A trademark is any device that is used in commerce to identify and distinguish their goods and to indicate the source of those goods. The Lanham Act protects trademarks by providing a remedy for a trademark owner when another person or entity uses the same or similar trademark in such a way that it will cause a likelihood of confusion, mistake or deception. Recently the Trademark Trial and Appeal Board (TTAB) overturned a refusal to allow the registration of “BIG KAHUNA DONUTS” citing Section 2(d) of the Lanham Act. Rejections under 15 U.S.C. 1052(d), also known as Section 2(d) rejections, occur when the Examiner concludes that the applied for trademark is similar enough to a registered trademark that its use will be likely to cause confusion, to cause mistake, or to deceive.
When analyzing whether a trademark should be denied registration under Section 2(d), there is a plethora of relevant considerations (see In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)). Nevertheless, the two most dispositive issues in the vast majority of cases are (1) the similarity of the trademarks in appearance, sound and meaning and (2) the similarity of the goods and services. In this case, the Board also considered evidence of the number and nature of similar trademarks.
The Applicant sought to register “BIG KAHUNA DONUTS” in Class 35 for “retail store services featuring donuts” and in class 30 for donuts as a product. During prosecution, the Examiner had rejected the application to register “BIG KAHUNA DONUTS” because there was a prior registration for “BIG KAHUNA CLIFF’S HAWAIIAN COFFEE”. “BIG KAHUNA CLIFF’S HAWAIIAN COFFEE” had previously been registered in class 30 for coffee and in class 35 for “on-line retail store services featuring coffee” and “retail store services featuring coffee”.
On appeal, the TTAB first compared the two trademarks in appearance and sound. The TTAB concluded the trademarks were similar in sound and appearance only in that both included the words “BIG KAHUNA”. On the other hand, the two trademarks were made distinguishable in appearance in sound by the inclusion of other words, namely “CLIFF’S HAWAIIAN COFFEE” and “DONUTS”.
Next the Board concluded there were significant differences in meaning and commercial impression between the two trademarks. The Board reasoned the registered trademark suggested that a person named Cliff was a great person, i.e. a “BIG KAHUNA,” while the other party’s trademark suggested that their donuts were great in some way. In addition, the TTAB reasoned the generic terms “COFFEE” and “DONUTS” created different commercial impressions on consumers because the general public is presumed to think of establishments specializing in the coffee and donuts as being related, but different.
The TTAB also concluded that the goods and services in both applications were very similar since those goods and services are frequently offered together when sold to the general public. The TTAB considered evidence that establishments that specialize in coffee regularly sell donuts and vice versa. In addition, the Examiner presented evidence that donuts and coffee are considered in combination to be a popular treat. Furthermore, the Examiner presented: (1) 25 applications for registration that claimed use in commerce in the sale of both coffee and donuts, (2) internet evidence showing three companies advertising they offer coffee and donuts under the same brand and (3) news items and other internet publications showing the consumption of coffee and donuts together. The TTAB noted coffee and donuts are inherently different goods in that one is a baked or fried food and the other is a beverage made by roasting, grinding and brewing. In addition, there is a distinction between stores that feature one good or the other. However, it is established precedent that a finding of likelihood of confusion is appropriate when the goods and services are different but related. In the end, the TTAB concluded the goods and services were closely related suggestive of a finding a likelihood of confusion.
Next the TTAB considered the Applicant’s evidence regarding the strength of the mark. Pointing to 14 registrations for restaurant, catering or similar services containing the term “BIG KAHUNA” the Applicant argued the term was used commonly enough that the TTAB should conclude that their trademark and the registered trademark could coexist without causing confusion. Noting none of those registrations related to coffee or coffee shops, the Board did not find the cited registrations persuasive. However, the Board also found that the term “BIG KAHUNA” is a commonly used laudatory term that suggests size importance or greatness in general and, as a result, the registration of “BIG KAHUNA CLIFF’S HAWAIIAN COFFEE” should not be allowed to bar all other uses of the term. Having concluded that the word “Cliff” was the most distinctive source identifying element of the registered mark, the Board decided that consumers would not associate all uses of the term with a person named Cliff. Noting it was a close case, the TTAB reversed the Examiner’s decision to deny registration of “BIG KAHUNA DONUTS”.
This case illustrates how difficult it can be even for Examiners and Administrative Law Judges to determine whether two trademarks are different enough in consumers’ eyes to both exist in the marketplace without causing consumers to be confused as to the course of a good or service. Commissioning a formal trademark clearance opinion prior to investing substantial sums of time and money can reduce the chances of a dispute with the USPTO and/or a competing business. Schedule a consultation with a qualified professional to discuss your individual legal needs.