Surfers’ Burgers Ltd.

Trademark Trial and Appeal Board

Sep 18, 2018

No. 87236328 (T.T.A.B. Sep. 18, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 18, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Surfers’ Burgers Ltd.
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Serial No. 87236328
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Joshua Gerben and Eric J. Perrott of Gerben Law Firm,
for Surfers’ Burgers Ltd.
Anthony Rinker, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Taylor, Wellington and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Surfers’ Burgers Ltd. (“Applicant”) seeks registration on the Principal Register of
the mark SURFERS’ BURGERS (in standard characters, BURGERS disclaimed) for
Bar services; Cafeteria services; Café services; Canteen
services; Food and drink catering; Restaurant services;
Snack-bar services, in International Class 43.1

1 Application Serial No. 87236328 was filed on November 14, 2016, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 87236328
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The Trademark Examining Attorney has refused registration of 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 mark SURFER (in standard characters) for bar and restaurant services in
International Class 43,2 and the mark SURFER DOGS and design
for mobile vending of various types of hot dog sandwiches in
International Class 35,3 both previously registered on the Principal Register and
owned by two different registrants, as to be likely to cause confusion, mistake or
deception.

2 Registration No. 4392969 issued on August 27, 2013.
3 Registration No. 4517388 issued on April 22, 2014. The registration includes a disclaimer
of DOGS “(as it relates to the popular sandwich, hotdogs),” claims the colors black, red, white,
tan, blue, red, grey, green and yellow as a feature of the mark, and describes the mark as
consisting of
a circle with a black border, the inside of which contains the
words ‘SURFER DOGS’ in red letters outlines in white and
again in red, and curved along the upper inside of the circle.
Underneath the words ‘SURFER DOGS’ and inside the circle is
a design of a hot dog riding a hot dog bun surfboard. The hot dog
is tan, has black hair, blue eyes and a red tongue, as well as grey
swim trunks with stipes of green, yellow and red down the side.
There are two curved blue lines training from the hot dog’s hand
and surfboard. This is all on a white background.
Serial No. 87236328
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When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Applicable Law
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in 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 Co., 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 or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). We discuss below these and other relevant factors.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006) (even within the du Pont list, only factors that are “relevant and of
record” need be considered).
A. Focus on Registration No. 4392969
For purposes of our likelihood of confusion analysis, we focus on the most relevant
cited registration, Registration No. 4392969, for the standard character mark
SURFER for services that include bar and restaurant services. If we find a likelihood
of confusion as to this cited registration, we need not find it as to the other cited
registration. On the other hand, if we do not find a likelihood of confusion with the
mark in this registration, we would not find it as to the other cited registration, which
includes additional distinguishing elements, and identifies less similar services. See
Serial No. 87236328
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In re I-Coat Co., LLC, 126 USPQ2d 1730, 1734 (TTAB 2018); In re Max Capital Grp.,
Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
B. Relatedness of the Services and Channels of Trade
We begin with the du Pont factors involving the relatedness of the services and
the relatedness of established, likely to continue channels of trade.4 We base our
evaluation on the services as they are identified in the application and cited
registration. See In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
1997); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1171 (Fed. Cir. 2014); Octocom Sys. Inc. v. Hous. Computs. Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
As noted above, Registrant’s mark is registered for bar and restaurant services,
and Applicant wishes to register its mark for several services including bar and
restaurant services. Because the application and registration both identify bar and
restaurant services, the identifications of services are in part identical. We do not
discuss the additional services identified in the application because under this du
Pont factor, the Examining Attorney need not prove, and we need not find, similarity
as to each and every service recited in the identification of services. It is sufficient for
a refusal based on likelihood of confusion that relatedness is established for any item
encompassed by the identification of services in a particular class in the application.

