Carl’s Jr. Restaurants LLCv.Burma Super Star, Inc.Download PDFTrademark Trial and Appeal BoardJul 12, 201991226465 (T.T.A.B. Jul. 12, 2019) Copy Citation This Opinion is Not a Precedent of the TTAB Oral Hearing: April 11, 2019 Mailed: July 12, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Carl’s Jr. Restaurants LLC v. Burma Super Star, Inc. _____ Opposition No. 91226465 _____ Steven J. Nataupsky, Michael K. Friedland and Gregory B. Phillips of Knobbe, Martens, Olson & Bear, LLP for Carl’s Jr. Restaurants LLC. Janis Ing and Joseph V. Mauch of Shartsis Friese LLP for Burma Super Star, Inc. _____ Before Mermelstein, Wellington, and Adlin, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Burma Super Star, Inc. (“Applicant”) filed an application seeking registration on the Principal Register of the mark BURMA SUPERSTAR in standard characters (BURMA disclaimed) for the following goods and services:1 1 Application Serial No. 86585818 filed on April 2, 2015. For the goods in International Classes 29 and 30, the application is based on Section 1(a) of the Trademark Act (“the Act”), 15 U.S.C. § 1051(a), alleging first use of the mark on the goods anywhere and in commerce on November 24, 2014. For the Class 43 services, the application is also based on use, Opposition No. 91226465 - 2 - Tea leaf salads in the nature of vegetable salads; lotus chips in the nature of vegetable chips; pre-cooked curry stew; packaged entrees consisting primarily of meat, fish, poultry or vegetables; prepared entrees consisting primarily of meat, fish, poultry or vegetables; frozen entrees consisting primarily of meat, fish, poultry or vegetables; nut and seed snack mix; prepared nut and seed mix for topping salads in International Class 29; Salad dressing; tea leaf snack bars; coconut rice, namely, cooked rice prepared with coconut milk; tea leaf-based snack foods, namely, tea leaf clusters in International Class 30; Non-alcoholic beverages, namely, carbonated beverages; ginger ale; ginger beer; ginger lemonade; ginger flavored beverages in International Class 32; and Restaurants in International Class 43. Carl’s Jr. Restaurants LLC (“Opposer”) opposes registration of the applied-for mark on the following grounds: the application is void ab initio because Applicant was not the owner of the mark at the time the application was filed; likelihood of confusion; dilution; and abandonment.2 Applicant filed its Answer denying the salient allegations in the notice of opposition.3 The parties have fully briefed this opposition proceeding4 and, on April 11, 2019, both parties presented arguments during an oral hearing before the Board. claiming a first use date of March 18, 1992. And, with respect to the Class 32 goods, the application is based on an alleged bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act (“the Act”), 15 U.S.C. § 1051(b). 2 31 TTABVUE (Notice of Opposition, as amended); the Board previously granted Opposer leave to file an amended notice of opposition (28 TTABVUE). 3 32 TTABVUE (Answer, as amended). 4 52, 55 TTABVUE (Opposer’s main and rebuttal briefs); 53 TTABVUE (Applicant’s brief). Opposition No. 91226465 - 3 - I. Standing A threshold issue in each inter partes case is the plaintiff’s standing to challenge registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). Opposer has established its standing by properly making of record under notice of reliance several of its pleaded registrations, including Registration No. 1099039 for the mark SUPER STAR for “preparing and serving hamburgers as part of restaurant services,”5 and Registration No. 4704436 for the mark SUPER STAR REWARDS for “arranging and conducting incentive programs to promote the sale of food and beverage items for consumption on or off the premises” in Class 35.6 These registrations serve as a basis for Opposer’s likelihood of confusion claim that is not wholly without merit. Lipton Indus. Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Because Opposer has established its standing to assert its Section 2(d) claim, it has standing to pursue the other grounds for opposition. See, e.g., Corporacion Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1877 (TTAB 2011). 5 Opposer’s First Notice of Reliance (33 TTABVUE 13-16). 6 Id. 44-51. Opposition No. 91226465 - 4 - II. Application is Void Ab Initio Because Applicant Was Not the Owner of the Mark at the Time of Filing the Application (Classes 29, 30, and 43) a. Background Desmond Tan is Applicant’s president and CEO and has provided key testimony regarding the chain of title of the applied-for mark.7 In 1992, the Burma Superstar restaurant opened in San Francisco, California.8 In 2001, East-West Holdings (“EWH”) purchased the BURMA SUPERSTAR restaurant in San Francisco.9 Today, there are currently three BURMA SUPERSTAR restaurants – the original (in San Francisco), one in Alameda and one in Oakland.10 In 2007, EWH was granted a registration (Reg. No. 3429916) for the mark BURMA SUPERSTAR in connection for restaurant services.11 Tan testified the registration was cancelled on December 26, 2014, “due to inadvertent failure to file a required document.”12 Tan testified that, in 2007 and 2008, EWH entered into oral non-exclusive license agreements with two different entities owned by Tan, allowing them to use the BURMA SUPERSTAR mark in connection with two additional restaurants in 7 40 TTABVUE 46-84 (Tan declaration) and 45-48 TTABVUE (Cross-examination testimonial deposition of Tan, and exhibits). 