88774593 (T.T.A.B. Mar. 11, 2021)

Dywon D Kelsey

Trademark Trial and Appeal BoardMar 11, 2021

88774593 (T.T.A.B. Mar. 11, 2021)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: March 11, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Dywon D. Kelsey _____ Serial No. 88774593 _____ Dywon D. Kelsey, pro se. Judy Helfman, Trademark Examining Attorney, Law Office 111, Chris Doninger, Managing Attorney. _____ Before Bergsman, Greenbaum, and Coggins, Administrative Trademark Judges. Opinion by Coggins, Administrative Trademark Judge: Dywon D. Kelsey (“Applicant”) seeks registration on the Principal Register of the composite KEL’S mark shown below for “restaurant” services in International Class 43.1 1 Application Serial No. 88774593 was filed on January 27, 2020, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere at least as early as February 15, 2011, and use in commerce since at least as early as December 1, 2012. Serial No. 88774593 - 2 - The application contains the following statements: The mark consists of two stylized fish in the nature of an Ichthys above five buttered loaves of bread with all the loaves appearing to be connected. The left fish is gold and the right is silver. The five loaves are brown with gold butter on top and beneath the loaves is the stylized silver wording “KEL’S”. All the foregoing appearing on a black background. The colors black, brown, gold and silver are claimed as a feature of the mark. The Trademark Examining Attorney refused registration (1) under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied to the restaurant services identified in the application, so resembles the registered mark KELLS, in typeset form, for “restaurant and bar services,” in International Class 42,2 on the Principal Register as to be likely to cause confusion, to cause mistake, or to deceive; and (2) under Trademark Act Sections 1(a) and 45, 15 U.S.C. §§ 1051(a) & 1127, on the basis that Applicant’s original specimen and substitute specimen each fails to show the mark used in connection with the identified “restaurant” services. 2 Registration No. 1835812, issued May 10, 1994; Section 9 renewal granted; Section 15 affidavit acknowledged. Serial No. 88774593 - 3 - When the refusals were made final, Applicant requested reconsideration. After the Examining Attorney denied the request for reconsideration, Applicant appealed to this Board. We affirm the refusals to register. I. Refusal under Section 2(d): Likelihood of Confusion We begin with the refusal based on likelihood of confusion A. Applicable Law Our determination of the issue of likelihood of confusion is based on an analysis of all the probative 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) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). When analyzing these factors, the overriding concern is not only to prevent buyer confusion as to the source of the services, but also to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. In re Country Oven, 2019 USPQ2d 443903, *2-3 (TTAB 2019) (citing In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993)). In any likelihood of confusion analysis, varying weights may be assigned to each DuPont factor depending on the evidence presented, see Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011), and Shell Oil, 26 USPQ2d at 1688, but two key considerations are the similarities between the Serial No. 88774593 - 4 - marks and the similarities between the services. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017); In re Ox Paperboard, LLC, 2020 USPQ2d 10878, *3 (TTAB 2020). 1. The Services, Channels of Trade, and Classes of Customers The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration,” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir 2018) (quoting DuPont, 177 USPQ at 567), while the third DuPont factor considers “the similarity or dissimilarity of established, likely-to-continue trade channels.”’ Id. at 1052 (quoting DuPont, 177 USPQ at 567). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014). We begin with these DuPont factors. The services recited in the application are “restaurant” services. The services in the cited registration are “restaurant and bar services.” The restaurant services are identical; therefore, Applicant’s services are in-part identical to Registrant’s services. As the Examining Attorney observes,3 because Applicant does not argue that the services are different, it appears that Applicant concedes this factor. In addition, because the services are in-part identical, there is no need for the Examining Attorney or the Board to further consider the relatedness of Applicant’s restaurant services with Registrant’s bar services. See SquirtCo v. Tomy Corp., 697 F.2d 1038, 3 Examiner’s Statement, (unnumbered) p. 8 (7 TTABVUE 9). Citations to the briefs refer to the Board’s TTABVUE docket system. Citations to the prosecution file refer to the downloadable .pdf version of the TSDR record. In re Consumer Protection Firm PLLC, 2021 USPQ2d 238, *3 n.3 (TTAB 2021). Serial No. 88774593 - 5 - 216 USPQ 937, 938-39 (Fed. Cir. 1983) (holding that a single good from among several may sustain a finding of likelihood of confusion); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of services in the application). Because Applicant’s and Registrant’s