Crescent City Restaurant, Inc.

Trademark Trial and Appeal Board

Sep 17, 2008

No. 77100572 (T.T.A.B. Sep. 17, 2008)

Mailed: September 17, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Crescent City Restaurant, Inc.
________

Serial No. 77100572
_______

Crescent City Restaurant, Inc., pro se.

Elizabeth N. Kajubi, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Quinn, Rogers and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Crescent City Restaurant, Inc. has filed an
application to register on the Principal Register the mark
CRESCENT CITY STEAKS SINCE 1934 and design, shown below,

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Ser No. 77100572
2
for services identified as “catering; restaurant and bar
services.”1 “CRESCENT CITY STEAKS SINCE 1934” has been
disclaimed.
The examining attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant’s mark resembles the mark in U.S.
Registration No. 2881157, CRESCENT CITY (in typed form),
for “restaurant services.”2
When the refusal was made final, applicant appealed
and requested reconsideration of the final refusal. On
October 19, 2007, the examining attorney denied the request
for reconsideration and, on November 15, 2007, this appeal
was resumed. Briefs were filed by both applicant and the
examining attorney. For the reasons discussed below, we
affirm the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative

1 Serial No. 77100572, filed February 6, 2007, and alleging
December 13, 1992 as the date of first use of the mark anywhere
and in commerce. The application also contains the following
color statements: “The applicant claims color as a feature of
the mark, namely, navy and green circles, semi, rectangles with
one or more curved sides, grren [sic] letters and numbers, red
letters, yellow crescent moon.” “The mark consists of navy and
green circles, semi, rectangles with one or more curved sides,
the words crescent city since 1934 in green, the word steaks in
red, crescent moon in yellow.”

