No. 86529101 (T.T.A.B. Jun. 16, 2016)

BKW Seasonings, Inc

Trademark Trial and Appeal BoardJun 16, 2016

No. 86529101 (T.T.A.B. Jun. 16, 2016)

This Opinion is not a Precedent of the TTAB Mailed: June 16, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re BKW Seasonings, Inc. _____ Serial No. 86529101 _____ Robert O. Fox of Luedeka Neely Group, P.C., for BKW Seasonings, Inc. David Taylor, Trademark Examining Attorney, Law Office 112, Renee Servance, Acting Managing Attorney. _____ Before Mermelstein, Bergsman and Greenbaum, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: BKW Seasonings, Inc. (“Applicant”) seeks registration on the Principal Register of the mark BIG KAHUNA WINGS BKW BAR GRILL and design, shown below, for “restaurant and bar services,” in International Class 43.1 1 Application Serial No. 86529101 was filed on February 9, 2015, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as July 7, 2014. Serial No. 86529101 - 2 - Applicant disclaimed the exclusive right to use the words “Wings” and “Bar” and “Grill.” The Trademark Examining Attorney refused registration 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 registered mark DA BIG KAHUNA RESTAURANT AND TIKI LOUNGE (in standard character form) for “restaurant and bar services,” in Class 43, that when used in connection with Applicant’s services, it is to be likely to cause confusion.2 Registrant disclaimed the exclusive right to use the words “Restaurant” and “Tiki Lounge.” After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. 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 2 Registration No. 3387853, registered on February 26, 2008; Section 8 affidavit accepted. Serial No. 86529101 - 3 - 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. The services are identical. 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 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). B. The number and nature of similar marks in use in connection with similar services. Applicant contends that “there is substantial and widespread third-party use in the United States in the field of restaurants, bars, and grills of the terminology BIG KAHUNA”3 and, therefore, “purchasers are conditioned to look to other elements of 3 4 TTABVUE 4. Serial No. 86529101 - 4 - the marks as a means to distinguish the source of the restaurant services.”4 In its October 8, 2014 and December 25, 2015 Responses, Applicant submitted excerpts from the websites listed below to show the widespread use of the term “Big Kahuna” in connection with restaurant services:5 Mark Location URL Huntington, New York Bigkahuna.com Golden, Colorado Bigkahunabbq.net Big Kahuna’s Pizza Indiana Bigkahunapizzas.com Imperial Beach, California Bigkahunasib.com Honolulu, Hawaii Bigkahunaspizzahawaii.com Big Kahuna Rum Shack St. Thomas in the U.S. Virgin Islands Bigkahunavi.com 4 4 TTABVUE 5. 5 We do not consider the THE BIG KAHUNA BAR AND RESTAURANT at the Kahuna Resort because it is located in the Philippines. Serial No. 86529101 - 5 - Mark Location URL Atlanta, Georgia Bighahunaatl.com Grafton, Illinois graftonHarbor.net/kahuna Panama City, Florida Bustersbigkahunacafe.com Catering services in New Hampshire, Maine, and Boston, Massachusetts Nhkauna.com Honolulu, Hawaii Bigkahunaluau.com Kahuna Bar & Grill Deerfield Beach, Florida Kahunabarandgrill.weebly.com Iwayama Sushi & da big kahuna bistro Littleton, Colorado Iwayamasushi.com Serial No. 86529101 - 6 - Mark Location URL Seaside, Oregon Facebook.com/Big-Kahuna- Pub-and-Grill The Big Kahuna Restaurant San Marcos, Texas Facebook.com/thebigkahunatx The word “Kahuna” is a Hawaiian word defined as “a native medicine man or priest,”6 or “a preeminent person or thing: BIG GUN ”7 Based on the definitions of the word “Kahuna” and the trade dress used in association with the third-party uses of the term “Big Kahuna,” we find that “Big Kahuna” engenders the commercial impression of a restaurant featuring a tropical or Hawaiian motif. With respect to assessing the marketplace strength of the third-party uses, the website excerpts are of limited probative value because they do not demonstrate that the public is aware of the businesses, the numbers of customers, or their trading area. See Anthony's Pizza & Pasta Int'l, Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009), aff’d Case No. 2010-1191 (Fed. Cir. 2010) (not precedential); Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1284 n.5 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565 n.16 (TTAB 1996). Also, only the two 6 Dictionary.com based on the Random House Dictionary (2016). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d ___ F.3d ___, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010). 7 Merriam-Webster (merriam-webster.com). Serial No. 86529101 - 7 - restaurants in Honolulu, Hawaii are in the same trading area indicating that only residents of or visitors to Honolulu are likely to encounter multiple “Big Kahuna” restaurants and, therefore, learn to distinguish among them by looking to features other than the name “Big Kahuna.” See Anthony's Pizza & Pasta Int'l, Inc., 95 USPQ2d at 1278. Finally, the third-party use in this case is not nearly as extensive as those presented in Anthony's Pizza & Pasta Int'l, Inc. or In re Broadway Chicken Inc., where the Board found that the third-party use was so extensive that it affected the scope of protection accorded to the senior users. Nevertheless, the excerpts from the third-party websites demonstrate that the name “Big Kahuna” has been adopted and used as a trademark for restaurant and bar services, in particular for restaurants and bars featuring a tropical or Hawaiian motif, and, therefore, “Big Kahuna” has suggestive significance for such restaurants and bars. As a result, a mark comprising, in whole or in part, the name “Big Kahuna” in connection with restaurant services should be given a restricted scope of protection. Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983). In other words, DA BIG KAHUNA RESTAURANT AND TIKE LOUNGE is not entitled to such a broad scope of protection that it is a bar to the registration of every mark comprising, in whole or in part, the name “Big Kahuna”; it will only bar the registration of marks “as to which the resemblance to [Registrant’s mark] is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two.” Id. See also Anthony's Pizza & Pasta Int'l, Inc., 95 USPQ2d at 1278. Serial No. 86529101 - 8 - C. 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.”)). 