Heartland Design Associates, LLCDownload PDFTrademark Trial and Appeal BoardJan 13, 2009No. 77245616 (T.T.A.B. Jan. 13, 2009) Copy Citation 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 4 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 5 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 6 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 7 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 8 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 9 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 10 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 11 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 12 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 13 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 14 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. Ser No. 77245616 15 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 16 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. Copy with citationCopy as parenthetical citation