Aladdin’s Eatery, Inc.

Trademark Trial and Appeal Board

Feb 7, 2006

No. 76020517 (T.T.A.B. Feb. 7, 2006)

Mailed:
February 7, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Aladdin’s Eatery, Inc.
________

Serial No. 76020517
_______

James C. Wray and Matthew J. Laskoski for Aladdin’s Eatery,
Inc.

Laura Hammel, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
_______

Before Seeherman, Drost and Zervas, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Aladdin’s Eatery, Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register
ALADDIN’S EATERY, with the word EATERY disclaimed, for
“small neighborhood storefront restaurants featuring Middle
Eastern food specialties.”1 Registration has been refused

1 Application Serial No. 76020517, filed April 7, 2000, based on
an asserted intention to use the mark in commerce. On June 7,
2002, applicant filed an Amendment to Allege Use, asserting first
use and first use in commerce as of April 15, 1994. There have
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76020517
2
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark so resembles
the following registrations,2 both of which are owned by the
same entity, that, if used in connection with applicant’s

been several amendments to the identification of services. The
identification set forth above was offered by applicant in its
response dated February 25, 2005. In its supplemental appeal
brief applicant states that its companion application had been
published for opposition, and that “applicant would be pleased to
adopt the identification of goods” from that application. p. 1.
The Examining Attorney, in her brief, advised that this companion
application had been withdrawn from publication, and further
stated that, while she had no objection to the further amendment,
“it is unclear whether applicant does in fact intend such
amendment.” Applicant, in its reply brief, did not address this
question, and we have therefore assumed that applicant did not
wish to amend its identification, but was making the offer only
if, by conforming its identification to that in its companion
application, it would result in the allowance of the application.
Accordingly, we have treated the identification as that offered
in the February 25, 2005 response. We would add that, even if
the identification were that mentioned in applicant’s
supplemental brief, namely, “restaurants featuring Middle Eastern
cuisine, provided in small, neighborhood or local restaurant
establishments having no additional services offered concurrent
therewith,” it would not change our opinion herein.

2 Two other registrations for ALADDIN marks, owned by the same
registrant, were also cited during the examination of the
application. However, one citation was withdrawn because that
registration was cancelled, and another citation, for
Registration No. 2628932, was withdrawn because that registration
issued from an application that was filed subsequent to the
filing date of the subject application. We note that, although
applications are normally examined in the order of their filing,
such that a later-filed conflicting application will normally be
suspended until there has been a final disposition of a prior-
pending application, once a registration has issued the filing
date of the underlying application should be irrelevant, since
Section 2(d) of the Statute prohibits the registration of a mark
which is likely to cause confusion with a previously registered
mark. However, since the Examining Attorney had clearly
considered the issue of whether registration should be refused on
the basis of Registration No. 2628932 and had withdrawn that
citation, we have no basis for remanding the application to the
Examining Attorney for consideration of that issue.
Ser No. 76020517
3
services, it is likely to cause confusion or mistake or to
deceive:
ALADDIN for hotel and restaurant
services;3 and

for hotel,
restaurant, bar, lounge services;
beauty salon and health spa services.4

The appeal has been fully briefed; an oral hearing was
not requested.
We turn first to a procedural point. In her brief,
the Examining Attorney objected “to applicant’s
introduction of new evidence in [its] brief, including the
introduction of a trademark search, a Google search, and a
Hoover search as evidence.” p. 4. These documents were
not submitted with applicant’s brief, and it is clear that
the Examining Attorney’s objection is to applicant’s
references in its brief to results from searches of
trademark records, and the Hoover and Google search
engines. Applicant did not respond to this objection in
its reply brief. We note that during the prosecution of
this application applicant had made reference to results

3 Registration No. 1779369, issued June 29, 1993; Section 8
affidavit accepted; Section 15 affidavit acknowledged; renewed.
4 Registration No. 2632473, issued October 8, 2002.
Ser No. 76020517
4
shown by a search of USPTO trademark records and searches
using the Google and Hoover search engines in its responses
filed June 7, 20025 and July 24, 2003, and that, in the
September 2, 2003 Office action, the Examining Attorney
stated that applicant “has failed to provide any evidence
in this regard.” p. 2. Applicant never responded to this
point, nor did it submit a copy of this evidence. After
reviewing the entire file we have found no evidence
supporting applicant’s references to the results of these
various searches. Further, the Board telephoned
applicant’s counsel to ascertain whether this evidence had
been filed. In response, counsel provided copies of
documents that he indicated had been submitted to the
Examining Attorney during an interview on June 7, 2002.6 In
comparing the materials, we note that the response itself
is in the application file, along with an amendment to

