Center Cut Hospitality, Inc.

Trademark Trial and Appeal Board

Jul 22, 2008

No. 78267308 (T.T.A.B. Jul. 22, 2008)

Mailed: July 22, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE1
________

Trademark Trial and Appeal Board
________

In re Center Cut Hospitality, Inc.
________

Serial No. 78267308
_______

Drew T. Palmer of Crowe & Dunlevy, PC, for Center Cut
Hospitality.

Samuel E. Sharper, Trademark Examining Attorney, Law Office
108, Andrew Lawrence, Managing Attorney.
_______

Before Quinn, Walters, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Center Cut Hospitality, Inc. seeks registration of the
mark SWINGIN’ AT SULLY’S (typed mark) for “restaurant and
bar services” in International Class 43. Registration has
been finally refused pursuant to Trademark Act § 2(d), 15
U.S.C. § 1052(d), on the ground that applicant’s mark so

1 Filed June 26, 2003, based on first use of the mark and first
use in commerce of June 15, 2003. Filed in the name of Lone Star
Steakhouse & Saloon, Inc., this application was assigned to the
current applicant by transfer dated June 19, 2007, and recorded
in the assignments records of the USPTO at Reel 3590, Frame 0306.

THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78267308
2
resembles the mark in Registration No. 29888672 (shown
below), for “restaurant and bar services,” as to be likely
if used on or in connection with the identified goods, be
likely to cause confusion, to cause mistake, or to deceive.

After careful consideration of the record,3 we affirm.
I. Applicable Law
Our determination under Trademark Act § 2(d) is based
on an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).

2 Issued August 30, 2005, based on first use and first use in
commerce of June 12, 1984, and a claim of acquired
distinctiveness pursuant to Trademark Act § 2(f).
3 Applicant and the examining attorney filed briefs on appeal.
Although applicant sought and was granted an extension of time to
file a reply brief (to March 26, 2008), no reply brief was filed.
Serial No. 78267308
3
In considering the evidence of record on these
factors, we keep in mind that “[t]he 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.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999), and cases
cited therein.
II. Discussion
We review the relevant du Pont factors as they apply
to this case.
A. The Similarity Or Dissimilarity And Nature Of The
Goods or Services

Applicant’s services and those of the cited registrant
are identical: “restaurant and bar services.” This factor
strongly supports a finding of likelihood of confusion.
B. The Similarity Or Dissimilarity Of Established,
Likely-to-Continue Trade Channels and Potential
Purchasers

The fact that the services are identical also means
that we must assume that purchasers and channels of trade
are also identical. Genesco Inc. v. Martz, 66 USPQ2d 1260,
1268 (TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
Serial No. 78267308
4
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”).
This factor likewise supports a finding of a
likelihood of confusion.
C. The Similarity Or Dissimilarity of the Marks in
Their Entireties as to Appearance, Sound,
Connotation and Commercial Impression.

We must compare the marks for similarities and
dissimilarities in appearance, sound, meaning, and
commercial impression. Palm Bay, 73 USPQ2d at 1692. But
where the goods or services recited by the applicant are
closely related or identical to those in the cited
registration, “the degree of similarity necessary to
support a conclusion of likely confusion declines.”
Century 21 Real Estate Corp. v. Century Life of Am., 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); see also
In re Smith and Mehaffey, 31 USPQ2d at 1532; In re La
Peregrina Ltd., 86 USPQ2d 1645 (TTAB 2008).
Serial No. 78267308
5
As the Court of Appeals for the Federal Circuit
observed,
in articulating reasons for reaching a conclusion
on the issue of confusion, 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 consideration of the
marks in their entireties. Indeed, this type of
analysis appears to be unavoidable.