4 Other than referring to “the differences in goods” in the introduction to its brief, Applicant
does not address these factors. 8 TTABVUE 4.
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Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981).
Further, because the bar and restaurant services identified in the application and
registration are identical, and there are no limitations in the application or
registration as to the channels of trade and classes of purchases, we must presume
that they are the same. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (absent restrictions in an application or registration, the identified
services, if identical, are “presumed to travel in the same channels of trade to the
same class of purchasers.”) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281
F.3d 1261, 62 USPQ2d 1001, 1001 (Fed. Cir. 2002)); see also Stone Lion, 110 USPQ2d
at 1161; In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016).
These du Pont factors strongly favor a finding of likelihood of confusion.
C. Strength of the Cited Mark
Under the sixth du Pont factor, we consider “[t]he number and nature of similar
marks in use on similar goods [or services].” du Pont, 177 USPQ at 567. Evidence of
third-party use bears on the strength or weakness of a registrant’s mark. In re
i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017). If the
evidence establishes that the consuming public is exposed to third-party uses of
similar marks for similar goods or services, it “is relevant to show that a mark is
relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imps.
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1693 (Fed. Cir. 2005).
Serial No. 87236328
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Applicant contends that “surfer” is a weak term entitled to a narrow scope of
protection or exclusivity of use in view of a “plethora” of third-party uses and
registrations of SURFER-formative marks for bars, restaurants, food products, and
other purportedly related goods and services.5 According to Applicant, if the cited
registration for SURFER can coexist with the other SURFER-formative marks, then
its mark also should be permitted to register. In support of this contention, Applicant
points to fifteen use-based registrations, and screenshots from twenty three third-
party websites, which we address in turn.6
Initially, we observe that four of the third-party registrations are not probative
because they do not identify bars, restaurants, or food products,7 see i.am.symbolic
123 USPQ2d at 1751 (disregarding third-party registrations for other types of goods
[or services] where the proffering party had neither proven nor explained that they
were related to the goods [or services] in the cited registration), another ten include
additional distinguishing matter, resulting in marks with very different connotations
and commercial impressions than Registrant’s mark SURFER,8 and one is for a

5 8 TTABVUE 5.
6 March 1, 2018 Request for Reconsideration, TSDR 17-39 (registrations) and 40-52 (Internet
evidence).
7 The registrations are for the following marks and services: SURFER’S GARDEN for “resort
hotel services”; SILVERSURFERS and design for “booking of holiday hotel accommodations
and restaurants for persons of fifty years of age or more; retirement homes” and “online social
networking services for persons of fifty years of age or more”; SAVVY SURFER for “resort
lodging services”; and SURFERS’ DELIGHT for “pet food.”
8 The marks in the registrations are: SUBWAY SURFERS and design; THERE’S A LITTLE
‘CALIFORNIA SURFER’ IN ALL OF US; SURFER GIRL and design; SURFERAID;
RETIRED SURFERS BAR AND RESTAURANT (two registrations, one for restaurants and
bars, and one for clothing sold in connection with the restaurant and bar); and LUCY’S
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different mark, SURFAS (stylized). The two remaining registrations, for the marks
SURFER COOLER for “fruit drinks containing water, fruit juice, soft drinks, soda
waters and aerated waters” and SURFER BEER for “beer,” have more probative
value than the others because the marks are closer to the cited registered mark, and
the identified goods are goods of a type that would be sold in the restaurants and bars
identified in the cited registration.9 The registration for the mark SURFER DOGS
and design, cited by the Examining Attorney and displayed at the beginning of this
decision, also falls in this category.
Turning to the web evidence, of the twenty-three listed websites involving
businesses with SURFER-formative names, eight include additional matter
identifying a particular type of surfer (STREET SURFER (which is listed twice),
COWBOY SURFER, DREDSURFER, HUNGRY SURFER, HAWAII SURFER
SMOOTHIES, STUFT SURFER SMOOTHIES, and LUCY’S RETIRED SURFERS
BAR & RESTAURANT (also listed among Applicant’s third-party registration
evidence)), one connotes a specific person (SURFER JOE’S PIZZA), and one appears
to identify Registrant (SURFER [THE BAR]). Three websites for hotels and bars use
the term SURF rather than SURFER, connoting the ocean rather than the individual
(PB SURF, THE SURF HOTEL, and THE SURF LODGE), and SURFER’S REHAB
(for restaurant services) connotes a particular place. The remaining nine websites are
more probative. They appear to identify eight businesses as follows: SURFERS CAFÉ

