Cajun Conti, LLC

Trademark Trial and Appeal Board

Apr 29, 2014

No. 85636673 (T.T.A.B. Apr. 29, 2014)

This Opinion is not a
Precedent of the TTAB

Mailed: April 29, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cajun Conti, LLC
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Serial Nos. 85636654 and 85636673
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Mark N. Melasky of Koeppel Traylor for Cajun Conti, LLC.

Catherine L. Tarcu, Trademark Examining Attorney, Law Office 105 (Susan
Hayash, Managing Attorney).
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Before Quinn, Bucher and Lykos,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Cajun Conti, LLC (“applicant”) filed, on May 28, 2012, applications under
Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), to register the marks OCEANA GRILL
(GRILL disclaimed) (in standard characters)1 and
the mark shown at right, (the words “Gumbo,”
“Steaks,” “Seafood,” “Poboys,” and “Oyster Bar”

1 Application Serial No. 85636654, alleging first use anywhere and first use in commerce in
2002.
Application Serial Nos. 85636654 and 85636673
2
disclaimed),2 both for “restaurant services, including sit-down service of food and
take-out restaurant services” in International Class 43.
The trademark examining attorney refused registration in application Serial No.
85636654 under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark, when used in connection with applicant’s services, so
resembles the previously registered marks OCEAN GRILL (GRILL disclaimed) (in
typed form) for “restaurant services” in International Class 43,3 and OCEANANA
(in standard characters) for “hotel, motel, restaurant, bar and catering services” in
International Class 43,4 as to be likely to cause confusion. In application Serial No.
85636673, registration was refused under Section 2(d) based only on Registration
No. 3928634 for the mark OCEANANA. The registered marks are owned by
different entities.
When the refusal was made final in each application, applicant appealed.
Applicant and the examining attorney filed briefs.
Because the two appeals involve common questions of law and fact, the Board
will decide the appeals in this single opinion.

2 Application Serial No. 85636673, alleging first use anywhere and first use in commerce in
2008. The application includes the following description of the mark: “The mark consists of
a blue banner outlined in black that says ‘Oceana’ in white stylized text that is outlined in
red and black. The banner contains a black ornamental design at the top of it. A red
crawfish with a white hat and apron, all of which are outlined in black, appears to the right
of the banner. A brown and white boat floating on the blue ocean appears in a brown
outlined circle below the banner. Blue sky appears behind the boat, and the word
‘OCEANA’ appears in black on the boat. A blue banner outlined in black with the white
words outlined in black ‘GUMBO STEAKS SEAFOOD POBOYS OYSTER BAR’ appear
across the bottom. The background blue is not part of the mark.”
3 Registration No. 2937731, issued April 5, 2005; combined Sections 8 and 15 affidavit
accepted and acknowledged.
4 Registration No. 3928634, issued March 8, 2011.
Application Serial Nos. 85636654 and 85636673
3
Applicant does not dispute the similarity between the services, but argues that
there is no likelihood of confusion because of differences between the marks. (Brief,
p. 8). As to the word marks, applicant contends that the marks “share only some
similar characters” and are pronounced differently. With respect to applicant’s
design mark, applicant again points to the differences between the words in the
marks; no mention is made of the design features.
The examining attorney maintains that the marks are similar and that the
services are “substantially similar.” The examining attorney introduced a dictionary
definition of the word “grill.”5
Our determination of the issue of likelihood of confusion 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 & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
any likelihood of confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976).
With respect to the second du Pont factor, the similarity or dissimilarity between
the services, applicant does not dispute that the services are similar. Indeed, for
purposes of our likelihood of confusion analysis, the services are considered to be
legally identical. It is settled that in making our determination regarding the

5 The examining attorney also introduced third-party registrations showing that the same
mark has been registered by a single entity for restaurant services, as well as for hotel
and/or bar services. Inasmuch as the services herein are identical, either in full or in part
(see discussion, infra), this evidence is superfluous.
Application Serial Nos. 85636654 and 85636673
4
relatedness of the services, we must look to the services as identified in the
applications and the cited registrations. See Octocom Sys., Inc. v. Houston Computer
Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni
Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Applicant’s services in each
application are identified as “restaurant services, including sit-down service of food
and take-out restaurant services”; Registration No. 2937731 covers “restaurant
services,” and the recitation in Registration No. 3928634 includes “restaurant
services.”
Because there are no limitations to the recitations of services in the applications
or the cited registrations as to channels of trade and classes of purchasers, we must
presume that the services travel through all usual channels of trade (different types
of restaurants) and are offered to all normal potential purchasers (e.g., ordinary
consumers). In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); see also Paula Payne
Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Moreover, because the services identified in the applications and the cited
registrations are legally identical, we must presume that the channels of trade and
classes of purchasers are the same. See American Lebanese Syrian Associated
Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB
2011); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to travel in the same channels of
trade, and be sold to the same class of purchasers.”).
The identity between the services, trade channels and purchasers are factors
that weigh heavily in favor of a finding of a likelihood of confusion.
Application Serial Nos. 85636654 and 85636673
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The crux of these appeals centers on the first du Pont factor. Insofar as the
marks are concerned, we must compare the marks in their entireties as to
appearance, sound, connotation and commercial impression to determine the
similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1960 (Fed.
Cir. 2005), quoting In re E. I. du Pont de Nemours & Co., 177 USPQ at 567. “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) (citation omitted). Moreover, in comparing the
marks, we are mindful that where, as here, applicant’s services are identical to the
services of each registrant, the degree of similarity necessary to find likelihood of
confusion need not be as great as where there is a recognizable disparity between
the services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85
USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-
Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
We now turn to consider the similarity or dissimilarity between each of
applicant’s marks and the cited marks.
Application Serial Nos. 85636654 and 85636673
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Application Serial No. 85636654
Applicant’s mark is OCEANA GRILL (GRILL disclaimed) in standard
characters, and the cited marks are OCEAN GRILL (GRILL disclaimed) in typed
form and OCEANANA in standard characters.6
We first turn to compare the marks OCEANA GRILL and OCEAN GRILL. The
word “grill” is defined as “a usually informal restaurant or dining room.” (merriam-
webster.com) (Office action dated 9/19/12). This generic/highly descriptive term has
been properly disclaimed apart from each mark; the term plays no source-indicating
function in either mark. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,”
is the dominant portion of the mark THE DELTA CAFE).
The marks are identical in construction, and very similar in appearance,
differing by only one letter (an additional “A” in applicant’s mark). Given this
minimal difference, the marks also sound alike. As to meaning, both marks suggest
restaurants that offer seafood from the ocean. Given these similarities, the marks
engender highly similar overall commercial impressions.
In comparing the marks OCEANA GRILL and OCEANANA, we initially note
that the dominant portion of applicant’s mark is OCEANA. Given the generic/highly
descriptive nature of the term “GRILL,” the presence of this term in applicant’s
mark does little or nothing to distinguish the marks. We find that this dominant
portion is very similar in appearance and sound to registrant’s mark. Further, the

