Bruce M. Ackerman

Trademark Trial and Appeal Board

Jun 1, 2016

No. 86469261 (T.T.A.B. Jun. 1, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 1, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bruce M. Ackerman
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Serial No. 86469261
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Gene Bolmarcich, Esq.
for Bruce M. Ackerman.
Jeffrey S. DeFord, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
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Before Bergsman, Ritchie and Lykos,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Bruce M. Ackerman (“Applicant”) seeks to register on the Principal Register the
mark displayed below

Serial No. 86469261
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for “pizza parlors featuring pizza cones” in International Class 43.1
Applicant has appealed the Trademark Examining Attorney’s final refusal to
register the mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s applied-for mark so resembles the
registered mark Cone Heads (in standard characters) also on the Principal Register
for “services for providing food and drink, namely, fast-food restaurants featuring
fish, chips, and burgers” in International Class 43, that when used on or in connection
with Applicant’s identified services, it is likely to cause confusion or mistake or to
deceive.2
When the refusal was made final, Applicant appealed. The appeal is now fully
briefed. For the reasons explained below, we affirm the refusal to register.
I. Applicable Law
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) (“du Pont”). See also In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). In any likelihood of confusion analysis, however, two key considerations are
the similarities between the marks and the similarities between the services. See In
re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated

1 Application Serial No. 86469261, filed December 2, 2014 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
2 Registration No. 4820298, registered September 29, 2015 pursuant to Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f(a).
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Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
These factors are discussed below.
A. Comparison of the Marks
We first consider the du Pont likelihood of confusion factor regarding the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (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). Our analysis cannot be predicated on dissection
of Applicant’s and Registrant’s marks. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). Rather, we are obliged to consider each mark in its
entirety. Id. 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.
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Applicant argues that the marks in question convey different commercial
impressions. He asserts that the prominent design in his mark of an anthropomorphic
figure depicting a “pizza cone” refers to Applicant’s specific type of pizza parlor
services; and that as a consequence, the word CONEHEADS “clearly and
unequivocally conveys the impression of … a ‘pizza cone’ figure with a large head.”
By contrast, as he contends, the cited mark conveys no such meaning given that the
identified fast food restaurant services relate solely to “fish, chips, and burgers.”3
Applicant’s arguments are unpersuasive. Applicant’s mark incorporates in part
the entirety of the cited mark – CONEHEADS (omitting the non-source-identifying
space). And it is this term which is the dominant portion of Applicant’s mark. This is
because it appears in relatively larger sized block lettering above the visually smaller
slogan PIZZA ON THE GO, which also describes an aspect of Applicant’s pizza parlor
services. The anthropomorphic rendition of a “conehead” in fact reinforces the
prominence of the literal term “CONEHEADS.” In addition, we point to the principle
that when a mark consists of a literal portion and a design portion, the literal portion

3 During ex parte examination, Applicant repeatedly asserted that consumers would perceive
his applied-for mark as a homage to the “famous” Saturday Night Light “Coneheads” skit,
without submitting any evidentiary support for this argument. See Response to Office Action
dated December 22, 2015; Response to Letter of Suspension dated July 28, 2015; Response to
Office Action dated April 6, 2015. Now in his appeal brief judicial, Applicant “invites” the
Board to take judicial notice of “the famous SNL ‘Coneheads’ skit, the subsequent movie, and
recent TV commercials based thereon.” Applicant’s Brief p. 1, fn. 1; 4 TTABVUE 3. These are
not the types of facts subject to judicial notice in an ex parte appeal. See TBMP § 1208.04
(June 2015) “Judicial Notice” and cases cited therein. Cf. Fed. R. Evid. 201(b) (“Judicial
Notice of Adjudicative Facts – Kinds of Facts That May Be Judicially Noticed”). We hasten
to add that making such evidence properly of record would not have altered our
determination here concerning the connotation and commercial impression of the involved
mark.

