IP Law Daily, TRADEMARK—TTAB: ECOBRICO for charcoal likely to be confused with ECO BRICKS for fuel pellets, (Jun 27, 2016)

By Peter Reap, J.D., LL.M.

Based on the similarity of the marks, the overlapping and related goods at issue, and the presumption that the goods flow through identical trade channels, Applicant Cocobrico Europe’s mark ECOBRICO for fuels and lighting fuel was likely to be confused with registered mark ECO BRICKS for fuel pellets, the Trademark Trial and Appeal Board has determined (In re Cocobrico Europe Ltd., June 24, 2016, Lynch, C.). Thus, a Trademark Examining Attorney’s refusal to register Cocobrico’s mark was affirmed.

Similarity of the marks. Applicant’s proposed mark is ECOBRICO in standard characters, and the mark in the cited registration is ECO BRICKS, also in standard characters. The marks look and sound similar, the Board observed. In fact, both marks consist of the identical first seven letters, with the same term, ECO, at the beginning, and the following syllable(s), BRICO and BRICKS, also similar. While ECOBRICO ends with an "O" and the registered mark ends with "KS," this difference does little to overcome the overall similarity in the way the marks look and sound.

The commercial impressions of the two marks are similar, particularly in the context of the overlapping and related goods at issue, the Board reasoned. Both use the "ECO" prefix, connoting an environmentally friendly product, as their first component. And the "BRICO" and "BRICKS" portions of the marks suggest or refer to the brick fuel pellets and briquettes identified by both marks. For these reasons, Applicant’s contention that ECOBRICO would be perceived as an entirely fanciful term was rejected, and instead it is suggestive in association with Applicant’s identified goods, charcoal briquettes that are environmentally friendly. The differences in the marks do not outweigh their overall similarities.

Although the Board acknowledged some differences, they are relatively insignificant when the connotation of both marks is considered in the context of the respective goods, according to the Board. Applicant’s contention that the "i" in BRICO necessarily would be pronounced differently than the "i" in BRICK overlooked the established rule that "there is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner." In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012). The BRICO and BRICK portions of the marks remain similar in sound regardless of the variation in pronouncing the vowel.

Given the similarity in sight, sound, connotation and commercial impression of the marks in their entireties, the first du Pont factor weighed in favor of likely confusion.

Relatedness of the goods and trade channels. The registrant’s "fuel pellets" encompass the "charcoal briquettes" identified in the application, the Board held. The broad identification of "fuel pellets" in the cited registration is presumed to encompass all goods of the type described, including charcoal pellets.

Moreover, the record included evidence of the relatedness of the goods in the cited registration and in the application. Numerous third party registrations identified both combustible or charcoal briquettes and wood chips or fuel pellets under the same mark.

Applicant’s attempt to distinguish the goods based on restrictions outside the identifications of goods was not persuasive. Applicant alleged that the registrant’s goods actually are narrower than what is set forth in the identification, as they allegedly are used exclusively for heating and not for cooking. Applicant claimed that its charcoal briquettes, on the other hand, are for grilling. However, as neither identification included these limitations, Applicant’s argument ran afoul of the settled principle that "the identification of goods/services statement in the registration, not the goods/services actually used by the registrant, frames the issue." Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000).

Turning to the trade channels, Applicant’s goods and those in the cited registration, for which both recitations are unrestricted, are presumed to move in all channels of trade normal for such goods and are available to all potential classes of ordinary consumers. Thus, because the goods in the subject application and the cited registration overlap in part, they travel through the same channels of trade to the same class of purchasers. Thus, the du Pont factor relating to the identity of trade channels also weighed in favor of likely confusion, the Board explained.

The case is Serial No. 79152831.

Attorneys: Luke Brean (BreanLaw LLC) for Cocobrico Europe Ltd. Donald Johnson, Trademark Examining Attorney.

Companies: Cocobrico Europe Ltd.

Cases: Trademark USPTO