By Scott Hervey
The Trademark Trial and Appeals Board’s recent ruling in In re Productos Verde Valle, S.A. de C.V. upholding a trademark examiner’s refusal to register the mark SONIA for “sauces; chili sauce; hot sauce” holds a lesson for those of us that regularly advise clients on the registrability (and usability) of trademarks. Assuming Verde Valle conducted a trademark search, it’s very likely (if not certain) that the word mark SONIA SONI LIFE IS A RECIPE for “spices, spice blends; spice rubs” would have come up. If you were representing Verde Valle, would you advise them that this mark will absolutely prevent the registration of their mark? Or, would you advise that SONIA SONI LIFE IS A RECIPE is likely to be raised by the trademark examiner, but based on the differences in appearance, sound and commercial impression between the two marks, and the difference in the goods covered by the two marks, registration should be possible? These were the exact same arguments raised by Verde Valle in its appeal to the TTAB. The Board affirmed the examiner’s refusal to register.
It is understandable that the TTAB found the goods covered by the two marks to be similar. Both are food flavorings, sold in the same channels of trade (grocery stores) to the same group of consumers. Plus, the trademark examiner had submitted a number of third-party registrations covering both spices and sauces. And while Verde Valle argued that its spices were sold as Mexican food while the goods covered by the registered mark were sold as Indian spices, the TTAB pointed out (1) that no such restriction on the scope of the goods, channels of trade or classes of purchasers was included in either the registration or Verde Valle’s application; and (2) certain spices may be used in both Mexican and Indian cuisine.
The interesting part of the decision is the TTAB’s analysis of the two marks. In support of its argument that the marks are different, Verde Valle relied on standard, well-established holdings: that marks must be considered in their entireties and not dissected; that the determination of likelihood of confusion cannot be predicated on only part of a mark; that the commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. In reliance on these principals, Verde Valle argued the shared term SONI is not sufficient grounds on which to deny registration, and that the two marks are distinct in light of the additional terms.
In considering Verde Valle’s arguments, the TTAB acknowledged its obligation to consider the marks in their entireties but also noted that there is nothing “improper in stating that, for rational reasons, more or less weight has been given to a particular feature of the mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties.” The TTAB noted that the proper focus of any inquiry into likelihood of confusion “is on the recollection of the average customer, who retains a general rather than specific impression of the marks” and here, “the average customer includes ordinary consumers seeking food flavorings in the nature of sauces and spices.”
In examining the two marks, the TTAB found the term SONIA to be the most prominent portion of the registered mark. This should have been no surprise to Verde Valle as the first part of a mark – as long as it is distinctive — is most often (if not always) deemed to be the most prominent part of the mark. The rationale behind this is that it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered. What likely was a surprise to Verde Valle was the treatment given to the rest of the mark. In examining its effect on the overall comparison of the marks, the TTAB said that the words LIFE IS A RECIPE “imparts a connotation that simply highlights use of the spices” and contends that consumers would simply ignore them (as well as the other distinctive word, SONI) and believe that Verde Valle’s mark is simply a shortened version of the registered mark, because of “the penchant of consumers to shorten marks.” (In addressing the TTAB’s treatment of SONI, it stated “likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding or deleting other distinctive matter. If an important portion of both marks is the same, then the marks may be confusingly similar notwithstanding some differences.”)
The important lesson here for trademark attorneys who regularly review trademark search reports is to apply an even greater degree of caution when a report reveals a mark that shares an important portion of the searched mark. In cases where the searched mark and a mark in a report share an exact same word, where this shared word in the first word in each mark, and where the goods are highly similar, it may be wise to caution the client that there is a good chance that registration may not be possible.