recitations of services are unrestricted, and because they are in-part identical, we presume that both Applicant’s and Registrant’s restaurant services move in the identical, usual channels of trade for such services and are available to all the same potential classes of ordinary consumers. See In re Info. Builders Inc., 2020 USPQ2d 10444, *3 (TTAB 2020) (“Because . . . Applicant’s and Registrant’s goods and services are legally identical in part, we must presume that these goods and services travel through the same channels of trade and are offered or rendered to the same or overlapping classes of purchasers.”) (citing In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); and In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968)). See also DeVivo v. Ortiz, 2020 USPQ2d 10153, *13 (TTAB 2020) (citing, inter alia, Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011) (when legally identical services, “the marketing channels of trade and targeted classes of consumers and donors are the same”). Here, “[b]ecause the services at issue are ‘restaurant . . . services,’ the average Serial No. 88774593 - 6 - customer is an ordinary consumer.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1747 (TTAB 2018), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019). Thus, we are not persuaded by Applicant’s arguments that the trade channels and customers are different because Applicant’s restaurant is located in New Jersey while Registrant operates a restaurant in Oregon, almost 3000 miles away and in a different time zone, nor the argument that “Registrant does not operate [or] use [its] mark anywhere else” so it is unlikely that any customer of one restaurant would visit the other restaurant.4 The services in the cited registration are not limited to a single restaurant, and we will not read such a limitation into the registration. See Stone Lion Capital Partners v. Lion Capital, 110 USPQ2d at 1161-62; SquirtCo v. Tomy Corp., 216 USPQ at 940, quoted in In re Mr. Recipe, 118 USPQ2d 1084, 1091 (TTAB 2016). Even if Registrant’s services were limited to a single location, the registration Applicant seeks is nationwide in scope, and the presumptive right of Registrant to use the mark even in a single part of the country is sufficient to defeat Applicant’s geographically unrestricted application. In re U.S. Shoe Corp., 8 USPQ2d 1938, 1942 (TTAB 1988) (“[T]hat registrant does not sell its clothing wholesale or outside of its Colorado stores” is “immaterial” because “Applicant here is not seeking a geographically restricted registration.”); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 n.4 (TTAB 1987) (geographic argument has no merit in ex parte appeal involving the right to a geographically unrestricted registration; geographic 4 Appeal Brief, p. 3 (5 TTABVUE 5). See also Reply Brief, (unnumbered) p. 1 (8 TTABVUE 2). Serial No. 88774593 - 7 - limitations only considered in concurrent use proceeding). In the absence of specific geographic or other limitations as to channels of trade and classes of purchasers in Applicant’s application and the cited registration, we must presume that the services travel through all usual channels of trade and are offered to all normal potential purchasers. Bd. of Regents, Univ. of Tex. Sys. v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1193 (TTAB 2014). We find that the in-part identity of the services, and their presumed overlapping channels of trade and overlapping consumers, weigh heavily in favor of likelihood of confusion. 2. Similarity or Dissimilarity of the Marks Under the first DuPont factor, we consider “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” Inn at St. John’s, 126 USPQ2d at 1746 (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). When comparing Applicant’s KEL’S composite word-and-design mark to Registrant’s KELLS typeset mark, the proper test regarding similarity “is not a side- by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Serial No. 88774593 - 8 - Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal quotation marks and citation omitted)). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of trademark marks. St. Julian Wine Co. Inc., 2020 USPQ2d 10595, *4 (TTAB 2020). Consumers may not necessarily encounter the marks in close proximity and must rely upon their recollections thereof over time. In re Mucky Duck Mustard, 6 USPQ2d 1467, 1468 (TTAB 1988). As noted earlier, because the services are “restaurant” services, the average customer is an ordinary consumer. See Inn at St. John’s, 126 USPQ2d at 1747. “[S]imilarity is not a binary factor but is a matter of degree.” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003)). Because the involved restaurant services are identical, “the degree of similarity between the marks necessary to support a determination that confusion is likely declines.” In re i.am.symbolic, llc, 127 USPQ2d 1627, 1630 (TTAB 2018) (citing Bridgestone Ams. Tire Operations, LLC v. Fed. Corp., 673 F.3d. 