Madmann Trademark Holding Company, Ltd.

Trademark Trial and Appeal Board

Apr 13, 2010

No. 77228194 (T.T.A.B. Apr. 13, 2010)

Hearing: Mailed: April 13, 2010
February 4, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Madmann Trademark Holding Company, Ltd.
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Serial No. 77228194
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Jill M. Petrini and Paul Bost of Manatt, Phelps & Phillips,
LLP for Madmann Trademark Holding Company, Ltd.

Benji Y. Paradewelai, Trademark Examining Attorney, Law
Office 101 (Ronald R. Sussman, Managing Attorney).
_______

Before Seeherman, Hairston and Zervas, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Madmann Trademark Holding Company, Ltd. filed an
application to register the mark MAVERICK for services
ultimately identified as “hotel and bar services” in
International Class 43.1

1 Application Serial No. 77228194, filed on July 12, 2007,
alleging a bona fide intention to use the mark in commerce. The
application also includes Class 41 services as to which no
refusal was entered, and which are not at issue in this appeal.
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Serial No. 77228194
2
The trademark examining attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), on the ground that applicant’s mark,
when used in connection with applicant’s services, so
resembles the previously registered mark MAVERICK for
“restaurant services, contract food services,”2 as to be
likely to cause confusion.
When the refusal was made final, applicant appealed.
Both applicant and the examining attorney have filed
briefs, and both appeared at an oral hearing.
Before turning to the substantive merits of the
appeal, an evidentiary issue requires our attention.
Applicant submitted evidence with its appeal brief, and the
examining attorney has objected thereto on the basis of its
untimely submission.
As pointed out by the examining attorney, the record
in an application should be complete prior to the filing of
an appeal. Trademark Rule 2.142(d). Accordingly, exhibits
attached to a brief that were not made of record during
examination are untimely, and will not be considered. TBMP

2 Registration No. 3012758, issued on November 8, 2005. The
examining attorney also cited another registration owned by a
different entity, Registration No. 2436412, as a basis for the
refusal under Section 2(d). However, this registration was
cancelled under Section 8 of the Trademark Act on December 5,
2009, and the examining attorney subsequently withdrew the
refusal based on this registration.
Serial No. 77228194
3
§§1203.02(e) and 1207.01 (2d ed. rev. 2004). In view
thereof, the examining attorney’s objection is sustained
and the attachments have not been considered.
We turn now to the Section 2(d) refusal. Our
likelihood of confusion determination under Section 2(d) is
based on an analysis of all of the facts in evidence that
are relevant to the factors bearing on the likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). In any likelihood of confusion analysis, however,
two key considerations are the similarities between the
marks and the similarities between the goods and services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
With respect to the marks, we must compare the marks
in their entireties as to appearance, sound, connotation
and commercial impression to determine the similarity or
dissimilarity between them. See Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, supra.
Serial No. 77228194
4
While there is no dispute that the marks are identical
in terms of appearance and sound, applicant argues that the
marks differ in connotation and commercial impression.
Applicant maintains that it has close ties to the
entertainment industry, and its MAVERICK mark therefore
“connotes a specific brand of entertainment” (Brief, p.
10), whereas registrant’s MAVERICK mark does not.
Applicant relies on several cases in support of its
argument, but each of the cases is readily distinguishable.
The district court case, Revlon Inc. v. Jerell, Inc., 713
F.Supp. 93, 98 (S.D.N.Y. 1989), involved phrases which
differed in appearance, sound and connotation, i.e., INTO
THE NINETIES for several lines of clothing held not likely
to be confused with THE NINES for cosmetics, toiletries and
perfumes, the Court finding that the marks “are, on their
face, significantly dissimilar” in terms of “size, word
count, configuration and syllable count” and “the
connotations of the two phrases are not related” since “THE
NINES suggests the number nine, or nine of something in a
group” whereas “INTO THE NINETIES is clearly a reference to
the decade of the 1990’s, and more generally to the
future.” The Board cases involved marks where the goods or
services in connection with which they are used lead to
different commercial impressions for the respective marks.
Serial No. 77228194
5
In In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987),
CROSS-OVER for bras was held not likely to be confused with
CROSSOVER for ladies’ sportswear, the Board finding that
the term was suggestive of the construction of applicant’s
bras, but was likely to be perceived by purchasers either
as an entirely arbitrary designation or as being suggestive
of sportswear that “crosses over” the line between informal
and more formal wear when applied to ladies’ sportswear.
In In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984),
PLAYERS for men’s underwear was held not likely to be
confused with PLAYERS for shoes, the Board finding that the
term PLAYERS implies a fit, style, color and durability
adapted to outdoor activities when applied to shoes, but
“implies something else, primarily indoors in nature” when
applied to men’s underwear. And in In re Sydel Lingerie
Co., Inc., 197 USPQ 629, 630 (TTAB 1977), BOTTOMS UP for
men’s suits, coats and trousers was held not likely to be
confused with BOTTOMS UP for ladies’ and children’s
underwear, the Board finding that if “BOTTOMS UP can be
deemed to have any suggestive connotation as applied to
men’s suits, coats and trousers it will be in association
with the drinking phrase, ‘drink up’ … . This is hardly
the connotation that ‘BOTTOMS UP’ would generate” when
applied to ladies’ and children’s underwear. In contrast
Serial No. 77228194
6
to the above cases, the marks at issue here, when applied
to the respective services, are both likely to be perceived
by purchasers either as an entirely arbitrary designation
or as being suggestive of services that stand apart from
others in the hotel and bar and restaurant services fields,
respectively.3 In other words, any connotation that
MAVERICK might have in connection with hotel and bar
services would be the same for MAVERICK in connection with
restaurant services. In view of the foregoing, we find
that the marks in this case are identical in all respects,
and this du Pont factor favors a finding of likelihood of
confusion.
Applicant also argues that the mark in the cited
registration, MAVERICK, is entitled to only a narrow scope
of protection because the term has been widely used in the
restaurant field. In support of this contention regarding
the du Pont factor involving the number and nature of
similar marks in use in connection with similar services,
applicant submitted six third-party registrations, ten

