No. 85228089 (T.T.A.B. Oct. 29, 2012)

Global Food Corporation

Trademark Trial and Appeal BoardOct 29, 2012

No. 85228089 (T.T.A.B. Oct. 29, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: October 29, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Global Food Corporation _____ Serial No. 85228089 _____ Susan Paik of Tutunjian & Bitetto PC for Global Food Corporation. Howard B. Levine, Trademark Examining Attorney, Law Office 115 (John Lincoski, Managing Attorney). _____ Before Seeherman, Kuhlke and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Global Food Corporation “(applicant”) filed an intent-to-use application to register the mark BRANSON’S ROADHOUSE and design, shown below, for “cafeteria and restaurant services,” in Class 43. Applicant disclaimed the exclusive right to use the word “Roadhouse.” Serial No. 85228089 2 The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark so resembles the registered mark BRANSON’S #1 CHOICE FOR THE HOLIDAYS, in standard character form, for “restaurant services,” in Class 43, as to be likely to cause confusion.1 Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See 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”). These factors, and any other relevant du Pont factors in the proceeding now before us, will be considered in this decision. A. The similarity or dissimilarity and nature of the services described in the application and registration, the likely-to-continue channels of trade and classes of consumers. Both applicant’s services and registrant’s services include restaurant services. In addition, a cafeteria is “a restaurant in which patrons wait on 1 Registration No. 3238045, issued May 1, 2007. Serial No. 85228089 3 themselves, carrying their food to tables from counters where it is displayed and served.”2 Where the services in the cited registration are broadly described and there are no limitations as to their nature or type, it is presumed that the scope of the registration encompasses all the services of the nature and type described. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Therefore, restaurant services encompass cafeteria services. In view of the foregoing, we find that the services are legally identical. Because the services described in the application and the cited registration 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 and 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.”). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). 2 THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (UNABRIDGED), p.293 (2nd ed. 1987). The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 85228089 4 B. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, we are mindful that where, as here, the services are identical, 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). Furthermore, the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods or services offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92- 1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average Serial No. 85228089 5 customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Since the services at issue are restaurant and cafeterias services, the customers are the general public. With respect to registrant’s mark BRANSON’S #1 CHOICE FOR THE HOLIDAYS, 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 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.”). See also Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). In the cited registration, BRANSON’S is the dominant element because it is the subject of the mark: the phrase #1 CHOICE FOR THE HOLIDAYS describes BRANSON’S. The commercial impression engendered by the mark is the message that BRANSON’S is the restaurant to go to for a holiday celebration.3 The significance of the name “Branson’s” as the dominant element of registrant’s mark is further reinforced by its location as the first part of the mark. 3 Applicant’s argument that BRANSON’S in the registered mark would have a geographic rather than a surname significance is discussed infra. Serial No. 85228089 6 See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word). The dominant portion of applicant’s mark is also the name “Branson’s.” In the case of marks consisting of words and a design, the words are normally given greater weight because they would be used by consumers to request the services. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Customers will refer to applicant’s services as “Branson’s” or “Branson’s Roadhouse.” The word “Roadhouse” means “a pub, restaurant, etc., that is situated at the side of a road, esp. a country road.”4 Thus, ROADHOUSE in BRANSON’S ROADHOUSE is a generic term for the services, and has been disclaimed by 4 COLLINS ENGLISH DICTIONARY (2009) from Dictionary.com attached to the April 11, 2011 Office action. Serial No. 85228089 7 applicant5 Given the generic nature of the word “Roadhouse” in applicant’s mark, we find that the name “Branson’s” is the dominant portion of the mark notwithstanding that the word “Roadhouse” appears in larger print. Because generic terms have no source-identifying significance, the name “Branson’s” is the part of the mark most likely to be remembered by consumers. Although we have not disregarded the word “Roadhouse” in applicant’s mark in our comparison of the respective marks as a whole, it is entitled to less weight than the name BRANSON’S because merely descriptive or generic words are accorded less weight in the likelihood of confusion analysis. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004); In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). In other words, BRANSON’S will be regarded as the source of the “Roadhouse” services. Further supporting our finding that the name “Branson’s” is the dominant element of applicant’s mark is that consumers may refer to BRANSON’S ROADHOUSE as BRANSON’S. “[U]sers of language have a universal habit of shortening full names – from haste or laziness or just economy of words. Examples are: automobile to auto; telephone to phone; necktie to tie; gasoline service station to gas station.” In re Abcor Development Corp., 588 F.2d 511, 200 USPQ 215, 219 (CCPA 1978) (J. Rich, concurring). [C]ompanies are frequently called by shortened names, such as Penney’s for J.C. Penney’s, Sears for Sears and Roebuck (even before it officially changed its name to 5 Applicant’s July 6, 2011 response. Serial No. 85228089 8 Sears alone), Ward’s for Montgomery Ward’s, and Bloomies for Bloomingdales. Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992). In view of the generic nature of ROADHOUSE, consumers may well omit the generic term when referring to applicant’s mark. Finally, as indicated above, the importance of the word “Branson’s” in the mark BRANSON’S ROADHOUSE is highlighted by its location as the first part of the mark. Applicant argues that the “spelling, pronunciation and appearance of each mark in its entirety are unique” and applicant highlights the design elements of applicant’s mark while noting that the mark in the cited registration is “in text form only.”6 We point out that registrant’s mark is presented in “standard character form.” Marks presented in standard characters are not limited to any particular depiction. The rights associated with a mark in standard characters reside in the wording and not in any particular display. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988). That is, the registrant is entitled to present the words in its mark in any typestyle or size, including those used by applicant. For example, the registered mark could be presented as shown below. 6 Applicant’s Brief, p. 8. Serial No. 85228089 9 #1 Choice for the Holidays Thus, rather than the stylization of applicant’s mark and the standard character format of the cited mark distinguishing the marks, the standard character format means that the commercial impressions of the marks must be deemed to be similar. Applicant asserts that the commercial impression engendered by registrant’s mark may be “a ‘#1 choice’ which is recommended by a ‘Branson’ specifically for the holidays” or that the mark relates to “a Christmas-related event … which is held in Branson, Missouri.”7 (Emphasis in the original). However, as indicated above, because the registered mark is not limited to any specific display, the commercial impression may be BRANSON’S (restaurant) is the #1 (restaurant) choice for the holidays. BRANSON could be perceived as a geographical location (i.e., Branson, Missouri) or, as displayed in applicant’s mark, BRANSON could be perceived as a surname. The fact that BRANSON may not be an inherently strong mark on the spectrum of trademark protection does not prohibit a finding that the marks are similar. Even suggestive or weak marks are entitled to protection from the use of a very similar mark for legally identical services. See In re Chica Inc., 84 USPQ2d 1845, 1850 (TTAB 2007), quoting In re Colonial Stores, 216 USPQ 793, 795 (TTAB 1982): 7 Applicant’s Brief, pp. 9-10. Serial No. 85228089 10 [If] the word CORAZON, and its English translation, was considered to be highly suggestive of jewelry, it nonetheless is entitled to protection from the use of a very similar mark on jewelry products. “[E]ven weak marks are entitled to protection against registration of similar marks, especially identical ones, for related goods and services.” So as to be clear, we must do more than just compare the dominant portion of the marks; it is necessary that we compare the applicant’s mark as a whole with registrant’s mark in its entirety. In comparing applicant's mark BRANSON’S ROADHOUSE and design with registrant's mark BRANSON’S #1 CHOICE FOR THE HOLIDAYS, we find that the marks are similar in sound, appearance and meaning. Further, given these similarities, we find that the marks engender very similar overall commercial impressions. C. Balancing the factors. Because the marks are similar, the services are identical and the presumption that the services move in the same channels of trade and are sold to the same classes of consumers, we find that applicant’s mark BRANSON’S ROADHOUSE and design for “cafeteria and restaurant services” is likely to cause confusion with BRANSON’S #1 CHOICE FOR THE HOLIDAYS for “restaurant services.” Decision: The refusal to register is affirmed.