Anthony Joseph Perry

Trademark Trial and Appeal Board

May 2, 2014

No. 85561009 (T.T.A.B. May. 2, 2014)

Mailed:
May 2, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Perry
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Serial No. 85561009
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Anthony M. Keats of Stubbs Alderton & Markiles, LLP for Anthony
Joseph Perry.

Marc J. Leipzig, Trademark Examining Attorney, Law Office 115
(John Lincoski, Managing Attorney).
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Before Quinn, Ritchie, and Lykos, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Anthony Joseph Perry filed an application to register the
mark BONEYARD BREW, in standard character form, for “sauces,” in
International Class 30.1 The trademark examining attorney
refused registration of the mark under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that
applicant’s mark so resembles the previously registered mark
BONE YARD, in standard character form, for “restaurant and bar
services, take-out restaurant services, and catering services,”

1 Application Serial No. 85561009, filed March 6, 2012, pursuant to
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging dates
of first use and first use in commerce on January 21, 2003.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85561009

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in International Class 43,2 as well as THE BONEYARD BEER FARM AND
MESQUITE GRILL, and design, as shown below, and owned by a
different registrant, for “restaurant and bar services” in
International Class 423:

that when used in connection with applicant’s identified goods,
applicant’s mark will be likely to cause confusion, mistake, or
to deceive. Upon final refusal of registration, applicant filed
a timely appeal. Both applicant and the examining attorney
filed briefs. After careful consideration of the arguments and
evidence of record, we affirm the refusal to register.
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
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 Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion

2 Registration No. 3409144, issued April 8, 2008. Sections 8 and 15
affidavits accepted and acknowledged.
3 Registration No. 2624110, issued September 24, 2002, and disclaiming
the exclusive right to use the terms “BEER” and “MESQUITE GRILL” apart
from the mark as shown. Sections 8 and 15 affidavits accepted and
acknowledged. Renewed.
Serial No. 85561009

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analysis, two key considerations are the similarities between
the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard 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 consider the relevant factors as to which
applicant and the examining attorney presented arguments or
evidence. The other factors we consider to be neutral.
The Marks
We consider and compare the appearance, sound, connotation
and commercial impression of the marks in their entireties.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
“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) (citation omitted).
The mark in Registration No. 3409144 is BONE YARD, which is
arbitrary for registrant’s “restaurant and bar services, take-
out restaurant services, and catering services.” Applicant’s
mark incorporates this in full as its first term (simply making
it a compound word instead of two side by side words), and adds
“BREW”, which is highly suggestive of a “mix” or “recipe” for
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his identified “sauces.”4 Since it is often the first term of
the mark that is likely to be impressed upon the consumer,
likelihood of confusion has thus often been found where the
entirety of one mark is incorporated within another. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir.
2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Cola-Cola Bottling
Co. v. Joseph E. Seagrams & Sons, Inc., 526 F.2d 556 188 USPQ
105 (CCPA 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc.
v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967) (THE
LILLY and LILLI ANN); In re U.S. Shoe Corp., 229 USPQ 707(TTAB
1985) (CAREER IMAGE AND CREST CAREER IMAGES); In re Riddle, 225
USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY’S ACCU TUNE).
We find that the added term “BREW” does not change the
commercial impression of the term “BONEYARD” as used in both
marks.5 Accordingly, we find that both marks give essentially
the same commercial impression and are substantially similar in
sight and sound.
To the extent applicant argues that the registered mark is
weak, applicant has not actually submitted evidence of any
third-party use of the term “BONEYARD,” (or “BONE YARD”) but

