The Board dismissed this opposition to registration of the mark KIST, in standard character and stylized form, for “Soft drinks, namely, sodas and sparkling water; concentrates and syrups for making soft drinks,” finding neither likelihood of confusion with, nor likely dilution of, the mark SUNKIST, registered in standard character and design form for fresh fruits and various beverages and concentrates. Sunkist Growers, Inc. v. Intrastate Distributors, Inc., Opposition No. 91254647 (September 30, 2023) [not precedential] (Opinion by Judge Cheryl S. Goodman).
Likelihood of Confusion: Because the involved goods are legally identical, the Board must presume that they travel through the same trade channels to the same classes of consumers. The Board also found that the goods are purchased with ordinary care.
Turning to the strength of Opposer’s marks, the Board concluded that SUNKIST, which Opposer acknowledged is phonetically equivalent to “sun-kissed,” has a somewhat suggestive meaning: “it suggests the sunny growing conditions in California for Opposer’s citrus fruit.” This suggestion was confirmed by Opposer’s advertising, which “touts the California sunshine under which Opposer’s citrus fruits are grown.”
As to commercial strength, there were no third-party uses or registrations of the same or similar sun-kissed formative marks in the industry. Based on Opposer’s use of the SUNKIST mark with carbonated beverages since 1977, the wide availability of the products, and its substantial sales figures, the Board found that “Opposer’s mark is commercially strong for carbonated soda drinks, specifically, citrus flavored soda, and has a high degree of public recognition and renown.”
With regard to the marks, however, the sun did not shine on opposer. The Board found the marks to be similar in appearance and sound to the extent they both contain the term KIST. As to connotation and overall commercial impression, the Board observed that it may look at the trade dress of the products “as evidence of whether a word mark projects a confusingly similar or different meaning or impression.”
“Applicant markets KIST to reference a kiss.” “Opposer markets SUNKIST to reference the sun.” The Board concluded that the marks differ in connotation and commercial impression, and that difference “weighs heavily against confusion.”
Because the commercial impression engendered by KIST is significantly different from the commercial impression created by SUNKIST, and the appearance, sound and connotation are only superficially similar, the first DuPont factor weighs against likelihood of confusion.
Finally, the Board found the lack of evidence of actual confusion — despite the fact that the parties have sold their carbonated sodas in the same geographic areas and through the same retailers since 2000 — weighed against opposer.
The Board concluded that applicant’s KIST marks are not likely to cause confusion with Opposer’s SUNKIST marks.
Putting aside that fatal, threshold problem, the Board concluded that opposer’s evidence fell “far short” of establishing fame for dilution purposes. Opposer offered no media evidence showing widespread recognition of the mark, market data that was uncorroborated hearsay, and advertising figures that were undated. And so, the Board jettisoned the dilution claim.
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TTABlogger comment: What about that argument that KIST might be seen as a product line expansion of SUNKIST? The Board has embraced that argument in several recent Section 2(d) appeals.
Text Copyright John L. Welch 2023.