Decisions · 86338392
In re Morinaga Nyugyo Kabushiki Kaisha
Serial No. 86338392 · Decided 2016-09-08 · Section 2(d) Ex Parte Appeal
What happened
The Trademark Trial and Appeal Board reached a split result for the MT. RAINIER THE MOUNTAIN OF SEATTLE ESPRESSO & MILK and design mark for espresso and milk beverages: the Board upheld the refusal to register based on likely confusion with the previously registered MOUNT RAINIER COFFEE COMPANY marks for coffee, but reversed the separate refusal that claimed the mark falsely suggested the goods come from Seattle.
The marks
Applicant
MT. RAINIER THE MOUNTAIN OF SEATTLE ESPRESSO & MILK and design
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
Cited registration
MOUNT RAINIER COFFEE COMPANY
coffee
How the marks compared
| Dimension | Finding | What the Board said |
|---|---|---|
| sound | Similar | MT. RAINIER and MOUNT RAINIER are essentially identical because ‘Mt.’ is a common abbreviation for ‘mount’ and the terms would be pronounced identically. |
| appearance | Similar | The dominant terms MT. RAINIER and MOUNT RAINIER dominate both marks; the mountain design, THE MOUNTAIN OF SEATTLE phrase, and circular carrier in applicant’s mark reinforce rather than distinguish the MT. RAINIER impression. |
| meaning | Similar | Both marks convey the impression of Mount Rainier, a well-known volcanic mountain in Washington state; design elements and subordinate text reinforce this meaning. |
| commercial impression | Similar | Consumers encountering applicant’s mark are likely to mistakenly believe that MOUNT RAINIER COFFEE COMPANY is offering a MT. RAINIER line of espresso and milk drinks; the marks are substantially similar. |
The marks are substantially similar in appearance, sound, meaning, and commercial impression, with the virtually identical dominant terms MT. RAINIER and MOUNT RAINIER creating a high likelihood of confusion when used on closely related espresso/milk beverages and coffee.
du Pont factors that bore on the outcome
| # | Factor | Weight | What the Board found |
|---|---|---|---|
| 1 | Similarity of the marks | Favored Refusal | MT. RAINIER and MOUNT RAINIER are essentially identical, Mt. being a common abbreviation of Mount. |
| 2 | Relatedness of the goods or services | Favored Refusal | Espresso-and-milk beverages are strongly related to coffee. |
| 6 | Number and nature of similar marks in use | Neutral | Six third-party RAINIER registrations, all for bakery products and held by two owners, did not change the conclusion. |
Why this decision is significant
Precedential split decision establishing that Section 2(e)(3) geographic misdescriptiveness is evaluated against the entire composite mark — unlike Section 2(a)‘s broader ’consists of or comprises' language — while affirming the 2(d) refusal over MOUNT RAINIER COFFEE COMPANY.
Research significance is Trademark Valet's editorial rating of how useful a decision is to practitioners. It is not a statement of precedential weight — that is the separate Precedential field, which comes from the Board.
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The original record
Read the opinion and every filing on the Board's own docket. The summary above is our paraphrase, not a quotation from the opinion. The opinion is the authority.
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