MW Hospitality, LLC

Trademark Trial and Appeal Board

Jul 18, 2018

No. 86979483 (T.T.A.B. Jul. 18, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 18, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
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In re MW Hospitality, LLC
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Serial No. 86979483
_____
Gregg Zegarelli of TEV Law Group
for MW Hospitality, LLC.

Tasneem Hussain, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
_____
Before Cataldo, Wolfson and Adlin,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
I. Background
Applicant, MW Hospitality, LLC, seeks registration on the Principal Register of
the mark PIRATA, in standard characters, identifying, as amended: “restaurant
services in the nature of a fine-dining Caribbean-themed restaurant” in International
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Class 43. The application includes the following translation statement: “The English
translation of PIRATA in the mark is PIRATE.”1
The Examining Attorney has finally refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with two
registered marks owned by the same entity:2
EL COCO PIRATA in standard characters; and (“MARISCOS
ESTILO SINALOA” disclaimed) both identifying “restaurant, services, namely,
providing of food and beverages for consumption on and off the premises” in
International Class 43. Both registrations include the following translation

1 Application Serial No. 86979483 was filed September 4, 2015, based on an asserted bona
fide intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
The involved application is the child of parent application Serial No. 86748484, for the same
mark, identifying services in International Class 41.
2 Registration No. 4949637 issued May 3, 2016.
Registration No.4954491 issued May 10, 2016. Reg. No. 4954491 includes the following color
statement and description of the mark: “The mark consists of an orange palm tree outlined
in black attached to an orange and black outlined beach design. Under and to the right of the
tree is a cartoon style green with black outlined coconut in the form of head that has a white
ragged area at the top of the head, with a black and gray pirate hat and black eye patch and
strap over the right eye. The left eye is in a black diamond shape with a white dot in the
center. There is an orange shrimp with a black eye and small white stripe coming out of the
upper side of the head opposite of the hat. The words ‘EL COCO PIRATA’ are to the right of
the head, shrimp and tree, with ‘EL COCO’ in green with a black outline, and ‘PIRATA’ in
orange and black outline. Over and entwined with the letters ‘T’ and ‘A’ of ‘PIRATA’ is an
orange with black outlined cartoon octopus which also has white and black diamond shaped
eyes. The words ‘MARISCOS ESTILO SINALOA’ is in green with black outlines under beach
design. The entire mark in on a transparent background.”
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statement: The English translation of “EL COCO PIRATA” in the mark is “THE
COCONUT PIRATE” and Reg. No. 4954491 includes the following additional
translation statement: The English translation of “MARISCOS ESTILO” in the mark
is “SEAFOOD STYLE.”
The Examining Attorney also finally refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the
following registered mark owned by a different entity: PIRATA in standard
characters, identifying “tacos,” in International Class 30. The registration includes
the following translation: “The English translation of PIRATA in the mark is
PIRATE.”3
After the final Office Action, Applicant appealed and requested reconsideration.
The Examining Attorney denied the request, and this appeal proceeded and is fully
briefed. We affirm the refusal to register for the reasons set out below.
II. Evidentiary Objection
Applicant submitted as an exhibit to its June 21, 2017 Response to Office Action
screenshots from its internet webpage.4 Applicant appended as an exhibit to its
appeal brief different, albeit related, screenshots from its webpage.5 In her brief, the
Examining Attorney objects to this latter exhibit as constituting new evidence that

3 Registration No. 5039129 issued September 13, 2016.
4 At .pdf 12-14. All citations to documents contained in the Trademark Document and
Status Retrieval (TSDR) database are to the downloadable .pdf versions of the
documents.
5 7 TTABVUE 14-15.
Serial No. 86979483
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Applicant did not submit during prosecution of the involved application.6 In its reply
brief Applicant:
requests that the Board consider the corrective “complete” webpage as
truthful evidence [Exhibit A to Applicant’s Appeal Brief]. Perhaps this
is somewhat of an exceptional circumstance, as the Applicant is not
requesting “new” evidence as contemplated by that term, but a complete
and true copy of the evidence that was already submitted with the
application, and which the portion indicating pricing at $100 meals was
cut off from the page originally submitted. This is not a request for new
evidence, but corrective truthful evidence as justice should permit.7

The evidentiary record in an application should be complete prior to the filing of
an appeal. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); Trademark Board Manual
of Procedure (TBMP) §§ 1203.02(e), 1207.01 (June 20178); Trademark Manual of
Examining Procedure (TMEP) § 710.01(c) (Oct. 2017). The proper procedure for an
applicant or examining attorney to introduce evidence after an appeal has been filed
is to submit a written request with the Board to suspend the appeal and remand the
application for further examination. See Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d). See also TBMP § 1207.02 and authorities cited therein.
Here, contrary to Applicant’s assertion, the circumstances are far from
exceptional, and we see no reason why Applicant could not have availed itself of the
well-established procedure for introducing evidence after commencement of its
appeal. As a result, the Examining Attorney’s evidentiary objection is sustained, and
the evidence Applicant submitted for the first time with its appeal brief is untimely