8 40 TTABVUE 46. 9 Id. 10 45 TTABVUE 8. 11 Id. at 47. 12 Id. Opposition No. 91226465 - 5 - Alameda and Oakland, California.13 At the time, Carl Velasco (“Velasco”) was the sole shareholder of EWH.14 Tan was married to Joycelyn Lee (“Lee”) and Tan testified that Lee became the sole owner of EWH in approximately 2007-2009.15 Tan originally testified that in “2007 and 2008” EWH “orally assigned the BURMA SUPERSTAR mark and all related licenses to [Tan].”16 Tan further testified that in 2014, he assigned the mark to Applicant, Burma Super Star, Inc.17 On cross- examination, however, Tan testified that EWH “transferred” ownership of the mark to Tan in 2015 because Tan “wanted ownership” and “wanted to have it personally in [his] name.”18 In other words, on cross-examination, Tan contradicted his earlier testimony that he acquired the mark in “2007 and 2008.” Indeed, if EWH had assigned the mark to Tan in 2007 or 2008, as Tan testified originally, EWH would have been unable to assign it in 2015. Likewise, if EWH did not assign the mark to Tan until 2015, Tan could not have assigned the mark to Applicant in 2014. Thus, either Tan’s original testimony, or his testimony on cross-examination, was incorrect. 13 Id. at 46-47. 14 45 TTABVUE 12, 19-21. 15 Id. at 20. 16 40 TTABVUE 46-47. 17 Id. 18 45 TTABVUE 45. Opposition No. 91226465 - 6 - In any event, on April 2, 2015, Applicant filed the involved application asserting that it is the owner of the BURMA SUPERSTAR mark for the goods and services listed in Classes 29, 30, and 43 of the application. On February 22, 2016, in what also seems to contradict Tan’s testimony regarding the purported assignment of the mark from EWH to Tan in either “2007 and 2008” or 2015, the involved application was opposed by Lee and EWH who alleged that Applicant “and/or [Tan] is not the true owners or sole owners . . . of the mark” BURMA SUPERSTAR.19 In his testimony, Tan acknowledged the opposition and noted that it was withdrawn based on a settlement agreement that included an assignment of rights in the BURMA SUPERSTAR mark – specifically, Tan testified:20 In March 2017, [Tan, Lee and EWH] entered into a settlement agreement. A true and correct copy of that settlement agreement is attached as Exhibit F. On June 5, 2017, Ms. Lee and [EWH] withdrew their opposition to registration of the BURMA SUPERSTAR mark based on the settlement. Among other terms in the settlement agreement, Ms. Lee and [EWH] agreed to assign any and all purported rights in the BURMA SUPERSTAR mark to Applicant, and Applicant agreed to grant an irrevocable, unassignable license to Ms. Lee providing her the exclusive right to use the BURMA SUPERSTAR mark in connection with the operation of the full- service BURMA SUPERSTAR restaurant in San Francisco. Ms. Lee has committed to maintain the nature and quality of the goods and services provided in connection with the BURMA SUPERSTAR mark at the San Francisco restaurant, and the parties are working to further document the agreed-upon assignment and license. 19 A copy of that notice of opposition was submitted by Opposer under Notice of Reliance (35 TTABVUE 54-56). A copy of a Notice of Withdrawal of Opposition, filed by joint opposers Lee and EWH on June 5, 2017, was also submitted. Id. at 58. 20 Id. at 51. A copy of the hand-written agreement is attached to the declaration as Exh. F (40 TTABVUE 83-84). Opposition No. 91226465 - 7 - The actual terms of the referenced agreement include, “2. [Lee] gets the 3 SF restaurants. 3. [Tan] gets the other restaurants and Burma Superstar trademark.”21 Tan also testified that later, in October 2017, he filed a declaration in a California civil action involving Lee, wherein he averred that:22 I have a clear recollection of the negotiations relating to the Burma SuperStar Trademark. It was important that I (or rather a corporation owned and controlled by me) controlled the Burma SuperStar trademark in order to protect it. In addition, I saw value in this trademark going forward and the additional $ 700,000 I agreed to pay to Joycelyn Lee was in large part a payment for my sole ownership of the trademark. b. Analysis Pursuant to Section 1(a)(1) of the Trademark Act, 15 U.S.C. § 1051(a)(1), only “[t]he owner of a trademark used in commerce may request registration of its trademark ....” Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630, 635 n.6 (CCPA 1976) (“One must be the owner of a mark before it can be registered.”); In re Deister Concentrator Co., 289 F.2d 496, 129 USPQ 314, 320 (CCPA 1961) (“Under section 1, only ‘The owner of a trademark’ can apply for registration.”). Therefore, “[a]n application filed by one who is not the owner of the mark sought to be registered is a void application.” In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690 (TTAB 1991) (citing In re Techsonic Indus., Inc., 216 USPQ 619 (TTAB 1982)); see also Huang 21 40 TTABVUE 83. 