Baccarat

Trademark Trial and Appeal Board

Sep 26, 2008

No. 78729129 (T.T.A.B. Sep. 26, 2008)

Mailed:
September 26, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Baccarat
________

Serial No. 78729129
_______

Stephen G. Janoski, Stephen A. Straub and Casimir W. Cook
of Roylance Abrams Berdo & Goodman LLP for Baccarat.

John Hwang, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Walters, Grendel and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Baccarat (applicant) has applied to register the mark
shown below on the Principal Register for services now
identified as “restaurants; bars; restaurants and bar
services, all the foregoing exclusively in hotels and
resorts identified by and bearing applicant's proprietary
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78729129
2
brand name BACCARAT” in International Class 43.1 Applicant
has disclaimed “BAR.”

The Examining Attorney has finally refused
registration under Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d), based on a likelihood of confusion with
Registration No. 3223442 on the Principal Register for the
mark shown below for services identified as “bar and
cocktail lounge services” in International Class 43. The
registration issued on March 27, 2007. The registration
claims first use of the mark anywhere and first use of the
mark in commerce on April 28, 2005. The registration
includes a disclaimer of “BAR,” and the registration also
includes the following statement: “The mark consists of
the stylized words B BAR.”

1 Application Serial No. 78729129, filed October 27, 2005, now based
only on applicant’s statement of its bona fide intention to use the
mark in commerce under Trademark Act Section 1(b), 15 U.S.C. § 1052(b).

Serial No. 78729129
3

Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office … as to
be likely, when used on or in connection with the goods [or
services] of the applicant, to cause confusion …” 15
U.S.C. § 1052(d). In In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977), the Court set
forth the factors to consider in determining likelihood of
confusion. Here, as is often the case, the crucial factors
are the similarity of the marks and the similarity of the
services of applicant and registrant. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976) (“The fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [or services]
and differences in the marks.”).
Serial No. 78729129
4
Regarding the marks, in comparing the marks we must
consider the appearance, sound, connotation and commercial
impression of the marks at issue. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Applicant argues:
… the cited registered mark … connotes an
obvious musical significance. The mark resembles
a musical note combined with a stylized piano
shaped design and/or evokes a fusion of the G
clef … and a C clef … commonly found in musical
notations.2

When viewed in its entirety the … [cited]
mark connotes a readily apparent association with
music, which when coupled with the musical
significance of the term “bar” as a measure of
the number of beats for a given duration results
in a double entendre that amplifies the
distinction between the respective … marks.

… the commercial impression conveyed by the
respective marks in their entireties are readily
divergent and distinguishable, and particularly
in view of the irrefutable fact that the
prominent feature of each mark constitutes a
clearly one-of-a-kind, identifiable and
distinguishing inventive design of a highly
stylized and distinctly unique letter B.

2 G clef: C clef:

Serial No. 78729129
5
Applicant’s Brief at 5.
Applicant also provided copies of numerous third-party
applications and registrations for marks consisting of
stylized “B” designs for services similar to those at issue
here in an attempt to show that the mark in the cited
registration is weak and distinguishable from its mark.
The Examining Attorney argues that the marks are
“audibly identical,” that the mark both “feature the
identical alliterative element of the letter B followed by
the word ‘bar,’” and that “Both stylized marks even bear
similar configurations with the letter B above the word
bar.” Examining Attorney’s Brief at 2. The Examining
Attorney finally argues that the marks must be viewed in
their entireties and that the marks are similar when so
viewed.
We conclude that the marks are similar. B.V.D.
Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1509 (TTAB
2007).
In its brief, applicant presents the marks side-by-
side in an apparent attempt to emphasize any differences
between the marks. However, “… it is well established that
the test to be applied in determining likelihood of
confusion is not whether marks are distinguishable on the
basis of a side-by-side comparison but rather whether they
Serial No. 78729129
6
so resemble one another as to be likely to cause confusion,
and this necessarily requires us to consider the
fallibility of memory over a period of time. That is to
say, the emphasis must be on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks.” Sealed Air
Corporation v. Scott Paper Company, 190 USPQ 106, 108 (TTAB
1975) (design marks, each consisting of a number of dots in
a square, each with differing numbers of dots and differing
borders held similar). See also Fort James Operating Co.
v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1628 (TTAB
2007); Puma-Sportschuhfabriken Rudolf Dassler KG v. Garan,
Inc., 224 USPQ 1064, 1066 (TTAB 1984). This bedrock
principle holds true for customers of bars, the service
identified in both the application and the registration.
In this case, even when we compare the marks side-by-
side, the marks are remarkably similar. See Textron Inc.
v. Maquinas Agricolas “Jacto” S.A., 215 USPQ 162, 164-165
(TTAB 1982) (marks, each consisting of a stylized J design
held similar) and cases cited therein. Cf. In re Rodix,
Inc., 187 USPQ 255 (TTAB 1975) (differing designs, each
including the single letter R, held not similar). Of
course, to begin with each mark includes a stylized upper-
case B. The word “BAR” appears in each of the marks
Serial No. 78729129
7
directly below the stylized B. Applicant’s arguments
notwithstanding, the B designs are also quite similar.
Each is in script form with swirls forming the B on a line
tilted slightly to the right anchoring the B.
We reject applicant’s argument that the registered
mark projects a musical connotation or commercial
impression. This determination is admittedly subjective,
but the focus of our inquiry must be the likely perception
of relevant customers.3 In re Johnson Products Co., Inc.,
220 USPQ 539, 540 (TTAB 1983) (overlapping/interlocking S
design held similar to repeating S design). We conclude
that bar customers are not likely to perceive the musical
connotation and commercial impression applicant suggests.
We find the suggestion that they would unreasonable.
Accordingly, in the absence of any evidence that bar
customers would perceive this connotation we reject this
argument.
We also reject applicant’s arguments based on the
third-party registrations for other “B” letter marks.4 This

