David Judaken

Trademark Trial and Appeal Board

Jun 19, 2001

No. 75219108 (T.T.A.B. Jun. 19, 2001)

6/19/01
Paper No. 17
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re David Judaken
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Serial No. 75/219,108
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Thomas I. Rozsa of Rozsa & Chen, LLP for David Judaken.
Catherine K. Krebs, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______
Before Holtzman, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On December 27, 1998, David Judaken (applicant) filed
an intent-to-use application to register the mark GARDEN OF
EDEN (typed drawing) for services identified as
“restaurants and night clubs” in International Class 42.1
The Examining Attorney ultimately refused to register
the mark under Section 2(d) of the Trademark Act because
she concluded that registration of the mark for the
1 Serial No. 75/219,108.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/219,108
2
identified services would be likely to cause confusion, or
to cause mistake or to deceive under Section 2(d) of the
Trademark Act because of the prior registration of the mark
EDEN (typed drawing) for “restaurant services.”2
After the Examining Attorney made the refusal final,
this appeal followed. Both applicant and the Examining
Attorney filed briefs. Applicant did not request an oral
argument.
The Examining Attorney argues that the terms GARDEN OF
EDEN and EDEN have the same meaning and connotation, so
that when the marks are used on restaurant services, there
would be a likelihood of confusion, mistake, or deception.
The Examining Attorney has submitted numerous definitions
and LEXIS/NEXIS articles to establish that the marks EDEN
and GARDEN OF EDEN would have the same meaning or
connotation. These definitions show that the word “Eden”
is defined as “the garden where according to the account in
Genesis Adam and Eve first lived” and “Garden of Eden” is
simply defined as “Eden.” Merriam-Webster’s Collegiate
Dictionary, 10th Edition (1996). LEXIS/NEXIS printouts show
that the terms “Garden of Eden” and “Eden” are often used
together and interchangeably. “[T]he truly religious
always realize you can’t return to the Garden of Eden . . .
2 Registration No. 2,172,245, issued July 14, 1998.
Ser. No. 75/219,108
3
even if Eden in this case was a burned-out, poverty-
stricken borough.” New Times Los Angeles, August 26, 1996.
“Everyone has an ideal landscape, not necessarily a private
Garden of Eden (though Eden should fit the bill, unless you
love apples).” San Antonio Express-News, August 12, 1999,
p. 5B. “Compare it to earth – this is the Garden of Eden.
We may have our serpents, but this is Eden.” Lancaster New
Era, July 1, 1999, p. 12. “Heidi Ravven . . . plans to
relate how . . . Jewish philosopher Maimonides dealt with
the stor[y] of the Garden of Eden. Her symposium question:
Does the Eden story suggest that man fell as a result of
knowledge.” Jewish News of Greater Phoenix, February 5,
1999, p. 4.
With her appeal brief, the Examining Attorney also
submitted two additional dictionary definitions and
concluded by arguing that: “Those consumers who are
accustomed to dining at the registrant’s EDEN restaurant
would readily believe that the GARDEN OF EDEN restaurants
originate from the same source, or are at least affiliated
as to origin.” Examining Attorney’s Appeal Brief, p. 4.
Applicant responded to the Examining Attorney’s
refusal to register by arguing that “GARDEN OF EDEN is not
the same as EDEN. They are not the same words, they are
not pronounced the same, and they don’t conjure up the same
Ser. No. 75/219,108
4
image in the minds of the consuming public.” Applicant’s
Appeal Brief, p. 3. Applicant submitted his own dictionary
definition (Webster’s New Universal Unabridged Dictionary),
which contains a definition of EDEN but no definition of
GARDEN OF EDEN. Further, applicant claims that because
EDEN is in the dictionary he cites, but GARDEN OF EDEN is
not, EDEN is a defined term while GARDEN OF EDEN “is its
own fanciful unique phrase.” Applicant’s Appeal Brief, p.
4. “In addition, the most famous character[s] in the Bible
relating to Adam and Eve are a snake and an apple, neither
of which are part of the service mark of either the
Applicant or the prior registrant.” Id. Finally,
applicant accuses the Examining Attorney of dissecting its
mark to find a likelihood of confusion.
We have considered the arguments and the evidence
presented by the applicant and the Examining Attorney, and
because we determine that there would be a likelihood of
confusion if the marks EDEN and GARDEN OF EDEN are both
used on or in connection with restaurant services, we
affirm the refusal to register the mark under Section 2(d)
of the Trademark Act.
Determining whether there is a likelihood of confusion
requires application of the factors set forth in In re
Ser. No. 75/219,108
5
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177
USPQ 563, 567 (CCPA 1973. In considering the evidence of
record on these factors, we must keep in mind that “[t]he
fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We start by noting that both applicant and registrant
offer or will offer restaurant services. Therefore, in
this regard the services are identical. In re Dixie
Restaurants, 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533
(Fed. Cir. 1997) (Applicant’s restaurant services
identified as “restaurant services specializing in
Southern-style cuisine” legally identical to registrant’s
restaurant services identified as “hotel, motel, and
restaurant services”).
Next, we turn to the similarity of the marks. “If the
services are identical, ‘the degree of similarity necessary
to support a conclusion of likelihood of confusion
declines.’” Dixie Restaurants, 41 USPQ2d at 1534, quoting,
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 877, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
The question here is whether the marks create the same
Ser. No. 75/219,108
6
commercial impression. The test is not whether the marks
can be distinguished in a side-by-side comparison, but
whether they are sufficiently similar in their overall
commercial impression so that confusion as to the source of
the goods marketed under the respective marks is likely to
