Eureka Restaurant Group, LLC

Trademark Trial and Appeal Board

Aug 26, 2016

No. 86258059 (T.T.A.B. Aug. 26, 2016)

This Opinion is Not a
Precedent of the TTAB

Hearing: July 28, 2016 Mailed: August 26, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Eureka Restaurant Group, LLC
_____

Serial No. 86258059
_____

Jennifer Lee Taylor and Benjamin J. Fox of Morrison & Foerster LLP,
for Eureka Restaurant Group, LLC
Tamara Frazier, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
_____

Before Shaw, Kuczma and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Eureka Restaurant Group, LLC (“Applicant”) seeks registration on the Principal
Register of the mark for
Restaurant services in International Class 43.1

1 Application Serial No. 86258059 was filed on April 21, 2014, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as October 2012. The
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on the ground that Applicant’s
mark, when used in connection with Applicant’s services, is likely to cause confusion
with the mark EUREKA PIZZA (in standard characters, PIZZA disclaimed) for “Food
preparation services featuring pizza, bread sticks, and sauces except hot sauces;
restaurant services featuring delivery, carry-out, and catering” in International Class
43,2 and (EUREKA PIZZA in stylized form, PIZZA disclaimed) for
“restaurant services, namely, restaurants featuring home delivery, carryout, and
catering services” in International Class 42.3 The registrations are owned by the same
registrant.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed and fully briefed. We affirm the refusal to
register.

application includes the following description of the mark: “The mark consists of the word
‘EUREKA’ in large bolded white font with an orange exclamation point at the end. Below the
word ‘EUREKA’ are the words ‘DISCOVER AMERICAN CRAFT’ in smaller non-bolded white
font. The color black in the mark is intended to represent background and is not part of the
mark.” “AMERICAN CRAFT” is disclaimed, and the colors orange and black are claimed as
a feature of the mark.
2 Registration No. 4022242 issued on September 6, 2011
3 Registration No. 2293867 issued on November 23, 1999. Renewed.
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I. Proposed Amendment to Identification of Services
We first address Applicant’s proposed amendment to the identification of services,
raised in Applicant’s Request for Reconsideration. By that amendment, Applicant
seeks to change the identification of services from “restaurant services” to “restaurant
and bar services including sit-down service of food and beverages.” Amendments to
the identification of services may be approved if, among other things, the resulting
amendment serves to clarify or limit the services as published. Additions to the
identification of services will not be permitted. See Trademark Rule 2.71(b), 37 C.F.R.
§ 2.71(b). The proposed amendment is not acceptable because the wording “bar
services” impermissibly broadens the scope of the “restaurant services” originally
identified in the application. In view thereof, we deny Applicant’s request to amend
the identification of services.4

II. Likelihood of Confusion - Applicable Law
Our determination of the issue of likelihood of confusion is based on an analysis
of all of 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). See
also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012); and In re

