Starbuzz Tobacco, Inc. v. Starbuds Cooperative

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 11, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Starbuzz Tobacco, Inc.
v.
Starbuds Cooperative
_____

Opposition No. 91224065
_____

Natu J. Patel and Daniel H. Ngai of The Patel Law Firm, P.C.
for Starbuzz Tobacco, Inc.

Michael G. Atkins of Atkins Intellectual Property, PLLC
for Starbuds Cooperative.
_____

Before Kuhlke, Taylor and Larkin,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Starbuds Cooperative, seeks registration of the mark STARBUDS in

standard characters for “Retail apparel stores; Retail store services featuring a wide

variety of consumer goods of others,” in International Class 35.1

1 Serial No. 86496819, filed January 6, 2015, based on an allegation of a bona fide intention
to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
The Board entered judgment against Applicant with respect to the “hookah lounge services”
in International Class 41 that were originally included in the application based on Applicant’s
unconsented amendment to delete those services. 31 TTABVUE 3.
Opposition No. 91224065

Opposer, Starbuzz Tobacco, Inc., has opposed registration of Applicant’s mark on

the ground that, as used in connection with Applicant’s services, the mark so

resembles Opposer’s previously used and registered marks STARBUZZ, STARBUZZ

HOOKAH LOUNGE, STARBUZZ TOBACCO, and STARBUZZ TOBACCO SINCE

2005 with design, for a variety of goods and services including clothing in

International Class 25, as to be likely to cause confusion under Section 2(d) of the

Lanham Act, 15 U.S.C. § 1052(d). In addition, Opposer asserts the claim that

Applicant’s services are unlawful and therefore Applicant lacks a bona fide intent to

use its mark in lawful commerce under Trademark Act Sections 1 and 45, 15 U.S.C.

§§ 1051 and 1127; and that Applicants mark is deceptively misdescriptive of the

services identified in the application within the meaning of Trademark Act Section

2(e)(1), 15 U.S.C. § 1052(e)(1). By its answer, Applicant admits the allegation that

Opposer is the owner of its pleaded registrations and denies the remaining salient

allegations.

I. RECORD

The record includes the pleadings and, by operation of Trademark Rule

2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of the application subject to the notice of

opposition. Opposer submitted the testimony declarations of Majda Haddoudi,

Opposer’s CFO, with accompanying exhibits;2 and Antonio R. Sarabia II, an expert

witness, with an accompanying expert report.3 In addition, Opposer submitted

2 42 TTABVUE.

3 37 TTABVUE.
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Opposition No. 91224065

notices of reliance on, inter alia, Applicant’s discovery responses; the discovery

deposition of Shy Sadis and accompanying exhibits; USPTO Trademark Electronic

Search System (TESS) printouts of its pleaded registrations (3830725, 4146752,

3653296, 3783438, 3736960), which show that the registrations are subsisting and

owned by Opposer;4 (2) TESS printouts of several other registrations (3113110,

4029487, 4032280, 4104682, 4222267, 4343092, 4407315, 4550274, 4554719,

4689369, 4693037, 4741966, 4937532, 5022795, 4766937, 4564539) owned by

Opposer;5 TESS printouts of Applicant’s Registration No. 4766937 for STARBUDS

for hats and t-shirts; a third-party registration for the mark THE JOINT (and design)

for, inter alia, t-shirts, hats and sweatshirts, and providing medical information in

the field of medicinal marijuana; printouts of Applicant’s website displaying its store

front, and other matters; online news articles; screenshots of Applicant’s Instagram

profile, Yelp page and Facebook profile; dictionary definitions of “bud,” “hookah,” and

“420”; printouts from third-party websites; a judicial opinion; and excerpts from

Washington State statutes.6

4 Pleaded registrations may be made of record by submitting “a current copy of information
from the electronic database records of the Office showing the current status and title of the
registration.” Trademark Rule 2.122(d), 37 C.F.R. § 2.122(d).

5 As discussed below, Opposer did not plead these registrations and therefore may not use
them as a basis for the opposition (such as for purposes of removing priority as an issue in
the case, or for proving standing). Trademark Trial and Appeal Board Manual of Procedure
(“TBMP”) § 704.03(b) (2019).

