The Trademark Trial and Appeal Board issued another rare reversal this year finding that the LA CHULA & Design (in color) for “preserved, frozen, dried, and cooked fruits” is unlikely to cause confusion with CHULA BRAND (BRAND disclaimed) for “fresh fruits and vegetables, namely, citrus, lemons, avocados, coconuts, papayas, pineapples.”
The Board found that “the applied-for mark and cited mark share the dominant, arbitrary term LA CHULA.” Actually, the only shared term is CHULA. Nevertheless, the Board concluded the marks were similar in terms of sound, appearance, connotation, and commercial impression. The Board also found that the goods at issue are commercially related and that consumers are likely to mistakenly believe they emanate from the same source.
From reading the beginning of the decision, you would think that a decision sustaining the refusal was on its way, but you would be wrong. The Board found that the 13th Du Pont factor outweighed the similarity of the marks and relatedness of the goods or services confusion factors ultimately confusion the applied for mark was unlikely to cause confusion. The 13th Du Pont factor is “any other established fact probative of the effect of use.” This factor is used by the Board and Courts as a catchall in order to decide cases on what they think is happening or likely to happen in the marketplace.
In this case, the Applicants previously registered a similar mark in black and white but for “fruit conserves.” In other words, color was not claimed as a feature of the mark like it was in the Applicants’ applied for mark. And while “fruit conserves” is not an identical description to the applied for goods, the Board found that the goods were closely related. Because the Applicant’s previously registered the same mark in black and while for closely related goods, the Board found there could be no confusion with the colored version fo the logo.
The Board made the right decision, but this case highlights how different trademark examiners examine applications differently.