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). 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 Serial No. 86529101 - 9 - 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). Applicant is seeking to register the mark shown below and the registered mark is DA BIG KAHUNA RESTAURANT AND TIKI LOUNGE. The marks are similar because they share the name “Big Kahuna” and “Big Kahuna” is the dominant part of both marks. Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, the analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 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”). On the other Serial No. 86529101 - 10 - hand, 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. We focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because the marks at issue are used in connection with restaurant and bar services, the average customer is an ordinary consumer, who is likely to remember the name “Big Kahuna.” With respect to Applicant’s mark comprising words and a design, the words are accorded greater weight because it is the words that are likely to make an impression upon purchasers, be remembered by them, and be used to request the services. See In re Viterra Inc., 101 USPQ2d at 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir. 1983)). Further, because the words “Big Kahuna” are presented in a much larger display than the word “Wings” and the letters BKW in the oval design, purchasers will use “Big Kahuna” to call for and refer to Applicant’s services rather than the word “Wings” and the letters BKW in the oval design. The words “Wings,” “Bar” and “Grill” are descriptive and have little or no source indicating significance in Applicant’s mark. See Cunningham v. Laser Golf Corp., 222 Serial No. 86529101 - 11 - F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re National Data Corp., 224 USPQ at 752); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). Likewise, in the registered mark, the words “Restaurant and Tiki Lounge,” are descriptive and have little, if any, trademark significance in the registered mark. The registered mark is in standard character form. Marks presented in standard characters are not limited to any particular depiction. The rights associated with a mark in standard characters reside in the wording, and not in any particular display. Thus, Registrant is entitled to all depictions of its standard character mark regardless of the font style, size, or color. Registrant’s mark could at any time in the future be displayed in a manner similar to Applicant’s mark; that is, the name “Da Big Kahuna” could be displayed in the same font style and size as it is in Applicant’s mark. In re Viterra Inc., 101 USPQ2d at 1909-11; Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (rejecting argument that a typed (now called standard character) mark is distinct from a mark in a logo format; “[b]y presenting its mark in a typed drawing, a difference cannot legally be asserted by that party” (emphasis in original)); In re RSI Systems, LLC, 88 USPQ2d 1445, Serial No. 86529101 - 12 - 1448 (TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988). Consumers will refer to both Applicant’s and Registrant’s restaurant and bar services as “Big Kahuna” or “The Big Kahuna.” It is common knowledge that the term “Da” in the registered mark DA BIG KAHUNA means the definite article “The” (i.e., DA BIG KAHUNA means THE BIG KAHUNA). See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (WAVE and THE WAVE are virtually identical because “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Productions, Inc., 223 USPQ 1034 (TTAB 1984) (noting “the insignificance of the word ‘the’” in comparison of THE MUSIC MAKERS and MUSICMAKERS). In any event, consumers are likely to shorten DA BIG KAHUNA to just BIG KAHUNA. “[U]sers of language have a universal habit of shortening full names – from haste or laziness or just economy of words. Examples are: automobile to auto; telephone to phone; necktie to tie; gasoline service station to gas station.” In re Abcor Development Corp., 588 F.2d 511, 200 USPQ 215, 219 (CCPA 1978) (J. Rich, concurring). [C]ompanies are frequently called by shortened names, such as Penney’s for J.C. Penney’s, Sears for Sears and Roebuck (even before it officially changed its name to Sears alone), Ward’s for Montgomery Ward’s, and Bloomies for Bloomingdales. Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992). See also Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983) (“Although the record does not indicate that applicant's business Serial No. 86529101 - 13 - is commonly referred to as ‘Giant,’ it does indicate that people have called it by that name, omitting the word ‘Hamburgers.’ Thus, in a conversation between two consumers in opposer's area about a place of business called ‘Giant,’ there likely would be confusion about which ‘Giant’ they were talking about.”); Big M Inc. v. United States Shoe Co., 228 USPQ 614, 616 (TTAB 1985) (“we cannot ignore the propensity of consumers to often shorten trademarks and, in the present case, this would be accomplished by dropping the “T.H.” in referring to registrant's stores [T.H. MANDY]”). In this regard, the article "the" has very little source-identifying significance, see In re G.D. Searle & Co., 143 USPQ 220, 222–23 (TTAB 1966), aff'd 360 F.2d 650, 149 USPQ 619 (CCPA), and to the extent "DA" is understood to mean "the," it would likewise have little significance. In assessing the similarity or dissimilarity of the marks, we considered the marks their entireties keeping in mind that when consumers are faced with marks comprising descriptive words and various combinations of words and designs, consumers will rely on the non-descriptive word portions of each mark in making their purchasing decisions. Accordingly, we find that consumers will focus on the name “Big Kahuna” when referring to both Applicant’s mark and Registrant’s mark and that the differences between the terms “Wings,” “Bar,” “Grill,” and the BKW design in Applicant’s mark and “Restaurant and Tiki Lounge” in Registrant’s mark, especially when used in connection with identical services, are not sufficient to distinguish them. In other words, the marks are more similar than dissimilar. Serial No. 86529101 - 14 - 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 for “restaurant and bar services” is likely to cause confusion with the registered mark DA BIG KAHUNA RESTAURANT AND TIKI LOUNGE for “restaurant and bar services.” Decision: The refusal to register Applicant’s mark is affirmed.