6 38-41, 49-50 TTABVUE.

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Opposition No. 91224065

Applicant submitted the testimony declaration of Sam Sadis, Applicant’s owner.7

Applicant submitted notices of reliance on, inter alia, dictionary definitions of “buzz”

and “bud”; Applicant’s Registration No. 4766937 (also submitted by Opposer);

printouts of third-party registrations; excerpts from the Revised Code of Washington

and Washington Administrative Code; printout from the FAQ’s from the Washington

State Liquor and Cannabis Board’s website; printouts of third-party websites;

excerpts from third-party registration files showing specimens of use; and printouts

from a third-party cancellation proceeding.8

Opposer and Applicant have lodged objections to certain testimony and exhibits.

Opposer’s objections to testimony and exhibits relating to Applicant’s other

Application Serial No. 86496819 are sustained to the extent that we do not consider

them in connection with the affirmative defense Applicant unsuccessfully sought to

add to this proceeding. 36 TTABVUE (Board order denying Applicant’s motion to

amend to add prior registration defense). We do not strike this material and consider

it for whatever probative value it has with regard to likely confusion. With regard to

Opposer’s registrations submitted during trial but not pleaded, Applicant’s objection

to these registrations is sustained to the extent that we do not consider them for the

purposes of standing, priority or the asserted claims. Harry Winston, Inc. and Harry

7 48 TTABVUE.

8 45-47 TTABVUE. Applicant’s notice of reliance filed on August 29, 2018 (47 TTABVUE) is
a duplicate of the premature notice of reliance submitted on August 3, 2018 (44 TTABVUE)
one day before Applicant’s trial period opened. Opposer did not object to the notice of reliance
filed before the trial period, but did object to the August 29th filing as a duplicate. Opposer’s
objection is overruled, and we refer to the timely filed notice of reliance relied on by Applicant
in its brief.
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Opposition No. 91224065

Winston S.A. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1424 n. 14 (TTAB

2014); see also FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234,

1236 (TTAB 2014) (registration resulting from opposer’s unpleaded application akin

to third-party registration, and may be made of record through notice of reliance for

purposes other than the basis of the opposition, i.e., for “whatever probative value” it

may have). Similarly, with regard to Applicant’s objection to the expert testimony of

Mr. Sarabia, we do not strike this testimony. Mr. Sarabia presented himself as an

expert in trademarks and opined on 1) whether the marks sound and appear similar,

2) whether they will be used on the same services, 3) whether applicant’s mark is

merely descriptive, and 4) whether there are no other federal applications or

registrations in International Classes 35 or 41 which are similar to STARBUZZ. This

“expert opinion” is not based on being a linguist or some specific knowledge, rather it

is more in the nature of the type of report submitted to courts that do not specialize

in trademark matters. However, in the context of an inter partes proceeding before

the Board it is of little utility because “the Board is responsible for determining

whether the marks are similar, and we will not substitute the opinion of a witness,

even an expert witness, for our evaluation of the facts.” Edwards Lifesciences Corp.

v. Vigilanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010).

As to the remaining objections, the Board is capable of weighing the relevance and

strength or weakness of the objected to testimony and evidence, including any

inherent limitations. As necessary and appropriate, we will point out any limitations

in the evidence or otherwise note that the evidence cannot be relied upon in the

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Opposition No. 91224065

manner sought. In doing so, we have kept in mind the various objections raised by

the parties and we have accorded whatever probative value the subject testimony and

evidence merit. See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d

1477, 1479 (TTAB 2017).

II. SECTION 2(d) CLAIM

Section 2(d) of the Trademark Act prohibits the registration of a mark that

“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent

and Trademark Office, or a mark or trade name previously used in the United States

by another and not abandoned, as to be likely, when used on or in connection with

the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15

U.S.C. § 1052(d). To prevail on its Section 2(d) claim, Petitioner must prove, by a

preponderance of the evidence, that it has priority with respect to its asserted

STARBUZZ marks vis-à-vis Applicant’s STARBUDS mark, and that Applicant’s use

of its mark in connection with the services identified in its application is likely to

cause confusion, mistake, or deception as to the source or sponsorship of those

services. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed.

Cir. 2000).