4 In any event, contrary to Applicant’s argument, the proposed amendment would not
distinguish Applicant’s services from Registrant’s services because the word “including” (as
compared to the word “featuring”) in the proposed amendment does not limit Applicant’s
restaurant services to restaurant services only offering sit-down service of food and
beverages. In making this observation, we do not mean to imply that if Applicant had used
the word “featuring” instead of the word “including,” and if Applicant had not added the
wording “bar services,” that we would have reached a different result on this issue of
likelihood of confusion.
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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 services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods [and services] and differences in the marks.”).
We focus on the cited registration for the mark EUREKA PIZZA (in standard
characters) for, inter alia, “restaurant services featuring delivery, carry-out, and
catering” because we deem the mark and the services to be the most similar to
Applicant’s mark for Applicant’s identified services. If confusion
is likely between Applicant’s mark and this registration, that will be sufficient to
affirm the refusal. However, if we do not find a likelihood of confusion with that mark
and its associated services, then there would be no likelihood of confusion with the
stylized mark in the other cited registration. See In re Max Capital Grp Ltd., 93
USPQ2d 1243, 1245 (TTAB 2010).
A. Relatedness of the Services and Channels of Trade
With regard to the services and channels of trade, we must make our
determinations under these factors based on the services as they are identified in the
application and registration. See In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. Lion Capital LLP,
76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v.
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Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys.,
Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). In this case, the broadly worded “restaurant services” identified in the
application incorporates, and therefore is legally identical to, the “restaurant services
featuring delivery, carry-out, and catering” identified in the registration. Further,
because the services are legally identical, and as identified, are not limited to any
specific channels of trade, we must presume that the trade channels and classes of
purchasers are the same. In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (Board “was entitled to rely on this legal presumption in determining
likelihood of confusion.”). See Stone Lion, 110 USPQ2d at 1161-1162; Hewlett-
Packard, 62 USPQ2d at 1005; Octocom, 16 USPQ2d at 1787.
Applicant argues that the actual services offered by Applicant and Registrant
differ because “Applicant is primarily a sit-down restaurant that provides a varied
menu and alcoholic beverages, and is a social venue,”5 while Registrant’s services are
“limited to pizza delivery and carryout, with prices … starting at less than $5 per
large pizza,” and Registrant’s “pizza delivery services … are located exclusively in
Arkansas, and are marketed to local consumers for quick delivery via online order.”6
However, Applicant’s attempts to distinguish its classes of purchasers and channels
of trade from Registrant’s are, in light of the above presumptions, unpersuasive, i.e.,

5 7 TTABVUE 25.
6 7 TTABVUE 24-25.
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we must consider the services as they are identified in the registration and
application. See Stone Lion, 110 USPQ2d at 1161-1162.
Moreover, given that Applicant is seeking a geographically unrestricted
registration, and Registrant owns a nationwide registration which gives Registrant
presumptive exclusive rights to nationwide use in connection with restaurant
services under Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), Applicant’s
additional argument that Registrant’s services are limited to Arkansas is unavailing.
Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed.
Cir. 1983) (“Applicant seeks a geographically unrestricted registration under which
it might expand throughout the United States. Under these facts, it is not proper, as
the TTAB found, to limit our consideration to the likelihood of confusion in the areas
presently occupied by the parties. Section 7(b) of the Trademark Act of 1946, 15
U.S.C. § 1057(b), creates a presumption that the registrant has the exclusive right to
use its mark throughout the United States. Therefore, the geographical distance
between the present locations of the respective businesses of the two parties has little
relevance in this case.”).
In view of the foregoing, we find that the services and the channels of trade favor
a finding of likelihood of confusion.
B. Comparison of the Marks
We turn to the du Pont factor of the similarities and dissimilarities between
Applicant’s mark and Registrant’s mark EUREKA PIZZA. We
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analyze “the marks in their entireties as to appearance, sound, connotation and
commercial impression.” Viterra, 101 USPQ2d at 1908 (quoting du Pont, 177 USPQ
at 567). See also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “The proper test 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.”
Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012) (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82
USPQ2d 1901, 1905 (TTAB 2007)). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. In re Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975).
In comparing the marks, we are mindful that where, as here, the services
identified in the application and registration are legally identical, the degree of
similarity between the marks necessary to find likelihood of confusion need not be as
great as where there is a recognizable disparity between the services. Coach Servs.,
101 USPQ2d at 1721; Viterra, 101 USPQ2d at 1912 (citing Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992)).
Applicant argues that the differences in the marks in sound and appearance are
sufficient to distinguish them, and that the marks have different connotations
because EUREKA PIZZA “was founded near the town of Eureka Springs, Arkansas,
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which is replete with restaurants and businesses whose names include the term
‘Eureka,” while EUREKA! DISCOVER AMERICAN CRAFT “focus[es] on discovery,
highlighted by the bold orange exclamation mark in EUREKA! and the words
DISCOVER AMERICAN CRAFT.”7 Applicant also argues that the marks are unitary
phrases, which preclude their dissection. The Examining Attorney focuses on the
visual, aural, and connotative similarities between the identical words EUREKA,
which she contends is the most distinctive portion, and therefore the strongest source
identifying element, of each mark.
Initially, we do not agree with Applicant that Applicant’s mark and Registrant’s
mark are unitary expressions. In Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555,
21 USPQ2d 1047, 1052 (Fed. Cir. 1991), our primary reviewing court set forth the
elements of a unitary mark:
A unitary mark has certain observable characteristics. Specifically, its
elements are inseparable. In a unitary mark, these observable
characteristics must combine to show that the mark has a distinct
meaning of its own independent of the meaning of its constituent
elements. In other words, a unitary mark must create a single and
distinct commercial impression.