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); and Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992)). The marks must be considered in their entireties, St. Julian Wine Co., 2020 USPQ2d 10595 at *4-5, but “in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, Serial No. 88774593 - 9 - 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.” Detroit Athletic Co., 128 USPQ2d at 1050 (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)). In the case of a composite word-and-design mark such Applicant’s KEL’S mark in this appeal, “the words are normally accorded greater weight because they are likely to make a greater impression upon purchasers, to be remembered by them, and to be used by them to request the [services].” In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing Viterra, 101 USPQ2d at 1908). “The verbal portion of a word and design mark ‘likely will appear alone when used in text and will be spoken when requested by consumers.”’ Id. (quoting Viterra, 101 USPQ2d at 1911). This “principle is especially important in cases involving restaurant services in view of the propensity of persons to try restaurants based on word-of-mouth recommendations.” Appetito Provisions Co., 3 USPQ2d at 1554. “[R]estaurants are often recommended by word of mouth and referred to orally, [so] it is the word portion of applicant’s mark which is more likely to be impressed on the consumer’s memory.” In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (quoting Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983)). The only literal portion of Applicant’s mark is KEL’S, the element most likely to indicate the origin of the services with which it is used, Viterra, 101 USPQ2d at 1908, because it will be recalled and used when referring to the identified restaurant services. The sound of the KEL’S portion of Applicant’s mark is identical to the sound Serial No. 88774593 - 10 - of Registrant’s KELLS mark, and would be pronounced and heard identically when the marks are verbalized. As to appearance and stylization, Registrant’s typeset KELLS mark is the legal equivalent to a standard character mark,5 and marks appearing in standard character form may be displayed in any font style, color, and size, including the identical stylization and color scheme of Applicant’s mark, because the rights reside in the wording and not in any particular display or rendition. See SquirtCo v. Tomy Corp., 216 USPQ at 939 (“[T]he argument concerning a difference in type style is not viable where one party asserts rights in no particular display. By presenting its mark merely in a typed drawing, a difference cannot legally be asserted by that party.”). Thus, we must consider Registrant’s KELLS mark “regardless of font style, size, or color,” Citigroup Inc. v. Capital City Bank Grp. Inc., 98 USPQ2d at 1259, including iterations displaying the mark in the same or similar font, size, and color as the term KEL’S appears in Applicant’s composite mark. Aquitaine Wine USA, 126 USPQ2d at 1186-87. Applicant does not explain the meaning of the KEL’S element of his mark. It is possible KEL’S is the possessive nickname of Applicant (i.e., Mr. Kelsey). The Examining Attorney introduced evidence that the cited registered mark KELLS may be “a surname, also used as a nickname and given name.”6 To the extent KEL’S and 5 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. A typed or typeset mark is the legal equivalent of a standard character mark. See Viterra, Inc., 101 USPQ2d at 1909 n.2. 6 July 23, 2020 Reconsideration Denial Letter TSDR 6 (en.wikipedia.org). Serial No. 88774593 - 11 - KELLS may both refer to names, the marks would convey a similar connotation. Because the apostrophe in the literal element of Applicant’s mark is not distinctive and adds no source-indicating significance to the mark as a whole, the inclusion of an apostrophe in Applicant’s mark does not generally affect or otherwise diminish the overall similarity between Registrant’s KELLS mark and the KEL’S element of Applicant’s mark. Businesses frequently use a possessive form of their names or marks without an apostrophe. In re Luis Caballero, S.A., 223 USPQ 355, 357 (TTAB 1984); In re Directional Mktg. Corp., 204 USPQ 675, 677 (TTAB 1979) (“we cannot shut our eyes to the facts that stores frequently use a possessive letter ‘S’ on the end of their names or marks without an apostrophe”). As a result, the marks are similar in meaning or connotation. We recognize the differences between the marks, namely, the black background containing stylized fish and bread that are not present in the cited KELLS mark. Nonetheless, viewing the marks as a whole, the points of distinction do not significantly diminish the similarities in sound, connotation, and overall commercial impression engendered by these two marks for identical services. We find that Applicant’s composite mark is more similar than dissimilar to Registrant’s KELLS mark in terms of appearance, sound, connotation, and commercial impression. As a result we find ordinary consumers may reasonably assume, due to presence of the phonetically equivalent term KEL’S in Applicant’s mark, Applicant’s restaurant services offered under its mark emanate from the same source as the identical services in the cited registration. As a result, consumers encountering KELLS and Serial No. 88774593 - 12 - could mistakenly believe that the latter is a variation on the registered mark used to identify another restaurant, but nonetheless emanating from a common source. For these reasons, we find that the marks are similar. The first DuPont factor thus also weighs in favor of finding a likelihood of confusion. 