4 We take judicial notice of the relevant definition of “brew” as “a
mixture of different things;” “something produced as if by brewing.”
Merriam-Webster’s Online Dictionary. (11th ed. 2008). See 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).
5 The fact that there is a space between the words BONE and YARD in the
registered mark does not change our determination that the marks
create the same commercial impression. See, e.g., Giersch v. Scripps
Networks Inc., 90 USPQ2d 1020, 1025 (TTAB 2009)(finding that DESIGNED
TO SELL does not create a distinct commercial impression from
DESIGNED2SELL).
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rather has simply argued that registrant does not have a strong
presence in the marketplace. In this regard, we note that to
the extent applicant is arguing marketplace strength, as
discussed in his brief, it is well-settled by the predecessor to
our primary reviewing court that even weak marks are entitled to
protection against registration by competing marks.6 See King
Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108,
109 (CCPA 1974); see also In re Chica Inc., 84 USPQ2d 1845, 1850
(TTAB 2007).
Regarding Registration No. 2624110, the literal portion of
the mark is THE BONEYARD BEER FARM AND MESQUITE GRILL, and there
is a design portion as well. We do not find this to be
substantially similar to applicant’s mark in sight, sound or
commercial impression.
Accordingly, we find that this du Pont factor strongly
favors finding a likelihood of confusion as to Registration No.
3409144 for BONE YARD in standard character format. However, we
find that this factor weighs against finding a likelihood of
confusion as to Registration No. 2624220 for THE BONEYARD BEER
FARM AND MESQUITE GRILL, and design.

6 To the extent applicant relies also on his fame as a rock and roll
fixture over many decades, we note that applicant’s fame is not at
issue in this proceeding. To the extent applicant’s mark has acquired
some degree of renown, this does not avoid likelihood of confusion,
and indeed may engender reverse confusion with the prior-registered
cited registration. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1690 (Fed. Cir. 1993) (“The term ‘reverse confusion’ has been
used to describe the situation where a significantly larger or
prominent newcomer ‘saturates the market’ with a trademark that is
confusingly similar to that of a smaller, senior registrant for
related goods or services.” [cites omitted]).
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The Goods and Channels of Trade

We note that, with substantially similar marks (as to
Registration No. 3409144), goods and/or services need not be
identical or even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that goods and/or
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 which could
give rise, because of the marks used or intended to be used
therewith, to a mistaken belief that they originate from or are
in some way associated with the same producer or that there is
an association between the producers of each parties’ goods
and/or services. In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991).
The examining attorney submitted numerous third-party
registrations that include goods identified in the involved
application on the one hand and services identified in the cited
registrations on the other. These include, for example, the
following:
1. Registration No. 3177658 (CHEF ROLF), for “sauces” on the
one hand, and “restaurant services” on the other;

2. Registration No. 2925300 (ANNTONY’S), for “sauces” on the
one hand, and “restaurant and catering services” on the
other;

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3. Registration No. 3271493 (EAST OF SUEZ), for “sauces” on
the one hand, and “restaurant and catering services” on
the other;

4. Registration No. 3031921 (OINKER’S) for “sauces” on the
one hand, and “restaurant services” on the other;

5. Registration No. 3156988 (BAMBOOLA’S BBQ BURGERS RIBS)
for “sauces” on the one hand, and “restaurants” on the
other;

6. Registration No. 3164149 (BIG BUBBA’S BAD TO THE BONE)
for “sauces” on the one hand, and “restaurant services”
on the other;

These third-party registrations serve to suggest that the
goods and services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993). The examining attorney further submitted web
evidence showing restaurants or catering services offering for
sale sauces under the same mark, at www.redhotandblue.com,
www.famousdaves.com, www.rocklands.com,
http:realtexasbarbeque.com, and www.ironworksbbq.com.
Neither the identification of goods in the application, nor
the identification of services in the cited registrations
contain any limitations in channels of trade. Accordingly, we
must assume that all may travel via the same channels of trade.
See Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937
(Fed. Cir. 1983). Accordingly, the second and third du Pont
factors weigh in favor of finding a likelihood of confusion as
to both cited registrations.
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Balancing the Factors
Considering all of the evidence of record as it pertains to
the relevant du Pont factors, we conclude that when considered
in their entireties, applicant’s mark is substantially similar
to, and gives essentially the same commercial impression as, the
mark in Registration No. 3409144, for BONE YARD, and that the
goods and services are related and travel through the same or
similar channels of trade, to some of the same consumers.
Accordingly, we find a likelihood of confusion with this mark.
As to Registration No. 2624110, however, while we also find
the goods and services to be related with the same and similar
trade channels, we find the mark THE BONEYARD BEER FARM AND
MESQUITE GRILL, and design, not to be substantially similar to
applicant’s mark, and therefore we find no likelihood of
confusion with that mark.
Decision: The Section 2(d) refusal to register is affirmed
as to Registration No. 3409144 only.