• Trademark Board Rains on Application for Mt. Rainier Mark
  • November 25, 2016 | Author: Timothy J. Lockhart
  • Law Firm: Willcox & Savage, P.C. - Norfolk Office
  • In a case involving claims of confusion and misdescriptiveness, the U.S. Trademark Trial and Appeal Board (TTAB) affirmed the Examining Attorney’s refusal to register the trademark MT. RAINIER THE MOUNTAIN OF SEATTLE ESPRESSO & MILK and Design (Color). In re Morinaga Nyugyo Kabushiki Kaisha, Serial No. 86338392 (September 8, 2016) [precedential].

    The Japanese company Morinaga Nyugyo Kabushiki Kaisha trading as Morinaga Milk Industry Co., Ltd. (Morinaga) applied to register the mark for “milk beverages containing espresso coffee and milk; milk products containing espresso coffee and milk, excluding ice cream, ice milk and frozen yogurt,” in International Class 29, and “espresso coffee containing milk; and sandwiches flavored with espresso coffee and milk,” in International Class 30. The Examining Attorney cited against the application two registrations owned by Mount Rainier Coffee Company (MRCC) of Puyallup, Washington: No. 4119865 for MOUNT RAINIER COFFEE COMPANY and No. 4225177 for MOUNT RAINIER COFFEE COMPANY and Design, both for use with “coffee,” in International Class 30.

    Section 2(d) of the Trademark Action, 15 U.S.C. § 1052(d), prohibits the registration of a mark that is likely to be confused with a mark already registered. The TTAB analyzed the likelihood-of-confusion issue under the factors laid out in the leading case of In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (CCPA 1973). Applying those factors, the TTAB first found that Morinaga’s goods were identical or very closely related to those of MRCC. The TTAB then found that because the word mark MOUNT RAINIER COFFEE COMPANY is closer in appearance to Morinaga’s mark than MOUNT RAINIER COFFEE COMPANY and Design, the TTAB could base its decision on the word mark alone.

    The TTAB found that Morinaga’s mark is “significantly similar” in appearance to the word mark MOUNT RAINIER COFFEE COMPANY. MT. RAINIER is essentially identical to MOUNT RAINIER, the TTAB said, and the other words in each mark do not serve to distinguish the marks, either because ESPRESSO & MILK, and COFFEE COMPANY are descriptive or generic or because the less-prominent words THE MOUNTAIN OF SEATTLE and the mountain design reinforce the impression made by the words MT. RAINIER.

    The TTAB acknowledged that “[t]he marks are obviously not identical, and would differ somewhat in sound if vocalized in their entirety.” But the TTAB concluded that “[u]pon consideration of both marks in their entireties, [it found] that they are substantially similar in appearance, sound, meaning, and commercial impression.”

    Noting that MRCC’s word mark is registered on the Supplemental Register, Morinaga argued that “the scope of protection for a descriptive mark has been limited to the subsequent use and registration of the ‘substantially identical’ mark for ‘substantially similar’ goods” (citing In re Hunke & Jochheim, 185 USPQ 188 (TTAB 1975). The TTAB rejected that argument, saying that Hunke & Jochheim was decided before the appellate cases of In re Research & Trading Corp., 793 F.2d 1276 (Fed. Cir. 1986), and In re Clorox Co., 578 F.2d 305 (CCPA 1978), which support citing registrations on the Supplemental Register against applications for confusingly similar marks. The TTAB stated flatly that “there is no categorical rule” that the citation of registrations on the Supplemental Register is limited to substantially identical marks for substantially similar goods or that a different test for confusion applies in such cases.

    The TTAB was not persuaded by Morinaga’s argument that third-party registrations for “RAINIER” marks showed there was no likelihood of confusion or that MRCC’s word mark was geographically descriptive. Neither factor, the TTAB said, was sufficient to show that there was no likelihood of confusion between MT. RAINIER THE MOUNTAIN OF SEATTLE ESPRESSO & MILK and Design (Color) and MOUNT RAINIER COFFEE COMPANY.

    Next the TTAB turned to the issue of whether Morinaga’s mark is primarily geographically deceptively misdescriptive and therefore unregisterable under Section 2(e)(3) of the Trademark Act, 15 U.S.C. § 1052(e)(3). The TTAB noted the three-part test from In re Miracle Tuesday LLC, 695 F.3d 1339 (Fed. Cir. 2012): (1) is “the primary significance of the mark . . . a generally known geographic location”?; (2) is “the consuming public . . . likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place”?; and (3) would “the misrepresentation [be] a material factor in the consumer’s decision” to purchase the goods”? Id. at 1343 (quoting In re Cal. Innovations, Inc., 329 F.3d 1334, 1341 (Fed. Cir. 2003)).

    The TTAB disagreed with the Examining Attorney’s “narrow focus on the word SEATTLE” in Morinaga’s mark, noting that SEATTLE plays a “relatively minor role visually” and is “part of the phrase THE MOUNTAIN OF SEATTLE, which appears at the base of a mountain, all of which is underneath the large and dominant wording MT. RAINIER.” Thus, said the TTAB, when considering Morinaga’s mark as a whole-that is, the way it would be seen by prospective purchasers of the relevant goods-the TTAB could not conclude that it is primarily geographically deceptively misdescriptive.

    Accordingly, the TTAB affirmed the Examining Attorney’s refusal to register the trademark MT. RAINIER THE MOUNTAIN OF SEATTLE ESPRESSO & MILK and Design (Color) under Section 2(d) but reversed the refusal under Section 2(e)(3).