Moreover, a phrase qualifies as “unitary” only if the whole is something more than
the sum of its parts. Id. (finding EUROPEAN FORMULA and design for cosmetic
products not unitary since the “elements are not so merged together that they cannot
be regarded as separate” and the proximity of the words to the design feature “does
not endow the whole with a single, integrated, and distinct commercial impression.”).

7 7 TTABVUE 11-12.
Serial No. 86258059
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Neither Applicant’s mark nor Registrant’s mark meets the requirements of a
“unitary” mark under Dena.
When we compare the marks in their entireties, it is apparent that they are not
identical; they are similar, however, in that they both begin with the identical term
EUREKA. “Eureka” is an interjection defined as: “(1) (initial capital letter) I have
found (it): the reputed exclamation of Archimedes when, after long study, he
discovered a method of detecting the amount of alloy mixed with gold in the crown of
the king of Syracuse. (2) (used as an exclamation of triumph at a discovery.).”8 The
term has a historical origin but maintains currency today, as the following entry for
“eureka in Culture” from THE AMERICAN HERITAGE NEW DICTIONARY OF CULTURAL
LITERACY (3rd ed. 2005) demonstrates: “Eureka! [(yoo-ree-kuh)] A Greek word
meaning ‘I have found it!’ An exclamation that accompanies a discovery: ‘When she
finally located the rare book, the scholar cried, ‘Eureka!’’ (See Archimedes.).”9
EUREKA is the dominant and most significant feature of Registrant’s mark
EUREKA PIZZA not only because EUREKA appears in the initial position of the
mark (see Palm Bay, 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first

8 Dictionary.com Unabridged, based on the RANDOM HOUSE DICTIONARY (2016). The Board
may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet
Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983), including online dictionaries that exist in printed format or have regular fixed editions.
In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). We do so here. This source also
defines “Eureka” as a “noun (1) a city in NW California.”
9 We take judicial notice of this definition as well. See Red Bull, 78 USPQ2d at 1377 (TTAB
2006).
Serial No. 86258059
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word to appear on the label)), but also because it has stronger source-identifying
significance than the other element of Registrant’s mark. “Pizza” is highly
descriptive, if not generic, of Registrant’s identified “restaurant services,” and
appropriately has been disclaimed. Descriptive matter typically is less significant or
less dominant when comparing marks. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 752 (Fed. Cir. 1985) (the “descriptive component of a mark may
be given little weight in reaching a conclusion on likelihood of confusion”)). See also
In re Chatham Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)
(“Because “ALE has nominal commercial significance, the Board properly accorded
the term less weight in assessing the similarity of the marks under DuPont. As a
generic term, ALE simply delineates a class of goods.”). Thus, although we recognize
that Registrant’s mark includes the term PIZZA, we find that consumers are not
likely to view that term as a source-distinguishing element, but rather as the type of
restaurant and the food served therein. In addition, Registrant’s mark is presented
in standard character form, and “could be used in any typeface, color, or size,
including the same stylization actually used or intended to be used by the other party,
or one that minimizes the differences or emphasizes the similarities between the
marks.” Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1823
(TTAB 2015) (citing Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1258-59 (Fed. Cir. 2011)).
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Turning to Applicant’s mark, while it contains the additional wording DISCOVER
AMERICAN CRAFT, and an orange exclamation point, the term EUREKA is the
most visually prominent element of Applicant’s mark because it appears in much
larger-sized, bold lettering and on a separate line from the additional wording. The
tag line DISCOVER AMERICAN CRAFT appears in significantly smaller lettering
below the word EUREKA. In addition, in the context of the identified restaurant
services, AMERICAN CRAFT likely would be perceived to describe the specific type
of beer served at the restaurant, and the phrase DISCOVER AMERICAN CRAFT
simply reinforces the meaning of the term EUREKA as an emphatic exclamation
uttered when discovering new “American craft” beer at Applicant’s restaurant.
Likewise, the orange exclamation point following the word EUREKA underscores the
meaning of EUREKA as an interjection, and does not serve to distinguish the
marks.10 Punctuation often does not significantly change the commercial impression
of the marks. In re Burlington Indus., Inc., 196 USPQ 718, 719 (TTAB 1979) (“[A]n
exclamation point does not serve to identify the source of the goods.”). Here, the
exclamation point seems to emphasize the significance of the word “Eureka” and to
indicate that AMERICAN CRAFT is the subject of the services available under the
EUREKA trademark. Thus, just as in Registrant’s mark, the term EUREKA
dominates Applicant’s mark. See Stone Lion, 110 USPQ2d at 1161 (while marks must
be compared in their entireties, “there is nothing improper in stating that … more or

