The evaluation of similarity of goods and/or services that belong to the food and beverage industries, even if the goods subject to examination are the same, may differ in the IP offices of different geographies according to the social consumption habits. For example; even though the similarity of olives, which is widely consumed for breakfast in Turkey, and cheese, which is another major Turkish breakfast product, can be strongly argued in Turkey, the same argument will probably not hold true for many other countries.
Since the United States Patent and Trademark Office (USPTO) Appeal Board decision, which will be cited in this article, is related to goods which cannot possibly be regarded as similar in Turkey, it can be considered as an example in which our claim above becomes concrete.
Cooper Moon Coffee LLC (applicant) filed an application with USPTO for registration of the word mark “BEAN BLOSSOM” for “Coffee but not including alcoholic beverages” included in Class 30.
BEAN BLOSSOM
The USPTO refused the application on the grounds that there is a likelihood of confusion with the earlier registered word mark “BEANBLOSSOM“, which covers “hard cider” in Class 33.
BEANBLOSSOM
The applicant appealed for the annulment of the decision and the appeal was reviewed by the USPTO Appeal Board. The Appeal Board’s decision can be accessed through this link.
The applicant essentially claimed that the marks were not identical and the goods were not similar.
“BEAN BLOSSOM” and “BEANBLOSSOM” were evaluated as almost identical signs by the Appeal Board as well, and in addition, it was concluded that “BEANBLOSSOM” was a highly distinctive trademark.
In the continuation of the decision, the main claim of the applicant, namely the argument that the goods (coffee – hard cider) were not similar, was evaluated.
The Appeal Board’s evaluation on this issue commenced with the relevant case law:
“Where almost identical marks are involved, as is the case here, the degree of similarity between the goods that is required to support a finding of likelihood of confusion declines. Even when the goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source. With nearly identical marks it is only necessary that there be a viable relationship between the goods to support a finding of likelihood of confusion. It is sufficient that the goods or circumstances of their marketing are related in some manner…”
In the next step, the Board went through a detailed assessment in terms of the similarity/relationship of the goods, “coffee and hard cider”.
The applicant claims that the natures of the goods subject to comparison are different. The findings of the Board regarding this claim are as follows:
Hard cider is an alcoholic beverage which includes ethanol, and ethanol acts as a depressant; while coffee has high concentrations of caffeine, which is the world’s most widely consumed psychoactive drug and acts as a stimulant. Alcoholic drinks are limited to use by adults by law, while coffee with its elevated caffeine content is only limited to use by adults by the recommendation of the American Academy of Pediatrics. Both beverages have historically been the subject of legal and religious restriction. In contrast to the other beverages, which do not include stimulants or depressants, there is a relationship between hard cider and coffee, which include such substances, due to the abovementioned reason and this relationship supports a finding of likelihood of confusion.
In addition to this, the existence of four prior registered trademarks which contain “coffee and hard cider” together has been identified in the USPTO trademark registry. Existence of third-party registrations which cover both of the goods subject to comparison, although not evidence that the marks under examination are in use together on a commercial scale or that the public is familiar with them, is a fact having some probative value to suggest that such goods or services in question may emanate from a single source.
In addition, cases where coffee was used as a component of hard cider were also identified during examination.
Although the applicant argued, within the framework of various examples from the USPTO registry, that even identical trademarks are registered in the registry on behalf of different companies, the Appeal Board declined the argument stating that the examples submitted are related to “hard cider and beers” being registered together, whereas in the case that is being evaluated the goods that are compared are “hard cider and coffee”.
In addition to these considerations, the Appeal Board also determined that the goods subject to comparison appeal to the same consumer group (adults in general).
In the light of all the reasons stated, the Appeal Board concluded that the relationship between the goods supports the existence of likelihood of confusion due to the facts that hard cider and coffee are in similar categories in terms of their soothing and calming effects, that both appeal to adult consumers, that coffee can be used as a component of cider, and that there is existence of earlier registrations involving both of the products and existence of overlapping commercial distribution channels and buyers of the goods.
For all the reasons listed above; it was concluded that there was a likelihood of confusion among the trademarks subject to examination and the refusal was affirmed by the Appeal Board.
If we go back to the beginning, we believe that there is no possibility of evaluating hard cider and coffee as being similar or related goods in Turkey. Although the USPTO has concluded that the goods are related regarding the consumers in the U.S.A, it is very likely that examinations made on the basis of consumer groups in different countries may reach opposite conclusions. In this context, when examining the similarity or the relationship of goods and/or services, it is necessary to accept that the evaluation of a national IP office, which conducts the examination based on the consumption habits within its own country, cannot in most cases shed light for the same examination in other IP offices.