6 9 TTABVUE 3-4.
7 10 TTABVUE 4.
8 The June 2018 edition of the TBMP issued after this case was submitted to the Board for
decision.
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and will not be considered. See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); TBMP
§ 1203.02(e) and § 1207.01 and authorities cited therein.
We turn now to the merits of this appeal.
III. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 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 relatedness of the goods or services. See In re Chatam Int’l Inc.,
380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); 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 services] and differences in the marks.”). We have
considered each relevant DuPont factor for which there is evidence or argument, and
have treated any other factors as neutral. See M2 Software, Inc. v. M2 Commc’ns,
Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v.
GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered
each factor for which we have evidence, we focus our analysis on those factors we find
to be relevant.”). Varying weights may be assigned to each DuPont factor depending
on the evidence presented. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d
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1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993) (factors “may play more or less weighty roles in
any particular determination”).
A. Focus on Cited Registration No. 4949637
We determine this appeal based on Applicant’s involved mark and identified
services and the EL COCO PIRATA mark that is the subject of cited Registration No.
4949637, identifying “restaurant services, namely, providing of food and beverages
for consumption on and off the premises.” If likelihood of confusion is found as to the
mark and services in this registration, it is unnecessary to consider the other cited
registrations. See Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
B. Similarity of the Services, Channels of Trade and Classes of Consumers
Applicant’s identified “restaurant services in the nature of a fine-dining
Caribbean-themed restaurant” are encompassed by, and thus legally identical to, the
“restaurant services, namely, providing of food and beverages for consumption on and
off the premises” identified in the cited registration. In fact, the cited registration
identifies “restaurant services” without limitation as to cuisine or price point. See,
e.g., Southwestern Mgmt., Inc. v. Ocinomled, Ltd, 115 USPQ2d 1007, 1025 (TTAB
2015) (With a broad identification of services, “we must presume that the services
encompass all services of the type identified”).
Although Applicant has argued that its fine dining, featuring aged rums, full wait
staff and sophisticated ambiance, differ from the fast food counter services offered
under the mark in the cited registration, such differences are irrelevant to our
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determination. Likelihood of confusion must be determined based on an analysis of
the mark as applied to the services recited in Applicant’s application vis-à-vis the
services recited in a registration, rather than what the evidence may show the
services to be. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534
(Fed. Cir. 1997); Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A.,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); In re I-Coat Co., LLC, 126 USPQ2d
1730 (TTAB 2018); In re Midwest Gaming & Ent. LLC, 106 USPQ2d 1163, 1165
(TTAB 2013); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008) (“[I]t is
well established, as noted above, that it is the identification of goods that controls,
not what extrinsic evidence may show about the specific nature of the goods.”). Thus,
any specific differences between the actual nature of the services beyond the scope of
their identifications are irrelevant in our analysis.
Further, because as identified the services are legally identical, they must be
presumed to travel in the same channels of trade and be rendered or offered to the
same classes of consumers. In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1005 (Fed. Cir. 2002) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198 (Fed. Cir. 1983) (“absent restrictions in the application and registration,
goods and services are presumed to travel in the same channels of trade to the same
class of purchasers.”).
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As a result, the du Pont factors involving the legal identity of the services, trade
channels and classes of consumers weigh heavily in favor of a finding of likelihood of
confusion.
C. Strength of the Cited Mark
We next evaluate the strength of the cited mark and the scope of protection to
which it is entitled. The fifth DuPont factor is the “fame” or strength of the prior
mark, and the sixth factor is the number and nature of similar marks in use for
similar goods or services. DuPont, 177 USPQ at 567. In determining strength of a
mark, we consider both inherent strength, based on the nature of the mark itself, and
commercial strength or recognition. In re Chippendales USA Inc., 622 F.3d 1346, 96
USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its
conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”).
Concerning conceptual strength, we find that the registered mark EL COCO
PIRATA is arbitrary in connection with “restaurant services, namely, providing of
food and beverages for consumption on and off the premises” and therefore inherently
distinctive. As for marketplace strength, there is no evidence regarding the mark’s
commercial strength, as is typical with ex parte appeals in which the owner of the
cited registration is not a party. Also, Applicant submitted no evidence that third
parties are using similar PIRATA-formative marks in connection with restaurant
services. Aside from the three registrations cited by the Examining Attorney, owned
by two different entities, there is no evidence of any third-party registration of similar
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marks in connection with restaurant services. Cf. Juice Generation, Inc. v. GS
Enterprises LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015); Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,
S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135-36 (Fed. Cir. 2015).
Considering the record as a whole, we find that the registered mark is inherently
distinctive and there is no evidence of third-party use or registration of confusingly
similar marks for similar or related services. We therefore accord the EL COCO
PIRATA mark the normal scope of protection to which inherently distinctive marks
are entitled. See Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d
1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (stating that likelihood of confusion
fame varies along a spectrum from very strong to very weak).
D. Similarity of the Marks
We next address 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.” Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side
comparison of the marks, but instead whether the marks are sufficiently similar in
terms of their commercial impression such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted). See also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d
1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB
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2016). Consumers may not necessarily encounter the marks in close proximity and
must rely upon their recollections thereof over time. In re Mucky Duck Mustard, 6
USPQ2d 1467, 1468 (TTAB 1988).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be 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.”). On the other hand, 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 a consideration of the
marks in their entireties. Nat’l Data, 224 USPQ at 751.
Applicant’s mark, PIRATA in standard characters, is encompassed by the
registered mark, EL COCO PIRATA, also in standard characters. While there is no
rule that likelihood of confusion automatically applies where one mark encompasses
another, in this case, as in many others, the fact that Applicant’s entire mark is
contained in the registered mark increases the likelihood of confusion between the
two. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir.
2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES); In re
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U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (finding applicant’s CAREER
IMAGE marks similar to registered mark CREST CAREER IMAGES).
Applicant’s mark is translated as “pirate.” In the registered mark, “EL COCO”
modifies and draws additional attention to “PIRATA,” resulting in the mark’s
translation to “the coconut pirate.” Whether we view the mark as connoting a pirate
in the shape of a coconut, or a pirate with a taste for or reminiscent of coconut, the
mark EL COCO PIRATA identifies a type of pirate. Thus, we find that PIRATA is the
dominant portion of the mark. Moreover, the definite article “EL” like “La” or “The,”
“cannot be said to have any distinguishing effect.” In re Central Soya Co., Inc., 220
USPQ 914, 916 (TTAB 1984).9 See also In re Narwood Prods., Inc., 223 USPQ 1034,
1034 (TTAB 1984) (“There is no doubt that the word portion of appellant’s mark and
the mark subject of the cited registration are virtually identical since both consist
primarily of the term ‘music makers.’ The fact that the presentation in the mark of
the cited registration is as a single word rather than two words is obviously
insignificant in determining the likelihood of confusion. So also is the fact that
appellant’s mark, as it is sought to be registered, includes the definite article ‘the’”).
The marks are similar in appearance and sound inasmuch as PIRATA comprises
the dominant term in the registered mark EL COCO PIRATA. While we acknowledge
that “the coconut pirate” is subject to different fanciful interpretations, all of them

