GUJI Is Geographically Descriptive of Ethiopian Coffee

The TTAB reversed a Section 2(d) refusal of the applied-for GUJI MANE for “Coffee; Coffee beans; Ground coffee beans; Roasted coffee beans; Unroasted coffee” in view of the registered GUJI mark for “coffee,” because “Guji” is a geographic place known for coffee. In re Cxffeeblack LLC, Ser. No. 90109203 (TTAB Dec. 12, 2022).

          Because Guji is a geographical region in Ethiopia known for coffee, it is geographically descriptive of coffee. However, because the cited mark is registered on the Principal Register, it is entitled to the presumptions accorded such a registration under Section 7(b) of the Trademark Act, 15 U.S.C. § 1067(b) (“A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate.”). Nevertheless, the term “Guji” when used in connection with coffee is inherently weak and therefore entitled to a narrow scope of protection or exclusivity of use.

Because “Guji” is geographically descriptive, and was disclaimed in the applied-for GUIJI MANE mark, the TTAB found that the word “Mane” was the dominant part of the applied-for mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”).

The TTAB held that the addition of the word “Mane” was sufficient to distinguish the applied-for GUJI MANE mark from the registered GUJI mark.

          Despite the overlapping goods, given the weakness resulting from the geographic significance of the term shared between Applicant’s mark GUJI MANE and the cited mark GUJI, we find them sufficiently different that there is no likelihood of confusion.

There also was evidence that the cited GUJI mark was no longer in use. But the TTAB held it was improper to attack the validity of the cited registration in an ex parte appeal. In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997) (an ex parte proceeding is not the proper forum to challenge the validity of the cited registration).


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