‘Colombiano' Mark Descriptive, Too Similar to ‘Colombian' Certification Mark

Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...

By Tamlin H. Bason  

The proposed “Colombiano Coffee House” trademark for a food and drink establishment would result in a likelihood of confusion with the “Colombian” certification mark that is used for coffee, the Trademark Trial and Appeal Board held Feb. 22, affirming the refusal to register the mark (In re Accelerate s.a.l., T.T.A.B., No. 77522433, 2/22/12).

The board also said that the proposed mark was merely descriptive because consumers who encounter the mark will believe that the inclusion of “Colombiano” in the mark indicates that the restaurant will serve coffee Colombian-quality coffee.

Examining Attorney Refuses Registration

Accelerate s.a.l. filed an application to register in standard character form the mark “Colombiano Coffee House” in International Class 43 in a connection with “providing food and drink.” Accelerate disclaimed the words “Coffee House.”

The trademark examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), after determining that the mark would cause confusion with the registered certification mark Colombian that is used to certify coffee from Colombia in International Class A.

The mark was also refused under Section 2(e)(1) on the ground that the mark was merely descriptive of the services that would be offered under the mark.

Accelerate appealed the refusal.

Mark Similar to ‘Colombian' Certification Mark

The board first considered whether the proposed mark would result in a likelihood of confusion with the certification mark, Colombian. A likelihood of confusion analysis between a trademark and a certification mark is no different than a likelihood of confusion analysis between two trademarks, the board said, looking to Motion Picture Association of America Inc. v. Respect Sportswear Inc., 83 USPQ2d 1555 (T.T.A.B. 2007), for support.

Accordingly, the board ticked through the likelihood of confusion factors that were articulated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).

As an initial matter, the board said its analysis would take into account two considerations: “the similarity or dissimilarity of the goods and services at issue and the similarity or dissimilarity of the respective marks in their entireties.”

Turning to the marks in question, the board said it would analyze the “appearance, sound, meaning, and commercial impression” of the two marks.

Because Coffee House was disclaimed by Accelerate, the board only focused on the similarities between Colombiano and Colombian. The board determined that the two words were very similar in sound and appearance, noting, “The appearance of the letter ‘O' in applicant's mark does very little to distinguish applicant's mark from the registered mark.”

For support, Administrative Trademark Judge Thomas W. Wellington looked to In re Bayer Aktiengesellschaft, 488 F3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007), where the U.S. Court of Appeals for the Federal Circuit refused to register the mark “Aspirina.” In that case, the court compared the proposed mark to the generic word aspirin, and concluded that the “mere addition of the letter ‘A' at the end of the generic term ‘aspirin' is simply insufficient to transform ASPIRINA into an inherently distinctive mark for analgesics.”

The board also said that the commercial impression between the two marks was similar, particularly because Colombiano “is a direct Spanish translation of the English term ‘Colombian,” and likewise, each term may be used as an adjective describing something” from Colombia.

The board concluded that the words were similar, finding:

Even for the relevant consumers who are unfamiliar with this direct translation, because of the near visual and aural identity of these particular terms consumers are likely to conclude that COLOMBIANO and COLOMBIAN have similar meanings.

Accelerate argued that it uses the term Colombiano not to describe the origin of the coffee that it intends to sell, but instead as a tribute to a love story that goes back decades.

On its website, Accelerate relays the story of a woman named Coco who used to operate a Coco's Coffee house. Coco then changed the name to Coloma's Coffee House in honor of her grandmother, Lomalita. Later still, Coco changed the name to Colombiano Coffee House to incorporate her name, her grandmother's name, and the name of an Italian man, Fabiano. Thus, according to Accelerate, the mark derives from those three characters, and is not meant to in any way suggest that the coffee sold in the restaurants is from Colombia. The board was not convinced.

“[T]here is nothing in the record to suggest that this love story is well-known or even that, if it were, consumers of ‘providing food or drink' services are likely to associate the term COLOMBIANO with it.” Accordingly the board said that the marks were very similar.

