Heartland Design Associates, LLC

Trademark Trial and Appeal Board

Jan 13, 2009

No. 77245616 (T.T.A.B. Jan. 13, 2009)

Mailed:
January 13, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Heartland Design Associates, LLC
________

Serial No. 77245616
_______

Elisabeth Townsend Bridge and Christian D. Lavers of Whyte
Hirschboeck Dudek S.C. for Heartland Design Associates,
LLC.

Lief Martin, Trademark Examining Attorney, Law Office 112
(Angela Wilson, Managing Attorney).
_______

Before Seeherman, Walters and Drost, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Heartland Design Associates, LLC has appealed from the
final refusal of the Trademark Examining Attorney to
register CHEF JEFF’S KITCHEN and design, as shown below,
for goods ultimately identified as “pickles, jellies and
jams” in Class 29 and “condiments, namely salad dressings,
relishes, and catsup; herbal teas; salsas; spices;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77245616
2
processed herbs; seasonings” in Class 30.1 Applicant has
disclaimed exclusive rights to the words CHEF and KITCHEN.

Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark so resembles the mark CHEF GEOFF’S,
registered in typed form for “eat-in and carry-out
restaurant services, and catering services,”2 that, if used
on applicant’s identified goods, it is likely to cause
confusion or mistake or to deceive.
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

1 Application Serial No. 77245616, filed August 2, 2007, based
on Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b) (intent-
to-use).
2 Registration No. 2699477, issued March 25, 2003.

Ser No. 77245616
3
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, 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). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We turn first to a consideration of the first du Pont
factor, which requires us to determine the similarity or
dissimilarity of the marks in terms of appearance, sound,
connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 that confusion as to the
source of the goods and services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
Ser No. 77245616
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See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). Furthermore, although the marks at issue must be
considered in their entireties, 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. See In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Applicant’s mark is CHEF JEFF’S KITCHEN, with the
words CHEF JEFF’S depicted on a banner design. Because
they are set apart on the banner, and because the
disclaimed word KITCHEN has a descriptive meaning as
describing that the food items come from the kitchen of
Chef Jeff, it is the term CHEF JEFF’S that is the dominant
feature of applicant’s mark. We disagree with applicant
that the banner is a “distinctive design”, brief, p. 7; on
the contrary, it is a rather ordinary banner that acts
merely as a “carrier” in the mark, giving emphasis to the
words CHEF JEFF’S and making them visually the most
prominent part of the mark. We also reject applicant’s
argument that the marks differ because the words CHEF
JEFF’S are displayed in a bubble-like font, while the cited
mark is a “standard character mark.” Brief, p. 7. Because
Ser No. 77245616
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the cited mark is registered in typed form (the terminology
used at the time the registration issued), the registration
is not limited to any particular form of display, and the
scope of its protection extends to the font that is used by
applicant.
We have considered applicant’s arguments about the
effect of the additional word KITCHEN in its mark, but do
not find them to be persuasive. “Kitchen” is defined as:3
1. A room or an area equipped for
preparing and cooking food.
2.A style of cooking; cuisine: a
restaurant with a fine French kitchen.
3.A staff that prepares, cooks and
serves food.

In the context of the mark, with Chef Jeff’s being a
possessive, consumers will view the word as indicating
items prepared in Chef Jeff’s kitchen and not, as applicant
asserts, as indicating that the items are to be used to
prepare food in the consumer’s kitchen. Thus, this word,
too, reinforces both the meaning and the importance of the
words CHEF JEFF’S. In fact, consumers may well believe
that the registrant has added the word KITCHEN to its mark
for its line of packaged food products to identify that

3 The American Heritage Dictionary of the English Language, 4th
ed. © 2000. The Examining Attorney submitted the definition with
the first Office action.

Ser No. 77245616
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they are made in its restaurant or follow the recipes of
the restaurant’s kitchen.
As a result, although the word KITCHEN and the banner
design obviously create some differences between
applicant’s mark and the registrant’s mark, they are not
sufficient to distinguish the marks. We also recognize
that the name JEFF’S/GEOFF’S is spelled differently in the
two marks. However, as noted above, the test is not
whether the marks can be distinguished on a side-by-side
comparison. Consumers are not likely to remember whether
the name is spelled as JEFF or GEOFF, or to realize when
they see one of the marks that it differs from the other
because of this spelling. Moreover, restaurants are often
recommended by word of mouth. Thus, a consumer may know of
CHEF GEOFF’S restaurant, but not know or remember the
spelling.
When compared in their entireties, the marks are
similar in appearance, pronunciation, connotation and
commercial impression. This du Pont factor favors a
finding of likelihood of confusion.
Applicant argues that “the widespread use of
registered marks containing the name “Jeff’ used on similar
goods and services to registrant’s services indicate that
consumers will not be confused between registrant’s mark
Ser No. 77245616
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and applicant’s mark.” Brief, p. 15. Applicant bases this
claim on eight third-party registrations that it has made
of record, including JEFF’S GOURMET for sausages and
restaurant services; JAVA JEFF’S COFFEE & TEA and design
for, inter alia, coffee and sugar; JEFF’S SODAS AMAZING NEW
YORK EGG CREAM and design for soft drinks; and JEFF’S
PIRATES COVE and design for restaurant services. There are
three problems with this argument. First, third-party
registrations are not evidence that the marks are in use,
or that the public is familiar with them. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Second,
four of the registrations have been cancelled;4 thus, there
are only four co-existing registrations for “JEFF” marks, a
rather limited number to show that the name is highly
suggestive for food or restaurant services. Third, and
most important, the marks at issue herein have in common
more than just the word JEFF/GEOFF, where the addition of
other matter might be sufficient to distinguish them.
Rather, applicant’s mark and the registrant’s mark contain
the words CHEF JEFF’S/CHEF GEOFF’s, and the rhyme created
by the words connects them and creates a greater similarity
than if the marks had only the name JEFF/GEOFF in common.

