Circus Restaurant Group, LLC

Trademark Trial and Appeal Board

Jul 25, 2006

No. 78440471 (T.T.A.B. Jul. 25, 2006)

Mailed:
July 25, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Circus Restaurant Group, LLC
________

Serial No. 78440471
_______

David E. Rook of Thuillez, Ford, Gold, Johnson & Butler,
LLP for Circus Restaurant Group, LLC.

Khanh M. Le, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney)
_______

Before Seeherman, Bucher and Walsh, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Circus Restaurant Group, LLC has appealed from the
final refusal of the Trademark Examining Attorney to
register CIRCUS CAFE and design, as shown below:

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Serial No. 78440471
2
for “a circus theme restaurant offering a complete lunch
and dinner menu.”1 The colors red, orange and blue are
claimed as a feature of the mark. Applicant has supplied
the following description of its mark:
The mark consists of a crown open at
the top consisting of seven points with
a ball above each point. The points
are blue and orange alternately. The
orange in the points shade from light
to dark orange from the base of a point
to the tip. The ball above the point
is blue if the point is orange and
orange if the point is blue. The
orange in the balls shades from light
to dark orange from the center of the
ball to its edge. The center portion
of the mark includes the stylized
lettering Circus Cafe. The letters are
red with orange trim. Below the words
Circus Cafe are the words Saratoga
Springs, NY. No claim is made to the
words Saratoga Springs, NY. The bottom
portion of the mark is a symmetrical
unfurling banner that is red.

The Examining Attorney required, in addition to
applicant’s voluntary disclaimer of “Saratoga Springs, NY,”
that applicant disclaim exclusive rights to “Circus Cafe.”
When applicant refused to submit such a disclaimer, the
Examining Attorney made the requirement final and therefore
refused registration of the mark. It is the refusal based

1 Application Serial No. 78440471, filed June 24, 2004, and
asserting first use as of February 1, 2004, and first use in
commerce as of May 1, 2004.
Serial No. 78440471
3
on this requirement for a disclaimer that is the subject of
this appeal.
Applicant and the Examining Attorney have filed appeal
briefs. Applicant did not file a reply brief, nor did it
request an oral hearing.
Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a),
provides that the Director may require the applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Section 2(e)(1) of the Act, 15 U.S.C.
§1052(e)(1) prohibits the registration of a mark that is
merely descriptive of the identified goods or services.
Therefore, we must consider whether the term CIRCUS CAFE is
merely descriptive of applicant’s services, which applicant
has identified as “a circus theme restaurant offering a
complete lunch and dinner menu.”
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of a product or
service. It does not have to describe every one of these.
It is enough if it describes a single, significant quality,
feature, function, etc. In re Venture Lending Associates,
226 USPQ 2825, 286 (TTAB 1985). See also, In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Moreover,
Serial No. 78440471
4
the question is not decided in a vacuum but in relation to
the goods on which, or the services in connection with
which, the mark is used. In re Venture Lending
Associations, supra.
In this case, the word CAFE is a generic term for
applicant’s services, which are identified as a restaurant.
The Examining Attorney has made of record a dictionary
listing for “café” which defines it as “a coffeehouse,
restaurant or bar.” The American Heritage Dictionary of
the English Language, 4th ed., © 2000. As for the word
CIRCUS, applicant’s own identification describes its
services as “a circus theme restaurant,” thereby
establishing that a circus theme is a significant
characteristic of the services. In addition, the Examining
Attorney has made of record excerpts from a number of
articles taken from the NEXIS database in which restaurants
and food are described as having a circus theme. See, for
example:
The Circus Drive-In, in Wall, is one of
the few remaining drive-in restaurants
left and all of the food is circus
themed.
“Courier Post” (Cherry Hill, NJ),
July 5, 2005

Headline: New restaurant opens with
colorful circus theme
Serial No. 78440471
5
The cafe’s grand opening Wednesday
included jugglers, clowns and circus-
themed food.
“The Times-Union” (Albany, NY),
May 25, 2004

Sixth Street between Grace and Franklin
streets will be tented for the Bravura
Bash. Creative black tie is suggested
for the circus-theme cocktail buffet
catered by Cafe Mosaic.
“Richmond Times Dispatch,”
July 20, 2003

There’s no clowning around when it
comes to food at this circus-themed
palace of gastronomy.
“Daily News” (New York), April 25, 2003

And Adler at 3 Ring—who was inspired to
serve cotton candy in part because of
the circus theme of his restaurant….
“San Jose Mercury News” (CA),
October 4, 2000

Warm and cozy and done with a charming
circus theme, this upscale Brazilian
restaurant….
“The New York Times,” October 25, 1998

