Taco JED L. L. C.

Trademark Trial and Appeal Board

May 10, 2021

88517578 (T.T.A.B. May. 10, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: May 10, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Taco JED L.L.C.
_____

Serial No. 88517578
_____

Kendall J.A. Salter of Dunlap & Seeger, P.A.,
for Taco JED L.L.C.
Drew Ciurpita, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
_____

Before Kuhlke, Kuczma and Larkin,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Taco JED L.L.C. (“Applicant”) seeks registration on the Principal Register of the
mark TACO JED (in standard characters) for:
Fast-food restaurant services featuring Mexican cuisine in
International Class 43.1

1 Application Serial No. 88517578 was filed on July 16, 2019, based upon Applicant’s claim
of first use anywhere and first use in commerce since at least as early as October 4, 2018
under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). “TACO” is disclaimed.

Page references to the application record refer to the online database of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system and are to the downloadable .pdf
Serial No. 88517578
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The Trademark Examining Attorney refused registration of Applicant’s mark
under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing Registration No.
2852461, owned by MPG Jed’s Management, LLC (“Registrant”), for the mark
for “restaurant services featuring full wait service, bar services, and a full
service menu” in International Class 43, as a bar to registration.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. Applicant and the Examining Attorney submitted briefs.2 For
the reasons set forth below, the refusal to register is affirmed.
I. Likelihood of Confusion
Our determination under § 2(d) is based on an analysis of all probative facts in
evidence that are relevant to the factors bearing on the issue of likelihood of confusion
enunciated in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138,
113 USPQ2d 2045, 2049 (2015); 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 similarities

version of the documents. References to the briefs on appeal refer to the Board’s TTABVUE
docket entry number and electronic page number.

2 Applicant submitted four exhibits with its appeal brief. 4 TTABVUE 16-39. Inasmuch as
the exhibits consisted of copies of its application as filed, the October 2, 2019 Office Action,
Applicant’s April 1, 2020 Response to Office Action and the May 1, 2020 Final Office Action
(without the attachments), the resubmission of such materials which are already of record is
duplicative and unnecessary. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) §§ 1203.01 and 1203.02(e) (2020) and authorities cited therein.
Serial No. 88517578
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between the goods or services. See In re i.am.symbolic, llc, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); 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 differences in the marks.”).
We have considered each DuPont factor for which there is evidence and argument
of record. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed.
Cir. 2019). Varying weights may be assigned to each DuPont factor depending on the
evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play
more or less weighty roles in any particular determination.”); see also Cai v. Diamond
Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (not all of the
DuPont factors are relevant to every case, and only factors of significance to the
particular mark need be considered).
A. Similarity of the Marks
It is well settled that marks are compared in their entireties for similarities in
appearance, sound, connotation and commercial impression. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir.
2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
Serial No. 88517578
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1772, 396 F. 3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis should not 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.”). However, 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. In re Nat’l Data, 224 USPQ at 751.
The word “Jed’s” in Registrant’s word and design mark appears prominently with
a small star design above the “Je” in “Jed’s,” all encompassed in an oval design. The
design elements of the registered mark, the star design and background oval design
showcasing the word element of the mark, do not obviate the similarity between
Applicant’s and Registrant’s marks. In re Max Capital Grp. Ltd., 93 USPQ2d 1243,
1248 (TTAB 2010) (design element in applicant’s mark MAX & design for insurance
services not sufficient to distinguish the mark from cited marks MAX in standard
characters and MAX & design for insurance services). Although marks must be
compared in their entireties, when evaluating their similarities, if one of the marks
Serial No. 88517578
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comprises both a word portion and a design, like Registrant’s mark , the
word portion is often considered the dominant feature and normally accorded greater
weight in determining whether the marks are similar because it would be more likely
to make a greater impression upon customers, be remembered by them, and be used
by them to refer to or request the goods or services. Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129, 1134 (Fed. Cir. 2015) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198, 200 (Fed. Cir. 1983)); In re Viterra, 101 USPQ2d at 1911; In re Aquitaine
Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018). Customers seeing the mark
would readily recognize the wording “Jed’s” and use it to identify Registrant’s
restaurant services. The common design elements (an oval “carrier” for “Jed’s” and a
star) are visually subordinate to the prominent wording in Registrant’s mark and
their addition does not obviate the fact that Applicant’s mark incorporates the
dominant portion of Registrant’s mark. Thus, the term “Jed’s” dominates the
commercial impression of Registrant’s mark.
The presence of “Jed” in the possessive case in the cited mark connotes that
Registrant’s restaurant is owned by a person named “Jed” and increases the
similarity of the marks (i.e., “Jed” has become “Taco Jed”). Additionally, that the word
portion of the registered mark ends with an apostrophe followed by the letter “s” has
little, if any, trademark significance and does not otherwise affect the overall
similarity of the marks in terms of commercial impression. See In re Chatam Int’l
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946-47 (Fed. Cir. 2004) (the dominant feature
Serial No. 88517578
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of Chatam’s mark, GASPAR, is also the dominant feature of the registered mark,
GASPAR’S, albeit in possessive form); Hunt Foods & Indus., Inc. v. Gerson Stewart
Corp., 367 F.2d 431, 151 USPQ 350 (CCPA 1966) (likelihood of confusion found
between HUNT and HUNT’S, used on significantly different goods); In re Binion, 93
USPQ2d 1531, 1534 (TTAB 2009) (noting that “[t]he absence of the possessive form
in applicant’s mark . . . has little, if any, significance for consumers in distinguishing
it from the cited mark”); In re Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986)
(finding the marks McKENZIE’S and McKENZIE “virtually identical in commercial
impression”); Winn’s Stores, Inc. v. Hi-Lo, Inc., 203 USPQ 140, 143 (TTAB 1979)
(noting that “little if any trademark significance can be attributed to the apostrophe
and the letter ‘s’ in opposer’s mark”).
Turning to Applicant’s mark TACO JED, in the context of the services identified
in the application as “fast-food restaurant services featuring Mexican cuisine ,” the
term “TACO” describes a particular type of Mexican food served at its restaurant. See
In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1638 (Fed. Cir. 2016)
(finding CHURRASCOS generic for a class of restaurants that serve churrascos
(grilled meat)). Thus, the word “TACO” in Applicant’s mark is merely descriptive of
its identified restaurant services, and has been appropriately disclaimed by
Applicant.3 It is well-settled that disclaimed, descriptive matter may have less
significance in likelihood of confusion determinations. See, e.g., Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In re Nat’l