5 This response was filed during the time proceedings were
suspended pending a final disposition of a potentially
conflicting application, an application which eventually issued
as cited registration No. 2632473 for ALADDIN and lamp design.
6 Applicant’s counsel stated that he had prepared this response
in advance of the interview, but had crafted it as though the
interview had already taken place, and he submitted it at the
time of the interview. (This paper bears a filing stamp in the
law office itself of June 7, 2002 at 10:54.) The response states
that “during the interview, exhibits in support of the following
statement, amendments to allege use, and declaration with
exhibits were shown to and discussed with the Examining Attorney
and were filed.” However, in view of the fact that the response
was written prior to the interview, we cannot regard this paper
as actually showing that all these documents were submitted.
Ser No. 76020517
5
allege use which was filed at the same time, and those
exhibits referred to as “Attachment A” consisting of
Exhibits 1-9, and the first page of “Attachment B.” The
remainder of “Attachment B,” which was not found in the
file, is a binder which consists of an “overview” of
applicant’s plans, organization, etc., as well as articles
for the years 1994 through 2001 in which applicant’s
restaurant is mentioned or reviewed. Although these binder
materials were not found in the file, from the information
provided (and particularly the fact that the first page of
“Attachment B” was in the file, we are persuaded that this
evidence consisting of “Attachment B”, and referred to in
applicant’s response as Exhibits 10-83, was duly submitted,
and we have therefore treated it as being of record.
However, applicant’s counsel could not locate any
exhibits relating to Google and other searches in his
records, nor could applicant’s co-counsel, who was also
present at the interview at which these exhibits were
purportedly shown to the Examining Attorney. Because we
have no indication that this evidence was ever filed, and
indeed, we have statements from the Examining Attorney from
2003 that it was not; because applicant never responded to
the Examining Attorney’s statement during the examination
of the application that this evidence was not of record;
Ser No. 76020517
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because applicant could not supply copies of this evidence;
and because applicant never responded to the Examining
Attorney’s objection in her brief that the documents were
not of record, the asserted exhibits consisting of results
from searches of the Hoover and Google search engines, and
USPTO records, and the book A Thousand and One Nights are
not of record.7
We would add that even if this evidence had properly
been made of record, it would have been of little probative
value. The exhibits from the search engines, according to
applicant, were merely a summary of search results. The
Board has previously stated, and has reiterated in the TTAB
Manual of Procedure, that “a search result summary from a
search engine, such as Yahoo! or Google, which shows use of
a phrase as key words by the search engine, is of limited
probative value. ...Use in a search summary may indicate
only that the two words in an overall phrase appear
separately in the website literature.” TBMP §1208.03. See
also In re Fitch IBCA Inc., 64 USPQ2d 1058 (TTAB 2002).
As for what has been described “a search of the Patent and
Trademark Office records”, this single exhibit, No. 102,
appears to be a mere listing of “397 marks that contain the

7 We need hardly add that it is not possible to consider
evidence that the applicant was not able to furnish.
Ser No. 76020517
7
term ‘Aladdin.’” Such a listing is not sufficient to make
the registrations of record. See In re Duofold Inc., 184
USPQ 638 (TTAB 1974). Further, even if the registrations
were of record, registrations are not evidence that marks
are in use, or that the public is familiar with them. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993). We also point out that the Examining Attorney has
stated that there are no third-party registrations for
ALADDIN marks for restaurant services.
Although the book The Thousand and One Nights is not
of record, the Examining Attorney submitted the following
dictionary definition of “Aladdin”: “In the Arabian Nights,
a boy who acquires a magic lamp and a magic ring with which
he can summon two jinn to fulfill any desire.”8 Both
applicant and the Examining Attorney are in agreement that
the story of Aladdin is well known. In the Office action
mailed July 3, 2003, the Examining Attorney stated that
“the term Aladdin calls to mind the boy in the Arabian
Nights who acquires a magic lamp to fulfill wishes,” while
applicant stated, in the response filed July 7, 2002, that
“Aladdin is a character from a wonderful fantasy book read,
known and loved throughout the United States and