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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 1358, 1362, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012); 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). This is especially true here
where the design constitutes a depiction of the dominant literal element.
As to the cited mark, we agree with Applicant’s reasoning in his reply brief that
the most that can be said is that CONE HEADS has no meaning in relation to the
identified services. Applying this logic, we find that Registrant’s mark is a relatively
strong mark for “services for providing food and drink, namely, fast-food restaurants
featuring fish, chips, and burgers.” See Palm Bay Imports Inc., 73 USPQ2d at 1694
(“[A] strong mark … casts a long shadow which competitors must avoid.”).
For the foregoing reasons, we agree with the Examining Attorney that Applicant’s
and Registrant’s marks are similar in sound, connotation and commercial impression.
This first du Pont factor weighs in favor of finding a likelihood of confusion.
B. The Services
Next we compare Applicant’s and Registrant’s respective services as they are
identified in the application and the cited registration. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
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USPQ2d 1783, 1787 (Fed. Cir. 1990). See also, Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
Applicant argues that as set forth in his application, his pizza parlor services are
limited to a specialty item known as pizza cones which are not encompassed by
Registrant’s services identified as “fast-food restaurants featuring fish, chips and
burgers.” Applicant’s Reply Brief, p. 1, 7 TTABVUE 3. As such, Applicant maintains
that the services are unrelated. Applicant further adds that the evidence submitted
by the Examining Attorney is irrelevant because none of it pertains to pizza cones.
Applicant is correct that none of the Examining Attorney’s evidence mentions
restaurant services offering pizza cones. However, it is unnecessary that the
respective services be identical or even competitive in order to find that they are
related for purposes of our likelihood of confusion analysis. That is, the issue is not
whether consumers would confuse the services themselves, but rather whether they
would be confused as to the source of the services. See In re Rexel Inc., 223 USPQ 830
(TTAB 1984). The respective services need only be “related in some manner and/or if
the circumstances surrounding their marketing [be] such that they could give rise to
the mistaken belief that [the services] emanate from the same source.” Coach Servs.,
101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007)). See also In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB
1991). Evidence of relatedness may include news articles and/or evidence from
computer databases showing that the relevant services are used together or used by
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the same purchasers; advertisements showing that the relevant services are
advertised together or sold by the same manufacturer or dealer; and/or copies of prior
use-based registrations of the same mark for both applicant’s services and the
services listed in the cited registration. See, e.g., In re Davia, 110 USPQ2d 1810, 1817
(TTAB 2014).
Both Applicant and Registrant are offering sub-categories of restaurant services
– pizza parlors serving a specialty dish called pizza cones and fast food restaurants
featuring fish, chips and burgers. Although the dishes are different, the purpose of
the services are identical – offering to the general public cooked meals for purchase.
Thus, based on the identifications alone, we can find that the services are related and
rendered to the same class of purchasers.
In addition, the Examining Attorney submitted copies of use-based third-party
registrations showing that the same entity has registered a single mark for
identifying services which are either identical, or legally identical to those in the
application and the cited registration. We note the following:
● Registrations No. 4484408 for services including “pizza parlors; … restaurant
services featuring pizza, pasta, salads, various entrees, calzones, sandwiches;
restaurant services, including sit-down service of food and take-out restaurant
services; restaurant services, namely, providing of food and beverages for
consumption on and off the premises.”

● Registration No. 4579244 for “Restaurant services featuring eat-in, take-out
and delivery of pizza, Strombolis, Calzones, pasta, salads, chicken wings, fried
chicken, barbecued ribs, and sandwiches such as submarines, burgers and
Panini.”

● Registration No. 4651250 for services including “providing of food and drink;
provision of ready-to-eat beverages and foodstuffs; services provided by tea
rooms, snack-bars, canteens, fish and chip shops, restaurants, fast-food
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restaurants, self-service restaurants, drive-in restaurants, bars, cafés;
restaurant and café services; fast-food restaurant services; provision of
beverages, foodstuffs, dishes and prepared take-away dishes; catering
services…”

● Registration No. 4576339 for services including “Fast-food restaurant services;
Food preparation services; Restaurant and cafe services; Restaurant services
featuring primarily pizza, sandwiches, hamburgers, ice cream, cake, candy,
salads, soft drinks and/or combination meals consisting primarily of pizza,
sandwiches, and/or salads with a soft drink; Restaurant services, namely,
providing of food and beverages for consumption on and off the premises.”

See Final Office Action dated December 18, 2015. Copies of use-based, third-party
registrations may serve to suggest that the services are of a type which may emanate
from a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993). Here, while the services in the aforementioned third-party registrations are
not worded in an identical manner to the services at issue here, because they are
broad recitations, they necessarily encompass both Applicant’s and Registrant’s more
narrowly defined restaurant services.
The Examining Attorney also submitted third-party web sites showing other
restaurants frequented by ordinary consumers offering the same or highly similar
food items as offered by Applicant and Registrant. We highlight the following:
● The Mineshaft restaurant featuring fish and chips, pizza and burgers.

● Ed’s Fish House restaurant featuring fish and pizza.

● Honu restaurant featuring all types of seafood and pizza.

● The Lucky Monk restaurant featuring pizza and burgers.

● 210 Gourmet restaurant featuring pizza and burgers.

● The Marco Polo restaurant featuring pizza and burgers.
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● Merriman’s Gourmet featuring pizza and burgers.

See Final Office Action dated December 18, 2015. As the aforementioned evidence
demonstrates, it is not uncommon for restaurants to serve pizza and/or burgers or
fish items. And while we acknowledge that a “pizza cone” is not the same as a
traditional pizza, it certainly qualifies as a specialty type of pizza. This constitutes
further evidence that Applicant’s and Registrant’s services are related and will be
encountered by the same consumers, that is to say the ordinary consumer.
Thus, the second du Pont factor also weighs in favor of finding a likelihood of
confusion.
II. Conclusion
We have carefully considered all of the evidence of record and arguments
pertaining to the du Pont likelihood of confusion factors, including any evidence and
arguments not specifically addressed in this opinion. We treat as neutral any du Pont
factors for which there is no evidence or argument of record. We therefore find that
consumers familiar with Registrant’s “services for providing food and drink, namely,
fast-food restaurants featuring fish, chips, and burgers” sold under the mark Cone
Heads will be likely to mistakenly believe, upon encountering Applicant’s mark for
“pizza parlors featuring pizza cones,” that the services originated with, or are
sponsored by or associated with, the same source.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.