3 In this connection, we take judicial notice that the word
“maverick” is defined as, inter alia, “a lone dissenter, as an
intellectual, an artist, or a politician, who takes an
independent stand apart from his or her associates.” Random
House Online Dictionary (2010). The Board may take judicial
notice of dictionary definitions. University of Notre Dame du
Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 595 (TTAB
1982), aff’d, 703 F.2d 1372, USPQ 505 (Fed. Cir. 1983).
Serial No. 77228194
7
examples of uses of “Maverick” in third-party websites, and
a Dun & Bradstreet report identifying approximately fifty
businesses purportedly in the restaurant/food field with
the term “Maverick” in the name of the establishment.
In this case, applicant’s evidence of third-party use
is lacking in a number of respects. Insofar as the third-
party registrations are concerned, it is well settled that
such registrations are not evidence of use of the marks
shown therein, or that consumers have been exposed to them.
AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403,
177 USPQ 268, 269 (CCPA 1973). Furthermore, we cannot
conclude that there is significant third-party use of
“Maverick” from a mere ten websites, especially since the
evidence of these uses tend to indicate that the various
third-party restaurants are local in nature, as is
undoubtedly the case with many restaurants.4 See Carl
Karcher Enterprises Inc. v. Stars Restaurant Corp., 35
USPQ2d 1125, 1131 (TTAB 1995) [“We see some other problems
which limit the probative value of the evidence of third-
party use. … [T]he pictures of these restaurants tend to
indicate that the operations are small and local in