3 See Application Serial No. 88517578 as filed.
Serial No. 88517578
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Data, 224 USPQ at 752 (“Regarding descriptive terms, this court has noted that the
descriptive component of a mark may be given little weight in reaching a conclusion
on the likelihood of confusion”)); In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,” is the
dominant portion of the mark THE DELTA CAFE); In re Binion, 93 USPQ2d at 1534
(BINION’S, not disclaimed word ROADHOUSE, is dominant element of BINION’S
ROADHOUSE); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”).
Inasmuch as the word “TACO” in Applicant’s mark TACO JED is at least merely
descriptive of Applicant’s services, the dominant element in Applicant’s mark is
nearly identical to the distinctive term “Jed’s” in Registrant’s mark. There is nothing
improper in stating that, for rational reasons, more or less weight has been given to
a particular feature of a mark, such as a common dominant element, if another
feature of the mark is descriptive or generic standing alone, provided the ultimate
conclusion rests on a consideration of the marks in their entireties. In re Viterra, 101
USPQ2d at 1908 (the court may place more weight on a dominant portion of a mark,
for example if another feature of the mark is descriptive or generic standing alone,
however, the ultimate conclusion nonetheless must rest on consideration of the marks
in total); Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351,
1354 (Fed. Cir. 2000); In re Nat’l Data, 224 USPQ at 751. Thus, the difference in the
Serial No. 88517578
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marks due to the inclusion of the descriptive word “TACO” preceding “JED” in
Applicant’s mark is not sufficient to distinguish them.
The name “JED” forms the dominant impression of both marks. “Jed’s” is
presented as the only term in Registrant’s word-and-design mark, , and
“JED” is the source-identifying term in Applicant’s mark TACO JED, resulting in
marks that look and sound quite similar and convey similar meanings.
Additionally, the identity of the dominant portion of Applicant’s and Registrant’s
marks is especially important in the restaurant industry. Because restaurants are
often recommended by word of mouth and referred to orally, the word portion of a
mark such as Registrant’s composite word and design mark is more likely to be
impressed on the customer’s memory and is generally accorded greater weight. In re
Dixie Rests., 41 USPQ2d at 1534 (quoting Giant Food, Inc. v. Nation’s Foodservice,
Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983)); In re Appetito Provisions
Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). Thus, customers will use the name Jed’s
in Registrant’s mark to identify, refer to, and call for its services.
Because Applicant’s mark contains the same name found in the registered mark,
preceded by the descriptive wording “TACO,” the marks look and sound alike, and
the commercial impression of the marks is very similar as they both refer to a person
named Jed in the context of restaurant services.
Applicant argues that the Examining Attorney disregarded the term “TACO”
which helps to create its distinctive visual, aural, and commercial impression.
Serial No. 88517578
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However, “the presence of an additional term in the mark does not necessarily
eliminate the likelihood of confusion if some terms are identical.” In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re El Torito Rests.
Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (MACHO COMBOS, with “combos”
disclaimed, likely to cause confusion with MACHO); see also China Healthways Inst.,
Inc. v. Wang, 491 F.3d 1337, 83 USPQ2d 1123 (Fed. Cir. 2007) (the shared word in
CHI and CHI PLUS is likely to cause confusion despite differences in the marks’
designs); see also TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
§ 1207.01(b)(iii) (Oct. 2018) (“if the dominant portion of both marks is the same, then
the marks may be confusingly similar notwithstanding peripheral differences.”).
Contrary to Applicant’s argument, the addition of the descriptive initial word
“TACO” in its mark does not alter the meaning or commercial impression of its mark
in a manner that would serve to sufficiently distinguish it from Registrant’s mark.
“TACO” is merely descriptive of Applicant’s “restaurant services featuring Mexican
cuisine” and the meaning of “taco” in relation to restaurant services generally as a
possible menu item would also be descriptive. The additional information it conveys
in Applicant’s mark does not detract from the similarity in overall commercial
impression between the marks based on the identical name JED. Thus, the word
“TACO” in Applicant’s mark is not sufficiently distinctive to differentiate Applicant’s
mark from the cited mark.
The specimen Applicant filed with its application uses “JED’s” as a shorthand for
TACO JED, including JED’s Menu, JED’s Breakfast Taco’s, JED’s Tacos, and JED’s
Serial No. 88517578
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Side Drinks & Kids Menu, underscoring the source-identifying dominance of the
name “JED” over the word TACO in Applicant’s mark and confirming the similarity
of Applicant’s and Registrant’s marks due to the common presence of the name Jed:

Serial No. 88517578
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Although the issue of likelihood of confusion must be judged on the basis of the
facts and context of each case presented to the Board, likelihood of confusion has
frequently been found where the entirety of one mark, such as Registrant’s “Jed’s”
(and design) mark, is incorporated within another, i.e., Applicant’s TACO JED mark.
See Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422
(CCPA 1977) (finding and CALIFORNIA CONCEPT similar to CONCEPT); In
re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and
VANTAGE TITAN confusingly similar); In re United States Shoe Corp., 229 USPQ
707, 709 (TTAB 1985) ( and similar to
); In re Apparel Ventures, Inc., 229 USPQ 225 (TTAB 1986) (finding
(Sparks by sassafras) similar to ); In re Riddle, 225 USPQ
630 (TTAB 1985) ( similar to ACCUTUNE); In re Champion Int’l Corp.,
196 USPQ 48, 49 (TTAB 1977) (resemblance between applicant’s CHECK MATE and
registrant’s HAMMERMILL MICR CHECK-MATE marks for closely related
products likely to cause confusion); In re C.F. Hathaway Co., 190 USPQ 343, 345
(TTAB 1976) (HATHAWAY GOLF CLASSIC for knitted sport shirts likely to cause
confusion with registered GOLF CLASSIC mark for men’s hats).
When comparing marks, the test is not whether the marks can be distinguished
in a side-by-side comparison, but rather whether the marks are sufficiently similar
Serial No. 88517578
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in terms of their overall commercial impression that confusion as to the source of the
services offered under the respective marks is likely to result. Cai v. Diamond Hong,
127 USPQ2d at 1801 (citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); In re Bay State Brewing Co., 117
USPQ2d 1958, 1960 (TTAB 2016). The proper focus is on the recollection of the
average purchaser, who retains a general rather than specific impression of
trademarks. In re Bay State Brewing, 117 USPQ2d at 1960 (citing Spoons Rests. Inc.
v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353
(Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing
Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB
2013)).
To the extent that customers notice the differences in the marks, they are likely
to believe that Applicant’s mark TACO JED is a version of Registrant’s mark or that
it represents a service line extension of “Jed’s” services, especially since Applicant’s
standard character mark could be displayed in the same font and size as the name
Jed’s in the cited registration. In re Aquitaine Wine, 126 USPQ2d at 1186. “Even those
purchasers who are fully aware of the specific differences between the marks may
well believe, because of the similarities between them, that the two marks are simply
variants of one another, used by a single producer to identify and distinguish
companion lines of [services].” In re Great Lakes Canning, Inc., 227 USPQ 483, 485
(TTAB 1985). Therefore, Applicant’s mark TACO JED and Registrant’s mark
Serial No. 88517578
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are similar in appearance, sound, connotation, and commercial
impression. This factor supports a finding of likelihood of confusion.
B. Similarity of the Services, Channels of Trade and Classes of Customers
We turn to the next DuPont factors involving the similarity of the services, the
channels of trade and classes of customers. The question of likelihood of confusion is
determined based on the description of the services in the application and registration
at issue, not on extrinsic evidence of actual use. See Stone Lion Capital v. Lion
Capital, 110 USPQ2d at 1162 (quoting Octocom Sys. Inc. v. Hous. Computs. Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Applicant’s and Registrant’s services need not be identical, or even competitive, in
order to find that they are related for purposes of our likelihood of confusion analysis.
See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475
(Fed. Cir. 2000); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). It is
enough that the services are related in some manner or that some circumstances
surrounding their marketing are such that they would be likely to be seen by the
same persons under circumstances that could give rise, because of the marks used or
intended to be used therewith, to a mistaken belief that they emanate from, are
sponsored or authorized by or are otherwise connected to the same source. See Coach
Servs. v. Triumph Learning, 101 USPQ2d at 1722; In re Melville Corp., 18 USPQ2d
1386, 1388 (TTAB 1991); In re Uncle Sam Chem. Co., 229 USPQ 233, 235 (TTAB
1986). The issue, of course, is not whether customers would confuse the services
Serial No. 88517578
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themselves, but rather whether there is a likelihood of confusion as to their source.
In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984).]
Looking at the identified services, Applicant’s services are fast-food restaurant
services featuring Mexican cuisine and Registrant’s services are restaurant services
featuring full wait service, bar services, and a full service menu. Registrant’s
identification “restaurant services featuring . . . a full service menu” encompasses all
cuisines including Mexican. See In re Dixie Rests., 41 USPQ2d at 1533 (“restaurant
services specializing in Southern-style cuisine” are legally identical to “restaurant
services”); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007)
(petitioner’s “restaurant services” encompass respondent’s “restaurant services
featuring bagels as a main entrée”).
Fast-food is defined as:
1: of, relating to, or specializing in food that can be
prepared and served quickly
// a fast-food restaurant.4
The term “full-service” is:
used to describe a business that provides customers with a
complete range of services; used to describe a restaurant or

