D&B Mitchell Group, LLC

Trademark Trial and Appeal Board

Sep 24, 2007

No. 78652937 (T.T.A.B. Sep. 24, 2007)

Mailed: September 24, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re D&B Mitchell Group, LLC
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Serial No. 78652937
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David L. Kane, Esq. for D&B Mitchell Group, LLC Don
Mitchell.

Mariam Aziz Mahmoudi, Trademark Examining Attorney, Law
Office 112 (Angela Wilson, Managing Attorney).
____________

Before Walters, Walsh and Taylor, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

D&B Mitchell Group, LLC has filed an application to
register the mark shown below on the Principal Register for
“restaurants,” in International Class 43.1

The application includes a disclaimer of EXPRESS apart from
the mark as a whole; a statement that the transliteration of
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 78652937

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the Chinese characters is LAN ZHU, which means BLUE BAMBOO
in English; a claim of the colors blue and white as features
of the mark; and a description of the mark as consisting of
“the color blue appearing in the wording BLUE BAMBOO XPRESS
and the rectangle containing the Chinese characters, which
appear in the color white.”
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the mark BLU BAMBU, in typed form, previously registered for
“catering and restaurant services,”2 that, if used on or in
connection with applicant’s services, it would be likely to
cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
We begin by noting that applicant submitted evidence
with its appeal brief and the examining attorney has
objected to that evidence. The evidentiary record must be
complete prior to appeal and therefore we have not
considered the untimely evidence submitted by applicant with
its appeal brief. See 37 CFR § 2.142(d). See also In re
Trans Continental Records Inc, 62 USPQ2d 1541 (TTAB 2002);

1 Serial No. 78652937, filed June 17, 2005, based on use of the mark in
commerce, alleging first use and use in commerce as of March 1, 2005.

Serial No. 78652937

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and In re Lamb-Weston Inc., 54 USPQ2d 1190, 1191 n.2 (TTAB
2000).
Our determination under Section 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 Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
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 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 the cases cited therein.
We consider, first, the respective services and find
that applicant’s restaurant services are identical to the
restaurant services listed along with catering services in
the cited registration.

2 Registration No. 2958387 issued May 31, 2005, to Blu Bambu, LLC.
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Applicant argues that the services are different
because it operates a fast food restaurant in a food court
at DFW airport; whereas, registrant operates an upscale
restaurant in an entirely different geographic location.
However, it is well established that the question of
likelihood of confusion must be determined based on an
analysis of the goods or services recited in applicant’s
application vis-à-vis the goods or services recited in the
registration, rather than what the evidence shows the goods
or services actually are. Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir.
1987). See also, Octocom Systems, Inc. v. Houston Computer
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1992); and The Chicago Corp. v. North American Chicago
Corp., 20 USPQ2d 1715 (TTAB 1991). Both applicant’s and
registrant’s identical services are identified broadly as
“restaurant services.” Even if we had considered
applicant’s late-filed evidence, this argument would be
unavailing as both recitations of services must be
understood to encompass all restaurants from fast food
stands to high-end restaurants.
Because neither applicant’s nor registrant’s recitation
of services contains limitations, we assume that both
applicant’s and registrant’s restaurant services are

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available through all of the normal channels of trade and to
all the usual purchasers of such services. Therefore, we
find that the channels of trade and classes of purchasers of
the applicant’s and registrant’s services are the same. The
factors of the services, channels of trade and classes of
purchasers weigh against applicant.
We turn, next, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. 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 or
services 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). Furthermore,
although the marks at issue must be considered in their
entireties, it is well settled that 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
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National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Applicant’s mark consists of a blue rectangle with
Chinese characters in white within the rectangle, followed
on the same line by the words BLUE BAMBOO XPRESS in the same
color blue and approximately the same size as the rectangle.
The standard font used for the English words BLUE BAMBOO
XPRESS and the simple rectangle preceding the wording are
certainly less significant that the wording in the mark.
The word XPRESS is the phonetic equivalent of the word
EXPRESS, which is defined in this record as a noun meaning
“fast delivery service,”3 and is clearly merely descriptive
and, thus, is of less significance in the overall commercial
impression of the mark than the words BLUE BAMBOO.
Similarly, the blue color in the mark is less significant
than the wording because purchasers are more likely to
remember the wording used to call for the services. The
Chinese characters meaning BLUE BAMBOO reinforce the
significance of the English words BLUE BAMBOO in the mark.
We find that purchasers viewing applicant’s mark will find
the words BLUE BAMBOO to be the dominant portion of the
mark.

3 Encarta World English Dictionary, 2005. This definition was excerpted
by the examining attorney from the website www.encarta.msn.com and
entered into the record with the January 20, 2006 office action.

Serial No. 78652937

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The registered mark is in typed, or standard character,
form, which means that the registration covers the use of
the mark in any number of colors, including blue, and in any
font, including the one used by applicant. In comparing the
marks, we must conclude that BLUE BAMBOO and BLU BAMBU are
phonetic equivalents, have the same connotation, and differ
by only a few letters. Viewing the marks in their
entireties, we conclude that the marks are substantially
similar in appearance, sound, connotation and commercial
impression. Therefore, this factor also weighs against
applicant.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
design mark dominated by the words BLUE BAMBOO and
registrant’s mark, BLU BAMBU, their contemporaneous use on
the same services involved in this case is likely to cause
confusion as to the source or sponsorship of such services.
We note, in particular, that the examining attorney
submitted copies of sixteen third-party registrations owned
by eight entities. Each entity owns a registration for
particular mark for restaurant services as well as a second
registration for the same mark followed by the word EXPRESS
for restaurant services. Therefore, it would not be unusual
for consumers familiar with registrant’s mark to mistakenly
believe that applicant’s identical services identified by a
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substantially similar mark are related to the services of
registrant. Finally, the alleged geographic separation of
applicant’s and registrant’s services is immaterial because
federal registration provides rights nationwide.
Decision: The refusal under Section 2(d) of the Act is
affirmed.