22 45 TTABVUE 105-07, 48 TTABVUE 13-17 (Tan Dep. Ex. 107 copy of Tan declaration filed in Superior Court of the State of California, County of San Francisco, Case No. CGC 15- 547404) on October 12, 2017. A copy of an unsigned “Trademark Assignment” (“Final Execution Version”) was also submitted with the Tan deposition (Ex. 108, 48 TTABVUE 18- 20), but Tan testified that he did not recall this document. Because it is unclear whether this version of the assignment was indeed final or whether it was ever executed, we have not relied on it. Opposition No. 91226465 - 8 - v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988) (affirming Board’s holding that an application was void ab initio because the applicant was not the owner of the mark on the filing date); Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1239 (TTAB 2007) (“In a use-based application under Trademark Act Section 1(a), only the owner of the mark may file the application for registration of the mark; if the entity filing the application is not the owner of the mark as of the filing date, the application is void ab initio.”); Trademark Rule 2.71(d), 37 CFR § 2.71(d) (“An application filed in the name of an entity that did not own the mark as of the filing date of the application is void.”). The involved application, as filed, included a claim by Applicant that it was the owner of the mark under Section 1(a) with respect to the goods and services in Classes 29, 30, and 43 (see Note 1).23 As to the goods identified in Class 32, Applicant did not allege that it was the owner of the mark, but only that it had a bona fide intent to use the mark and was “entitled” to do so under Section 1(b).24 Accordingly, Opposer’s non- ownership claim is only applicable to Classes 29, 30, and 43. 23 The standard declaration for a use-based application under Section 1(a) of the Act includes an averment that “[t]he signatory believes that the applicant is the owner of the trademark/service mark sought to be registered. The mark is in use in commerce on or in connection with the goods/services in the application.” 24 In contrast to the Section 1(a) declaration (see previous note), there is no statutory requirement that the filer of an intent-to-use application under Section 1(b) allege that the applicant is the owner of the mark at the time of filing of the intent-to-use application. Rather, the standard declaration for an intent-to-use filer includes an averment that “[t]he signatory believes that the applicant is entitled to use the mark in commerce. The applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services in the application.” Opposition No. 91226465 - 9 - Based on the record, particularly the Tan testimony, we find that Applicant was not the sole owner of the BURMA SUPERSTAR mark in April 2015 when it filed the involved use-based application. As discussed, Tan’s two different versions of how the mark was assigned to him (and then on to Applicant) before April 2015 are not only inconsistent, but are also contradicted by other evidence showing that an assignment was necessary and executed in 2017. With respect to the 2017 transaction, Tan stated that he paid $700,000 to Lee, “in large part . . . for . . . sole ownership of the trademark.”25 But if that is so, Tan did not have sole ownership which could have been conveyed to Applicant prior to the April 2, 2015, filing date of the subject application. In order for testimony to be credible and probative, it “should not be characterized by contradictions, inconsistencies, and indefiniteness but should carry with it conviction of its accuracy and applicability.” B.R. Baker Co. v. Lebow Bros., 150 F.2d 580, 66 USPQ 232, 236 (CCPA 1945); see also, Cerveceria Centroamericana v. Cerveceria India, 892 F.2d 1021, 13 USPQ2d 1307, 1312 (Fed. Cir. 1989) (the testimony of the witness regarding use was afforded little weight because it was “to say the least, vague.”) Tan’s testimony regarding purported assignments of the mark prior to April 2015, as pointed out, is inconsistent and thus lacks sufficient credibility. Rather, the preponderance of the evidence demonstrates that before and after April 2015, there were various ownership claims still being asserted by, at least, Tan, EWH or Lee. Applicant’s principal, Tan, did not ultimately acquire sole ownership of the 25 45 TTABVUE 105-07, 48 TTABVUE 13-17 (Tan Dep. Ex. 107). Opposition No. 91226465 - 10 - mark until March 2017, when he reached a written settlement with Lee and EWH and had all asserted rights in the mark assigned to him. In any event, the point is that while the record does not clearly establish exactly who owned the mark or when, it is clear that Applicant was not its sole owner on the application’s filing date. Applicant argues that Tan, “though he was not formally listed ‘on paper with the company, for all intents and purposes he acted as and was treated as the ‘actual owner’ of EWH and the operator of the BURMA SUPERSTAR restaurant.”26 Applicant states that, regardless of whether Tan had control over EWH, the Board may “still find that the [oral] assignment from EWH to Mr. Tan was valid” because “EWH could and did assign the mark to whomever it wanted.”27 Applicant also plays down the allegations of Lee and EWH in their opposition to the involved application (which was later withdrawn) asserting that the opposition was filed “years after the assignment as part of her larger dispute with Mr. Tan over the separation of assets” and it “does not prove that the earlier assignment to Mr. Tan was improper, that Ms. Lee or EWH disapproved of the assignment at the time it was made.”28 With respect to the 2017 settlement agreement, Applicant characterizes it as a “settlement agreement between Mr. Tan (and his entities) and Ms. Lee (and her entities) resolving their asset separation dispute” and notes that Tan testified that the reason for the assignment of trademark rights provision was not because he believed Lee 26 53 TTABVUE 46. 