A. Standing and Priority

Opposer’s pleaded and proven registrations are summarized below:

Registration No. 3830725 for the standard character mark
STARBUZZ HOOKAH LOUNGE (HOOKAH LOUNGE
disclaimed) for “Hookah and smoking lounge services,” in
International Class 41 and “Cafe and restaurant services
*for shisha bars, hookah lounges, vaping bars, and cigar

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Opposition No. 91224065

lounges*,”9 in International Class 43 issued on August 10,
2010, Section 8 accepted;

Registration No. 4146752 for the standard character mark
STARBUZZ for “Hookahs and Hookah Accessories,
Namely, Hoses, Bowls, Trays and Tongs,” in International
Class 34, issued on May 22, 2012, Section 8 accepted;

Registration No. 3653296 for the standard character mark
STARBUZZ TOBACCO (TOBACCO disclaimed) for “Retail
and wholesale distributorship of tobacco, pipe tobacco,
smoking tobacco, flavored tobacco, molasses tobacco, and
charcoal; Retail and wholesale distributorship of hookahs
and accessories,” in International Class 35, issued on July
14, 2009, Sections 8 and 15 accepted and acknowledged;

Registration No. 3783438 for the mark
(TOBACCO and SINCE 2005 disclaimed) for “Retail and
wholesale distributorship of tobacco, pipe tobacco, smoking
tobacco, flavored tobacco, molasses tobacco, and charcoal;
Retail and wholesale distributorship of hookahs and
accessories,” in International Class 35, issued on May 4,
2010, Section 8 accepted; and

Registration No. 3736960 for the standard character mark
STARBUZZ TOBACCO for “clothing and apparel, namely,
shirts, beanies, [ skirts, ] t-shirts, sweatshirts, sweaters,
jackets, [ coats, ] hats, caps, [ jeans, pants, sweatpants and
socks ],”10 issued on January 12, 2010, Section 8 accepted.

Because Opposer has made its pleaded registrations properly of record, Opposer has

established its standing to oppose registration of Applicant’s mark and its priority is

not in issue with respect to the marks and goods and services in those registrations.

See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058

9The * indicates narrowing or clarifying language that was added pursuant to an amendment
under Section 7, 15 U.S.C. § 1057.

10 The goods in brackets were deleted in the Section 8 Declaration of Use.
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Opposition No. 91224065

(Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999);

Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982);

and King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ

108 (CCPA 1974).

B. The Parties

Opposer is a manufacturer and distributor of hookah tobacco, electronic cigarettes

and other related products. Haddoudi Decl. ¶ 3, 42 TTABVUE 3. Opposer began

selling tobacco in 2005. Id. ¶ 12, 42 TTABVUE 4. Applicant “owns a store that sells

marijuana and marijuana paraphernalia” in Washington State. Sadis Decl. ¶ 13, 48

TTABVUE 4-5. On January 16, 2012, Applicant “began selling hats and t-shirts

bearing the STARBUDS name on the label and/or hang-tag.” Id. ¶ 2, 48 TTABVUE 2.

Applicant intends to own and operate both brick-and-mortar and online retail stores

for a wide variety of consumer goods, including hats and t-shirts, unconnected to the

sale of marijuana and marijuana paraphernalia. Id. ¶ 13, 48 TTABVUE 5.

C. Likelihood of Confusion

Our likelihood of confusion determination under Section 2(d) is based on an

analysis of all of the probative facts in evidence that are relevant to the factors set

forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA

1973). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.

Cir. 2003). Two key considerations are the similarities between the marks and the

similarities between the goods and services. See Federated Foods, Inc. v. Fort Howard

Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). As noted above, Opposer

pleaded and proved several registrations for STARBUZZ formative marks. For

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Opposition No. 91224065

purposes of our likelihood of confusion analysis, we confine our analysis to Opposer’s

standard character mark STARBUZZ TOBACCO for shirts, beanies, t-shirts,

sweatshirts, sweaters, jackets, hats and caps, in pleaded and proven Registration No.

3736960, summarized above, because if we do not find likelihood of confusion with

respect to the mark and goods in this registration, we would not find it as to the other

pleaded and proven registrations. See In re Max Capital Grp. Ltd., 93 USPQ2d 1243,

1245 (TTAB 2010).