RETIRED SURFERS BAR & RESTAURANT (with and without design). The four RETIRED
SURFERS-formative marks are all owned by one registrant.
9 The two registrations are owned by different registrants.
Serial No. 87236328
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(listed twice); THE SURFER TACO (for food truck and catering services); SURFERS
COFFEE (for coffee and café services); SURFER’S GRILL (for restaurant services);
SURFER’S HOT DOGS (for restaurant services); and the following three for hotel
and bar services: SURFER BEACH HOTEL, KOA SURFER HOTEL, and BLISS
SURFER HOTEL.
Although “extensive evidence of third-party use and registrations is ‘powerful on
its face,’ even where the specific extent and impact of the usage has not been
established,” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015)
(citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,
1674 (Fed. Cir. 2015), we have no such showing in this case. Applicant has presented,
at most, three similar registrations, and Internet evidence of eight different entities
using SURFER-formative marks, well short of the volume of evidence found
convincing in Jack Wolfskin and Juice Generation. See also Primrose Ret. Cmtys.,
LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030 (TTAB 2016) (weakness
found based on at least 85 actual uses of ROSE-formative marks for similar services,
eight similar third-party registrations, expert testimony and other evidence
regarding the common nature of ROSE-formative marks in the industry, and
testimony by opposer that it did not vigorously enforce its mark).
Despite the evidentiary infirmities, however, the record supports a finding that
the term “surfer” is not entirely unique when used in connection with bars and
restaurants, and may be referring to the theme or décor of the bars/restaurants, or
Serial No. 87236328
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the proximity of the bars/restaurants to a beach, and that purchasers would be aware
of these meanings. For example, the website for Surfers Coffee Bar shows that the
coffee bar is located in Wahiawa, Hawaii, the website for Surfers Café displays the
mark next to a design of a surfer, and the associated TripAdvisor review identifies a
location in Holden Beach, NC, and the printout from FourSquare for Surfer’s Grill
identifies a location in Stinson Beach, CA, with a photograph of the restaurant near
the beach.10 We find, therefore, that the mark in the cited registration, SURFER, has
some conceptual weakness, and accordingly, it is entitled to a slightly narrowed scope
of protection than would be accorded an arbitrary mark.
D. Similarity of the Marks
Under this factor, we compare Applicant’s mark SURFERS’ BURGERS and
Registrant’s mark SURFER, both in standard characters, “in their entireties as to
appearance, sound, connotation and commercial impression.” Viterra, 101 USPQ2d
at 1908 (quoting du Pont, 177 USPQ at 567); see also Palm Bay, 73 USPQ2d at 1691.
“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). The marks “‘must be considered … in light of
the fallibility of memory ….’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082,