3 Though it does not dictate our decision here, it is worth noting that
the registration describes the mark as follows: “The mark consists of
the stylized words B BAR.” There is no mention of pianos, G or C
clefs, or anything else related to music.
4 We have not considered the marks in the third-party applications.
These records are evidence only of the fact that the applications were
filed. In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB
2002).

Serial No. 78729129
8
evidence fails to support applicant’s implication that the
cited, registered mark is weak or diluted. In fact, this
evidence generally lends greater support to the Examining
Attorney’s position and our conclusion that the marks are
similar. The stylized B designs in the third-party
registrations differ significantly from one another, and
more importantly, from the two marks at issue here. In
fact, the two marks at issue here are, by far, more similar
to one another than any two other stylized B marks in the
record.
Though there are differences between the marks, those
differences are too subtle to distinguish the marks.
Accordingly, we conclude that the marks are similar in
appearance, sound, connotation and commercial impression.
Applicant also argues, “The fame and recognition of
Applicant and its highly stylized and famous signature
letter B precludes any and all likelihood that consumers
and the relevant trade would confuse the source or origin
of the respective services.” Applicant’s Brief at 7.
Applicant has not presented evidence of the fame of the
mark at issue here. The only evidence of fame applicant
provided consists of web pages which provide a brief
history of the current Baccarat company and its
predecessors. See Attachment to Applicant’s Response of
Serial No. 78729129
9
March 1, 2006. There is no evidence regarding the use of
applicant’s stylized B Bar mark, or of any other mark, in
this submission. Furthermore, the history is devoted
nearly entirely to activities outside the United States.
Accordingly, we conclude that applicant has failed to show
that the fame of its mark is entitled to any weight in this
case. Cf. In re General Motors Corp., 23 USPQ2d 1465, 1470
(TTAB 1992).
As to the services, the services of applicant and the
registrant need not be identical to find a likelihood of
confusion under Section 2(d). They need only be related in
such a way that the circumstances surrounding their
marketing would result in relevant purchasers mistakenly
believing that the services originate from the same source.
On-Line Careline Inc. v. America Online Inc., 229 F.3d
1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Furthermore, in comparing the services and the
channels of trade for those services we must consider the
services as identified in the application and registration.
See Octocom Systems, Inc. v. Houston Computers Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)
(“The authority is legion that the question of
registrability of an applicant’s mark must be decided on
Serial No. 78729129
10
the basis of the identification of goods [or services] set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods
[or services], the particular channels of trade or the
class of purchasers to which the sales of goods [or
services] are directed.”).
Applicant identifies its services as “restaurants;
bars; restaurants and bar services, all the foregoing
exclusively in hotels and resorts identified by and bearing
applicant's proprietary brand name BACCARAT.” The services
in the cited registration are identified as “bar and
cocktail lounge services.”
Apart from the restriction in applicant’s
identification, the services in the application and the
cited registration are, at least in part, identical, and
otherwise closely related. Both include bar services.
B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1506-
1507 (TTAB 2007). Applicant does not seriously dispute
this point. The only real dispute here relates to the
effect of the restriction in the application which limits
applicant’s services to services offered “… exclusively in
hotels and resorts identified by and bearing applicant's
proprietary brand name BACCARAT.” On the basis of this
restriction applicant argues that the services are offered
Serial No. 78729129
11
in distinct channels of trade. Above all else applicant
emphasizes the importance of the use of its BACCARAT mark
in the trade channel restriction. Applicant also suggests
that it would preclude the registrant from using the
registered mark in applicant’s hotels and resorts, and
thereby ensure against any breach of the trade channel
boundary.
The Examining Attorney argues that the identification
of services in the cited registration is not restricted,
and therefore, we must assume that the registrant offers
its services in all normal trade channels for those
services, citing In re Melville Corp., 18 USPQ2d 1386, 1389
(TTAB 1981) and other cases. He argues further, “Thus the
registrant may operate its B BAR’s independently in stand
alone business establishments as well as within various
hotel buildings.” Examining Attorney’s Brief at 3.
The Examining Attorney provides evidence that hotels
provide bar services under marks distinct from the hotel
mark within hotels. The evidence includes web pages
connected with: the Four Seasons Hotel New York listing
“The Bar” and “TY” as “lounges” within the hotel; The
Waldorf Astoria New York listing the Peacock Alley Bar, the
Bull & Bear’s Bar, Oscar’s Bar, Sir Harry’s Bar and the
Cocktail Terrace as bars within the hotel; the Hyatt
Serial No. 78729129
12
Regency Austin listing the Branchwater Lounge as a bar
