Chubby’s, Inc.

Trademark Trial and Appeal Board

Apr 23, 2010

No. 77481121 (T.T.A.B. Apr. 23, 2010)

Mailed:
April 23, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Chubby’s, Inc.
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Serial No. 77481121
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Scott T. Kannady of Brown & Kannady, LLC, for Chubby’s, Inc.

Tracy L. Fletcher, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
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Before Hairston, Grendel, and Ritchie, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Chubby’s, Inc. (“applicant”) filed an application to
register the mark THE ORIGINAL CHUBBYS MEXICAN FOOD,1 for
services identified as “bar and restaurant services.” The
Trademark Examining Attorney refused registration of applicant’s
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

1 Serial No. 77481121, in International Class 43, filed May 22, 2008,
pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a),
alleging dates of first use and first in commerce on June 1, 1990, and
disclaiming the exclusive right to use “THE ORIGINAL” and “MEXICAN
FOOD” apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77453189
2
registered mark EL CHUBBY’S,2 for “restaurant services featuring
Mexican food,” that when used on or in connection with
applicant’s identified services, it is likely to cause confusion
or mistake or to deceive.
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
briefs. For the reasons discussed herein, the Board affirms 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
analysis, two key considerations are the similarities between
the marks and the similarities between the goods or 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

2 Registration No. 3028790, in International Class 43, issued December
13, 2005, based on first use on October 4, 1990, and first use in
commerce on November 1, 1990.
Serial No. 77453189
3
the marks”). We discuss each of the du Pont factors as to which
applicant or the examining attorney submitted argument or
evidence.
The Services
The application identifies “bar and restaurant services”
while the cited registration identifies a narrower field of
“restaurants services featuring Mexican food.” Nonetheless, the
services in the cited registration are encompassed within the
broad scope of “bar and restaurant services” identified in the
application. Hence, the services in the cited registration are
legally identical to those in the application, and we find that
this du Pont factor strongly favors finding a likelihood of
confusion.
The Channels of Trade and Classes of Purchasers
Under the third du Pont factor, we consider evidence
pertaining to the similarity or dissimilarity of the trade
channels in which and the purchasers to whom applicant’s
services and services in the cited registration are or would be
marketed. Because there are no limitations or restrictions as
to trade channels or classes of purchasers in the respective
identifications of services, we presume that the services are
marketed in all normal trade channels and to all normal classes
of purchasers for such services, regardless of what the evidence
might show to be the actual trade channels and purchasers for
their services. Packard Press Inc. v. Hewlett-Packard Co., 227
F.3d 1352, 56 USPQ2d 1351 (Fed. Cir. 2000); Octocom Systems Inc.
Serial No. 77453189
4
v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783
(Fed. Cir. 1990).
Moreover, because registrant’s services and applicant’s
services as identified in the application and the cited
registration are legally identical, we presume that the
respective services are or will be sold in the same trade
channels and to the same classes of purchasers. Brown Shoe Co.
v. Robbins, 90 USPQ2d 1752 (TTAB 2009); Genesco Inc. v. Martz,
66 USPQ2d 1260 (TTAB 2003); In re Smith and Mehaffey, 31 USPQ2d
1531 (TTAB 1994). Accordingly, we find that this du Pont factor
also weighs in favor of finding a likelihood of confusion.
Customer Sophistication
Applicant argues that its customers are sophisticated,
stating in its brief: “The consumer who is interested in
purchasing Mexican food is sophisticated.” (Appl’s Brief at 6).
However, we note that restaurant patrons include ordinary
consumers exercising only a normal degree of care. Accordingly,
we find that this du Pont factors also weighs in favor of
finding a likelihood of confusion.
The Marks
Preliminarily, we note that the more similar the services
at issue, the less similar the marks need to be for the Board to
find a likelihood of confusion. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992). 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
Serial No. 77453189
5
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005).
In comparing the marks, we are mindful that the test is not
whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression so that confusion as to the source of the goods
and/or services offered under the respective marks is likely to
result. 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 unpublished, No. 92-1086 (Fed. Cir. June 5,
1992). The proper focus is on the recollection of the average
customer, who retains a general rather than specific impression
of the marks. 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).
The mark in the cited registration consists of the words
“EL CHUBBY’S.” We take judicial notice of the fact not disputed
by the examining attorney or the applicant that the first word
“EL” is the Spanish word for “the,” which has no trademark
significance. We find the mark EL CHUBBY’S to be arbitrary for
restaurant services, including those featuring Mexican food.
Applicant has not argued to the contrary.
Applicant’s mark consists of the words “THE ORIGINAL
CHUBBY’S MEXICAN FOOD.” Applicant has disclaimed the words “THE
ORIGINAL,” and “MEXICAN FOOD.” While we must not improperly
Serial No. 77453189
6
dissect a mark, certain features may be considered dominant. In
re National Data Corp., 224 USPQ 749, 751 (Fed. Cir. 1985)
(“[T]here 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.”). In
particular, descriptive or disclaimed matter is generally
considered a less dominant portion of a mark. Id. We note that
the words “THE ORIGINAL” are laudatory, and generally appear to
be descriptive of applicant’s service, while “MEXICAN FOOD,” is
descriptive of a feature of that service. Accordingly, the
arbitrary word “CHUBBYS” is the dominant portion of applicant’s
mark.
In sum, although the marks in their entireties appear and
sound different, they have similar connotations and commercial
impressions, and their dominant features are the same.
Accordingly, we find this du Pont factor to also favor finding a
likelihood of confusion.

Conclusion
In summary we have carefully considered all of the evidence
and arguments of record relevant to the du Pont likelihood of
confusion factors. We conclude that with legally identical
services moving in the same channels of trade to the same
purchasers, and similar marks, there is a likelihood of
confusion between applicant’s THE ORIGINAL CHUBBYS MEXICAN FOOD
Serial No. 77453189
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mark for “bar and restaurant services” and the registered mark
EL CHUBBYS for “restaurant services featuring Mexican food.”
Decision: The refusal to register is affirmed.