8 The American Heritage Dictionary of the English Language, 3d.
ed © 1992.
Ser No. 76020517
8
worldwide.” We concur that, as a result of the popular
knowledge of the story of Aladdin, people in the United
States would recognize the name “Aladdin” as being the name
of the main character in this story.
We now turn to the refusal at issue in this appeal,
namely, whether applicant’s use of ALADDIN’S EATERY for
“small neighborhood storefront restaurants featuring Middle
Eastern food specialties” is likely to cause confusion with
ALADDIN for a hotel and restaurant services and ALADDIN and
lamp design for hotel, restaurant, bar, lounge services;
beauty salon and health spa services.
Our determination of this issue is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors set forth in 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).
We turn first to a consideration of the services.
Applicant has characterized the registrant’s services as
casino services and “incident food services for casino
patrons.” Supp. brief, p. 6. However, the cited
registrations are, in fact, for “hotel and restaurant
services” (Reg. No. 1779369) and for “hotel, restaurant,
bar, lounge services; beauty salon and health spa services”
Ser No. 76020517
9
(Reg. No. 2632473). Both registrations, thus, include
restaurant services. Applicant has argued that the
identifications should be interpreted as restaurant
services that are integrated with, in the case of
Registration No. 1779369, hotel services, and, in the case
of Registration No. 2632473, hotel, bar and lounge
services, pointing, in particular, to the separate listing
of “beauty salon and health spa services” in the latter
registration in support of its position.
We are not persuaded by this argument.
Identifications of goods and services may go through
several changes during the examination process, as
applicants seek as broad an identification as possible
without running into conflict with an existing
registration, and Examining Attorneys require that all
goods and services in the identification be definite and
acceptable. As part of this process, items may be combined
within one grouping or separated by commas or semicolons.
However, we do not view the phrase “hotel and restaurant
services” as requiring an interpretation of “restaurant
services that are combined with hotel services.” On the
contrary, the ordinary understanding of this phrase is
“hotel services and restaurant services”; under normal
parlance, one would omit a repeated reference to services.
Ser No. 76020517
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We would also point out that, in similar circumstances, the
court in In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997), treated the registrant’s
identification of “hotel, motel, and restaurant services”
as being for, inter alia, “restaurant services,” not for
restaurant services integrated with hotel services. For
similar reasons, we consider Registration No. 2632473 to be
for, inter alia, “restaurant services,” not restaurant
services integrated with hotel, lounge and bar services.
Thus, the cited registrations both include restaurant
services and, as such, encompass the more limited
restaurant services identified in applicant’s application.
The services are, in part, legally identical. The factor
of the similarity of the services favors a finding of
likelihood of confusion.
Because the services are legally identical, the
channels of trade must also be considered identical.
Again, we note applicant’s argument that applicant’s
services are “aimed at local patrons that are looking for
exotic and healthy foods” and that the registrant’s
services “are located only in Las Vegas and are a tourist
destination” so that “patrons of Applicant’s local
neighborhood family establishments are not likely to be the
same consumers of the cited references’ services except
Ser No. 76020517
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perhaps on a one-time vacation basis.” Supp. brief, p. 8.
The difficulty with applicant’s position is that it ignores
the well-established principle that “likelihood of
confusion must be determined based on an analysis of the
mark as applied to the...services recited in applicant's
application vis-a-vis the...services recited in
[a]...registration, rather than what the evidence shows
the...services to be. " In re Dixie Restaurants, Inc.,
supra at 41 USPQ2d 1534, quoting Canadian Imperial Bank v.
Wells Fargo Bank, N.A., 811 F.2d 1490, 1493, 1 USPQ2d 1813,
1815 (Fed. Cir. 1987). “The authority is legion that the
question of registrability of an applicant's mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant's goods,
the particular channels of trade or the class of purchasers
to which sales of the goods are directed.” Octocom Systems
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990).
Thus, for purposes of our analysis, we cannot treat
registrant’s restaurant services as limited to a casino in
Las Vegas; rather, registrant’s identification must be
viewed as encompassing neighborhood restaurants serving
Middle Eastern food, with such restaurants being located
Ser No. 76020517
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throughout the United States, including in the areas in
which applicant’s restaurants are located. The classes of
consumers would therefore be the same. The factor of the