10 March 1, 2018 Request for Reconsideration, TSDR at 42, 43-44, and 47, respectively.
Serial No. 87236328
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1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components
Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The focus is on the recollection of the
average purchaser, who normally retains a general rather than a specific impression
of trademarks. See St. Helena Hosp., 113 USPQ2d at 1085; Geigy Chem. Corp. v. Atlas
Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971). Because the
services are bars and restaurants with no restrictions or limitations as to price point
or classes of consumers, the average customer is an ordinary consumer.
In addition, and of particular relevance here, where the parties use their marks
in connection with identical services, the similarity between the marks necessary to
support a determination that confusion is likely declines. Bridgestone Ams. Tire
Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir.
2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
Our analysis cannot be predicated on dissection of the involved marks. Stone Lion,
110 USPQ2d at 1161. Rather, we are obliged to consider the marks in their entireties.
Id. 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.”). Nonetheless, 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. Stone
Lion, 110 USPQ2d at 1161.
Serial No. 87236328
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Applicant’s mark SURFERS’ BURGERS and Registrant’s mark SURFER are
similar because they share the term SURFER/SURFERS’. The term SURFERS’ in
Applicant’s mark is simply the plural possessive form of the term SURFER. In this
case, the singular or plural form of the term SURFER “does not amount to a material
difference.” In re Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227 (CCPA 1969); see
also In re Pix of Am., Inc., 225 USPQ 691 692 (TTAB 1985) (singular and plural forms
“almost totally insignificant in terms of the likelihood of confusion of purchasers.”).
Likewise, the apostrophe in one mark but not the other has little impact in our
analysis. See, e.g., Lipton Indus. Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185, 186 n.3 (CCPA 1982) (“This difference is de minimis, and we will refer to the
marks and goods of the parties as identical.”); Southwestern Mgmt., Inc. v. Ocinomled,
Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (“No meaningful distinction arises from
the possessive form of Applicant’s mark.”); Winn’s Stores, Inc. v. Hi-Lo, Inc., 203
USPQ 140, 143 (TTAB 1979) (“little if any trademark significance can be attributed
to the apostrophe and the letter ‘s’ in opposer’s mark”).
The placement of the term SURFERS’ in the lead position in Applicant’s mark
highlights the importance of that term. See Palm Bay, 73 USPQ2d at 1692 (“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, 23 USPQ2d at 1700 (upon encountering the marks, consumers will first notice
the identical lead word).
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In addition, while there is no rule that a likelihood of confusion is present where
one mark encompasses another, in this case, as in many others, the fact that
Applicant’s mark includes the entirety of Registrant’s mark increases the similarity
between the two. See, e.g., Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 194
USPQ 419, 422 (CCPA 1977) (finding CALIFORNIA CONCEPT marks substantially
similar to prior mark CONCEPT); Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v.
Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975)
(applicant’s mark BENGAL LANCER for club soda, quinine water and ginger ale is
likely to cause confusion with BENGAL for gin).
The additional wording in Applicant’s mark does not distinguish Applicant’s mark
from Registrant’s mark because BURGERS is generic of a type of food commonly
offered at a bar or restaurant, and thus at least highly descriptive of bar and
restaurant services. See In re Nat’l Data Corp., 224 USPQ 749, 752 (Fed. Cir. 1985)
(the “descriptive component of a mark may be given little weight in reaching a
conclusion on likelihood of confusion”). Applicant appropriately has disclaimed the
term BURGERS. See In re Dixie Rests. Inc., 41 USPQ2d at 1533-34 (“DELTA,” not
the disclaimed generic term “CAFÉ,” is the dominant portion of the mark THE
DELTA CAFÉ). We also take into consideration the scenario whereby a diner who
wants to order a hamburger at Registrant’s SURFER restaurant easily could use the
term “Surfer’s burger” to refer to the menu item.
Finally, both marks are in standard characters and thus not limited to any
particular depiction. The rights associated with a standard character mark reside in
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the wording and not in any particular display. In re RSI Sys. LLC, 88 USPQ2d 1445,
1448 (TTAB 2008); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB
1988); TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”)
Section 1207.01(c)(iii) (Oct. 2017). We must consider both standard character marks
“regardless of font style, size, or color,” Citigroup Inc. v. Capital City Bank Grp. Inc.,
637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011), including iterations
emphasizing the shared term SURFER, whether in the singular or plural, and with
or without the possessive apostrophe.
We find that when viewed in their entireties, the marks are very similar in all
respects. The first du Pont factor thus weighs heavily in favor of a finding that
confusion is likely.
E. Conclusion
Having considered all the evidence and arguments bearing on the relevant du
Pont factors, we conclude that the identified services are identical in part and move
through the same channels of trade to the same classes of purchasers, the marks are
similar, and any conceptual weakness in the cited registered mark does not outweigh
these du Pont factors. Ultimately, Applicant’s mark is likely to cause confusion with
the cited mark when used in connection with the services identified in the application.
Decision: The refusal to register Applicant’s mark SURFERS’ BURGERS is
affirmed.