4 MERRIAM-WEBSTER UNABRIDGED DICTIONARY at merriam-webster.com/dictionary/fast-
food, May 5, 2021.
The Board may sua sponte take judicial notice of dictionary definitions, Univ. of Notre Dame
du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including definitions in online dictionaries that exist in printed
format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4
(TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016). See also TBMP
§ 1208.04.
Serial No. 88517578
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gas station where you are served by an employee rather
than collecting food or filling your car yourself5
which is defined as:
offering the complete range of services for a business of its
type a full-service bank
WEBSTER’S NEW WORLD COLLEGE DICTIONARY, 4th Edition.
Copyright © 2010 by Houghton Mifflin Harcourt.6
In other words, a full-service restaurant is a place where food is served directly to the
customer’s table and may encompass anything from casual dining in a family-style
eatery to fine dining in an elegant restaurant and is not restricted as to what types
of food may be served.
In support of the relatedness of Applicant’s and Registrant’s services, the
Examining Attorney submitted copies of portions of various restaurants’ websites
showing that the same restaurants offer full-service dining, i.e., sit down restaurant
services with full wait staff and bar services, as well as fast-food and take out
restaurant services:
Hooters Restaurant:
. . . offers full service restaurant services including
“appetizers, salads, burgers, you name it. And those
Hooters world famous Wings.”