3. Actual Confusion The seventh DuPont factor considers the “nature and extent of any actual confusion,” and the eighth DuPont factor contemplates the “length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” DuPont, 177 USPQ at 567. Invoking these factors, Applicant argues that “[t]here is no evidence of record indicating that there has been actual confusion in the marketplace as between Applicant’s [restaurant services] and the Registrant’s [restaurant services]. Both the Applicant’s and Registrant’s marks have co-exist[ed] for a decade without any issues . . . .”7 We do not accord significant weight to Applicant’s contention, particularly given that there is no evidence of use of Applicant’s mark for the period claimed. See Trademark Rule 2.122(b)(2), 35 C.F.R. § 2.122(b)(2) (“The allegation in an application for registration, or in a registration, of a date of use is not evidence on behalf of the applicant or registrant; a date of use of a mark must be established by competent evidence.”); see also Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1606 (TTAB 7 5 TTABVUE 5. Serial No. 88774593 - 13 - 2018) (cancelled registration not evidence of use of the registered mark at any time). Applicant’s mere argument cannot take the place of evidence lacking in the record. See, e.g., In re OEP Enters., Inc., 2019 USPQ2d 309323, *14 (TTAB 2019) (quoting Cai v. Diamond Hong, Inc., 127 USPQ2d at 1799 (internal quotation omitted)). Similarly, the record is devoid of evidence relating to the extent of use (including geographical extent)8 of Applicant’s and Registrant’s marks that would enable us to determine whether there have been meaningful opportunities for instances of actual confusion to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the absence of actual confusion depends upon there being a significant opportunity for actual confusion to have occurred). See also In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009) (suggestion that there has been no actual confusion between the marks, based on the coexistence of applicant’s previously issued registration and the cited registration, entitled to little probative value in the context of an ex parte appeal); but cf. In re Strategic Partners, Inc., 102 USPQ2d 1397, 1400 (TTAB 2012) (“[U]nique situation” of coexistence of an applicant’s existing registration with a cited 8 Although Applicant claims the restaurants are almost 3000 miles apart, 8 TTABVUE 2, there is no evidence in the record to support the assertion. However, if we considered geographic disparity as true, Applicant would have effectively admitted that there has been no use of the respective marks “for a significant period of time in the same markets,” Gillette Can. Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992), which makes the absence of instances of actual confusion essentially meaningless. See id. (finding that there was “simply no evidence that the parties’ goods have been sold together in the same locality for a significant period of time so that, if confusion were likely to occur, circumstances have been such that it could be expected to have happened.”). Serial No. 88774593 - 14 - registration for over five years, when the applicant’s applied-for mark is substantially similar to its existing registered mark, both for identical goods, was probative and relevant under thirteenth DuPont factor. We analyze this factor below). In any event, we note that “the relevant test is likelihood of confusion, not actual confusion.” Detroit Athletic Co., 128 USPQ2d at 1053. The absence of actual confusion is entitled to little weight, especially in an ex parte context where “uncorroborated statements of no known instances of actual confusion are of little evidentiary value.” Guild Mortg. Co., 129 USPQ2d at 1163 (quoting Majestic Distilling, 65 USPQ2d at 1205). See also In re Opus One, Inc., 60 USPQ2d 1812, 1817 (TTAB 2001) (“The fact that an applicant in an ex parte case is unaware of any instances of actual confusion is generally entitled to little probative weight in the likelihood of confusion analysis, inasmuch as the Board in such cases generally has no way to know whether the registrant likewise is unaware of any instances of actual confusion, nor is it usually possible to determine that there has been any significant opportunity for actual confusion to have occurred.”). Thus, we cannot conclude from the alleged lack of instances of actual confusion nor lack of probative evidence of record that confusion is not likely to occur. Accordingly, these DuPont factors are neutral. 