In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985).
Applicant’ mark is SWINGIN’ AT SULLY’S (typed), while
the mark in the cited prior registration is SULLY’S, with a
penguin design. Applicant agrees that the marks share a
common element: “SULLY’S.” Nonetheless, pointing to the
additional material in both marks (“SWINGIN’ AT --” in
applicant’s mark and the penguin design in the prior
registrant’s), applicant argues that “the matter not common
to the marks is especially distinctive.” App. Br. at 8
(citations omitted). “As a result, where there is
additional distinctive material not shared between the two
marks, there is no likelihood of confusion between the
marks.” Id. at 9.
Applicant’s formulation of the test is incorrect. The
question is not whether there is a “likelihood of confusion
between the marks.” The question in determining whether a
Serial No. 78267308
6
likelihood of confusion exists is not whether people will
confuse the marks, but whether the marks will confuse
people into believing that the goods they identify come
from the same source. In re West Point-Pepperell, Inc.,
468 F.2d 200, 175 USPQ 558 (CCPA 1972).
We find that the term SULLY’S is the dominant portion
of both marks. Applicant’s mark includes additional
wording. In that regard, applicant notes that “the
SWINGIN’ AT SULLY’S mark brings to mind a different era,
one of big bands, swing dancing, and connotes a party
atmosphere, where singles can meet and mingle.” App. Br.
at 9. Because of this connotation, we find that the words
“SWINGIN’ AT --” in applicant’s mark are somewhat
suggestive of a bar and restaurant featuring band music and
dancing. Although we consider the entire mark as a whole,
we find that this suggestive wording is less dominant in
the overall impression of opposer’s mark, and that guests
of the restaurant are likely to focus primarily on the word
“SULLY’S” than “SWINGIN’ AT --” in the mark.
As for the mark in the cited registration, we
recognize, of course, that the penguin design makes a
significant visual impression. Nonetheless, we note that
in combined word and design marks, the word portion
frequently dominates inasmuch it is the words by which
Serial No. 78267308
7
consumers will call for the goods and services. In re
Appetito Provisions Co., Inc., 3 USPQ2d 1553 (TTAB 1987).
In discussing a restaurant operating under the registrant’s
mark, or in calling for reservations, we think it highly
unlikely that customers would speak of – or even think of –
the penguin design. Such an establishment would almost
surely be referred to simply as “Sully’s.”
The marks thus share both similarities and
differences. While they are somewhat different in
appearance and connotation, we find them more similar than
dissimilar in sound and significantly similar in overall
commercial impression.
This factor supports a finding of likelihood of
confusion.
D. Family of Marks
In response to the examining attorney’s refusal of
registration, applicant argued that the mark in the subject
application is part of a “family” of marks, listing the
following registrations4 as prior members of its family:

4 A list of registrations is generally not sufficient evidence of
such registrations nor is it sufficient to make them of record.
Nonetheless, because the examining attorney failed to object to
this submission, we will consider the list for whatever probative
value it may have. However, the registrations themselves, which
were never submitted, are not of record, nor is the listing of
goods and services associated with each of the listed
registrations. The latter information was first submitted with
Serial No. 78267308
8
SWINGIN’ AT SULLIVANS Reg. No. 2853848
SULLIVAN’S STEAKHOUSE Reg. No. 2062637
SULLIVAN’S STEAKHOUSE Reg. No. 2529991
RINGSIDE AT SULLIVAN’S Reg. No. 2249440
RINGSIDE AT SULLIVAN’S Reg. No. 2256909

Resp. to Office Action March 12, 2007.
Applicant argues that “[w]hen a given mark is part of
a family of marks that are ‘closely similar in sound,
appearance and connotation,’ consumers are likely to
believe that the origin of the goods and services of that
mark is the same as that of the rest of the marks in the
family.” App. Br. at 6 (citations omitted). On the
contrary, we disagree that the “family of marks” doctrine
has any applicability in this ex parte proceeding.
In general usage,
[t]he owner of the family of marks contends that,
because the defendant’s mark contains the
asserted family characteristic, purchasers
familiar with plaintiff’s family of marks are
likely to believe that defendant’s mark is but
another member of the family.

Jeffrey A. Handelman, 1 GUIDE TO TTAB PRACTICE § 6.13[B]
(2008).
The family of marks doctrine is thus used by a
plaintiff in an opposition or cancellation proceeding, who

applicant’s brief (and was not accepted or used by the examining
attorney) and is thus clearly untimely. Trademark Rue 2.142(d).
Serial No. 78267308
9
argues that it is entitled to recognition of an “asserted
family characteristic” to prevent registration of another’s
mark similar to that family characteristic. By contrast,
applicant here is attempting to use the “family of marks”
doctrine as a shield against a refusal to register.
Applicant essentially contends that because it has other
registrations for what it claims to be similar marks, it is
entitled to registration of this application. But as the
examining attorney points out, priority is not an issue.
This is so because the refusal to register is based on a
registration. It is not a defense to such a refusal to
argue that the cited registration should not have issued
over applicant’s other registrations or that applicant
actually has priority by virtue of them. Such an argument
is no more than a impermissible collateral attack on the
validity of the cited registration.5 See In re Calgon
Corp., 168 USPQ 278, 279-280 (CCPA 1971). See also Baroid
Drilling Fluids Inc. v. Sun Drilling Prod., 24 USPQ2d 1048
(TTAB 1992). Accordingly, we give applicant’s “family of
marks” argument no further consideration.

5 Further, even the family of marks doctrine could help applicant
in this situation, applicant has not proven that it owns such a
family, or that SULLY’S is a family member. A party claiming to
own a family of marks must show that “the marks that are asserted
to make up the family have been used and advertised in such a
manner that consumers have come to recognize that the
Serial No. 78267308
10
III. Conclusion
In weighing the relevant du Pont factors, we find that
the goods are identical, and that they share legally
identical channels of trade and customers. Although the
marks at issue bear obvious differences, the dominant part
of both marks is both distinctive and identical. We
conclude that such marks, when used in connection with the
identified services, are likely to cause confusion, to
cause mistake, or to deceive, within the meaning of
Trademark Act § 2(d).
Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly affirmed.

characteristic is indicative of a common origin of the goods.” 1
GUIDE TO TTAB PRACTICE § 6.13[B].