1. Relatedness of the Goods and Services, Channels of Trade, and Classes of
Purchasers
The goods and services do not have to be identical or even competitive in order to

find that there is a likelihood of confusion. In re Iolo Techs., LLC, 95 USPQ2d 1498,

1499 (TTAB 2010); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1368 (TTAB

2009). We must consider not whether the actual goods and services are literally the

same, but rather whether the public will be confused as to their source. See Recot Inc.

v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); In re Shell

Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Safety-Kleen Corp. v.

Dresser Indus., Inc., 518 F.2d 1399, 186 USPQ 476, 480 (CCPA 1975); In re Ass’n of

the U.S. Army, 85 USPQ2d 1264, 1270 (TTAB 2007). See also In re Martin’s Famous

Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (holding

MARTIN’S for wheat bran and honey bread, and MARTIN’S for cheese, likely to cause

confusion). The nature and scope of a party’s goods or services must be determined

on the basis of the goods or services recited in the application or registration. See, e.g.,

Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d

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1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918

F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

It is well recognized that confusion may be likely to occur from the use of the same

or similar marks for goods, on the one hand, and for services involving those goods,

on the other. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,

1052 (Fed. Cir. 2018) (holding DETROIT ATHLETIC CO. for sports apparel retail

services and DETROIT ATHLETIC CLUB for clothing likely to cause confusion); In

re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding

BIGG’S (stylized) for retail grocery and general merchandise store services and

BIGGS and design for furniture likely to cause confusion); In re Phillips-Van Heusen

Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for various items of clothing

and THE “21” CLUB (stylized) for restaurant services likely to cause confusion); In

re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized)

for retail women’s clothing store services and CREST CAREER IMAGES (stylized)

for uniforms likely to cause confusion); Steelcase, Inc. v. Steelcare, Inc., 219 USPQ

433, 435 (TTAB 1983) (holding STEELCARE INC. and design for refinishing of

furniture, office equipment, and machinery and STEELCASE for office furniture

likely to cause confusion).

Clothing commonly bears the same mark as the retail outlets from which it is sold.

Detroit Athletic, 128 USPQ2d at 1306. Indeed, Applicant “agrees that its intended

‘Retail apparel store’ services are at least somewhat related to Opposer’s ‘Clothing

and apparel’ goods.” 52 TTABVUE 33. It is sufficient for a finding of likelihood of

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confusion if relatedness is established for any item encompassed by the identification

of goods or services within a particular class in the application. Tuxedo Monopoly,

Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Inter IKEA

Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014). As such, we need not

discuss Applicant’s additional identified services.

With regard to the channels of trade and classes of consumers, because there are

no limitations as to these factors in the identifications in the application and

registration, we must presume that the identified goods and services move in all

normal channels of trade, and that they are available to all classes of purchasers for

those goods and services. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading

Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); In re Thor Tech, Inc.,

90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions

or limitations into the registrant’s description of goods.”). Thus, we must presume

that Opposer’s listed types of clothing goods would be sold in retail apparel stores.

Detroit Athletic Co., 128 USPQ2d at 1051 (channels of trade for clothing items

identified in cited registration encompassed applicant’s specific channels of trade).

In view of the above, the du Pont factors of the similarity of the goods and services,

the channels of trade and classes of purchasers favor a finding of likelihood of

confusion.

2. Purchasing Conditions
In considering this factor, we must look at the goods and services as identified and

base our determination on the least sophisticated consumer of the identified goods

and services. Stone Lion, 110 USPQ2d at 1163 (cited in In re FCA US LLC, 126

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USPQ2d 1214, 1222 (TTAB 2018) (“Board precedent requires our decision to be based

on the least sophisticated potential purchasers.”)). Because Applicant’s identification

of services is unrestricted and because the clothing items in Opposer’s registration

are also unrestricted, we must assume that these services and goods are sold to

ordinary purchasers who exercise no more than ordinary care in their purchasing

decisions. See In re Fabfitfun, Inc., 127 USPQ2d 1670, 1673 (TTAB 2018) (no

restriction of price in identifications required Board to consider degree of care

exercised by purchasers of low-cost cosmetics). Opposer does not address Applicant’s

services and only presents evidence in relation to its hookah and tobacco goods.