similarity of trade channels favors a finding of likelihood
of confusion.
The next du Pont factor we address is the conditions
under which and the buyers to whom sales are made. Again,
applicant’s arguments limiting registrant’s customers to
those who are attracted to casino services can be given no
consideration. Consumers for restaurant services are the
public at large. Moreover, the decision to go to a
particular restaurant may be made on impulse and without a
great deal of care, especially if the restaurant is
inexpensive. In this respect, we note from the materials
applicant has submitted that most of its entree platters
cost less than $8.00. This factor favors a finding of
likelihood of confusion.
We turn next to a consideration of the marks. It is a
well-established principle that, in articulating reasons
for reaching a conclusion on the issue of likelihood of
confusion, 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
Ser No. 76020517
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entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). Turning to the marks at
issue, applicant’s mark is ALADDIN’S EATERY. The word
EATERY, which has been disclaimed, is a generic term for
restaurant services. See dictionary definition made of
record by Examining Attorney, March 8, 2005. Accordingly,
this word has no source-indicating significance, and
ALADDIN’S is clearly the dominant part of applicant’s mark.
Moreover, we note that in the materials submitted by
applicant that applicant’s mark is often shortened to just
ALADDIN’S. See, e.g., “The Observer”, March 31, 1995
(“Aladdin’s is becoming one of the most popular restaurants
in Cleveland Heights”), “The Morning Journal,” June 3, 1994
(“Magic: tasty food also healthy at Aladdin’s”); “The
Washington Post,” December 6, 2001 (“Aladdin’s, which
specializes in healthful, inexpensive Middle Eastern
food”). Even applicant’s advertising materials bear the
slogan “At Aladdin’s, Eat Good, Eat Healthy.” Moreover,
applicant generally depicts its mark with the “Aladdin’s”
portion shown prominently and in more distinctive lettering
than the word “eatery,” which is depicted below “Aladdin’s”
in all lower case and smaller type.
One of the cited registrations is for ALADDIN per se,
shown in standard character form. The second registration
Ser No. 76020517
14
is for ALADDIN with the design of a lamp. ALADDIN is
clearly the dominant part of this mark as well. The word
ALADDIN appears in larger size than the lamp and, because
restaurants are often recommended by word of mouth and
referred to orally, it is the word portion of applicant's
mark which is more likely to be impressed on the consumer's
memory. See In re Dixie Restaurants, Inc., supra.
Moreover, the lamp design merely reinforces the connotation
of ALADDIN, as the story of Aladdin is inextricably
connected to the magic lamp with the genie inside.
When the marks are considered in their entireties, and
giving due weight to the dominant portions of applicant’s
mark and the registrant’s word and design mark, they are
very similar in appearance, pronunciation, connotation and
commercial impression. Although in applicant’s mark
ALADDIN is in the possessive form, neither this difference
(nor the presence of the generic term EATERY, or, in
Registration No. 2632473, the lamp design) is sufficient to
distinguish the marks. The fact situation here is very
similar to that in In re Dixie Restaurants, supra, where
the Court found that applicant’s mark THE DELTA CAFE and
design was similar in appearance, sound and meaning to the
registrant’s mark DELTA, and that neither the design
element nor the generic term "cafe" offered sufficient
Ser No. 76020517
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distinctiveness to create a different commercial
impression.
The factor of the similarity of the marks favors a
finding of likelihood of confusion.
With respect to the fifth du Pont factor, that of
fame, applicant has conceded that the registrant is known
for casino services, but asserts that that it is not known
for restaurant services, and therefore claims that this
factor favors applicant. This conclusion is incorrect.
There is no requirement that the Office must show fame of
the registered mark in order to prove likelihood of
confusion, and therefore the absence of fame does not favor
the applicant. Because we have no evidence regarding the
fame of the registrant’s mark, we have treated this factor
as neutral. However, we would point out that, if the
registrant’s mark were famous for casino services, such a
fact would either be neutral or would support a finding of
likelihood of confusion, it would never favor the
applicant’s position.
With respect to the du Pont factor of the number and
nature of similar marks in use, as we have previously
stated, there is no evidence in the record as to any third-
party use. This factor is therefore neutral.
Ser No. 76020517
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The seventh and eighth du Pont factors relate to the
question of actual confusion. There is no evidence of
actual confusion, despite the fact that applicant began
using its mark in Ohio 1994, and since then has expanded
the geographic area of its use to Pennsylvania, as far west
as Chicago, and as far south as northern Virginia. The
lack of actual confusion may be explained by the specific
geographic areas in which applicant and the registrant
