Thursday, October 11, 2012

TTAB Dismisses 2(d) Opposition to Pyramidal Tea Package Despite Similarity to Opposer's Marks for Tea Infusers

The Board dismissed a Section 2(d) opposition to registration of the mark shown below left, for "bags for packaging made of paper or plastic materials, not included in other classes" in class 16, finding the mark not likely to cause confusion with the two registered marks shown below right, for "tea infusers not of precious metal." Applicant's description of the mark stated that it consisted of cardboard packaging for holding teabags filled with tea. The Board ruled that "[s]imilarity of the marks alone is not enough," because Opposer presented little evidence on any other of the du Pont factors. Tea Forté, Inc. v. Dr. Dünner AG, Opposition No. 91179751 (September 30, 2010) [not precedential].

The Board began with a review of some of the proffered evidence. Opposer relied on the Cold War Museum case [TTABlogged here] in contending that the files of its registrations and pending applications are automatically of record. But the Board pointed out that only the files of challenged registrations and applications are automatically in the record, not a plaintiff's files. Opposer did properly submit the files of four pending applications, but the Board noted that they have little probative value since applications serve to prove nothing more than "that they were filed."

Opposer also relied on magazine articles quoting its founder regarding Opposer's business and its success, but those statements were inadmissible hearsay. And the Board ignored 237 pages of exhibits attached to Opposer's brief, noting that it is pointless to attach evidence to a brief: "If the evidence was not previously submitted, it is untimely; if the evidence was previously submitted it is unnecessary and duplicative."

Opposer claimed prior use of several unregistered marks, but its proofs failed. It took no testimony, and its printed publications were not admissible to prove the truth of the statements made therein.

Turning to the substantive issues, the Board found the drawings of the marks to be quite similar: they depict a pyramidal object with a string attached or emerging from the apex, terminating in a cloud-shaped label or a leaf. The Board concluded that the similarity of the marks favors a finding of likely confusion.

As to the goods, Opposer claimed them that they are identical, both being essentially teabags or tea. The Board, however, looked at the goods as set out in the involved applications and registrations, regardless of whether the evidence showed the goods to be different from those identified. It also considered the drawings in light of the descriptions of the marks, which descriptions are required by Rule 2.37 in applications for product configuration or trade dress marks.

Applicant's goods are not tea, tea bags, or tea infusers, as Opposer claimed. They are packaging for tea, in class 16. Opposer's goods are not tea bags, but tea infusers in class 21. Tea infusers are typically made of mesh or perforated material, often with a handle, chain, or similar appendage.

The Board concluded that the uncertainties in Opposer's first registration prevented the Board from finding a likelihood of confusion. The description of the mark referred to it as a triangle-shaped tea bag, but the goods are tea infusers, an irreconcilable difference.

In the second of Opposer's registrations, the mark is described as "the ... trade dress of the packaging for a product ..." The "product" could include tea infusers, so there was no inconsistency here.

The Board found the involved goods to be very different and serving different purposes. One needing packaging for tea bags would not consider a tea infuser, and vice versa. The customers for the products are likely to be different, and the normal channels of trade are different and do not overlap.

As to conditions of sale, Opposer's tea infusers are likely to be relatively inexpensive, but there was no evidence as to the cost of Applicant's packaging. Therefore the Board was unable to reach any conclusion as to this factor.

Finally, Opposer contended that its mark is well-known, but it failed to submit any competent evidence as to sales or length of use of the marks.

Balancing the relevant du Pont factors, the Board concluded that Opposer had failed to carry its burden to show likelihood of confusion.

Text Copyright John L. Welch 2012.


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