‘Something More' Standard Satisfied

In regards to the similarity between the goods and services offered under the marks, the board said it was governed by the “something more” standard articulated in Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ2d 641 (C.C.P.A. 1982), which held that “something more than similar or even identical marks” is needed to establish likelihood of confusion when presented with food services and food products.

In this case, the services will be related if the proposed Colombiano Coffee House mark suggests a relationship to coffee, the board said. The mark in its entirely suggests that coffee will in fact be served in restaurants bearing Accelerate's mark, the board determined.

“This is obviously the most rational conclusion to draw given the inclusion of COFFEE HOUSE in applicant's mark; further, while the application is not based on use in commerce, applicant's own website evidence indicates that it is in the business of rendering coffee house services,” the board said.

For guidance, the board looked to the Federal Circuits decision in In re Coors Brewing Co., 343 F3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003). In that case the court held that registration of “Blue Moon” and an associated design for a brand of beer should not have been denied based on the ground that it is likely to be confused with a similar registered mark for restaurant services. However, the board quoted the Federal Circuit's dicta in Coors in which it said:

This case would be different … if the registrant's mark had been for a brewpup … In that case, the goods and services associated with the two marks would clearly be related and the case for a likelihood of confusion therefore much stronger.

Applying that analogy to this case, the board said “a coffee house is to coffee as a brewpub is to beer, each establishment specializing in a specific beverage but possibly offering other drinks and food items.” Thus the court concluded that the services were related.

The board also said that both the goods offered under the certification mark and the services under the proposed trademark would travel in similar trade channels, and be targeted towards similar classes of purchasers. The board thus concluded that the Du Pont factors supported a finding of a likelihood of confusion, and the board affirmed the refusal to register the mark under Section 2(d).

Mark Descriptive

The mark was refused under Section 2(e)(1) because the examining attorney determined that the phrase was merely descriptive of food and drink that are from the country of Colombia. According to the board, Accelerate “misconstrues the descriptiveness refusal and incorrectly addresses it as a ‘merely geographically descriptive' issue.”

The board clarified that there is a distinction between a merely descriptive term, which can be refused registration under Section 2(e)(1), and a geographically descriptive term, which is subject to Section 2(e)(2). To be sure, the board said that the examining attorney could have refused registration of the mark using either subsection because, “Refusals on these grounds are not necessarily mutually exclusive and the same mark may be found to be merely descriptive (or deceptively misdescriptive) as well as primarily geographically descriptive (or geographically deceptively misdescriptive) of the identified goods or services.”

In this case, the examining attorney's Section 2(e)(1) refusal was based on a finding that the mark, in its entirely, merely described the sort of food or drink that would be served at Accelerate's place of business. That is, the examining attorney determined that the phrase Coffee House is a generic term for a kind of restaurant, and the word Colombiano is an adjective that indicates that something comes from Colombia. The board said that the examining attorney met his burden of demonstrating that the mark was descriptive under Section 2(e)(1).

Moreover, “Colombia is renowned for its coffee beans and coffee made from said beans may be referred to as ‘Colombian' or ‘Colombian Coffee,' ” the board said. In fact, the board noted that the certification mark that served as the basis for the Section 2(d) refusal is used to identify coffee that “possess[es] certain distinctive qualities and characteristics due to factors associated with that region, including its flavor, aroma and body.”

“[C]onsumers encountering applicant's mark in connection with the recited services will immediately understand the term COLOMBIANO as describing a particular type of coffee that will be served in the coffee house, that is, coffee having certain qualities and characteristics that are associated with authentic Colombian coffee,” the board concluded.

The board therefore upheld the Section 2(e)(1) refusal to register the mark.

Accelerate was represented by Thomas L. Peterson of Brundidge & Stranger, Alexandria. Va.

Administrative Trademark Judges Lorelei Ritchie and Terry E. Holtzman joined the opinion.

For More Information

Opinion at http://pub.bna.com/ptcj/77522433Feb2212.pdf