Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.

• Decision Date: 21 November 1984
• Docket Number: No. 84-828,84-828
• Citation: 223 USPQ 1281,748 F.2d 669
• Parties: SPECIALTY BRANDS, INC., Appellant, v. COFFEE BEAN DISTRIBUTORS, INC., Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 669

748 F.2d 669

223 U.S.P.Q. 1281

SPECIALTY BRANDS, INC., Appellant, v. COFFEE BEAN DISTRIBUTORS, INC., Appellee.

Appeal No. 84-828.

United States Court of Appeals, Federal Circuit.

Nov. 21, 1984.

Veronica C. Devitt, Limbach, Limbach & Sutton, San Francisco, Cal., argued for appellant.

John M. McCormack, Kolisch, Hartwell, Dickinson & Anderson, Portland, Or., argued for appellee; William T. Bullinger, Cushman, Darby & Cushman, Washington, D.C., of counsel.

Before DAVIS, SMITH and NEWMAN, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

This case presents a question of likelihood of confusion under Sec. 2(d) of the Lanham Act, 15 U.S.C. Sec. 1052(d). The Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office (Board) dismissed Opposition No. 65,515 to the registration of the word mark SPICE VALLEY for teas, Application Serial No. 258,167 of appellee Coffee Bean Distributors, Inc. The opposition was brought by appellant Specialty Brands, Inc., based on its registered trademark SPICE ISLANDS for teas. We reverse.

Background

The decision of the Board setting forth the facts of this opposition and the Board's reasoning is reported at 220 USPQ 1072 (TTAB 1983). In brief, the Board found no likelihood of confusion between the trademarks SPICE VALLEY and SPICE ISLANDS for tea. It considered Specialty Brands' forty years of use of the mark SPICE ISLANDS and its "enormous sales and large advertising expenditures" to be "of little consequence" in light of the "obvious differences" between the marks. 220 USPQ at 1074. Relying on what it called the "more standard tests for determining likelihood of confusion", the Board found that the marks were not only different in overall appearance and pronunciation but that the commercial impressions conveyed by the marks were "not in the least similar". The Board viewed the mark SPICE ISLANDS as conveying "an image of an exotic region where spices, and perhaps teas, of all varieties are found" and that applicant's mark SPICE VALLEY did not convey this remote or exotic image; it was unconvinced by Specialty Brands' argument that there was a similarity in the format of the marks (SPICE plus a place). 220 USPQ at 1075. Although acknowledging that applicant's mulling spices are sold under the SPICE VALLEY mark in packaging that "promotes a seafaring image", the Board found this evidence insufficient to prove that the applicant was attempting to trade on the reputation of the SPICE ISLANDS mark. Id.

The Standard of Review

Applicant advises that this court should not substitute its own judgment for that of the "careful, unanimous judgment of the Board which has substantial support in the record", citing Witco Chemical Co. v. Whitfield Chemical Co., 418 F.2d 1403, 57 CCPA 804, 164 USPQ 43 (1969), and decisions of this court such as EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 706 F.2d 1213, 217 USPQ 986 (Fed.Cir.1983), in support of this position. These courts recognized that the Board's responsibility includes finding and weighing the facts, but these courts did not abdicate their appellate responsibilities. As the court said in Witco Chemical, Sec. 2(d) of the Lanham Act "requires, of course, that we consider not only the marks but the goods and the whole situation .... [W]e then have to form a judgment as to whether there is a practical likelihood of such confusion". Id. at 44.

Applicant points out that opposer Specialty Brands has not challenged any of the factual findings of the Board. These findings, as we recently reaffirmed in Stock Pot Restaurant, Inc. v. Stockpot, Inc., 737 F.2d 1576, 1578-79, 222 USPQ 665, 666-67 (Fed.Cir.1984), are governed by the clearly erroneous standard of review. But "the issue of likelihood of confusion is the ultimate conclusion of law to be decided by the court". Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1569, 218 USPQ 390, 394 (Fed.Cir.1983); Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 929, 198 USPQ 151, 153 (CCPA 1978).

Determination of Likelihood of Confusion

Likelihood of confusion is determined from the probative facts in evidence. In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). The Board limited its consideration to the three factors known as the "sound, sight and meaning" trilogy; see, e.g., 2 J. McCarthy, Trademarks and Unfair Competition Sec. 23:4 (2d ed.1984). In some instances these factors may be determinative, but the similarity between words in the respective marks is only part of the inquiry into likelihood of confusion under section 2(d) of the Lanham Act. Du Pont identifies thirteen contributing factors, of which we shall discuss those which are pertinent to the case before us:

1) The Similarity of the Goods

The marks SPICE VALLEY and SPICE ISLANDS are used for identical goods, namely "teas". Applicant's proposed registration is not limited to spiced teas, and opposer's mark is used for both spiced and unspiced teas.