However, based on the identifications in the application and registration, the class of

consumers for the respective goods and services consists of the general public, namely

all types of consumers. There is no evidence that this segment of the general public

would necessarily exercise a higher degree of care when encountering the goods or

services. Moreover, to the extent some consumers may take more care in their

clothing purchase, as noted above, the standard of care for purchasing the goods is

that of the least sophisticated purchaser. Alfacell Corp. v. Anticancer, Inc., 71

USPQ2d 1301, 1306 (TTAB 2004). Accordingly, we find that this factor is neutral.

3. Fame
Before we compare the marks, we address the fifth du Pont factor, the fame of

Opposer’s mark. In the likelihood of confusion context, fame “varies along a spectrum

from very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmount

Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017). A famous

mark is one that has extensive public recognition and renown. Bose Corp. v. QSC

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Opposition No. 91224065

Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002). Fame, if

it exists, plays a dominant role in the likelihood of confusion analysis. Kenner Parker

Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir.

1992). In view of the extreme deference that is accorded a famous mark in terms of

the wide latitude of legal protection it receives, and the dominant role fame plays in

the likelihood of confusion analysis, it is the duty of the party asserting that its mark

is famous to prove it clearly. The commercial strength of a mark “may be measured

indirectly, among other things, by the volume of sales and advertising expenditures

of the goods or services traveling under the mark, and by the length of time those

indicia of commercial awareness have been evident.” Bose Corp. v. QSC Audio Prods.,

Inc., 63 USPQ2d at 1305.

Opposer argues that “Starbuzz has become one of the most prominent and well-

known hookah tobacco companies in the world, including in the United States.” 51

TTABVUE 39. Opposer presents evidence supporting increasing marketing

expenditures, and wide marketing channels including trade shows, print ads, annual

catalogs, the Internet and social media. Opposer also points to the approximately

50,000 visits to its website per year since 2015, 36,000 followers on Instagram, 37,000

fans on Facebook, 3,000 followers on Twitter, and thousands of views on YouTube.

Haddoudi Decl., 42 TTABVUE 14, 93-104.

We first observe that the bulk of the evidence presented is in connection with

Opposer’s hookah lounge services and tobacco goods, not its clothing goods. In

addition, the significance and probative value of the social media evidence is not clear.

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A party that introduces testimony or evidence regarding the pervasiveness of its

social media reach should provide an explanation about how it is probative. For

example, there is no testimony as to how many of the social media followers or views

were in the United States; whether the social media account followers overlap; or

whether the Facebook “likes” were from different separate individuals or whether it

includes multiple “likes” from the same individuals for different facets of the

Facebook postings. Finally, while there is evidence of marketing and 50,000 “views”

on its website every year, there is little context to understand how this compares to

others in the industry. Although the STARBUZZ portion of Applicant’s mark is

fanciful and conceptually strong, we find that Opposer has failed to show that its

STARBUZZ TOBACCO mark is so commercially strong for clothing that we should

accord it a broader scope of protection than any other fanciful mark. Nonetheless, we

find that the STARBUZZ TOBACCO mark is inherently distinctive for clothing and

accord it the normal scope of protection to which inherently distinctive marks are

entitled. Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1348-49

(TTAB 2017) (citing Joseph Phelps, 122 USPQ2d at 1734). This du Pont factor is

neutral in our likelihood of confusion analysis.

4. Third-party Use of Similar Marks for Similar Goods and Services
Under the sixth du Pont factor, a mark’s commercial strength may be curtailed by

third-party use of similar marks with similar goods or services. Jack Wolfskin

Austrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,

797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Juice Generation, Inc. v. GS

Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015). Applicant

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Opposition No. 91224065

points to several registrations and examples of use for the mark STARBUCKS owned

by a single third-party for a variety of goods including clothing,11 and the use of one

other third party WILLIAM STARBUCK for ties.12

This evidence does not move the dial in any measurable way. First, registrations

are not evidence of use in the marketplace. AMF Inc. v. Am. Leisure Prods., Inc., 474

F.2d 1403, 177 USPQ 128, 129 (CCPA 1973) (“The existence of these registrations is

not evidence of what happens in the market place or that customers are familiar with

them nor should the existence on the register of confusingly similar marks aid an

applicant to register another likely to cause confusion, mistake or to deceive.”). Active

third-party registrations may be relevant to show that a mark or a portion of a mark

is descriptive, suggestive, or so common that the public will look to other elements to

distinguish the source of the goods or services. See, e.g., In re i.am.symbolic, 123

USPQ2d at 1751; Jack Wolfskin, 116 USPQ2d at 1136; Juice Generation, 115

USPQ2d at 1674-75.