27 Id. 28 Id. Opposition No. 91226465 - 11 - had an ownership interest but because Tan wanted a “global settlement” that would end any dispute about the trademark.”29 Applicant’s arguments do not persuade us that Applicant was the sole owner of the BURMA SUPERSTAR mark in 2015. In order for Applicant to own the mark, Tan must have possessed sole rights in the mark when, as Applicant argues, Tan assigned the mark to Applicant in 2014. There are two critical flaws in this purported chain of title. First, there is no testimony that anyone with authority to act on behalf of EWH assigned the mark to Tan in 2007 or 2008. Tan acknowledges that he was not the owner of EWH when the mark was purportedly orally assigned in 2007 or 2008. Thus, Tan, himself, did not have any authority to orally assign rights to the mark. Tan does not identify either of the previous owners, Lee or Velasco, who actually had authority to act on behalf of EWH, as making the purported oral assignment. There is no testimony from EWH that an oral assignment took place. Tan’s testimony regarding the oral assignment has not been corroborated, and is contradicted by other evidence. The record, discussed supra, persuades us that Applicant, or Tan, at best received full ownership of the mark, if ever, by way of an assignment nearly two years after the application was filed. Applicant’s assertion that it was the owner of the mark by April 2015 is also contradicted by the fact that, at that time and at least up to 2017, EWH was using the BURMA SUPERSTAR mark in connection with its San Francisco restaurant. By 29 Id. at 47, citing to Tan Dep. at 45 TTABVUE 107. Opposition No. 91226465 - 12 - 2013, by Tan’s own admission, he (and Applicant) had no control over EWH or Lee because his “romantic partnership” with Lee had ended by 2013 and there “was not a formal business relationship” between the two or their respectively-owned business entities.30 Thus, whether an oral assignment of the mark took place in 2007/2008, by one account of Tan’s, or there was an assignment 2015, by the other account of Tan, we find that EWH retained at least some ownership rights in the BURMA SUPERSTAR mark because it continued to use BURMA SUPERSTAR for the San Francisco restaurant at least until 2017, without any license or transfer of rights back to EWH. To this point, on cross-examination and in response to questioning whether Applicant has licensed the mark to anyone else for use, Tan testified Applicant granted EWH such a license but not until 2017.31 Because EWH or others, perhaps including Lee or Tan, were a partial, if not exclusive, owner(s) of the mark as of April 2015 when the application was filed, Applicant was not the sole owner of the mark. As discussed, supra, we acknowledge Tan’s testimony, on cross-examination, that EWH transferred all rights in the mark to Tan personally in 2015 and, in the same year, he transferred those rights to Applicant – we find, however, this testimony in not entirely credible. As pointed out, it contradicts his earlier written declaration that an oral assignment from EWH to Tan occurred in 2007/2008 and he assigned the mark to Applicant in 2014. Moreover, with respect to the more recent purported assignment in 2015, Tan could not recall whether there was a written assignment or 30 40 TTABVUE 51. 31 Id. at 49. Opposition No. 91226465 - 13 - if any consideration was paid, nor did he testify who on behalf of EWH signed or authorized the assignment.32 The existence of any 2015 assignment is further drawn into question, if not rebutted, by EWH’s filing the opposition to registration of the involved application on the basis of ownership approximately one year after EWH purportedly assigned the mark. Perhaps the most telling with respect to Tan (or Applicant’s) lack of full ownership of the mark, as of April 2015, was Tan’s statement made in a separate civil action involving Tan and Lee, that he paid Lee $700,000.00 in 2017 “in large part . . . for my sole ownership of the mark.” We have considered the fact that Tan has been intimately involved with the BURMA SUPERSTAR restaurant businesses since 2001 when EWH purchased the first restaurant. However, we are also mindful that regardless of a single individual’s efforts or own beliefs regarding ownership, the use-based application must be filed in the name of the owner or owners of the mark. See, e.g., Tzu Wei Chen Food Co., 7 USPQ2d 1335 (application was void when signed by an individual in his own name because his separate application for incorporation in the state of Iowa was granted, and ownership of the mark passed to the corporation, albeit only two days before the USPTO received the trademark application for filing). c. Lack of Ownership - Conclusion Applicant was not the exclusive or sole owner of the BURMA SUPERSTAR mark when it filed the application in April 2015, as required under Section 1(a) of the Trademark Act. “Neither the Board nor the courts can waive this statutory 32 45 TTABVUE 46. Opposition No. 91226465 - 14 - requirement,” Tzu Wei Chen, 7 USPQ2d at 1336, even if Applicant later acquired full rights in the mark. Accordingly, the application was void ab initio, and we sustain the opposition