The Trademark Trial and Appeal Board (TTAB) recently decided In re Trilliant Food and Nutrition, LLC, 2017 WL 3102593. The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference, and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys.
Legally Identical Trademarks Background
Trilliant Food and Nutrition, LLC (Trilliant) submitted an application for trademark registration of the mark “ENRG.” Trilliant sought to register this mark on the Principal Register under International Class 30, a category that includes “coffee, tea, cocoa and artificial coffee.” Trilliant sought to register the ENRG mark for “coffee for use in single-serve brewing machines.”
The Trademark Examining Attorney (TEA) rejected Trilliant’s application for the ENRG mark, because of similarities to an existing trademark. The existing mark, ENERGI for coffee and tea, was already registered on the Principal Register under International Class 30. Relying on 15 U.S.C. 1052(d) of the Trademark Act, the TEA elaborated that the Trilliant mark was “likely to cause confusion, to cause mistake, or to deceive.”
After receiving the TEA’s decision, Trilliant protested and requested another review. The TEA rejected this request, refusing to reconsider the initial decision. As a result, Trilliant appealed to the TTAB.
Legally Identical Trademarks Analysis
In considering the likelihood of confusion, the TTAB employed the analytical test from the landmark case In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973). Also known as the du Pont factors, this test establishes 13 different considerations for determining likelihood of confusion.
The TTAB first evaluated Trilliant’s ENRG mark using the second du Pont factor, focusing on the “similarity or dissimilarity and nature of the goods.” Comparing the ENRG application against the ENERGI registration, the TTAB noted that both marks concern coffee. While ENERGI encompasses coffee products broadly, ENRG only relates to single-serve coffee products. Nonetheless, both occupy the same field and are “legally identical trademarks.” As a result, the TTAB determined that confusion was likely.
The TTAB next turned to the third du Pont factor, evaluating the “similarity or dissimilarity of established, likely-to-continue trade channels.” The TTAB considered that retailers offer coffee products under the same mark across all product lines, including single-serve options. Moreover, as both the ENERGI and ENRG marks relate to coffee, the goods are traveling in the same trade channel. In that context, it would be reasonable for a consumer to assume that both marks “emanate from a single source.” Therefore, the TTAB determined a strong likelihood of confusion.
Switching gears to the first du Pont factor, the TTAB considered the “similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.” The TTAB noted that there were visual distinctions between the ENRG and ENERGI marks. The TTAB focused on the similarities in the sound of both marks, worrying that consumers would pronounce each mark in identical fashion. Given that consumers would likely equate both marks to “energy,” the TTAB determined that both marks convey “the same meaning and overall commercial impression.” Consequently, the TTAB determined that confusion was likely.
Overall, the TTAB determined that Trilliant’s ENRG mark was too similar to the registered mark ENERGI. Considering that the marks were “legally identical in part and move in the same channels of trade to the same customers,” there was a strong likelihood of confusion. Thus, the TTAB confirmed rejection of Trilliant’s application for the ENRG mark.
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