Here, the record only includes registrations and examples of use by a single third

party with a mark that contains a similar element and one other third party with a

mark that is a person’s full name. In light of the small number of the third-party uses

and registrations of record, we do not find the evidence sufficient to establish that the

common beginning of the parties’ marks, the letters “STARBU,” is in such widespread

use that consumers have come to distinguish marks containing those letters based on

11 45, 47 TTABVUE.

12 45 TTABVUE 73-6.
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minute differences. See i.am.symbolic, 123 USPQ2d at 1751 (stating that evidence of

third-party use for similar goods “falls short of the ‘ubiquitous’ or ‘considerable’ use

of the mark components present in [applicant’s] cited cases”); cf. Jack Wolfskin, 116

USPQ2d at 1136 (discussing “voluminous evidence” of registration and use of paw

print design elements); Juice Generation, 115 USPQ2d at 1674 (referring to evidence

of “a fair number” of third-party marks).

5. Variety of Goods and Services Sold under Opposer’s Mark
Opposer argues that it uses its mark on a wide variety of goods and services and

in view of the wide range of products offered in connection with the STARBUZZ

marks it is more likely that consumers would believe Applicant’s use of a similar

mark is connected or affiliated with Opposer. For this decision, we may only consider

the wide variety of goods and services used in connection with Opposer’s pleaded

marks as it bears on the STARBUZZ TOBACCO mark. In addition to the clothing

items on which we focus this decision, the record shows this mark being used and

registered in connection with various types of tobacco and retail and wholesale

distributorship of hookahs and accessories. However, here, it has not been shown that

use on these other goods and services makes it more likely that consumers would

believe that Applicant’s retail apparel stores services emanate from Opposer. UMG

Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1884 (TTAB 2011). Certainly,

Opposer has registered and used various STARBUZZ formative marks, but Opposer

has not pleaded a family of marks. We find on this record that this factor is neutral.

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Opposition No. 91224065

6. Similarity of the Marks
We now consider the similarity or dissimilarity of Applicant’s mark STARBUDS

and Opposer’s mark STARBUZZ TOBACCO when compared in their entireties in

terms of appearance, sound, connotation and commercial impression. Detroit Athletic

Co., 128 USPQ2d at 1048. “Similarity in any one of these elements may be sufficient

to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB

2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); Steelcase,

219 USPQ at 436. “The proper test is not a side-by-side comparison of the marks, but

instead whether the marks are sufficiently similar in terms of their commercial

impression such that persons who encounter the marks would be likely to assume a

connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668

F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted). The marks

must be considered in their entireties, but “‘in articulating reasons for reaching a

conclusion on the issue of confusion, there is nothing improper in stating that, for

rational reasons, more or less weight has been given to a particular feature of a mark,

provided the ultimate conclusion rests on consideration of the marks in their

entireties.”’ Detroit Athletic, 128 USPQ2d at 1051 (quoting In re Nat’l Data Corp., 753

F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).

We begin by finding that STARBUZZ, the first word in Opposer’s mark, is the

dominant portion of the STARBUZZ TOBACCO mark. Detroit Athletic, 128 USPQ2d

1303 (citing Palm Bay, 73 USPQ2d at 1692) (consumers typically notice first word in

mark). The marks are similar in appearance in that they begin with the word star

and the suffixes in STARBUZZ and STARBUDS both begin the letters BU. In

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Opposition No. 91224065

addition, the first word STARBUZZ in Opposer’s mark and Applicant’s mark

STARBUDS are each comprised of two syllables and eight letters. The difference of

the ending letters ZZ and DS do not present a strong visual dissimilarity. The

addition of the word TOBACCO in Opposer’s mark does present a difference in

appearance. The marks are very similar in sound notwithstanding the presence of

the word TOBACCO in Opposer’s mark in that the only differing letters ZZ and DS

in the words STARBUZZ and STARBUDS may be pronounced and heard similarly.

