Alexandros Kapelonis

Trademark Trial and Appeal Board

Aug 29, 2016

No. 86551287 (T.T.A.B. Aug. 29, 2016)

This Opinion is
not a
Precedent of the
TTAB

Mailed: August 29, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Alexandros Kapelonis

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Serial No. 86551287
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Matthew Swyers of The Trademark Company, PLLC,
for Alexandros Kapelonis.
Matt Einstein, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Wellington, Masiello, and Greenbaum,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Alexandros Kepelonis (“Applicant”) has appealed from the final
refusal of the Trademark Examining Attorney to register the mark
shown below for “restaurant” services in International Class 43:
Serial No. 86551287
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.1
The terms KITCHEN and SINCE 1978 are disclaimed.
The Trademark Examining Attorney refused registration of the
mark on the ground of likelihood of confusion. Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Examining Attorney’s position
is that Applicant’s mark is so similar to the registered mark shown
below for “restaurant services” in International Class 43:

that it is likely to cause confusion or mistake or to deceive.2 The term
PANCAKE HOUSE is disclaimed.

1 Application Serial No. 86551287 was filed on March 3, 2015, under Section
1(a) of the Trademark Act, based on an allegation of first use anywhere and in
commerce on July 1, 2014.
2 Registration No. 3129533, issued on August 15, 2006; renewed. The mark is
described as having “an EGG-MAN carrying a pancake to a plate of a stack of
pancakes.” The colors yellow, red, black, white and brown are claimed as a
feature of the mark.
Serial No. 86551287
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After the Trademark Examining Attorney made the refusal final,
Applicant appealed. We affirm the refusal to register.
Our determination under Section 2(d) is based on an analysis of all
of the probative 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, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 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 between the services. See 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.”).
A. The similarity or dissimilarity and nature of the services and
established, likely-to-continue channels of trade.

In this case, the services are identical inasmuch as they are both
described as “restaurant” services. Because the services described in the
application and the cited registration are identical, we must presume
that the channels of trade and classes of purchasers are the same. See
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (legally identical goods are presumed to travel in same channels
of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403
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F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are
considered to be the same); United Global Media Grp., Inc. v. Tseng, 112
USPQ2d 1039, 1049 (TTAB 2014); American Lebanese Syrian Associated
Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022,
1028 (TTAB 2011). Accordingly, the du Pont factors involving the
similarity of the services and established, likely-to-continue channels of
trade clearly favor a finding of a likelihood of confusion.
B. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on
the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. In re E. I.
du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, “two
marks may be found to be confusingly similar if there are sufficient
similarities in terms of sound or visual appearance or connotation.”
Kabushiki Kaisha Hattori Seiko v. Satellite Int'l, Ltd., 29 USPQ2d 1317,
1318 (TTAB 1991), aff'd mem., 979 F.2d 216 (Fed. Cir. 1992) (citation
omitted). See also Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d
1511, 1519 (TTAB 2009) (citing Krim-Ko Corp. v. Coca-Cola Co., 390
F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the
similarity in either form, spelling or sound alone is likely to cause
confusion.”)).
Serial No. 86551287
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Moreover, “[t]he 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). See also San Fernando Electric
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ
1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d
1735, 1741 (TTAB 1991), aff'd mem., 972 F.2d 1353 (Fed. Cir. 1992).
Finally, we are mindful that where, as here, the services are
identical, the degree of similarity necessary to find likelihood of
confusion need not be as great as where there is a recognizable disparity
between the services. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen
Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-
Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1325 (TTAB 2007).
Here, we find the marks are overall quite similar in view of the same
term, EVA’S, dominating each mark. We make this finding keeping in
mind that our analysis cannot be predicated on dissection of Applicant's
and Registrant's marks and that we are obliged to consider each mark
in its entirety. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
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751 (Fed. Cir. 1985); See also Franklin Mint Corp. v. Master Mfg. Co.,
667 F.2d 1005, 212 USPQ 23, 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 National Data Corp., 224 USPQ at 751. Thus,
in viewing both marks in their entireties, we find that in spite of the
marks having additional, different literal and design elements, it is the
term EVA’S that is most likely to be impressed in consumer’s minds and
this plays an important role in increasing the similarity of the marks.
To be sure, we do not ignore the design elements, namely, the apple
design in Applicant’s mark and the “egg man carrying a pancake” with
a stack of pancakes set against a bright yellow background in
Registrant’s mark. We have also taken into consideration Applicant’s
argument that the marks create different commercial impressions. In
particular, Applicant argues in his brief that the registered mark
engenders a “specialized restaurant akin to IHOP or THE ORIGINAL
PANCAKE HOUSE that specializes in and primarily serves pancakes
and perhaps other breakfast items” and notes the addition of the egg
character “carrying a pancake with syrup near a larger stack of
Serial No. 86551287
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pancakes.”3 In contrast, Applicant asserts his mark “creates a
commercial impression of a whimsical albeit healthy restaurant given
unique font used in conjunction with the universally accepted symbol of
health in the stylized apple.”4
While there are different design and literal elements in each mark,
they do not overcome the overall similarity of the marks based on the
dominant and sole non-descriptive term in each mark, EVA’S. The term
EVA’S in each mark is featured prominently in both marks. As it has
often been held, when a mark consists of a literal portion and a design
portion, the literal portion is usually more likely to be impressed upon a
purchaser's memory and to be used in calling for the goods or services;
therefore, the literal portion is normally accorded greater weight in
determining whether marks are confusingly similar. See, e.g., In re
Viterra Inc., 671 F.3d at 1362; In re Dakin's Miniatures, Inc., 59
USPQ2d 1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow, 708 F.2d
1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir. 1983); In re Kysela Pere et
Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011). As to the commercial
impressions of the marks, Registrant’s mark does impart the suggestion
that pancakes are a feature of the restaurant. However, this does not
necessarily distinguish it from Applicant’s mark since a consumer

