IP Law Daily, TRADEMARK—TTAB: KISMATEA was likely to be confused with registered mark KUSMI TEA, (Apr 12, 2023)

By Kevin M. Finson, J.D.

The marks were found to be similar and were to be used for identical goods and within overlapping channels of trade.

An opposition to a tea company’s proposed was sustained by the Trademark Trial and Appeal Board, which found that the mark was likely to be confused with a competitor’s marks. The goods and channels of trade overlapped, and the marks were similar in appearance, sound, and connotation (Orientis Gourmet v. Focus USA Inc., March 21, 2023, Goodman, C.).

Focus USA, Inc. (Focus) sought registration on the Principal Register of the standard character mark KISMATEA for use with “tea” in International Class 30. Orientis Gourmet (Orientis) opposed the registration on the ground of likelihood of confusion with Orientis’ KUSMI and KUSMI-formative registered marks, for use with “tea; tea for infusions; herbal infusions, tisanes” in International Class 30. Focus did not file a brief or enter any evidence. After briefly noting that Orientis’ pleaded registrations showed its entitlement to a statutory cause of action and that priority was not disputed, the board considered the DuPont factors for which there was evidence of record.

Similarity of goods and channels of trade. The board found that both sets of goods contained “tea” and that “tea” was broad enough to encompass “tea for infusions”, so the goods were in part identical. For the identical goods, the board presumed that the channels of trade classes of consumers overlapped. These factors supported a likelihood of confusion.

Conditions of sale. Neither party included limitations on price or conditions of sale, so the board presumed they included both expensive and inexpensive tea. Because inexpensive tea may be purchased on impulse and without a great deal of care, this factor slightly supported a likelihood of confusion.

Strength of opposer’s mark. The board further found that the KUSMI TEA mark was inherently distinctive, despite the limitation of the disclaimed word “tea”, which was generic. However, even after analyzing Orientis’ marketing expenditures, sales figures, and media impressions over several years, the board found that the information lacked context in the broader market, so it was unable to say that the mark was famous or that the KUSMI marks should receive an expanded scope of protection. Therefore, this factor was neutral.

Similarity of the marks. Finally, the board held the marks were visually very similar in that they had similar cadence and structure and ended with the word “tea.” They could be pronounced similarly, and they shared a connotation at least as to the word “tea.” This factor supported a likelihood of confusion.

Balancing the factors, the board sustained the opposition.

The Case is Opposition No. 91266945.

Attorneys: Jamie E. Sternberg (Saunders & Silverstein LLP) for Orientis Gourmet. William E. O’Brien (O’Brien Global Law) for Focus USA Inc.

Companies: Orientis Gourmet; Focus USA Inc.

Cases: Trademark USPTO