result. “[T]here is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of the mark, provided [that] the
ultimate conclusion rests on consideration of the marks in
their entireties.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Here, both marks contain the identical word EDEN and
they are in typed form. Applicant argues that by adding
the phrase “GARDEN OF” to “EDEN,” he creates a different
commercial impression. We disagree. In a very similar
case, the Board determined that there was a likelihood of
confusion when the mark EDEN was registered for wine and
the applicant applied to register the mark MT. EDEN
VINEYARDS for the identical goods. In re McWilliams, 200
USPQ 47, 49 (TTAB 1978)(“While there may be a different
connotation between the terms ‘EDEN’ and ‘MT. EDEN’ insofar
as the word ‘EDEN’ might be interpreted as referring to the
Biblical ‘Garden of Eden,’ whereas ‘MT. EDEN’ would refer
to a particular mountain, we do not believe that such
Ser. No. 75/219,108
7
difference in meaning between the respective terms would
have any significant bearing upon the minds of prospective
purchasers of wine insofar as the commercial impression
created by such terms are concerned.”). Unlike the
McWilliams case where the mark MT. EDEN VINEYARDS might
also have a non-biblical meaning, the evidence in this case
supports the conclusion that EDEN and GARDEN OF EDEN would
likely create the same commercial impression based on their
similar biblical allusions.3
The following evidence supports our conclusion that
the marks have similar commercial impressions. In the
first definition the Examining Attorney cited, “Garden of
Eden” simply refers back to “Eden.” Merriam-Webster’s
Collegiate Dictionary, 10th Edition (1996). In her brief,
the Examining Attorney also requests that we take judicial
notice of two additional definitions. The first defines
“Eden” as follows:
1. The place where Adam and Eve lived before the
fall. Gen. 2:8-24.
2. Any delightful region or abode; paradise.
3. A state of perfect happiness or bliss. Also
called Garden of Eden.
Random House Compact Unabridged Dictionary (Special 2d
Edition) (1996).
3 While applicant’s dictionary does not contain a separate
definition for “Garden of Eden,” the definition of “Eden” is
similar to the Examining Attorney’s definition, i.e. “in the
Bible, the first home of Adam and Eve.”
Ser. No. 75/219,108
8
The other defines “eden” as “the garden where Adam and
Eve resided before the Fall (Gen. 2:8).” Webster’s Third
New International Dictionary (1986). We, of course, can
take judicial notice of dictionary definitions, which we do
in this case. University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).4 The
LEXIS/NEXIS printouts also indicate that the term “Garden
of Eden” is often shortened to “Eden.” Therefore, we
conclude that the marks create the same commercial
impression. When the commercial impressions created by the
terms are so similar and the services are also identical,
confusion is likely.
The Board in McWilliams (200 USPQ at 49) went on to
say:
[W]e believe that it is the word ‘EDEN’ in applicant’s
mark which creates the commercial impression and will
have the greatest impact upon the minds of prospective
purchasers as to the source of origin of the product
identified by applicant’s mark. Taking into account
the fallibility of the human memory over a period of
time and the other factors set forth above, we do not
think that the differences between the respective
marks including the differences in connotation between
the terms “EDEN” and “MT. EDEN” are sufficient to
4 The Examining Attorney also attached a page from the New King
James Version of the Bible, and she requests that we take
judicial notice of the passage from the Book of Genesis (Chapter
2, Verse 8) referred to in her attached dictionary definitions.
Since it is clear from the Examining Attorney’s and applicant’s
definitions that Eden is a Biblical term, we do not need to take
judicial notice of the actual quotation.
Ser. No. 75/219,108
9
negate the likelihood of confusion arising from the
contemporaneous use of such similar marks upon
identical goods.
Applicant cites In re Merchandising Motivation, Inc.,
184 USPQ 364 (TTAB 1974) to argue that there is no
automatic rule that the addition of matter to a registered
mark always result in a likelihood of confusion. While we
agree that there is no absolute rule that one taking the
entire registered mark and adding wording to it
automatically creates confusion, there is a likelihood of
confusion when the applicant’s mark creates the same
commercial impression. Wella Corp. v. California Concept
Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (CCPA
1977)(CALIFORNIA CONCEPT and design held likely to be
confused with CONCEPT for hair care products). In this
case, when the marks are considered in their entireties,
the addition of the words “Garden of” does not create a
mark that has a different commercial impression from the
registered mark.
Finally, applicant cites the du Pont factors and
argues generally that there is no likelihood of confusion.
He specifically refers to two factors: the similarity or
dissimilarity of the marks and the fact that “there is no
record showing that the cited registration for ‘EDEN’ is a
strong and famous prior service mark.” Applicant’s Appeal
Ser. No. 75/219,108
10
Brief, p. 12. We agree that there is no evidence
concerning the fame or the strength or weakness of the
registered mark. However, when the services are identical
and the marks create the same commercial impression, it is
not necessary that we find that the registered mark is a
strong and famous mark for there to be a likelihood of
confusion. We have previously discussed the similarity of
the marks and we simply disagree with applicant when he
argues that the marks are dissimilar.5
Decision: The refusal to register the mark under
Section 2(d) is affirmed.
5 In addition to our previous discussion, we have taken into
consideration the other du Pont factors in our likelihood of
confusion analysis. Regarding the remaining factors, either
there is no evidence, the factors are irrelevant because
applicant has not alleged that it has used the mark, or the
factors do not convince us that confusion is unlikely.