SPICE ISLANDS, INC. v. FRANK TEA AND SPICE COMPANY Patent Appeal No. 74-567.
505 F.2d 1293 (1974)
SPICE ISLANDS, INC., Appellant, v. The FRANK TEA AND SPICE COMPANY, Appellee.
United States Court of Customs and Patent Appeals.
November 27, 1974.
John P. Sutton, Limbach, Limbach & Sutton, San Francisco, Cal., attorney of record, for appellant.
Frank P. Presta, Jacobi, Lilling & Siegel, Arlington, Va., attorney of record, for appellee.
This appeal is from the decision of the Trademark Trial and Appeal Board
No dispute arises over appellant being the first user, and, as stated by the Trademark Trial and Appeal Board:
Appellant's marks appear as shown below:
Appellee's marks appear as follows:
The record shows that appellant for many years has continuously used the mark SPICE ISLANDS alone and/or in association with a representation of a tree or the top of a tree in connection with the sale of spices and food seasonings of various kinds, including garlic powder and minced onions. Its goods are marketed throughout the United States, its sales thereof have ranged between five and ten million dollars a year, and it has spent approximately $500,000 a year in promoting its goods through such media as radio, nationally distributed consumer magazines, and the distribution of seasoning charts and cookbooks.
Appellant markets condiments displaying both its SPICE ISLANDS mark and tree mark.
Since March of 1970, appellee has used its marks in connection with the sale of a line of spices, food seasonings, and condiments. Its sales under these marks have totaled approximately $500,000. From 1959 until 1970 appellee sold its goods under another mark,
After having carefully reviewed the record and the arguments of counsel, we are convinced that the board erred in dismissing the opposition and in denying the petition for cancellation of appellee's registration.
In reaching its decision, the board improperly dissected the marks. For example, the board stated:
Of paramount interest is not the descriptive nature of SPICE,
Furthermore, it is unclear whether the board accorded proper weight to appellant's most pertinent trademark usage in arriving at its conclusion that a
In reaching our decision, we note that the goods are identical, are in direct competition with one another, are of low cost and presumedly purchased without great reflection, and, finally, are purchased by the same class of purchasers. We find that the marks, when applied to seasonings such as garlic powder and minced onion, convey to prospective purchasers the same idea, same mental reaction, and same meaning. Procter & Gamble Co. v. Conway,
Appellee has referred to a number of third party registrations which, appellee submits, indicate that appellant does not possess exclusive rights to the representation of a tree, as applied to spices, seasonings, or other food products. Appellee has also introduced 38 third-party registrations, which include the word SPICE, for the purpose of showing that SPICE is commonly used in registered marks applied to spices, seasonings, and other food products. While third-party registrations are to be considered, they are of little help and do not control our determination of whether the marks are so similar that they are likely to cause confusion, mistake, or deception. Clairol Incorporated v. Roux Laboratories, supra.
Appellee further argues that the commercial impression created by each mark is significantly different. Thus, it is contended that SPICE ISLANDS connotes a group of islands in Indonesia where the climate is semi-tropical, while SPICE TREE serves to create the impression of a fanciful tree on which various spices are grown. We do not find such an argument persuasive. Suffice to say, we note that it overlooks the fact that appellant uses its mark SPICE ISLANDS in connection with its tree mark.
For the foregoing reasons, the decision of the Trademark Trial and Appeal Board is reversed.
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