Applicant appears to take issue with the NEXIS
evidence because “most of the results describe restaurants
associated with the more traditional aspects of a ‘circus’
like a theme park or are simply describing ‘circus’-themed
events.” Brief, p. 2. Applicant appears to take the
position that the evidence must show that the word “circus”
has been used to describe services that are rendered in the
exact same manner as applicant’s to be probative. However,
the evidence is sufficient to show that consumers will
Serial No. 78440471
6
understand the term “circus-themed,” when applied to
restaurants or restaurant-type food services, as describing
a characteristic of the services. As stated above, it is
not necessary, for a term to be merely descriptive, that it
describe every feature of the services, only that it
describe a significant feature or characteristic of them.
Thus, the NEXIS excerpts show that the term “circus-theme”
or variations on that term is used to describe (convey
information about) restaurants services such as
applicant’s. Moreover, applicant has identified its own
services as having a circus theme, thereby indicating that
this is an appropriate way to describe them.
As noted, the term used in both applicant’s
identification and in the majority of NEXIS excerpts to
describe the restaurants and food services is “circus
theme,” rather than “circus” per se. However, the omission
of the word “theme” in applicant’s mark does not change the
significance of the word CIRCUS. That is, consumers
viewing the mark CIRCUS CAFE in connection with “a circus
theme restaurant offering a complete lunch and dinner menu”
will immediately understand that the restaurant has a
circus theme; no imagination, thought or perception is
necessary.
Serial No. 78440471
7
Applicant asserts that there is no competitive need
for the term “circus” for restaurant services: “As
evidenced by the Examiner’s NEXIS search there does not
appear to be any clamoring past or present for the
descriptive use of “circus” in connection with a
restaurant.” Brief, p. 4. We disagree. The NEXIS
evidence shows that a number of restaurants or other food-
service operations use a circus theme.
Applicant also argues that CIRCUS CAFE is inherently
distinctive.2 Applicant appears to take this position
because a restaurant is not in fact a circus, which it
asserts is defined as “a public entertainment consisting
typically of a variety of performances, by acrobats,
clowns, and trained animals,” “a traveling company that
performs such entertainment” and “a circular arena
surrounded by tiers of seats and often covered by a tent in

2 This position contradicts that taken by applicant in a
companion application. In response to the first Office action,
applicant submitted a copy of a response it had provided in
connection with its application Serial No. 78440256 for CIRCUS
CAFE which had been refused registration on the ground that it
was merely descriptive of the identified restaurant services. We
note that applicant ultimately amended this application to the
Supplemental Register, thus acknowledging that the mark is not
inherently distinctive, and that a registration issued on the
Supplemental Register, No. 2009770, on October 25, 2005. While
applicant has, by its submission of the response, apprised us of
the existence of the application, because neither applicant nor
the Examining Attorney submitted the ensuing registration or
discussed the registration in their briefs, we have not relied on
this registration in reaching our decision herein.
Serial No. 78440471
8
which such shows are performed.”3 We acknowledge that
applicant is rendering restaurant services, and not
entertainment services in the nature of a circus. However,
as stated above, the determination of whether a term is
merely descriptive is made in relation to the services with
which the mark is used. When CIRCUS CAFE is used in
connection with the identified restaurant services,
consumers will immediately understand that the mark
describes a restaurant that has the theme of a circus,
rather than describing an actual circus.
Applicant also makes the argument that if it used its
mark with a restaurant that did not have a circus theme the
term CIRCUS CAFE would be inherently distinctive:
[A} restaurant in the absence of circus
décor would be permitted registration
of the name “Circus Café” as inherently
distinctive. In fact, the name would
in all likelihood be considered
arbitrary. The applicant asserts the
overall theme of “circus” is arbitrary
for a restaurant serving ordinary lunch

3 Applicant did not submit a copy of these definitions during
the prosecution of the application and, indeed, did not submit a
copy with its brief, but merely included the definitions in the
text of its brief, and asserted that they were taken from The
American Heritage Dictionary of the English Language, 3d ed.
© 1992. While it is customary to submit an actual copy of the
dictionary definition in such circumstances, in view of the fact
that the Examining Attorney has raised no objection, and because
the Board may take judicial notice of dictionary definitions,
see, University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983), we have considered the
definitions set forth in applicant’s brief.
Serial No. 78440471
9
and dinner fare. There, rather than
suggestive (or descriptive as the USPTO
decided) the name “Circus Café” retains
an arbitrary quality in the context of
a restaurant.

Brief, p. 8 (emphasis in original).

However, as the Examining Attorney has pointed out,
applicant’s mark is used in connection with a restaurant
having a circus theme. Applicant has acknowledged this in
its very identification of services, “a circus theme
restaurant,” and it is evidenced by its menu (submitted as
a specimen) which has on its cover a woman in a
ringmaster’s outfit sitting on a horse which is on a
platform in the air, and lists as food categories “The Main
Ring” and “The Big Top,” with items such as “Clown Car
Turkey Club” and “Ringmaster’s Chef Salad.”
In In re Ruffin Gaming LLC, 66 USPQ2d 1924 (TTAB
2002), the Board stated that the mere fact that a term
could thematically describe a trade dress or decor would
not make the term merely descriptive if the trade dress or
decor is arbitrary, fanciful or suggestive. However, the
Board also stated that if the trade dress or decor is
descriptive, then a term which describes that thematic
manner of use is merely descriptive. In the present case,
the Nexis excerpts submitted by the Examining Attorney show
that a circus theme can and has been used by restaurants
Serial No. 78440471
10
and other food service operations, such that a circus
themed restaurant would not be considered arbitrary,
fanciful or suggestive. Consequently, the term CIRCUS
CAFE, which is merely descriptive of a restaurant with a
circus theme, is merely descriptive of applicant’s
identified restaurant services, which are specifically
identified as “a circus theme restaurant offering a
complete lunch and dinner menu.”
Decision: The requirement for a disclaimer of CIRCUS
CAFE is affirmed, and therefore the refusal of registration
is affirmed. However, if applicant submits the required
disclaimer within thirty days of the mailing date of this
decision, the decision will be set aside. See Trademark
Rule 2.142(g).