5 CAMBRIDGE DICTIONARY at dictionary.cambridge.org/us/dictionary/English/full-service, ©
Cambridge University Press 2021, May 5, 2021.
6 COLLINS DICTIONARY at collinsdictionary.com/us/dictionary/english/full-service, © Collins
2021, May 5, 2021.
Serial No. 88517578
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Hooters has also opened Hoots, “a Hooters Joint,” with an
abbreviated menu featuring chicken wings, chicken
sandwiches, buffalo shrimp and crab legs.7
Applebees website advertising Applebee’s Express
services:
What to Expect at Applebee’s Express in Mobile [Alabama]
Be one of the first to experience our new Applebee’s
Express located at 7450 Airport Blvd. Suite D in Mobile,
featuring a fast-casual dining, takeout (To Go) and delivery
experience. . . . Applebees’s Express is designed to fit into
your busy lifestyle and features dine in counter service,
while still offering a variety of beer selections . . . And of
course, our signature items are usually available here in
Mobile such as Riblets and shrimp; sandwiches; burgers;
salads; Three Cheese Chicken Penne and Classic Broccoli
Chicken Alfredo.8
Buffalo Wild Wings B-Dubs Express
B Dubs Express is a smaller-sized counter service version
of Buffalo Wild Wings that provides wings and select menu
favorites in a more convenient and streamlined way. . . .
With counter service, smaller square footage, and fewer
TVs than a full-size B-Dubs, you can get in-and-out and
feed your cravings even faster.9
Phillips Seafood Restaurants
“Maryland is famous for its crabs, and Phillips Seafood is
Baltimore’s premiere restaurant for award-winning crab
cakes! . . . you’ll find a casual, polished restaurant with an
energetic feel. We serve an extensive menu of classic

7 May 1, 2020 Final Office Action, Hoots at TSDR 6-14: https://eathoots.com/ features fast
food items including chicken wings, chicken sandwiches, chicken tenders, crab legs, shrimp
and sides and extras; party packs meals; Hooters at TSDR 15-16: https://www.hooters.com/
including “it all – appetizers, salads, burgers, you name it. And those Hooters world famous
Wings. . . .”
8 May 1, 2020 Final Office Action, Applebee’s Express at TSDR 17-21: https://www.applebees
.com/en/restaurants-mobile-al/7450-airport-blvd-suite-d-7880.
9 May 1, 2020 Final Office Action, B-Dubs Express smaller-sized counter version of Buffalo
Wild Wings at TSDR 31 https://www.buffalowild wings.com/en/express/; Buffalo Wild Wings
at TSDR 32-34 https://bwwfranchising.com/our-restaurants/.
Serial No. 88517578
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seafood dishes along with plenty of dining choices for non-
seafood lovers. . . . ”
Also, “Phillips Seafood Express offers all your Phillips
favorites from a quick carry-out counter.”10
Wolfgang Puck
Wolfgang Puck Airports: Wolfgang Puck’s collection of
airport dining locations offer the chef’s signature cuisine in
a fast-casual setting and at an affordable price point.
Designed with efficiency for the traveler in mind, Wolfgang
Puck airport restaurants and grab & go kiosks feature the
chef’s interpretation of global comfort fare . . . Whether a
leisurely breakfast or lunch, a cocktail at our bar, family
dinner or quick bite on the move, Wolfgang Puck promises
a warm and inviting dining environment and a welcome
respite from the bustling airport terminal.
Wolfgang Puck Bar & Grill
. . . The restaurant captures the essence of the laid-back
Californian dining experience, made popular by Puck
himself with his flagship restaurant, Spago . . . .11
Thus, well-known restaurants, including Hooters, Applebees, Buffalo Wild Wings,
Phillip’s Seafood and Wolfgang Puck, offer both restaurant services featuring a full
wait staff and bar services, as well as fast-food and fast-service restaurant services.
The evidence shows that full-service restaurants have line extended into fast-service
outlets, including fast-food outlets. Accordingly, Applicant’s use of TACO JED may
lead customers to view Registrant “Jed’s” as line extending into a fast-food outlet
under the TACO JED mark. Therefore, Applicant’s services are related to the full-

