Tenda Chick Inc.v.The Salty Dog, Inc.

Trademark Trial and Appeal Board

Jul 12, 2007

No. 91162402 (T.T.A.B. Jul. 12, 2007)

Mailed:
July 12, 2007
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Tenda Chick Inc.

v.

The Salty Dog, Inc.
_____

Opposition No. 91162402 to application Serial No. 76454157
filed on October 1, 2002
_____

James E. Shlesinger of Shlesinger, Arkwright & Garvey LLP
for Tenda Chick Inc.

John L. DuPre of Hamilton, Brook, Smith & Reynolds, P.C. for
The Salty Dog, Inc.
______

Before Hairston, Grendel and Zervas, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Applicant, The Salty Dog, Inc., seeks registration on
the Principal Register of the mark FRESH FISH … NO BONES
ABOUT IT (in standard character form) for the following
services, as amended: “retail store services featuring
cooked seafood” in International Class 35. Applicant has
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Opposition No. 91162402
2
asserted a bona fide intent to use the mark in commerce
under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b).
Opposer Tenda Chick Inc. filed a timely notice of
opposition to registration of applicant's mark. In
opposer's notice of opposition, opposer pleaded that it is
the owner of Registration No. 1772044 for the mark NO BONES
ABOUT IT (in typed form) for “restaurant services”;1 and
that it has used the mark GREAT CHICKEN … NO BONES ABOUT IT
prior to the filing date of the application in connection
with its restaurant, take out and catering services.
Further, opposer pleaded that applicant's mark so resembles
opposer's marks as to be likely to cause confusion, to cause
mistake, or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d).
Applicant answered the amended notice of opposition by
denying the salient allegations thereof.
The Record
The record consists of the pleadings; the file of the
involved application; the trial deposition of Donald P.
Moore, president of opposer, and exhibits thereto; and a
status and title copy of Registration No. 1772044 made of
record pursuant to a notice of reliance filed on August 30,
2005.

1 Registration No. 1772044 (renewed) issued on the Principal
Register on May 18, 1993, and claims first use anywhere on May
31, 1990 and first use in commerce in 1990.
Opposition No. 91162402
3
Applicant has not introduced any evidence and has not
filed a brief in response to opposer's main brief.
Factual Findings
Opposer is a restaurant and catering establishment,
which processes food products including chicken and fish,
french fries, coleslaw and potato salad, and sells such
products through dine-in, take-out and catering retail
outlets. Since 1990, opposer has been continuously selling
all of the foregoing food items and services under the mark
NO BONES ABOUT IT and has been using GREAT CHICKEN … NO
BONES ABOUT IT on its letterhead. Opposer advertises its
food items and services under the mark NO BONES ABOUT IT in
print media (newspapers, magazines and in high school
football programs), on television and on the radio.
Priority
The question of priority is not an issue in this case
because opposer owns an existing registration upon which it
can rely under Section 2(d). King Candy Co., Inc. v. Eunice
King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). Additionally, opposer has established through the
testimony of Mr. Moore that it has continuously used NO
BONES ABOUT IT in connection with restaurant services since
1990; and that it has been using GREAT CHICKEN … NO BONES
ABOUT IT on its letterhead since the early 1990s, prior to
the filing date of applicant's intent-to-use application.
Opposition No. 91162402
4
Likelihood of Confusion
Our 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 issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the
[services] and differences in the marks.” Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976).
Turning first to the du Pont factor regarding the
similarity or dissimilarity of the marks, we consider
whether applicant mark and opposer's marks are similar in
sound, appearance, meaning, and commercial impression in
their entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). The test is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression that
confusion as to the source of the services offered under the
Opposition No. 91162402
5
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Grandpa Pidgeon's of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573 (CCPA 1973); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
We consider applicant's mark FRESH FISH … NO BONES
ABOUT IT and opposer's registered mark NO BONES ABOUT IT and
unregistered mark GREAT CHICKEN … NO BONES ABOUT IT, for
which opposer has established priority.2 The wording NO
BONES ABOUT IT in each mark conjures up the popular
expression “make no bones about it” - “make no bones” is
defined in Merriam-Webster’s Online Dictionary3 (at merriam-
webster.com) as “to be straightforward, unhesitating, or
sure .”
Because each mark contains or makes use of NO BONES ABOUT
IT, purchasers will likely readily recall this portion of
the marks, or recall the entire mark due to this portion of
the mark. Further, applicant's mark and registrant’s
unregistered mark each contain an initial portion consisting

2 We do not consider the mark discussed in opposer's brief but
not pleaded by opposer, i.e., GREAT FISH … NO BONES ABOUT IT. A
plaintiff may not rely on an unpleaded claim. See TBMP § 314 (2d
ed. rev. 2004). Also, because applicant has not participated in
the trial in this case, the pleadings cannot be deemed amended as
asserting this mark pursuant to Fed. R. Civ. P. 15(b).
3 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Opposition No. 91162402
6
of two words followed by an ellipsis and the identical
phrase NO BONES ABOUT IT. This construction makes
applicant's mark and registrant’s unregistered mark similar
in appearance. In view thereof, and of the commonality of
NO BONES ABOUT IT, we find that the marks are highly similar
in sound, meaning, appearance and commercial impression, and
that any differences due to the different initial wording of
applicant's mark are outweighed by the similarities in the
marks. The first du Pont factor is therefore resolved in
opposer's favor.
We now consider the similarity and dissimilarity of the
services. Opposer's registration is for “restaurant
services” and opposer has used its common law marks in
connection with dine-in, take-out, and catering outlets.
Applicant's services are legally identical to opposer's
take-out services and otherwise highly similar to the
services provided by opposer in its dine-in and catering
outlets, as well as the restaurant services identified in
the registration - prepared food for consumption by the
general public. We thus resolve the du Pont factor
regarding the similarity or dissimilarity of the services in
opposer's favor.
As for the du Pont factor regarding the similarity or
difference in the trade channels, we note that the

Opposition No. 91162402
7
identifications of services in both the registration and the
application do not include any limitations regarding trade
channels. In such circumstances, we must presume that the
identified services move in all channels of trade that would
be normal for such services. In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). Opposer's witness, Mr. Moore, has
testified that opposer advertises its services in media such
as ordinary newspapers and magazines, as well as television
and radio advertisements. Because applicant's
identification of services is not restricted, applicant's
trade channels are identical to opposer’s trade channels and
include newspapers, magazines, television and radio. This
du Pont factor thus is resolved in opposer's favor.
In addition, we note that both opposer's and
applicant's services are of the type that may be inexpensive
and purchased on impulse. Further, there is no evidence of
any third party uses of the same or similar marks which
would reduce the scope of protection to be accorded to
opposer's marks. In fact, the record reflects that opposer
has successfully stopped the unauthorized use of NO BONES
ABOUT IT by Chili’s, Applebee’s and Subway.
Upon consideration of all of the relevant du Pont
factors in this case, we find that confusion as to source is
likely if applicant's mark FRESH FISH … NO BONES ABOUT IT
for “retail store services featuring cooked seafood” is used
Opposition No. 91162402
8
concurrently with opposer's registered mark NO BONES ABOUT
IT for “restaurant services” and/or opposer's unregistered
mark GREAT CHICKEN … NO BONES ABOUT IT in connection with
the retail sale of food through dine-in, take-out and
catering retail outlets.
DECISION: The opposition on the ground of likelihood
of confusion is sustained and registration to applicant is
refused.