operating in the hotel; and the New York New York Hotel and
Casino in Las Vegas featuring the ESPN Zone sports bar and
restaurant within the facility. See Attachments to April
18, 2008 Office Action.
The Examining Attorney also provides an article from
ecnext.com which discusses the opening of a Starbuck’s
Coffee in the building housing the Marrakech Hotel in New
York City and excerpts from a website connected with the
MGM Grand Hotel promoting a Starbuck’s Coffee and other
similar facilities in the hotel. Id. The Examining
Attorney argues that this is an example of other types of
businesses, similar to bars, which operate under the same
mark in hotels operated by others as well as in facilities
not in hotels.
Contrary to applicant’s detailed arguments, based on
this record we conclude that the restriction in the
application would not preclude a likelihood of confusion.
We concur with the Examining Attorney’s point that the
restriction in the application is without effect because
there is no restriction in the cited registration. In re
Collegian Sportswear Inc., 224 USPQ 174, 176 n.3 (TTAB
1984) (restrictions in trade channels in application are
generally without effect in the absence of restrictions in
Serial No. 78729129
13
the cited registration). This is unlike other cases where
there is not only a trade channel restriction in the
application, but also a consent agreement with the owner of
the cited registration. Cf. In re The Shoe Works Inc., 6
USPQ2d 1890, 1891 (TTAB 1988).
As the Examining Attorney observes, the services
identified in the cited registration could include bar and
lounge services operated either as a separate
establishment, or located within a hotel, as the example of
the ESPN operation within the New York New York hotel and
casino illustrates. The other examples, such as those
connected with the Waldorf, may also illustrate the point.
Therefore, a customer of registrant’s bar services offered
under the stylized B Bar mark in a separate establishment
or one within a hotel not connected with applicant who
encounters applicant’s B Bar mark in applicant’s hotel may
associate the two marks and the two bars. Applicant takes
particular exception to the Starbuck’s example. While it
generally confirms our conclusions here, we do not find it
necessary to rely on that evidence.
Also, in assessing the effect of the restriction in
the application we have not considered, as applicant
appears to urge, that its stylized B Bar mark is used with
the BACCARAT mark as such.
Serial No. 78729129
14
In this application, applicant seeks to register the
stylized B Bar mark alone, without BACCARAT or any other
element. If applicant were to secure the registration,
among other things, the registration would be prima facie
evidence of “… registrant’s exclusive right to use the mark
in commerce on or in commotion with goods or services
specified in the certificate, subject to any conditions or
limitations stated in the certificate.” Trademark Act
Section 7(b), 15 U.S.C. § 1057(b).
It is reasonable to construe the “conditions or
limitations” contemplated by the Trademark Act to include
restrictions, such as those limiting the rendering of the
specified service to facilities operated by the registrant,
including a hotel or resort. However, it is not reasonable
to construe the “conditions and limitations” as including
the use of another mark with the registered mark. The Act
permits an applicant to secure registration of a composite
mark, for example, a mark including both the stylized B Bar
and BACCARAT, provided the applicant meets all relevant
Serial No. 78729129
15
requirements for doing so.5
The certificate of registration provides notice of the
registered mark in the mark field. In the examination of
the applications, the USPTO conducts a search with respect
to the mark applicant identifies. To state the obvious, it
is the registered mark which provides notice to the public
as to the mark which is registered. In practical terms,
the public looks to the mark field in conducting searches
for marks. It is not appropriate to specify an additional
element of or modification of the mark in the “conditions
or limitations” regarding the goods and services, or any
place else other than in the mark field.
Accordingly, we have construed applicant’s limitation
as specifying that its services are rendered in its own
hotels or resorts, but we have not considered the
limitation as specifying that the B BAR mark is used with
the BACCARAT mark. As we stated, we find the restriction
ineffective for the purpose of avoiding a likelihood of

5 In fact, applicant made of record a copy of the USPTO electronic
record regarding its Application No. 78857728 for the mark shown here:

Serial No. 78729129
16
confusion.
Therefore, based on this record we conclude that the
services identified in the application and the services
identified in the cited registration are identical and
otherwise related and that the trade channels for the
respective services are rendered through overlapping trade
channels to the same class of purchasers.
Finally, after considering all of the evidence and
arguments presented here, including those arguments we have
not specifically discussed, we conclude that there is a
likelihood of confusion between applicant’s stylized B BAR
mark when used in connection with “restaurants; bars;
restaurants and bar services, all the foregoing exclusively
in hotels and resorts identified by and bearing applicant's
proprietary brand name BACCARAT” and the stylized B BAR
mark in Registration No. 3223442 when used in connection
with “bar and cocktail lounge services.”
Decision: We affirm the refusal under Trademark Act
Section 2(d).