The Marks: Not surprisingly, the Board found the marks to be identical in appearance, sound, and meaning. As to the strength of Kicking Horse’s mark, the Board noted that just because the mark has achieved incontestability does not mean it is a strong mark. Defendant Critchley argued that KICK ASS is weak because it is laudatory. However, Critchley’s 11 third-party registrations and two common law uses “are a relatively small number compared to the number of such marks in cases that have found weakness based on those marks.” Moreover, none of the registrations covered coffee or energy drinks and only five covered clothing. Each of those five registered marks included words in addition to KICK ASS, and so “they tell us little, if anything, about the strength of KICK ASS alone for coffee, or whether KICK ASS alone for coffee, and KICK ASS alone for clothing or energy drinks, are confusingly similar.”
Coffee and Energy Drinks: Critchley’s identification of goods specifically excluded “coffee-flavoured energy drinks, coffee-based energy drinks, and energy drinks having coffee as an ingredient.” Critchley argued that the term “coffee” in Kicking Horse’s registration is limited to coffee beans and ground coffee, and does not include coffee beverages. The Board, however, found otherwise: “[t]he record shows that ‘coffee’ includes brewed coffee, as well as ‘coffee-based beverages’ sold in ready-to-drink form in which milk, sugar, or flavorings have been added to coffee.” The Board took judicial notice that “cream, milk, and/or sugar are commonly added to coffee when it is consumed, and the record shows that packaged ready-to-drink coffee, including espresso, often contains milk and sugar, or other pre-added flavorings.”
As to Critchley’s energy drinks, the Board took judicial notice that “‘energy drink’ means ‘a usually carbonated beverage that typically contains caffeine and other ingredients (such as taurine and ginseng) intended to increase the drinker’s energy.'”
Kicking Horse submitted some 29 third-party registrations for marks covering both coffee and energy drinks, as well as Internet webpages showing coffee and non-coffee energy drinks sold under the same mark. The Board agreed with Critchley that many coffee sellers do not sell non-coffee related energy drinks, and that many energy drinks sellers do not sell coffee. Nonetheless, “multiple companies do sell both under the same mark.” This use evidence is “highly probative” when coupled with the third-party registration evidence. Moreover, the fact that coffee and energy drinks serve the same general function of providing energy is probative of the relatedness of the goods.
The Board concluded that Kicking Horse’s coffee and Critchley’s energy drinks are related for Section 2(d) purposes.
Coffee and Clothing: Kicking Horse again relied on third-party registration and use evidence to show the relatedness of these goods. At least 50 different companies and individuals have registered marks for both coffee and one or more of the clothing items identified in Critchley’s registration.
Critchley argued that “[i]f Kicking Horse’s definition of relatedness were accepted, then clothing would be ‘related’ to an overly wide variety of otherwise completely unrelated goods and services,” and that “just because it is common for trademarks to be used on collateral goods like clothes does not mean that clothing is related to every other conceivable product and services as a matter of law.” Critchley cited three non-precedential TTAB decisions, two precedential decisions, and one federal court decision in support of this contention, but the Board distinguished each one.
The Board also noted Critchley’s admission that “customers understand that companies routinely sell, or give away, t-shirts and other promotional material bearing the mark of their primary goods or services,” and that “a number of coffee companies sell t-shirts to promote their café or company name.”
Critchley has failed to persuade us that we should apply a different standard for relatedness when the goods are clothing as opposed to energy drinks. More than 50 companies and individuals have registered their marks for both coffee and clothing, particularly shirts, and the record as a whole, including Kicking Horse’s use evidence and Critchley’s admissions, indicates that KICK ASS clothing would reasonably be viewed by consumers familiar with KICK ASS coffee as emanating from the coffee company, even if the coffee company is not “actually in the clothing business.”
Conclusion; Finding that all of the relevant du Pont factors favored Kicking Horse, the Board granted its petition for cancellation and sustained its opposition.
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TTABlog comment: What is clothing not related to? What entity does not promote its products/services via a t-shirt? [The TTABlog t-shirt is coming soon].
Text Copyright John L. Welch 2019.