As to connotation, Applicant argues that the differing suffixes BUZZ and BUDS have

different meanings, and the addition of the word TOBACCO to Opposer’s mark adds

to the differing connotations as well. Specifically, Applicant asserts that the word

TOBACCO “tell[s] consumers that Opposer … sells tobacco [and] Applicant’s

STARBUDS trademark makes no mention of … tobacco and, therefore conveys no

such message.” 52 TTABVUE 31. Applicant points to definitions from Dictionary.com

and Urban Dictionary and contends the term “buzz” is a slang term for “excitement”

or “thrill” indicating Opposer’s tobacco is strong and the “‘buds’ portion of Applicant’s

trademark … mean[s] a host of different things, including parts of a plant, rounded

parts of a body, and shorthand for ‘buddies.’” Id.; 47 TTABVUE 9-18. However, in the

context of the relevant goods and services, clothing items, and retail apparel and

consumer goods stores, the word TOBACCO has only modest source-identifying

significance. In this case, we find that the similarity in appearance and sound

between STARBUZZ TOBACCO and STARBUDS outweigh any perceived differences

in meaning between the marks resulting from the presence of TOBACCO in Opposer’s

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Opposition No. 91224065

mark, or otherwise. See, e.g., Steelcase, 219 USPQ at 436 (holding that similarities in

appearance and sound between marks could be “more than sufficient to sustain

determinations of likelihood of confusion without reference to similarities or

differences in meaning or connotation” and finding that similarities between

STEELCARE INC. and design and STEELCASE in appearance and sound

outweighed possible perceived differences in the marks in connotation “i.e., care and

maintenance of steel or metal products in applicant’s case and the suggestion of

container-like or case-like products made of steel or metal with respect to opposer’s

marks”). This du Pont factor supports a finding of likelihood of confusion.

7. Actual Confusion
Applicant argues that “Opposer claims it began using its STARBUZZ TOBACCO

trademark for ‘Clothing and apparel,’ specifically including ‘hats’ and ‘t-shirts,’ in

May 2009 [and] Applicant began using its STARBUDS trademark for ‘hats’ and ‘t-

shirts’ in January 2012.” 52 TTABVUE 30. Applicant then asserts that “both parties

have used their respective marks for identical goods – with identical channels of trade

– for more than seven years [without] a single instance of actual confusion.” 52

TTABVUE 40. While the absence of actual confusion may weigh against a finding of

likelihood of confusion under appropriate circumstances, the absence of any reported

instances of confusion is meaningful only if the record indicates a reasonable

opportunity for confusion to have occurred. Barbara’s Bakery, Inc. v. Landesman, 82

USPQ2d 1283, 1287 (TTAB 2007). Applicant contends that there is no evidence of

actual confusion. We first note that the subject application is for retail services, not

clothing, and is based on intent to use. In addition, we have insufficient evidence on

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Opposition No. 91224065

which to determine whether there have been actual meaningful opportunities for

confusion to occur. See Cunningham, 55 USPQ2d at 1847; Gillette Canada Inc. v.

Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Finally, evidence of actual

confusion is not necessary to establish a likelihood of confusion. Herbko Int’l Inc. v.

Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han

Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1338 (Fed. Cir. 2001). We find this

factor to be neutral.

8. Balancing of the Factors
We have considered all of the evidence pertaining to the relevant du Pont factors,

as well as the parties’ arguments with respect thereto. In balancing the relevant

factors, we conclude that because the goods and services are related, the trade

channels and classes of customers overlap, and the marks are similar, confusion is

likely.

III. Conclusion

Because Opposer has shown, by a preponderance of the evidence, its standing and

priority, and the existence of a likelihood of confusion, Opposer has established its

claim under Section 2(d). In view of our decision on the likelihood of confusion claim

we do not reach the unlawful use claim. See Multisorb Tech., Inc. v. Pactiv Corp., 109

USPQ2d 1170, 1171 (TTAB 2013) (the Board has “discretion to decide only those

claims necessary to enter judgment and dispose of the case” because its

“determination of registrability does not require, in every instance, decision on every

pleaded claim”).

Decision: The opposition is sustained.

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