3 5 TTABVUE 11.
4 Id.
Serial No. 86551287
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encountering Applicant’s mark may believe, correctly or incorrectly, that
Applicant’s restaurant services include serving pancakes. In other
words, a consumer familiar with Registrant’s stylized EVA’S PANCAKE
HOUSE and design mark for restaurant services may mistakenly
believe, upon encountering Applicant’s stylized EVA’S KITCHEN
SINCE 1978 and design mark for the same services, that the latter mark
is either merely a general reference to the same restaurant or is a
related restaurant that does not feature pancakes. The marks have
similar meaning to the extent that, in each case, the possessive use of
EVA’S strongly suggests a connection with a person named “Eva,”
referencing possibly the restaurant’s chef or proprietor.
In making our determination regarding the similarity of the marks,
we note that Applicant does not argue nor did he submit any evidence
showing that EVA’S (or EVA) is weak or diluted in the field of
restaurants. Thus, we cannot make a finding that there may be more
trademarks with the name EVA in connection with restaurants and
that, as a consequence, consumers might be accustomed to
distinguishing the marks based on otherwise less-distinctive and
different elements in the marks. Rather, we must anticipate the
possibility that Applicant’s and Registrant’s marks are the only two to
incorporate the name EVA for restaurants.
C. Actual Confusion
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Applicant argues that there is an absence of evidence of actual
confusion. A showing of actual confusion would of course be highly
probative, if not conclusive, of a likelihood of confusion. The opposite is
not true, however. The lack of evidence of actual confusion carries little
weight. J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ
435, 438 (CCPA 1965). The issue before us is the likelihood of confusion,
not actual confusion. Herbko Int'l Inc. v. Kappa Books Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (actual confusion not
required). Further, any suggestion that there has been no actual
confusion between the marks based on the coexistence of Applicant's
mark and Registrant’s mark is entitled to little probative value in the
context of an ex parte appeal. In re Majestic Distilling Co., Inc., 65
USPQ2d at 1205. Therefore, this du Pont factor is neutral.
D. Balancing the factors.
Because the marks are similar, the services are identical and
presumed to move in the same channels of trade and to the same
customers, we find that Applicant's mark EVA’S KITCHEN SINCE
1978 with a design is likely to cause confusion with the registered mark
EVA’S PANCAKE HOUSE with a design.
Decision: The refusal to register Applicant’s mark is affirmed.