6 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings.
Application Serial Nos. 85636654 and 85636673
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marks convey similar meanings, namely, restaurants that serve seafood from the
ocean. These similarities result in marks that engender highly similar overall
commercial impressions.
Contrary to applicant’s urging, the coexistence of the cited registrations on the
register does not compel a different result here given the similarities between
applicant’s mark and each of the registered marks. See AMF, Inc. v. American
Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) (“The
existence of these registrations is not evidence of what happens in the marketplace
or that consumers 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.”); In re Max Capital Grp. Ltd., 93 USPQ2d 1243,
1248 (TTAB 2010); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB
2009). See also, TMEP § 1207.01(d)(x) (April 2014).
We conclude that applicant’s mark and each of the registered marks, when used
in connection with identical restaurant services, are so similar that confusion is
likely to occur among purchasers.
Application Serial No. 85636673
Applicant’s mark comprises the words OCEANA GUMBO, STEAKS, SEAFOOD,
POBOYS, and OYSTER BAR (the words “Gumbo,” “Steaks,” “Seafood,” “Poboys,”
and “Oyster Bar” disclaimed) and design features; the cited mark is OCEANANA in
standard characters.
It is well settled that one feature of a mark may be more significant than
another, and it is not improper to give more weight to this dominant feature in
Application Serial Nos. 85636654 and 85636673
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determining the commercial impression created by the mark. In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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. Indeed, this type of analysis appears
to be unavoidable.”).
Where both words and a design comprise the mark (as in applicant’s mark), then
the words are normally accorded greater weight because the words are likely to
make an impression upon purchasers, would be remembered by them, and would be
used by them to request the goods and/or services. In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012), citing CBS, Inc. v. Morrow, 708 F.2d 1579,
218 USPQ 198, 200 (Fed. Cir. 1983) (“in a composite mark comprising a design and
words, the verbal portion of the mark is the one most likely to indicate the origin of
the goods to which it is affixed”); Joel Gott Wines LLC v. Rehoboth Von Gott Inc.,
107 USPQ2d 1424, 1430-31 (TTAB 2013); In re Appetito Provisions Co., 3 USPQ2d
1553, 1554 (TTAB 1987). See also Giant Food, Inc. v. Nation’s Food Service, Inc.,
710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). In applicant’s mark, the literal
portion of the mark, namely OCEANA GUMBO, STEAKS, SEAFOOD, POBOYS,
and OYSTER BAR, is the dominant portion, and is accorded greater weight over the
design features when comparing this mark to the cited mark. Further, with respect
to this literal portion of applicant’s mark, we give less weigh to the generic/highly
descriptive words GUMBO, STEAKS, SEAFOOD, POBOYS, and OYSTER BAR
(informing consumers of the type or style of food served in applicant’s restaurant)
Application Serial Nos. 85636654 and 85636673
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that have been properly disclaimed. In re Chatam Int’l. Inc., 380 F.3d 1340, 71
USPQ2d 1944, 1946 (Fed. Cir. 2004); and In re Binion, 93 USPQ2d 1531, 1534
(TTAB 2009). In the case of applicant’s mark, the only distinctive literal portion of
the mark is OCEANA. Accordingly, we view OCEANA as the dominant portion of
applicant’s mark.
The dominant portion of applicant’s mark, OCEANA, and the entirety of
registrant’s mark OCEANANA are very similar in appearance, differing by just the
two additional letters “NA” at the end of registrant’s mark. The marks are also very
similar in sound. With respect to meaning, the marks both suggest a restaurant
that serves seafood from the ocean.
In comparing the marks, we must consider the marks in their entireties, not
merely a dominant portion. Applicant’s mark includes prominent design features, as
set forth in its description of the mark. The features include a crawfish “chef” and a
fishing boat on the water. Although we have considered all of the design features, as
well as the additional wording, we view all as merely reinforcing the ocean theme of
applicant’s mark. Thus, these additional features do not serve to sufficiently
distinguish applicant’s mark from the cited mark OCEANANA.
In sum, given the similarities between the marks, we find that they engender
similar overall commercial impressions.
We conclude that applicant’s mark and the registered mark, when used in
connection with identical restaurant services, are so similar that confusion is likely
to occur among purchasers.
Application Serial Nos. 85636654 and 85636673
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Decision: The refusal to register under Section 2(d) in each application is
affirmed.