10 May 1, 2020 Final Office Action, Phillips Seafood Restaurants at TSDR 35-42 https://www
.phillipsseafood.com/locations/maryland-house-travel-plaza.
11 May 1, 2020 Final Office Action, Wolfgang Puck Airports at TSDR 43-44 https://wolfgang
puck.com/airports/ and Wolfgang Puck Bar & Grill at TSDR 45-49 https://wolfgangpuck.com
/dining/orlando-bar-grill/.
Serial No. 88517578
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service restaurant services in the cited registration in view of the fact that the same
entities are providing those services in connection with the same mark. See, e.g., In
re I-Coat Co., LLC, 126 USPQ2d 1730, 2018 (TTAB 2018) (evidence demonstrates
that at least seven third parties identified both applicant’s goods and the goods in the
cited registration under the same mark, and at least four additional parties offered
those goods under different marks, but in common channel of trade); In re C.H.
Hanson Co., 116 USPQ2d 1351, 1355-56 (TTAB 2015) (relatedness found where
Internet evidence from six websites demonstrated goods commonly emanated from
the same source under a single mark); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198,
1203 (TTAB 2009) (citing to third-party Internet evidence from two different
webpages).
Applicant cites to Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477
(TTAB 1987), where the Board found that the applicant’s mark , and
opposer’s mark STEVE’S, when considered in their entireties, were distinguishable
since applicant’s mark was extremely suggestive of the fact that applicant’s
restaurants feature hot dogs, and opposer’s ice cream sold under its mark differed
from applicant’s restaurant services rendered under its mark, such that prospective
purchasers would not be confused. Id. at 1478-79.
Applicant argues that the marks at issue in this case “face a comparable issue.”
According to Applicant, while each mark is for ‘“restaurant services,’ it does not
necessarily follow that consumers expect a single source to be responsible for both
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‘restaurant services featuring full wait service, bar services, and a full service menu ’
and a ‘fast-food restaurant . . . featuring Mexican cuisine.’ As the Board noted in that
matter, it could not ‘simply assume’ that consumers would expect a common source
for those differing goods and services, ‘even if the marks used to identify them were
identical.’ Id.” [at 1477].12 However, unlike the situation presented in Steve’s Ice
Cream, where the Board found no likelihood of confusion because the marks differed
and there was no evidence of record that applicant made or sold ice cream or that
“any one business makes and sells ice cream under the same mark in connection with
which it renders restaurant services,” 3 USPQ2d at 1478, here, Registrant’s broadly
identified full-service restaurant services must be deemed to cover Mexican cuisine
and the evidence shows Registrant’s restaurant services and Applicant’s fast-food
restaurant services are related.
Additionally, Applicant’s application and Registrant’s registration do not contain
limitations describing a particular channel of trade or class of customer . In the
absence of limitation on the trade channels or class of customer, we must presume
the identified services travel in all normal and usual trade channels for such services
and are offered to all classes of prospective customers. Stone Lion Capital v. Lion
Capital, 110 USPQ2d at 1116. The evidence submitted by the Examining Attorney
confirms that Registrant’s full service restaurant services and Applicant’s fast -food
restaurant services travel in the same channels of trade to the same potential

12 Applicant’s Appeal Brief pp. 7-8 (4 TTABVUE 12-13).
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customers. See, e.g., In re Davey Prods., 92 USPQ2d at 1203-04; In re Toshiba Med.
Sys., 91 USPQ2d at 1268-69, 1271-72.
Therefore, customers with a general rather than specific recollection of
Registrant’s mark, upon encountering Applicant’s related services offered under a
similar mark, are likely to believe that Applicant’s services are in some way
associated with Registrant and travel in the same trade channels to the same
potential customers. Thus, these DuPont factors weigh in favor of finding a likelihood
of confusion.
C. Conclusion
Applicant’s mark TACO JED and Registrant’s mark , both containing
the dominant word “JED,” are similar in sound, appearance, connotation and
commercial impression. Moreover, Applicant’s and Registrant’s marks are used on
related services, which travel through the same trade channels and are purchased by
the same class of customers.
Decision: The refusal to register Applicant’s mark TACO JED under §2(d) of the
Trademark Act is affirmed.