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Supplemental Register Gets Nod from Trademark Trial & Appeal Board

Intellectual Property Alert

September 19, 2016

On September 8, the Trademark Trial and Appeal Board lent support to the strength of a registration on the Supplemental Register, indicating that it is worthwhile to pursue federal registration, even if that means your mark ends up on this secondary register.

In the case, In re Morinaga Nyugyo Kabushiki Kaisha, a Japanese company applied for the design mark (shown to the right) for “espresso coffee containing milk,” and related goods. 

The USPTO trademark examining attorney had refused registration on the basis that the applicant’s mark was confusingly similar to the mark MOUNT RAINER COFFEE COMPANY, registered for “coffee” by Mount Rainier Coffee Company in Puyallup, Washington. The Board affirmed the examining attorney’s decision on the basis that the applicant’s goods are identical or very closely related to those in the registration and the marks are significantly similar even though they differ in some respects. 

In coming to this conclusion, the Board noted that the first words of the parties’ marks – MT. RAINER in the applicant’s mark and MOUNT RAINER in the registered mark – are pronounced identically, and that the rest of the wording in both parties’ marks is generic, or at least highly descriptive, and therefore not significant. Thus, the “clear and dominant impression of both marks is the virtually-identical MOUNT RAINER or MT. RAINER” the Board said.

This likelihood of consumer confusion exists even though the applicant’s mark is a design mark while the registered mark includes only wording. On this point, the Board noted that the mountain design in applicant’s mark reinforces, rather than detracts from, the impression made by the words MT. RAINER. Thus, the applicant’s design did not serve to differentiate the marks but, if anything, to strengthen the impression that the applicant’s goods are associated with the registrant’s goods.

Addressing the strength of the cited Supplemental Register mark, the Board refused to apply a different, more stringent likelihood of confusion test than it typically applies. It also assumed that the registered mark was on the Supplemental Register due to its geographic descriptiveness, but concluded that the registration will still prohibit registration of an extremely similar mark. As the Board explained, “even if a geographically descriptive mark may not be given a broad scope of protection, the fact that it is registered on the Supplemental Register is enough for it to ground the ex parte refusal of an application for registration of a similar mark for use on the same or closely related goods or services.”

One interesting note about the application filed in this case: one of the goods listed is “sandwiches flavored with espresso coffee and milk.” The author of this article recently traveled to Japan and can confirm that these sandwiches are a staple in the corner stores.