4 For JEFF DE BRUGES and design; JEFF FOXWORTHY’S BACKYARD BAR-
B-Q SAUCE; HENRY & JEFF’S; and JEFF’S DESSERTS and design.
Ser No. 77245616
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We turn next to a consideration of the goods. Because
likelihood of confusion must be found if there is likely to
be confusion with respect to any item that comes within the
identification of goods in the application, see Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981), the Office need show only
that at least one of the identified goods in each class of
the application is related to the services of the cited
registration. We begin our analysis by noting that it is
not necessary that the goods or services of applicant and
the registrant be similar or competitive, or even that they
move in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods or services are such that they would or
could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. See In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). Thus,
the fact that, as applicant points out, it offers no
services, and that its goods are food items that are
enhancements to a meal but would not comprise a full meal,
is of no moment. The question is not whether applicant’s
goods and the registrant’s services are different, but
Ser No. 77245616
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whether consumers who are familiar with the registrant’s
restaurant or catering services and encounter applicant’s
goods are likely to believe that they emanate from the same
source.
Applicant points out that various cases have held that
the fact that restaurants serve food is not sufficient to
show that food and restaurant services are related. We
agree. See Jacobs v. International Multifoods Corporation,
668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982) (“To establish
likelihood of confusion a party must show something more
than that similar or even identical marks are used for food
products and for restaurant services”). We therefore
consider the “something more” made of record by the
Examining Attorney.
The Examining Attorney has submitted numerous third-
party registrations showing that a single entity has
registered its mark for both restaurant services and the
goods identified in applicant’s application. They include,
with respect to applicant’s Class 29 goods, Registration
No. 1608391 for, inter alia, fruit jams, jellies and
preserves, pickled fruits and vegetables, and restaurant
services; Registration No. 1775643 for, inter alia, jams
and jellies and restaurant services; Registration No.
2842675 for, inter alia, jellies, jams and restaurant
Ser No. 77245616
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services; Reg. No. 2398083 for, inter alia, jams, jellies
and restaurant and catering services; and Registration No.
2810957 for, inter alia, jams, jellies and restaurant
services. With respect to the Class 30 goods, they include
Registration No. 2794657 for, inter alia, spices and
restaurant and catering services; Registration No. 2795132
for, inter alia, spices and restaurant services;
Registration No. 3322551 for spices, restaurant services
and catering of food and drinks; Registration No. 2457813
for, inter alia, spices and restaurant services;
Registration No. 2608345 for, inter alia, spices and
restaurant services; Registration No. 1826505 for, inter
alia, salsa and restaurant services; Registration No.
2502233 for, inter alia, salsa and restaurant services;
Registration No. 2679940 for, inter alia, salsa and
restaurant services; Registration No. 2333939 for salsas
and restaurant services; Registration No. 2893925 for,
inter alia, salad dressings, salsas, spices and restaurant
and bar services; Registration No. 2171267 for, inter alia,
salad dressings and restaurant services; Registration No.
2262552 for, inter alia, salad dressings and restaurant
services; and Registration No. 2852103 for, inter alia, oil
based salad dressings and dine-in and carry-out restaurant
services. Although they are not evidence that the marks
Ser No. 77245616
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are in use or that consumers are familiar with them, third-
party registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
In addition, the Examining Attorney has submitted
website evidence showing that restaurants sell food
products. The website for Amish Door Village,
www.amishdoormarketplace.com, states that it started as a
48-seat restaurant and has grown into a large restaurant,
banquet and conference center. The website features
various Amish Door products which can be ordered online,
including spices, relish, pickles, jams and jellies. The
website for the Bumbleberry Inn, www.bumbleberry.com,
states that The Bumbleberry Restaurant “offers our world-
famous Bumbleberry pies, jams and jellies.” It also states
that one can purchase the jams and jellies at their
giftshop. A website for Buddy’s Italian Restaurant,
www.buddysitalianrestaurant.com, features Buddy’s Italian
Salad Dressing, which can be purchased online. Excerpts
from two other websites show that the marks EMERILS and
BOBBY FLAY are used for restaurant services and steak rub,
and that these products are available for purchase online,
Ser No. 77245616
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while another website for the EL PINTO restaurant features
EL PINTO salsa.
The evidence submitted by the Examining Attorney, of
which the foregoing is only a part, demonstrates the
“something more” that is required to show that restaurant
services and the particular food items identified in
applicant’s application are related. Not only has the
Examining Attorney shown that such goods and services can
emanate from a single source, but he has shown that
restaurants sell and feature the sale of many of the