9 Ultimately, the board in that case determined that there was no likelihood of confusion
because, under Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642
(CCPA 1982), to establish likelihood of confusion between food products and restaurant
services “a party must show something more than that similar even identical marks are
used”).
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identify a type of pirate, with the result that the marks have similar meanings. The
distinctions between the marks, particularly given that they are used in connection
with legally identical services, do not significantly diminish the similarities in
appearance, sound, connotation and overall commercial impression. “When marks
would appear on virtually identical ... services, the degree of similarity [of the marks]
necessary to support a conclusion of likely confusion declines.” See Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1994). See also ECI Division of E-Systems, Inc. v.
Environmental Communications Inc., 207 USPQ 443, 449 (TTAB 1980). We find that
the first DuPont factor also weighs in favor of a finding that confusion is likely.
E. Conditions of Sale
Applicant argues that the sophistication of the purchasers of its services favors a
finding of no likelihood of confusion. In Applicant’s own words:
Also, Applicant notes that consumers will be unlikely to make an
impulse purchase that would result in the misguided purchase of
Applicant’s products because consumers must make the decision of
where to eat before they actually place their order. It is simply not
reasonable to suppose a consumer could believe he or she was
purchasing food from a restaurant after walking into an entirely
different establishment paying a few dollars off of a lighted fast food
display in a fast food setting for one consumable taco item in the
mistaken belief of entering into a fine dining restaurant with 30 and 50
year old rums.10

Again, Applicant’s argument is based upon distinctions not reflected in the cited
registration’s recitation of services. As discussed above, Registrant’s “restaurant

10 7 TTABVUE 11.
Serial No. 86979483
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services” must be presumed to include fine dining and Caribbean-themed
restaurants. In any event, we must base our decision “on the least sophisticated
potential purchasers,” which may include ordinary consumers who consume fast food
and frequent inexpensive restaurants. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014). As a result,
this du Pont factor is neutral.
F. Actual Confusion
The final du Pont factor discussed by Applicant and the Examining Attorney is
the lack of actual confusion. Applicant asserts that the absence of actual confusion
suggests no likelihood of confusion. However, in an ex parte proceeding, Applicant’s
assertion of the absence of actual confusion is of little probative value in our
determination on the issue of likelihood of confusion because the Board cannot readily
determine whether there has been a significant opportunity for actual confusion to
have occurred, such that the absence of confusion is meaningful. See In re Opus One
Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Kangaroos U.S.A., 223 USPQ 1025
(TTAB 1984); In re Jeep Corp., 222 USPQ 333 (TTAB 1984). As pointed out by the
Examining Attorney, it is not necessary to show actual confusion in order to establish
likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d
1546, 223 USPQ 1025 (Fed. Cir. 1990). This du Pont factor is neutral.
IV. Conclusion
We have carefully considered all of the evidence of record, including any evidence
not specifically discussed herein. The overall similarity of the marks for legally
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identical services that move in identical channels of trade reaching the same classes
of customers renders confusion likely. Applicant’s arguments in favor of registration
are insufficient to overcome these similarities.
Decision: The refusal to register Applicant’s mark is affirmed.