4 In this connection, we note that “Maverick BBQ” in Hollister,
California indicates that the restaurant is frequented by
“[p]eople from all over San Benito county,” and “Maverick’s” of
Simi Valley, California indicates that “a father and son team”
has made “Maverick’s Simi Valley’s best steak house.”
Serial No. 77228194
8
nature”]. With respect to the Dun & Bradstreet report, it
does not show to what extent the companies’ trade names or
trademarks are used, if at all, or whether the public is or
ever was aware of the third-party use of “Maverick” as part
of such names or marks, e.g., “Maverick Corp” is listed as
a business name, but the trade name/mark appears to be
“Tedino’s Pizza;” “Maverick Restaurant Group Inc.” is
listed as a business name, but the trade name/mark appears
to be “Pasta Manana;” and “Maverick Southern Kitchens,
Inc.” is listed as a business name, but the trade name/mark
appears to be “High Cotton.” Also, we note that several of
the Dun & Bradstreet listings are for goods and services
unrelated to those involved herein, e.g., cosmetics, beauty
salon services, and child care services.
Finally, we note that many of the third-party marks
and trade names include other elements that present a
different connotation and commercial impression, e.g., HIGH
COTTON MAVERICK BAR & GRILL (Registration No. 3447308);
J.J. MAVERICK’S GRILL and design (Registration No.
3306403); “Mavericks At The Landing,” “Maverick Junction
Truck Stop, Restaurant & Lounge,” “Hungri Maverick,” and
“The Maverick King of Clubs Inc.” (Dun and Bradstreet
report). As previously indicated, applicant’s mark and
registrant’s mark have the same connotation and commercial
Serial No. 77228194
9
impression, and this is not a case where consumers could
make a distinction between the marks based on other
elements since neither mark includes any other elements.
In the case cited by applicant, In re Broadway Chicken,
Inc., 38 USPQ2d 1559 (TTAB 1996), the Board found no
likelihood of confusion between BROADWAY CHICKEN for
restaurant services and BROADWAY PIZZA for restaurant
services (as well as BROADWAY BAR & PIZZA for restaurant
and bar services). Obviously, in that case, the marks
included other elements, and the Board found no likelihood
of confusion largely because of third-party use evidenced
by more than 500 “Broadway” entities in the Dun &
Bradstreet database identified as a restaurant, bar or
related service, 80 listings in white and yellow pages for
restaurant services and closely related goods and services,
and 575 entities in the American Business Directory
indicating that they offered restaurant services and/or
related goods and services; and the multiple sources of
third-party use corroborated each other.
In view of the foregoing, we cannot conclude that
there is such significant third-party use of “Maverick”
marks or trade names in connection with restaurant-type
services that the cited mark is entitled to a narrow scope
of protection. The du Pont factor involving the number and
Serial No. 77228194
10
nature of similar marks in use in connection with similar
services is neutral.
We next turn to a consideration of the services. We
note, at the outset of considering this du Pont factor,
that if the marks are the same, as in this case, it is only
necessary that there be a viable relationship between the
services in order to support a finding of likelihood of
confusion. See In re Concordia International Forwarding
Corp., 222 USPQ 355, 356 (TTAB 1983).
Furthermore, it is not necessary that the services at
issue 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
instead that the respective services are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the 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).
In this case, the examining attorney has made of
record a number of use-based third-party registrations
which show that various entities have adopted a single mark
Serial No. 77228194
11
for hotel and/or bar services, on the one hand, and
restaurant services, on the other hand. Although third-
party registrations are not evidence that the marks shown
therein are in commercial use, or that the public is
familiar with them, they nevertheless are probative
evidence to the extent that they suggest that the services
identified therein are of a type which may emanate from a
single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In
re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
In addition, the examining attorney submitted printouts of
the web pages of several entities showing they offer hotel
and/or bar services, on the one hand, and restaurant
services, on the other hand, under a single mark. Based on
this evidence, we find that applicant’s hotel and bar
services are related to the restaurant services in the
cited registration.5 This du Pont factors therefore favors

5 Likelihood of confusion may be found if there is likelihood of
confusion between any of the applicant’s services and any of the
services in the cited registration. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1988). It is therefore unnecessary to rule as to whether
applicant’s services and the food contract services in the cited
registration are related such that confusion would be likely.
Serial No. 77228194
12
a finding of likelihood of confusion.
There can be no doubt that the same class of
purchasers is at issue, that is, members of the general
public. Thus, this du Pont factor favors a finding of
likelihood of confusion. Although the trade channels may
be different (hotel/bar versus restaurant), this difference
is outweighed by the other factors in favor of a finding of
likelihood of confusion.
A final argument made by applicant requires comment.
Applicant argues that registrant’s mark is used to identify
a parent company that owns a syndicate of restaurants and,
therefore, “[t]he cited mark is not marketed to the general
public in the fashion normally associated with a
hospitality establishment.” This argument, however,
amounts to a collateral attack on the validity of the cited
registration, which is permissible only in the context of a
cancellation proceeding, not in an ex parte appeal. See In
re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997); Cosmetically Yours, Inc. v. Clairol Inc.,
424 F.2d 1385, 165 USPQ 515 (CCPA 1970); and In re Peebles
Inc., 23 USPQ2d 1795 (TTAB 1992). In other words, if
applicant has reason to believe that registrant is not
using the MAVERICK mark in connection with the services
identified in the registration, the proper remedy would be
Serial No. 77228194
13
a petition to cancel the registration on the ground of non-
use or abandonment. If, on the other hand, applicant is
not contesting that registrant renders restaurant services,
but is only arguing that, because of the manner in which it
renders such services, confusion is not likely, the
question of likelihood of confusion must be determined
based on an analysis of the mark as used in connection with
the services recited in the cited registration, rather than
what the evidence shows the services to be. See Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
We conclude that consumers familiar with registrant’s
restaurant services, in particular, offered under the mark
MAVERICK would be likely to believe, upon encountering
applicant’s mark MAVERICK for hotel and bar services, that
the services originate from or are somehow associated with
or sponsored by the same source. To the extent that
applicant contends that its mark is well known by virtue of
its ties to the entertainment industry, due to the identity
of the marks, the same association would be present in the
form of reverse confusion. The Trademark Act not only
guards against the misimpression that the senior user is
the source of the junior user’s goods or services, but it
also protects against reverse confusion, that is, that the
Serial No. 77228194
14
junior user is the source of the senior user’s goods or
services. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1690 (Fed. Cir. 1993).
Decision: The refusal to register as to Class 43 is
affirmed. However, the application will proceed as to
Class 41, which was not the subject of the refusal.