actually operate, as well as by the specific type of
restaurant services each offers. However, because
applicant seeks to register its mark without any geographic
limitations, and because the cited registration entitles
the registrant to use its mark anywhere in the United
States, and in connection with any type of restaurant
services, including neighborhood restaurants featuring
Middle Eastern cuisine, the lack of confusion in the past
is not an indication that confusion is not likely to occur
in the future. Thus, we regard these du Pont factors as
neutral.
The ninth du Pont factor goes to the variety of
service for which the cited mark is used. Because the
registrant’s mark is registered for services that are
legally identical to applicant’s services, it is not as
necessary to support a finding of likelihood of confusion
Ser No. 76020517
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that the registrant’s mark is also used on additional goods
or services. However, in view of the fact that the cited
registrations include such additional services as bars and
lounges and hotels and beauty salons and spas, to the
extent that this factor is applicable to our determination,
it must be seen to favor a finding of likelihood of
confusion.
There is no evidence of a market interface between
applicant and the registrant. This du Pont factor is
therefore neutral. We also consider the factor of “the
extent to which applicant has a right to exclude others
from use of its mark on its goods [or services]” to be
neutral. Although applicant asserts that it has a right to
exclude anyone from using ALADDIN’S EATERY “by virtue of
the applicant’s wide, continuous and exclusive use of the
mark in its entirety,” Supp. brief p. 10, in fact cited
registration No. 1779369 claims a first use date of 1966,
the underlying application was filed in 1992, and it was
registered in 1993, all prior to the first use claimed by
applicant of its mark. And, as indicated above, applicant
started using its mark in connection with restaurant
services in Ohio, and while it has expanded to other
geographic areas, its use is still in a relatively
circumscribed area. In these circumstances, we do not
Ser No. 76020517
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regard applicant as having shown that its use is wide or
exclusive.
The potential for confusion from the use of virtually
identical marks in connection with legally identical
services that could be offered to the general public across
the United States is substantial. Therefore, to the extent
that this du Pont factor favors either party, it favors a
finding of likelihood of confusion.
Finally, we note that in its brief applicant has
discussed and attempted to distinguish the various cases
cited by the Examining Attorney. For example, applicant
asserts that in Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, N.A., supra, the marks COMMCASH and COMMUNCASH
were similar and were used with identical services, while
“in the present case the goods or services are distinct and
the marks are different.” Supp. brief p. 13. We point out
that the Examining Attorney cited these cases for the legal
principles enunciated in them, not because the specific
fact situation or specific marks in those cases were
similar to those in this appeal. We have done the same in
our opinion. There is one case, however, that applicant
asserts is similar to the present situation, namely,
California Fruit Growers Exchange v. Sunkist Baking
Ser No. 76020517
19
Company, 166 F.2d 971, 76 USPQ 85 (7th Cir. 1947), from
which applicant cites the following language:
Unless "Sunkist" covers everything
edible under the sun, we cannot believe
that anyone whose I. Q. is high enough
to be regarded by the law would ever be
confused or would be likely to be
confused in the purchase of a loaf of
bread branded as "Sunkist" because
someone else sold fruits and vegetables
under that name. The purchaser is
buying bread, not a name. If the
plaintiffs sold bread under the name
"Sunkist," that would present a
different question; but the plaintiffs
do not, and there is no finding that
the plaintiffs ever applied the word
"Sunkist" to bakery products.

Although applicant believes that this case supports its
position, our view is just the opposite. Here the goods
are not fruits and bread, but are legally identical
restaurant services. Thus, the situation is more akin to
the hypothetical situation posited by the court: “if the
plaintiffs sold bread under the name ‘Sunkist,’ that would
present a different question.” This “different question”
is the one that is before us here, namely, whether
applicant’s use of its mark for its narrowly described
restaurant services is likely to cause confusion with the
registrant’s virtually identical marks for its restaurant
services which encompass those identified in applicant’s
application. After considering all the evidence in light
Ser No. 76020517
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of the applicable du Pont factors, our answer to this
question is yes. We therefore find that applicant’s use of
ALADDIN’S EATERY for “small neighborhood storefront
restaurants featuring Middle Eastern food specialties” is
likely to cause confusion with the cited registered marks
ALADDIN and ALADDIN and design for, inter alia, restaurant
services.
Decision: The refusal of registration is affirmed.