely to cause confusion with a previously registered certification mark.

Accelerate sal applied to register the trademark COLOMBIANO COFFEE HOUSE (with a disclaimer of 'coffee house') in connection with “providing food and drink” services. The examining attorney refused registration of the mark on two statutory grounds. Registration was refused under Section 2(d) of the Trademark Act based on a likelihood of confusion with the previously registered certification mark COLOMBIAN for “coffee”. Registration was also refused under Section 2(e)(1) on the grounds that the mark was merely descriptive of the claimed services in the application.

Initially, the TTAB confirmed that the test for determining likelihood of confusion is the same with respect to certification marks as to other marks.  However, because the certification mark owner does not itself use the certification mark, the TTAB considers the use of the certification mark by the authorised users when analysing likelihood of confusion.

Next, in reviewing the applicant’s mark, the TTAB easily found that the dominant element of the mark was 'Colombiano' – it appears first in the mark followed by only the disclaimed and generic wording 'coffee house'. With that starting point, the TTAB found that the respective marks COLOMBIANO COFFEE HOUSE and COLOMBIAN were overall very similar in appearance, sound, commercial impression and connotation, taking into account that 'Colombiano' is the Spanish equivalent of the English word 'Colombian'. 

As to the involved goods and services, the TTAB acknowledged that, under TTAB precedent, food items and restaurant services are not automatically considered to be related for likelihood of confusion purposes, and that “something more” is required. Here, the inclusion of 'coffee house' in the applicant’s mark, the dictionary definition of record showing that 'coffee house' refers to a “restaurant where coffee… [is] served”, the applicant’s own website showing that it is in the business of providing “coffee house” services, as well as copies of third-party registrations covering both restaurant services and coffee beverages, were enough to satisfy the “something more” requirement. On that basis, the TTAB found that the applicant’s services are sufficiently related to the registrant’s coffee to cause a likelihood of confusion. 

After considering other relevant factors, the TTAB concluded that purchasers encountering the applicant’s mark in connection with its services would likely believe that the applicant is licensed or otherwise authorised to use the registrant’s certification mark or that the applicant is otherwise associated with the owner of the certification mark.

The TTAB also affirmed the descriptiveness refusal of the COLOMBIANO COFFEE HOUSE mark. The TTAB found that the mark immediately described the nature, or a key feature, of the applicant’s services – that is, a “coffee house” where “Colombian” coffee is served. In support of its conclusion, the TTAB again relied on the dictionary definition of 'coffee house' and the fact that the English equivalent of 'Colombiano' is 'Colombian', as well as evidence establishing that Colombia is renowned for coffee and coffee beans of certain characteristics, and that coffee made from those beans is commonly referred to as 'Colombian' coffee. 

Susan M Natland and Michael T Richmond, Knobbe Martens Olson & Bear LLP, Irvine

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