2 Registration No. 2881157, issued September 7, 2004.

Ser No. 77100572
3
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We turn first to a consideration of the services. It
is well settled that the question of likelihood of
confusion must be determined based on an analysis of the
services recited in applicant’s application vis-à-vis the
services identified in the cited registration. In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n. 4 (Fed.
Cir. 1993); and Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). In the
present case, the identified services of applicant and
those of the cited registrant have a service in common
(i.e., restaurant services), and the additional services in
applicant’s application (i.e., catering and bar services)
Ser No. 77100572
4
are otherwise closely related services in the food and
beverage industry.
Applicant, in its July 10, 2007 response, appears to
argue that the services are unrelated because registrant’s
mark is used in connection with a business that does not
sell steak. This argument is unpersuasive because
registrant’s restaurant services as identified in the cited
registration are not limited to a particular type or style
of food. See e.g., In re Bercut-Vandervoort & Co., 229
USPQ 763, 764 (TTAB 1986) (An applicant may not restrict
the scope of the goods [or services] covered in the cited
registration by argument or extrinsic evidence).
Further, we must presume that these legally identical
services will be offered in the same channels of trade and
will be purchased by the same classes of purchasers, i.e.,
ordinary consumers, while the related services will be
offered in some of the same channels of trade, and will be
bought by some of the same purchasers. See Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); and In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994). In view of the above, the du Pont
factors of the similarity of the services, channels of
trade and classes of purchasers favor a finding of
likelihood of confusion as to the cited registration.
Ser No. 77100572
5
We now consider applicant’s mark, CRESCENT CITY STEAKS
SINCE 1934 and design, and the cited mark CRESCENT CITY,
keeping in mind that when marks would appear on even some
identical services, as they do here, the degree of
similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). In determining the similarity or
dissimilarity of marks, we must consider the marks in their
entireties in terms of sound, appearance, meaning and
commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005). 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 impressions that
confusion as to the source of the goods offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general, rather than a specific, impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). That is, the purchaser’s fallibility
of memory over a period of time must be kept in mind. See
Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477
Ser No. 77100572
6
F.2d 586, 177 USPQ 573 (CCPA 1973); and Spoons Restaurant
Inc. v. Morrison Inc., 23 USPQ2d 1735 (TTAB 1991); aff’d
unpub’d (Fed. Cir., June 5, 1992). Applicant maintains
that granting it a registration for its mark, which
includes “a distinctive logo in combination with the words
‘Crescent City Steaks Since 1934’, will not impair Crescent
City Beignet’s right to ‘crescent city.’” (Br., at
unnumbered p. 2). The examining attorney, by comparison,
contends that applicant’s mark is highly similar to the
cited mark.
We agree that applicant’s mark CRESCENT CITY STEAKS
SINCE 1934 and design is similar to the cited CRESCENT CITY
mark. Although we must compare the marks in their
entireties, one feature of a mark may be more significant
than another and it is not improper to give more weight to
this dominant feature in determining the commercial
impression created by the mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) (“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.”).
Ser No. 77100572
7
Further, with a composite mark comprising a design and
words, it is the wording that would make a greater
impression on purchasers and is the portion that is more
likely to be remembered as the source-signifying portion of
the applicant’s mark. In re Dakin’s Miniatures, Inc., 59
USPQ2d 1593 (TTAB 2001) (“words are normally accorded
greater weight because they would be used by purchasers to
request the goods”). See also, e.g., In re Appetito
Provisions Co., 3 USPQ2d 1553 (1987). It is not unusual
for restaurants to be discussed by patrons who have eaten
in them, or by reviewers, and any such discussions would
necessarily utilize the words in applicant’s mark, rather
than a description of the colors and designs in the mark.
In this case, applicant’s mark is dominated by the
words CRESCENT CITY; they are the first words in the mark
and, along with the word STEAKS, are visually larger than
the text “SINCE 1934” and more distinct than the crescent
moon design. Although the term STEAKS is in the same size
text as CRESCENT CITY, because STEAKS clearly describes the
type of food served in applicant’s restaurants, as
acknowledged by applicant, it is not source signifying and
therefore not a dominant element. See In re National Data
Corp., 224 USPQ at 751 (“That a particular feature is
descriptive or generic with respect to the involved goods
Ser No. 77100572
8
or services is one commonly accepted rationale for giving
less weight to a portion of the mark.”). The phrase “Since
1934,” has also been disclaimed, as it merely describes
when applicant first offered its restaurant services, and
likewise would not be looked upon as a source-identifying
element. Moreover, we do not find the design sufficient to
distinguish applicant’s mark from the cited mark. While
clearly noticeable, the curved rectangular feature merely
serves to frame the mark and the crescent moon and bowl
design simply reinforces the CRESCENT CITY portion of the
mark.
We acknowledge that applicant has also included a
disclaimer of the words CRESCENT CITY, but that does not
remove those words from the mark or reduce their visual
dominance of the composite mark. This dominant portion of
applicant’s mark is identical to the cited mark in
appearance, sound, connotation and commercial impression.
In terms of appearance, because the registered mark is
registered in typed or standard characters, we are required
to consider that registrant may display the words in any
reasonable form of lettering, including the font used by
applicant. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1847-1848 (Fed. Cir. 2000).
Ser No. 77100572
9
Applicant essentially argues that its mark is not
capable of causing confusion because the term “crescent
city” is in common usage and because it has disclaimed the
phrase “CRESCENT CITY STEAKS SINCE 1934.” To the extent
that applicant is arguing that the disclaimed matter is of
no import, applicant is incorrect. Disclaimed matter must
be considered with the rest of the mark as a whole in
assessing the similarity between the marks. As stated by
our primary reviewing court,
it is well settled that the disclaimed material
still forms a part of the mark and cannot be
ignored in determining likelihood of confusion.
Such disclaimers are not helpful in preventing
likelihood of confusion in the mind of the
consumer, because he is unaware of their
existence. Therefore, the disclaimed portions
must be considered in determining the
likelihood of confusion. (citations omitted)

Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218, USPQ2d 390, 395 (Fed.Cir. 1983); see also In re
National Data Corp., 224 USPQ at 751-752; V-M Mayfair Sound
Prd., Inc., 480 F.2d 898, 178 USPQ 477, 477-478 (CCPA
1973). As noted above, notwithstanding the disclaimer, the
words CRESCENT CITY can still be dominant, visually, and
because they would be used to refer to the restaurant when
discussed orally.
As regards applicant’s assertion of common usage of
the term “Crescent City,” applicant made of record an
Ser No. 77100572
10
excerpt from the Greater New Orleans Directory listing
various businesses whose name includes the term “Crescent
City.” These listings of companies with the term “Crescent
City” in their names do not show actual use in the
marketplace of these trade names and company names. These
listings are of limited probative value because they do not
demonstrate that these businesses actually exist or that
the public is aware of them and therefore able to
distinguish one CRESCENT CITY business from another. See
Helene Curtis Industries Inc. v. Suave Shoe Corp., 13
USPQ2d 1618, 1622 (TTAB 1989) and In re Hub Distributing,
Inc., 218 USPQ 284, 285 (TTAB 1983). We add that the use
of the term “Crescent City” in connection with the various
companies whose businesses are as diverse as an antique
gallery, a cab company and a cleaning service, do not show
that the registered mark is weak and entitled to a limited
scope of protection for restaurant services.
However, even assuming registrant’s mark is weak, even
weak marks are entitled to protection. See Matsushita
Electric Company v. National Steel Co., 442 F.2d 1383, 170
USPQ 98, 99 (CCPA 1971)(“Even though a mark may be ‘weak’
in the sense of being a common word in common use as a
trademark, it is entitled to be protected sufficiently to
prevent confusion from source arising”). At issue here are
Ser No. 77100572
11
substantially similar marks for identical (in part)
services. Under these circumstances, the mere weakness of
the term “CRESCENT CITY” does not obviate a likelihood of
confusion, because it is the common portion of the marks
(and the whole of the cited mark). Moreover, applicant
fails to acknowledge that while CRESCENT CITY may be
geographically descriptive for businesses located in New
Orleans3, and may even be descriptive for businesses in
other locations called CRESCENT CITY, there is no evidence
of record that registrant’s restaurant is located in such a
place. Therefore, we cannot conclude that CRESCENT CITY is
weak for registrant’s restaurant, even though it may be
weak in other contexts.
As noted previously, the dominant, albeit disclaimed,
portion of applicant’s mark is identical to the cited mark
in appearance, sound, connotation and overall commercial
impression. While we have not overlooked the design
element or applicant’s arguments regarding the weakness of
the term CRESCENT CITY, we nonetheless conclude that the
marks, when considered in their entireties, are
substantially similar due to the shared term CRESCENT CITY.

3 As applicant points out, “New Orleans is referred to by many
natives of the area as the crescent city, by virtue of the bend
in the Mississippi River as it winds through town. (Response,
filed July 10, 2007, p. 1).

Ser No. 77100572
12
Thus, the factor of the similarity of the marks favors a
finding of likelihood of confusion.
Two final arguments made by applicant must be
addressed. First, during prosecution, applicant suggests
that it has priority over registrant. Such a claim is an
impermissible collateral attack on the cited registration.
Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b),
provides that a certificate of registration on the
Principal Register shall be prima facie evidence of the
validity of that registration, or the registrant’s
ownership of the mark and of the registrant’s exclusive
right to use the mark in connection with the goods and
services identified in the certificate. During ex parte
prosecution, including an ex parte appeal, an applicant
will not be heard on matters that constitute a collateral
attack on the cited registration (e.g., applicant’s claim
of priority over the cited mark). In re Dixie Restaurants,
41 USPQ2d at 1534; and In re Peebles Inc., 23 USPQ2d 1795,
1797 n.5 (TTAB 1992). See TMEP § 1207.01(d)(iv)(5th ed.
2007). Accordingly, no consideration has been given
applicant’s argument in this regard. We do not have before
us a claim for cancellation of the cited registration, or
even a claim that applicant has concurrent use rights, both
Ser No. 77100572
13
of which would have to be raised in an inter partes
proceeding.
Second, applicant states that it had a previous
registration for the same mark for the same services that
it inadvertently allowed to lapse for failure to file an
affidavit of continuous use. Applicant contends that its
mark previously was allowed to register even though the
Patent and Trademark Office (“PTO”) at first suspended the
original application based on priority of rights of another
to the term “crescent city.” (Br., unnumbered p. 1).
Applicant then vigorously argues that “[t]he PTO has acted
inconsistently and incorrectly by granting our Original
Service Mark in 1997 but rejecting our application to renew
the mark in 2007,” when in both cases it disclaimed the
term “CRESCENT CITY STEAKS SINCE 1934.” (Br., unnumbered p.
2). While we are not unsympathetic to applicant’s
situation, we simply are not bound by the decisions of
prior examining attorneys. As has often been stated, each
case must be considered on its own merits based on evidence
of record at the time registration is sought. See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001); and In re Scholastic Testing Service, Inc., 196 USPQ
517 (TTAB 1977). See also, In re Sunmarks Inc., 32 USPQ2d
1470, 1472 (TTAB 1994) (Applicant who has previously
Ser No. 77100572
14
registered a mark is not guaranteed the right to obtain
additional registrations for the mark if an intervening
registration creates conflict).
After careful consideration of the briefs and all of
the evidence of record, and given the constraints under
which we are obligated to assess the current application,
i.e., based on the identifications, and on comparison of
the marks without regard to circumstances relating to use
that might serve, in the real world, to obviate possible
confusion, and given the requirement that any doubt be
resolved in favor of registrant, we conclude that the
refusal of registration must be affirmed.

Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.