on this ground, with respect to Classes 29, 30, and 43. We now turn our attention to the remaining pleaded grounds of likelihood of confusion and dilution – solely with respect to Applicant’s Class 32 goods.33 III. Likelihood of Confusion In support of its likelihood of confusion claim, Opposer pleaded use since 1975 and registration of marks “including the words ‘SUPER STAR’ . . . in connection with food items, restaurant services, and other goods and services.” Specifically, as previously discussed, Opposer pleaded ownership of Reg. No. 1099039 for the mark SUPER STAR for “preparing and serving hamburgers as part of restaurant services.” Opposer also pleaded ownership of Reg. No. 4704436 for the mark SUPER STAR REWARDS for “arranging and conducting incentive programs to promote the sale of food and beverage items for consumption on or off the premises” in Class 35.34 For purposes of our likelihood of confusion analysis, we focus on the two pleaded registered marks, SUPER STAR, and SUPER STAR REWARDS, because they bear the closest resemblance to Applicant’s mark, BURMA SUPERSTAR. Although 33 The ground of abandonment is not available with respect to the Class 32 goods because this class is based on a bona fide intent to use in commerce (see Notes 1 and 21). Qualcomm Inc. v. FLO Corp., 93 USPQ2d 1768, 1770 (TTAB 2010). 34 A copy of Reg. No. 4704436 was properly introduced through Opposer’s notice of reliance (33 TTABVUE 44-51). The registration also covers “computer application software for mobile devices, namely, software for use with incentive programs to promote the sale of food and beverage items for consumption on or off the premises.” However, these goods are less related (than the Class 35 services) to Applicant’s class 32 goods. Opposition No. 91226465 - 15 - Opposer asserted ownership and registration of other marks, we find all of the other pleaded marks, containing the term STAR or a star design, are so different from Applicant’s proposed mark that the dissimilarity of the marks would dictate a finding that confusion would not be likely between those marks, even if all other factors weighed in Opposer’s favor. Kellogg Co. v. Pack-Em Enters., Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular case, a single du Pont factor may not be dispositive.”). Our determination of the issue of likelihood of confusion is based on an analysis of all 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, 567 (CCPA 1973). Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (du Pont “articulated thirteen factors to consider when determining likelihood of confusion”). Similarity of the marks and relatedness of the goods or services tend to be the two key determinants of likelihood of confusion. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). Finally, priority is not an issue because Opposer’s registrations are of record and Applicant has not counterclaimed to cancel either. See Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1169 (TTAB 2011) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 82 USPQ 108 (CCPA 1974)). Opposition No. 91226465 - 16 - A. Similarity of the Marks The first du Pont factor involves a determination as to “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). Here, the obvious similarity is that Applicant’s mark, BURMA SUPERSTAR, incorporates Opposer’s entire SUPER STAR mark and shares the wording with Opposer’s other mark SUPER STAR REWARDS. The fact that the same wording “superstar” or “super star” is in the marks makes them similar in appearance and sound. Although Applicant has disclaimed the term BURMA in the involved application, this is a point of dissimilarity between the involved marks. While it may be descriptive of Applicant’s goods and services, the similarity or dissimilarity of the marks is determined based on the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). Thus, while BURMA is conceptually weak, it remains part of Applicant’s mark and contributes to its appearance, pronunciation, and meaning. Likewise, while the term REWARDS is Opposition No. 91226465 - 17 - clearly descriptive in the context of Opposer’s “incentive programs” and thus does not have source-identifying significance, it is a point of dissimilarity between the marks. In terms of commercial impression or connotation and in the context of both parties’ goods and services, we take judicial notice of the following definition for the word “Super Star”:35 1. : a star (as in sports or the movies) who is considered extremely talented, has great public appeal, and can usually command a high salary “But last year, when people started posting hits from superstars like Madonna and Puff Daddy on the Web, where anyone could download them for free, the record companies went ballistic.” — N'Gai Croal et al. “The notion that superstars are protected by NBA refs is neither a new nor a particularly farfetched one.” — Jack McCallum 2. : one that is very prominent or is a prime attraction “From Wolfgang Puck to Alice Waters, America’s leading chefs have become superstars.” — Marian Burros “With that the judge sentenced the one time superstar investor to three years in prison for his role in the largest insider-trading scandal in history.” — Time Magazine “Chardonnay is the superstar among white-wine grapes …” — Barbara Ensrud 35 “SUPER STAR” Merriam-Webster.com. 2019 (www.merriam-webster.com). The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Opposition No. 91226465 - 18 - In other words, the term is suggestive of success or high quality – whether it is an individual such as a chef, or a product like chardonnay. In the context of Opposer’s services the term will likely be understood as self-congratulatory or puffery, suggesting a high degree of popularity or quality of the services. With respect to Applicant’s carbonated and ginger-flavored beverages, the term BURMA will likely be understood as describing or suggesting an affiliation with the country Burma (or Myanmar), such as the beverages deriving from a Burmese recipe or style of drink, or being imported from Myanmar (formerly known as Burma). It thus adds an additional exotic connotation, not present in Opposer’s marks, to the same wording, SUPER STAR. In sum, while there are some differences in the marks, we find that overall they are more similar than not. This factor therefore weighs in favor of finding a likelihood of confusion. B. Purported Fame of Opposer’s Marks; Alleged Weakness of Shared Wording SUPER STAR In support of its likelihood of confusion claim, Opposer has pleaded:36 Opposer, through substantial use and promotion, has acquired significant goodwill and consumer recognition in Opposer’s Marks. In addition, by virtue of substantial use and promotion, Opposer’s Marks have become famous in the minds of consumers. Opposer’s Marks became famous in the minds of consumers long before Applicant filed the Application. Under the fifth du Pont factor, 177 USPQ at 567, the fame of a mark plays a “dominant” role in the du Pont analysis, as famous marks “enjoy a wide latitude of 36 31 TTABVUE 7 (Notice of Opposition ¶ 2). Opposition No. 91226465 - 19 - legal protection.” Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); see also Palm Bay Ims., 73 USPQ2d at 1694 (“[A] strong mark … casts a long shadow which competitors must avoid.”). A famous mark is one that has “extensive public recognition and renown.” Fame for purposes of likelihood of confusion is a matter of degree that varies along a spectrum from very strong to very weak. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017). Relevant factors include sales, advertising, length of use of the mark, market share, brand awareness, licensing activities, and variety of goods bearing the mark. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012). Much of the record that Opposer relies upon to support its allegation of fame for the SUPER STAR and SUPER STAR REWARDS marks involves the general success and popularity of its national chain of CARL’S JR. restaurants. Nevertheless, there is sufficient circumstantial evidence to show that Opposer’s SUPER STAR mark has achieved an elevated degree of recognition. Specifically, Opposer has been using the SUPER STAR mark in connection with its burgers served at its restaurants for a long time, since 1975, and there is evidence showing that one of Opposer’s signature hamburgers is called the “Super Star,” with an impressive number of these burgers having been sold between 2012-2018, and Opposer has spent a significant amount on advertising the “Super Star” burger during these same years.37 This evidence, alone, 37 50 TTABVUE 88-110; 43 TTABVUE (Morrow Exs. 28-29). We do divulge the amounts sold and advertising expenses because this information has been designated “confidential.” Opposition No. 91226465 - 20 - leads us to conclude that a large number of consumers in the United States are familiar with Opposer’s “Super Star” burger being offered in Opposer’s Carl’s Jr. restaurants. In sum, a substantial number of U.S. consumers have been exposed to Opposer’s SUPER STAR mark in connection with hamburgers served in Opposer’s restaurants. Opposer’s mark is commercially strong thus expanding its scope of protection. Applicant, on the other hand, argues that there is a “crowded field” of STAR- formative marks and that this “diminishes the strength” of Opposer’s marks.38 In support, Applicant points to:39 over one hundred . . . [registered] marks in Classes 29, 30, 32, and 43 incorporating the word STAR, including numerous SUPER STAR MARKS. These registrations include ROADSTAR (hamburgers), ALL STAR (cheese), GOLDEN STAR (lunch meats), and SICILIAN STAR (Italian food 30 products) in Class 29; DELTA STAR (rice), SUPER STAR PROOF (dough developers), (SUPER STARS) (bakery products), TROPIC STAR (tea), BIG STAR (coffee), and CORN STAR (relish) in Class 30; BLUE STAR (beer), FIVE STAR (beer), and TEXAS STAR (soft drinks) in Class 32; and ALLSTARBURGERS (restaurant services not in the nature of quick service restaurants), STARS DRIVE-IN (restaurant services, specifically fast food drive in services), BURGER STAR (restaurant and bar services), ALL STAR WINGS (restaurant services not in the nature of quick service restaurants), EVENING STAR (restaurant and bar services), FIVE STAR BURGERS (restaurant services not in the nature of quick service restaurants), and CHINA STAR (restaurant services). The sixth du Pont factor requires us to consider the number and nature of similar marks in use on similar services. du Pont, 177 USPQ at 567. In this regard, the Federal Circuit has stated that evidence of the extensive registration and use of a 38 53 TTABVUE 36. 39 Id. 36-37; copies of the registrations were submitted under notice of reliance at 38 TTABVUE. Opposition No. 91226465 - 21 - term by others can be “powerful” evidence of weakness. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). In this case, Applicant’s third-party registration evidence has little probative value. Nearly all of the registered marks merely contain the term STAR and they have additional wording that makes them dissimilar to Opposer’s SUPER STAR marks. Cf. In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (extensive use of similar marks by third parties for the same or similar goods or services also is relevant to a mark’s commercial strength) (emphasis added). Only four of the registrations include the term SUPER STAR and they are for unrelated goods: fish;40 “dough developers and conditioner;”41 bakery products;42 and distilled spirits, teas, wine and rum.43 Finally, Applicant has not submitted any evidence of third-party use of relevant STAR-formative marks. “The existence of [third party] registrations is not evidence of what happens in the market place or that customers are familiar with them. . . .” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (CCPA 1973), quoted in Olde Tyme Foods Inc. v. Roundy’s Inc., 22 USPQ2d 1542, 1545 (Fed. Cir. 1992). While, as noted, evidence of extensive registration and use may have evidentiary value, Jack Wolfskin, 116 40 Registration No. 2114138; 38 TTABVUE 72-75. 41 Registration No. 1272031 (SUPER STAR PROOF); Id. 263-265. 42 Registration No. 4375883 (SUPER STARS); Id. 287-290. 43 Registration No. 1272031 (SUPER STAR BRAND and design); Id. 326-330. Opposition No. 91226465 - 22 - USPQ2d at 1136, Applicant here has supplied only registrations — most of which are of little relevance — and no evidence of use. Ultimately, although Applicant has submitted numerous third-party registrations, they have little relevance for purposes of showing that the strength of Opposer’s SUPER STAR marks is diminished due to extensive third-party use of similar marks in connection with similar goods or services. C. Similarity or Dissimilarity of the Goods and Services; Trade Channels; Sophistication and Classes of Consumers The second du Pont factor “considers ‘[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration.’” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (quoting du Pont, 177 USPQ at 567); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014). “[L]ikelihood of confusion can be found ‘if the respective products are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Here, we looking to determine the relationship, if any, between Opposer’s “preparing and serving hamburgers as part of restaurant services” and its “arranging and conducting incentive programs to promote the sale of food and beverage items for consumption on or off the premises,” with Applicant’s Class 32 goods, namely, carbonated and ginger-flavored beverages. Opposition No. 91226465 - 23 - At the outset, we point out that in cases where restaurant services are being compared to actual food or drink items, there is no per se rule that certain goods and services are related. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2030 (Fed. Cir. 1993) (no per se confusion, where similar marks are used in connection with restaurant services and food products). Rather, often when it comes to restaurant services and food or beverages, “something more” is required (over and above a showing that the goods and services are offered together) because the relatedness of the parties’ respective goods and services is not evident. In re Opus One Inc., 60 USPQ2d 1812, 1813 (TTAB 2001).44 In In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063-64 (Fed. Cir. 2003), the Federal Circuit assessed whether “something more” showed the relatedness of beer and restaurant services. The court explained why more evidence than just showing restaurants sell beer is required to prove that those beer and restaurant services are related: It is not unusual for restaurants to be identified with particular food or beverage items that are produced by the same entity that provides the restaurant services or are sold by the same entity under a private label. Thus, for example, some restaurants sell their own private label ice cream, while others sell their own private label coffee. But that does not mean that any time a brand of ice cream or coffee has a trademark that is similar to the registered trademark of some restaurant, consumers are likely to assume that the coffee or ice cream is associated with that restaurant. The Jacobs case [Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA 1982)] stands for the contrary proposition, and in light of the very large number of restaurants in this country and the great variety in the names associated with those restaurants, the potential consequences of adopting such a principle would be to limit dramatically the number of marks that could be used by producers of foods and beverages. 