specific items listed in applicant’s identification of
goods.
Applicant relies primarily on two cases to support its
claim that the goods and services are not related, and that
the Patent and Trademark Office did not meet its burden of
showing “something more” than just the fact that food is
served in restaurants. Both of these cases are
distinguishable from the present fact situation. Lloyd's
Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d
2027 (Fed. Cir. 1993), involved a decision on a summary
judgment motion, in which all inferences must be drawn in
favor of the nonmoving party. As a result, we do not view
the Court’s finding that the moving party had not
demonstrated the “something more” as a requirement that to
Ser No. 77245616
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show likelihood of confusion the Examining Attorney must
demonstrate that the exact items packaged by the applicant
must specifically be listed on the menu for the
registrant’s restaurant services. Further, even if we
assume that the registrant’s restaurant services were
limited as to a particular style of cooking (although the
identification in the registration is not so limited), the
particular items listed in applicant’s identification are
normally found in all types of restaurants, such that a
connection with the registrant’s restaurant services would
be made.
The second case on which applicant relies is In re
Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir.
2003). In that case, the Court reversed the Board’s
decision finding likelihood of confusion between BLUE MOON
with a naturalistic design of woods at night for beer, and
BLUE MOON with an art deco design and a moon with a cartoon
face for restaurant services. The Court found that the
number of brewpubs or microbreweries in the United States
is so small, compared to the number of restaurants, that
the degree of overlap between the sources of restaurant
services and the sources of beer was de minimis. Clearly
most restaurants do not have the ability to brew beer, and
this fact informed the Court’s decision that the Patent and
Ser No. 77245616
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Trademark Office had not made the requisite showing of
“something more.” But that is not the situation with the
food items that are identified in applicant’s application.
Most of these items can be made by a restaurant, or
produced for the restaurant according to its recipes. As
the Court in Jacobs v. International Multifoods
Corporation, supra at 212 USPQ 642, reiterated, “[e]ach
case must be decided on its own facts and the differences
are often subtle ones.”
Applicant also argues that the third-party
registrations submitted by the Examining Attorney are not
probative because they show the exact same mark for the
goods and services, and here the marks are different. We
agree that if there were significant differences between
the marks consumers would not think that the food items
were connected with the restaurant, as one purpose for a
restaurant to also sell food items is to gain the benefit
of the good will of the mark as used in connection with
restaurant services. However, for the reasons discussed
above, applicant’s and the registrant’s marks are so
similar that consumers are likely to view applicant’s goods
as being associated with or sponsored by the restaurant.
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We find that the goods and services are related, and
that this du Pont factor favors a finding of likelihood of
confusion.
Applicant asserts that the channels of trade are
different because applicant intends to sell its goods in
“retail garden centers as its marketing and distribution
channel to sell its goods.” Brief, p. 14. However,
applicant’s identification is not limited to this trade
channel, and therefore we must deem the goods to be sold in
all appropriate channels for goods of this type. See In re
Davis-Cleaver Produce Company, 197 USPQ 248 (TTAB 1977).
This would include supermarkets and other food stores.
Although restaurant services would be offered through other
venues, the same classes of consumers will encounter both
goods and services.
In addition to the foregoing, applicant has listed as
du Pont factors that are important in determining whether a
likelihood of confusion exists the conditions under which
and buyers to whom sales are made; the fame of the
registered mark; and actual confusion. Brief, p. 3.
However, applicant has not discussed these factors in its
brief, nor is there any evidence regarding them.
Accordingly, we will touch on them only briefly. First,
restaurant services and the identified food items are
Ser No. 77245616
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consumer goods, so the buyers are the public at large, who
will not have any particular sophisticated knowledge about
them. They can also be inexpensive, and purchased on
impulse and without care. In this connection, restaurant
services can include fast food and other inexpensive
restaurants. This du Pont factor favors a finding of
likelihood of confusion.
As would be expected in an ex parte proceeding, there
is no evidence of fame of the registrant’s mark. This du
Pont factor is neutral.
As for evidence of actual confusion, there is none,
but that is hardly surprising in an ex parte proceeding
where we have no input from the registrant. Further,
applicant’s application is based on an intention to use the
mark, and there is no indication that it has made any use
of the mark for the identified goods. Accordingly, this du
Pont factor is neutral.
After considering all the du Pont factors on which
there is evidence or argument, we find that applicant’s use
of its mark for its identified mark is likely to cause
confusion with the registered mark.
Decision: The refusal of registration is affirmed.