2) The Similarity of Trade Channels

The channels of trade are identical. Both brands of tea are sold in supermarkets and grocery stores across the country.

3) The Circumstances of Sale and Identity of Buyers

Both products are relatively inexpensive, comestible goods subject to frequent replacement. Purchasers of such products have been held to a lesser standard of purchasing care. See Spice Islands, Inc. v. Frank Tea & Spice Co., 505 F.2d 1293, 1296, 184 USPQ 35, 37 (CCPA 1974).

4) The Variety of Goods on which the Mark is Used

The application for the SPICE VALLEY mark names "teas" as the goods, and the record also shows use on mulled spices for teas. Opposer uses the SPICE ISLANDS mark on a large variety of goods, including teas and spices. ¹

5) Actual Confusion

There is no evidence of record of the presence or absence of actual consumer confusion. Neither party has presented survey evidence.

6) The Similarity of the Marks in their Entireties

This factor encompasses the considerations of appearance, sound, connotation, and commercial impression on which the Board relied. Although applicant disclaimed the word "spice" apart from SPICE VALLEY as a whole, the marks are viewed in their entireties. Giant Food, supra, 710 F.2d at 1570, 218 USPQ at 395. Indeed, opposer's registrations of SPICE ISLANDS for teas contain no disclaimer. The Board concluded that the marks when viewed as a whole are visually and phonetically dissimilar and do not create the same commercial impression.

Each party has analyzed the "format" of the marks in support of its position. Opposer considers the format to consist of two words of fairly equal weight, the first of which is SPICE and the second of which is a topographically defined place. Applicant emphasizes that "spice" was disclaimed, leaving the word "valley" as the principal contributor to the impression of its mark. Opposer disagrees and argues that the words SPICE ISLANDS and SPICE VALLEY summon to mind similar images of remote terrain, whether valley or island. In this argument opposer is aided by the fact that applicant has adopted a seafaring image on some of its SPICE VALLEY labels.

SPICE ISLANDS, argues applicant, is a term of geographical and historical significance: the Spice Islands are known today as the Moluccas, an island group in the Malay archipelago which has been a famous source of spices and teas since the Age of Discovery. We are directed to opposer's promotional literature which discusses the history of the Spice Islands, even as it advises its customers that its spices are grown in the Sacramento Valley of California. In contrast, applicant contends that SPICE VALLEY suggests a "back-to-nature" or "Early American" image, and points to those SPICE VALLEY packages which show a rustic barn and hills on the label.

A review of the record shows that applicant took a contrary position before the trademark examiner after being advised of the pending registration THE SPICE MARKET. Applicant thereupon defined "valley" as a "depression between adjacent hills, often of a secluded or remote nature", and drew a contrast with THE SPICE MARKET's connotations of "down-to-earth value" or "old time basic quality"--images not unlike those now asserted by applicant for SPICE VALLEY. 37 C.F.R. Sec. 2.122(b)(1) states that the file of the application "forms part of the record of the proceeding without any action by the parties and reference may be made to the file for any relevant and competent purpose". As the CCPA observed in Interstate Brands,

[T]hat a party earlier indicated a contrary opinion respecting the conclusion in a similar proceeding involving similar marks and goods is a fact, and that fact may be received in evidence as merely illuminative of shade and tone in the total picture confronting the decision maker. To that limited extent, a party's earlier contrary opinion may be considered relevant and competent.

576 F.2d at 929, 198 USPQ at 154. While we place only limited weight on these statements in the application file, we consider this evidence to be relevant because it illustrates the variety of images that may be attributed to the mark SPICE VALLEY, which applicant seeks to register without restriction as to display, and the overall commercial impression it projects.

It is the similarity of commercial impression between SPICE VALLEY and SPICE ISLANDS that weighs heavily against the applicant as applied to identical goods. As the court said in Spice Islands, supra:

Of paramount interest is not the descriptive nature of SPICE, but the overall commercial impression derived by viewing the marks in their entireties .... Arguments to the effect that one portion of a mark possesses no trademark significance leading to a direct comparison between only what remains is an erroneous approach.

505 F.2d at 1295, 184 USPQ at 37.

As indicated above, applicant argues that its trade dress negates any similarity in commercial impression. In response...