44 4 TTABVUE 8. Opposition No. 91226465 - 24 - Id. at 1063. In this case, Opposer argues that it has demonstrated “something more” because “the evidence shows that [Opposer’s SUPER STAR marks] are arbitrary and strong marks,” citing the Board’s decision in In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001).45 Opposer also asserts that the “non-alcoholic carbonated beverages, which Opposer sells . . . are included in the food and beverages identified in the SUPER STAR REWARDS registration.”46 Opposer concludes that Applicant’s goods “include, or are at least highly related to, the services listed in Opposer’s SUPER STAR and SUPER STAR REWARDS registrations.”47 The relevant evidence here is significantly different from that in In re Opus One. In that decision, the applicant was seeking to register an identical mark, OPUS ONE for restaurant services, as the cited registered mark for wine. The Board also relied on evidence showing that “it is an increasingly common practice in the industry for restaurants to offer and serve to their patrons ‘private label’ wines which are named after the restaurant, i.e., wine which is specially-made for the restaurant and served in bottles labeled with the restaurant's service mark.” Id. at 1815. Furthermore, the Board noted that the applicant’s OPUS ONE restaurant was actually selling the cited registrant’s OPUS ONE wine. 45 55 TTABVUE 9. 46 55 TTABVUE 9. 47 Id. Opposition No. 91226465 - 25 - Opposer’s argument regarding the strength of its mark and our finding that Opposer’s SUPER STAR mark does have an elevated level of recognition in connection with fast food, and the service of hamburgers in particular, do not persuade us that consumers would associate its services of preparing hamburgers as a part of restaurant services with Applicant’s carbonated and ginger flavored beverages. While it is well-known that restaurants serve beverages with meals, this alone is insufficient to show a relationship that likely leads to confusion. To borrow words and reasoning from In re Coors Brewing, restaurants can be known for a particular food or beverage product and sell these products under the same name as the restaurant, but “that does not mean that any time a brand of [food or beverage] has a trademark that is similar to the registered trademark of some restaurant, consumers are likely to assume that the [food or beverage] is associated with that restaurant.” In re Coors Brewing, 68 USPQ2d at 1063. The evidence does not establish the “something more” required to find a relationship between Applicant’s goods and Opposer’s services. With respect to Opposer’s “arranging and conducting incentive programs to promote the sale of food and beverage items for consumption on or off the premises,” these are even further removed from Applicant’s carbonated and ginger flavored beverages. That is, Opposer’s services are promotional in nature and only tangentially involve beverages. Again, there is no evidence showing consumers are accustomed to encountering the respective services and goods under the same mark from a single source. Opposition No. 91226465 - 26 - As to the third du Pont factor, involving the established, likely-to-continue channels of trade, the identifications in the application and Opposer’s registrations have no restrictions on channels of trade. Thus we must presume that the goods and services travel in all channels of trade appropriate for such goods and services. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). It is well-known that restaurants serve carbonated beverages and the record shows that Opposer’s restaurants do indeed serve soft drinks, like Coca- Cola and Sprite. Accordingly, we must assume that Applicant’s goods would be served in restaurants, like Opposer’s. Additionally, Opposer’s services and Applicant’s goods would be offered to all usual consumers for the goods and services, including the general public. D. Likelihood of Confusion -- Conclusion We have carefully considered all of the evidence of record, including any evidence not specifically discussed herein. As discussed, several du Pont factors support a finding of a likelihood of confusion. Nevertheless, we ultimately find that Opposer has not proven by a preponderance of the evidence that consumers familiar with Opposer’s SUPER STAR or SUPER STAR REWARDS marks for the identified services who encounter Applicant’s BURMA SUPERSTAR mark for carbonated and ginger-flavored beverages are likely to believe mistakenly that the goods and services originate with, or are sponsored or authorized by the same source. We base our conclusion primarily on the dissimilarity between Applicant’s carbonated and ginger- Opposition No. 91226465 - 27 - flavored beverages and Opposer’s restaurant and incentive program services; we also bear in mind that the initial term, BURMA, in Applicant’s mark helps distinguish the marks and the shared term, SUPER STAR, suggests a higher quality of goods or services. Accordingly, the likelihood of confusion claim is dismissed as to Applicant’s Class 32 goods. IV. Likelihood of Dilution Opposer's pleaded claim of dilution requires proof of fame of the mark SUPER STAR. As discussed in the context of the likelihood of confusion analysis, the record indicates an elevated level of exposure to this mark, mainly in connection with hamburgers, but the evidence falls far short of demonstrating that Opposer's mark is famous for purposes of likelihood of confusion, and thus cannot be famous for purposes of dilution. Fame for dilution purposes requires a more stringent showing. Palm Bay Imps., 73 USPQ2d 1694; Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1170 (TTAB 2001). Accordingly, the claim of dilution is dismissed. Decision: The opposition is sustained as to Classes 29, 30, and 43. The opposition is dismissed with respect to Class 32. Copy with citationCopy as parenthetical citation