4. Applicant’s Prior Registration We consider Applicant’s prior registration under the thirteenth DuPont factor which relates “to ‘any other established fact probative of the effect of use.’” Strategic Partners, 102 USPQ2d at 1399 (quoting DuPont, 177 USPQ at 567). Applicant argues Serial No. 88774593 - 15 - that he owned a prior registration for the same mark and services, which “was cancelled by mere oversight.”9 The Board’s decision in Strategic Partners is instructive. In that case, the applicant owned a registered mark that had coexisted with the cited mark for over five years. Because that applicant’s prior registration was over five years old, the Board noted that any challenge thereto by the owner of the cited registration based on a claim of likelihood of confusion would be time-barred under Section 14 of the Act. 102 USPQ2d at 1399. In finding no likelihood of confusion in Strategic Partners, the Board provided the following explanation: [T]he present case involves the unique situation presented by the coexistence of applicant’s existing registration with the cited registration for over five years, when applicant’s applied-for mark is substantially similar to its existing registered mark, both for identical goods. When we consider these facts under the thirteenth du Pont factor, we find in this case that this factor outweighs the others and leads us to conclude that confusion is unlikely. Id. at 1400. While we acknowledge that refusing to register the mark now before us may at first blush be considered inconsistent with the issuance of Applicant’s prior registration, we must consider that the prior registration has been cancelled and thus is not entitled to any of the presumptions of Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b). See Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ 9 5 TTABVUE 5; 8 TTABVUE 2. Registration No. 4199115; issued August 28, 2012, from an application filed October 11, 2011; cancelled January 28, 2020. See January 27, 2020 Application TSDR 2; March 18, 2020 Response to Office Action TSDR 7. Serial No. 88774593 - 16 - 46, 47 (CCPA 1973) (“Whatever benefits a registration conferred upon appellee were lost by him when he negligently allowed his registration to become canceled.”); In re Hunter Publ’g Co., 204 USPQ 957, 963 (TTAB 1979) (cancellation “destroys the Section [7(b)] presumptions and makes the question of registrability ‘a new ball game’ which must be predicated on current thought.”). Unlike the situation in Strategic Partners, Applicant’s earlier registration is not an “existing registered mark.” 102 USPQ2d at 1400 (emphasis added). The special circumstances and “unique situation” of Strategic Partners are not present here. Id. While we are sympathetic to Applicant’s position on this point, we do not consider, on this record, the issuance of Applicant’s earlier, now-cancelled registration to outweigh the other DuPont factors. Moreover, it would be improper to give preclusive effect to the decision of the Examining Attorney in granting Applicant’s earlier registration, and the Board is not bound by the prior decisions of examining attorneys in allowing marks for registration. In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (“The [US]PTO is required to examine all trademark applications for compliance with each and every eligibility requirement . . . even if the PTO earlier mistakenly registered a similar or identical mark suffering the same defect.”); see also In re Boulevard Entm’t Inc., 334 F.3d 1336, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003) (“The fact that, whether because of administrative error or otherwise, some marks have been registered even though they may be in violation of the governing statutory standard does not mean that the agency must forgo applying that standard in all other cases.”); In re USA Warriors Ice Hockey Program, Serial No. 88774593 - 17 - Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Indeed, as is often noted by the Board and the courts, each case must be decided on its own merits. The determination of registrability of a mark in another case does not control the merits in the case now before us. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“[D]ecisions regarding other registrations do not bind either the agency or this court.”); see also, In re Kent-Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001); In re Wilson, 57 USPQ2d 1863 (TTAB 2001). The issuance of an earlier registration to Applicant, even for an identical mark, does not compel the approval of another if, as in this case, it would otherwise be improper to do so.10 See, e.g., In re Perez, 21 USPQ2d 1075, 1077 (TTAB 1991) (Section 2(d) refusal affirmed even though the cited registration had not been cited against applicant’s previous registration, now expired, of the same mark for the same goods). For these reasons, Applicant’s prior registration is not probative on the issue of likelihood of confusion in this appeal under the thirteenth DuPont factor, and the Examining Attorney’s refusal is justified on the record in this case. 5. Balancing the Factors We have carefully considered all of the evidence made of record, as well as all of the arguments related thereto. The similarities of the marks coupled with the in-part identical nature of the services and presumed identical trade channels leads us to the 10 Applicant is in no different a position vis-à-vis the cited registration than it was when Applicant filed its earlier application which led to now-cancelled Registration No. 4199115. Specifically, at the time Applicant filed its earlier application (i.e., October 11, 2010) the cited registration was already more than five years-old, having issued on May 10, 1994; in view thereof, Applicant was unable then, as it is now, to petition to cancel the cited registration under Section 2(d). Serial No. 88774593 - 18 - conclusion that the presumed same consumers are likely to confuse the source of the involved restaurant services. Accordingly, we affirm the Examining Attorney’s refusal under Section 2(d) of the Trademark Act. II. Refusal under Sections 1(a) and 45: The Specimen We now turn to the specimen-based refusal. A. Applicable Law “The Trademark Act ‘provides for registration of a mark based on use of the mark in commerce.’” In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, *12 (TTAB 2019) (quoting In re Siny Corp., 920 F.3d 1331, 2019 USPQ2d 127099, *2 (Fed. Cir. 2019)). Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a service mark is used in commerce “when it is used or displayed in the sale or advertising of services.” “A service mark specimen must show the mark as used in the sale of the services, including use in the performance or rendering of the services, or in the advertising of the services. The specimen must show a direct association between the mark and the services.” Trademark Rule 2.56(b)(2), 37 C.F.R. § 2.56(b)(2). See also In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973) (acceptable specimen must show “some direct association between the offer of services and the mark sought to be registered therefor.”). “For specimens showing the mark in advertising the services, ‘[i]n order to create the required ‘direct association,’ the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source.’” In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Osmotica Holdings Corp., 95 USPQ2d 1666, Serial No. 88774593 - 19 - 1668 (TTAB 2010)). A specimen that shows “only the mark with no reference to, or association with, the services does not show service mark usage.” In re Pitney Bowes, Inc., 125 USPQ2d 1417, 1419 (TTAB 2018). B. The Arguments The Examining Attorney argues that “neither [Applicant’s original nor substitute specimen] is more than an artist’s rendering [of the mark], with the [substitute] specimen being” merely “a clearer version of the [low-quality, pixilated] artist’s rendering [which was] submitted as” the original specimen, 7 TTABVUE 6, and neither specimen “reference[s] the services” or “show[s] the mark used to identify the services and their source.” 7 TTABVUE 7. In defense of his specimens, Applicant argues that the application underlying his prior registration contained “the same specimens . . . . One [being] just a rendering . . . and one [showing] how the [mark] appears on posters, flyers, business cards and tickets.” 8 TTABVUE 2. C. Analysis The specimens of use submitted with the involved application are merely images of the mark; they appear to be identical to the drawings of the mark submitted with the application.11 They do not demonstrate how the mark is used in the performance or rendering of the services, or in the advertising of the services, nor do they show a direct association between the mark and any restaurant service.12 As noted above, a 11 See January 27 and March 18, 2020 Drawings; January 27 and March 18, 2020 Specimens. 12 In the original application, Applicant did not identify the nature of the specimen (e.g., advertisement, menu, sign, etc.). Likewise, in the March 18, 2020 Response to Office Action (TSDR 2), Applicant did not identify the nature of the specimen; instead, he merely described Serial No. 88774593 - 20 - specimen that shows “only the mark with no reference to, or association with, the services does not show service mark usage.” Pitney Bowes, Inc., 125 USPQ2d at 1419. Accord WAY Media, Inc., 118 USPQ2d at 1698. Except for the registration certificate,13 no part of the application underlying Applicant’s prior registration is in evidence. We have no idea what specimens Applicant submitted therein to show use of the mark in commerce. Moreover, even if the specimens in the prior registration file were considered in this appeal, neither the Board nor an examining attorney is bound by decisions of other examining attorneys to register prior marks. “To the contrary, ‘the [US]PTO must decide each application on its own merits, and decisions regarding other registrations do not bind either the [USPTO] or [the reviewing] court.’ The issuance of Applicant’s first registration does not require the approval of a second registration if, on the facts of the case, it would be improper to do so under the governing legal standard.” USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting Boulevard Entm’t, 67 USPQ2d at 1480). As noted in the likelihood of confusion analysis, above, the “[US]PTO is required to examine all trademark applications for compliance with each and every eligibility requirement . . . even if the [US]PTO earlier mistakenly registered a similar or identical mark suffering the same defect.” Cordua Rests., Inc., 118 USPQ2d at 1635. the mark. See In re The Cardio Grp., LLC, 2019 USPQ2d 227232, *2 (TTAB 2019) (Board will consider an applicant’s explanation of the nature, content, or context of the specimen). 13 March 18, 2020 Response to Office Action TSDR 7. Serial No. 88774593 - 21 - In sum, Applicant failed to meet the requirement of Section 1(a) of the Act that Applicant submit a specimen of use. Accordingly, we affirm the Examining Attorney’s refusal under Sections 1 and 45 of the Trademark Act. III. Decision The refusals to register Applicant’s mark under Trademark Act Section 2(d), and Trademark Act Sections 1(a) and 45, are affirmed.