10 Moreover, the use of an exclamation point after the term EUREKA in Applicant’s mark
disrupts the flow of the mark, and belies Applicant’s contention that its mark is unitary.
Serial No. 86258059
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less weight has been given to a particular feature of the mark, provided the ultimate
conclusion rests on a consideration of the marks in their entireties.”) (quoting Nat’l
Data Corp., 224 USPQ at 751). That EUREKA appears in the initial position in
Applicant’s mark reinforces the dominance of this element. See Palm Bay, 73
USPQ2d at 1692.
We further find that the marks have similar connotations, and that they create
the same commercial impressions. We do not find persuasive Applicant’s argument
that its mark connotes discovery “(as in a ‘Eureka! Moment’),” while Registrant’s
mark connotes “the common name of a nearby town (Eureka Springs, Arkansas).”11
We find, instead, that the primary meaning of the term “Eureka” is as an interjection
concerning discovery, and consumers would understand that meaning to apply to
both Applicant’s and Registrant’s marks, i.e., discovering American craft beer and
discovering types of pizza. Thus, even if Applicant is correct that “EUREKA PIZZA
was founded near the town of Eureka Springs, Arkansas, which is replete with
restaurants and businesses whose names include the term ‘Eureka,’”12 to the extent
consumers understand the term “Eureka” to identify a geographic location (whether
Eureka, California, Eureka Springs, Arkansas, or another geographic location with

11 7 TTABVUE 8.
12 7 TTABVUE 11. As discussed below, the evidence of third-party businesses bearing the
name EUREKA that are located in Eureka Springs is minimal, comprising six entries, only
four of which appear to be restaurants. The Examining Attorney also points out that “the
registrant and owner of the EUREKA PIZZA marks is not located in Eureka Springs,
Arkansas, nor is it located on a street named ‘Eureka.’” 9 TTABVUE 8, and the reference in
footnote 5 therein to Fayetteville, Arkansas as Registrant’s address.
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that name), we find that the geographic reference, whatever it might be, would apply
equally to Applicant’s and Registrant’s marks.
For these reasons, we find that EUREKA is the dominant term in Applicant’s and
Registrant’s marks, and accordingly, it is entitled to more weight in our analysis. In
coming to this conclusion, we do not ignore the presence of the additional wording in
each mark or the orange exclamation point in Applicant’s mark. However, for the
reasons discussed above, we find that the term EUREKA in each mark is more
prominent, and more likely to be remembered by consumers, than the other elements
of the marks.
While there are some specific differences between the two marks, we find that in
their entireties, Applicant’s mark and Registrant’s mark
EUREKA PIZZA are more similar than they are different. As we previously
discussed, we find that the presence of the orange exclamation point in Applicant’s
mark, as well as the wording DISCOVER AMERICAN CRAFT, accentuate the
common word “Eureka.” Additionally, the marks both create similar overall
commercial impressions of discovering something new to eat or drink. Accordingly,
the du Pont factor of the similarity of the marks weighs in favor of a finding of
likelihood of confusion.
C. Number and Nature of Similar Marks in Use With Similar Services
Applicant points to seven third-party registrations containing the term EUREKA
for “food-related goods or services” to support its argument that the term EUREKA
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is weak or diluted and should be afforded a limited scope of protection. However, none
of the seven registrations covers restaurant services (or services of any kind), and
thus none is as close to Registrant’s identified restaurant services as is Applicant’s
identical services.13 The additional matter in each of the seven registrations arguably
provides additional points of difference as compared to Registrant’s mark. Thus, the
third-party registrations do not demonstrate that the term EUREKA is weak or
diluted for the identified restaurant services. Notably, there are no third-party
registrations of record that include or comprise the term EUREKA for restaurant
services.
Applicant also offered a Wikipedia entry for “Eureka” listing 28 geographic
locations in the United States whose name includes the term “Eureka,”14 and six
printouts from third-party websites located in Eureka Springs, Arkansas, showing
use of the term “Eureka” in connection with their businesses.15 Palm Bay, 73 USPQ2d
at 1693 (evidence that the consuming public is exposed to third-party use of similar
marks on similar services “is relevant to show that a mark is relatively weak and
entitled to only a narrow scope of protection.”).
Applicant relies heavily on In re Broadway Chicken, Inc., 38 USPQ2d 1559, 1565
(TTAB 1986), in which the Board found no likelihood of confusion between

