In one of its last decisions of 2017, the Trademark Trial and Appeal Board found that “rum” is unrelated to a whole host of goods identified by Kabushinki Kaisha Donq d/b/a Donq Co., Ltd in its application for DONQ (Stylized), namely:
Class 29 – Processed meat products, namely croquettes, sausages, canned cooked meat, bottled cooked meat, ham, bacon; processed vegetables and fruits, namely jams, peanut butter, ground almonds, marmalade; pickled vegetables, vegetable juices for cooking; soya milk; processed eggs; instant or pre-cooked curry, soups, stew, soup mixes; edible oils and fats, margarine; olive oil for food; milk products, namely, milk, cream, cheese, lactic acid drinks, butter, condensed milk
Class 30 – Tea; roasted, powdered and granulated coffee, coffee in drinks; roasted, powdered, and granulated cocoa, cocoa in drinks; ice; unroasted coffee; cereal preparations, namely oat flakes, oat meals, corn flakes, spaghetti, uncooked Chinese noodles, bread crumb, macaronis; almond paste; sandwiches; hamburgers sandwiches; steamed buns stuffed with minced meat (niku-manjuh); pizzas; boxed ready-to-eat lunches consisting of rice and also containing side dishes such as cooked vegetables, meat and fishes; hot dogs sandwiches; meat pies; raviolis; yeast powder; yeast, baking powder; instant confectionery mixes namely instant jelly mixes, instant doughnut mixes, instant pudding mixes, instant pancake mixes; seasonings, namely cube sugar, fructose for food, crystal sugar, not confectionery, sugar, maltose for food, honey for food, glucose for food; spices, namely cinnamon powder, curry powder, mustard powder; ice cream mixes; sherbet mixes; confectionery, namely cakes, petit fours, pies, tarts, cookies, biscuits, crackers, waffles, pancakes, fruit jellies, puddings, frozen yoghurt, sherbets, ice cream, pastries, doughnuts, rusks; bread and buns.
Class 32 – Non-alcoholic beverages, namely carbonated beverages, non-alcoholic fruit juice beverages, vegetable juices, whey beverages
Class 35 – Wholesale and retail store services and online wholesale and retail store services for bags and pouches; wholesale and retail store services and online wholesale and retail store services for foods and beverages excluding liquors; wholesale and retail store services and online wholesale and retail store services for hand tools, bladed or pointed hand tools, namely kitchen knives, paring knives, scissors, hardware namely nails, bolts of metal, nails of metal; wholesale and retail store services and online wholesale and retail store services for kitchen equipment, namely ice pails, non-electric whisks, forks, spoons, table knives, non-electric can openers, pot stands, bottle openers, non-electric cooking pots and pans, non-electric coffee pots, tablewares; wholesale and retail store services and online wholesale and retail store services for cleaning tools and washing utensils, namely washing brushes, buckets.
Class 43 – Providing European cuisine; providing tea, coffee, cocoa, carbonated beverages or fruit juices beverages; providing Japanese cuisine.
To both prove and disprove relatedness, both parties relied heavily on third-party registrations. Donq Co. relied on third party registrations for identical marks that were for either rum or a food product. The Opposer relied on third party registrations there were for rum and a food product. The Board held that Donq Co. third party registrations did not disprove relatedness, but had the effect of diminishing the probative value of the Opposer’s third-party registrations.
The Board also distinguished Opposer’s third-party registration evidence because it involved – in the Board’s opinion – famous distillery brands whereas Opposer’s brand was lesser known. Apparently, lesser known brands need to hope that their marks are not adopted by other food or beverage companies because the natural zone of expansion argument does not necessarily apply equally to them as it does to famous brands.
What is learned from this case and others is that when searching food or beverage marks, it is necessary to dig deeper when a potential red flag is raised.