13 In fact, contrary to Applicant’s representation, two of the registrations are not for food
products (EUREKA! BERRIES for nutritional supplements and EUREKA SEEDS for
agricultural products). Of the remaining four, EUREKA! (and Design) and EUREKA
BAKING COMPANY are for bread and are owned by one party, EUREKA WORKS is for
chocolate, and EUREKA! RANCH WICKED GOOD SAUCE is for sauce.
14 May 26 2015 Request for Reconsideration.
15 February 2, 2015 Response to Office Action.
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BROADWAY CHICKEN and BROADWAY PIZZA for identical services. Applicant
contends that like “Broadway,” “the term EUREKA has a geographic significance
and, when used in this manner, is a weak mark” such that consumers have been
conditioned to “look to other elements in marks as a means of distinguishing the
source of the restaurant services.”16 We do not agree. The Wikipedia listing is simply
that—a listing of 28 Eureka-inclusive locations with no other information, such as
the population residing therein, or that the geographic location is extant. The
Wikipedia listing therefore is of minimal value.
As for the third-party website evidence, this evidence indicates some third-party
use of this term, but the uses are quite limited, and at least two of the uses (Gourmet
Eureka Gourmet Shops and Eureka Market) do not appear to be for restaurant
services. Unlike Broadway Chicken, where the record contained hundreds of
examples of third-party use of the term “Broadway,” the evidence in this case
essentially consists of three or four examples of restaurants in the town of Eureka
Springs, Arkansas, and does not establish that consumers are accustomed to relying
on small differences to distinguish among many marks containing the shared term
EUREKA.
Finally, relying on five registrations for STAR-inclusive marks and seven
registrations for PARADISE-inclusive marks, Applicant contends that restaurant
marks frequently share common terms, and consumers are accustomed to
distinguishing among restaurants based on the non-common elements of the marks.

16 7 TTABVUE 13.
Serial No. 86258059
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While we are not privy to the reasons that the STAR and PARADISE registrations
coexist, we must decide each case on its own merits, and the decisions of examining
attorneys to allow the registration of other marks are not binding on the Board. In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
We consider this du Pont factor neutral.
III. Conclusion
We have carefully considered all evidence of record and Applicant’s arguments,
even if not specifically discussed herein, as they pertain to the relevant du Pont
factors. We treat as neutral any du Pont factors for which there is no evidence.
Because the services are identical and move through the same trade channels, and
the marks are more similar than they are different when they are viewed in their
entireties, we find that confusion is likely between Applicant’s mark
and Registrant’s mark EUREKA PIZZA.
Decision: The refusal to register Applicant’s mark is
affirmed.