G-Mar Development Corp.v.Tully’s Coffee Corp.

Trademark Trial and Appeal Board

Jan 31, 2001

OPP (T.T.A.B. Jan. 31, 2001)

Hearing:
April 25,2000
UNITED STAT
Tradem
G-Ma
Tul
Opposition Nos. 10
Nos.
filed on Septem
Bernard P. Molldrem
Development Corporat
Paul T. Meiklejohn a
LLP for Tully’s Coff
Before Cissel, Quinn
Judges.
Opinion by Cissel, A
The above-refer
registration of the
services; cafe servi
Class 30, respective
claims that applican
and goods since Sept
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.Paper No. 65
1/31/01 RFC
ES PATENT AND TRADEMARK OFFICE
_____
ark Trial and Appeal Board
______
r Development Corporation
v.
ly’s Coffee Corporation
_____
3,825 and 105,490 to application Serial
74/731,366 and 74/732,538,
ber 16,1995 and September 20, 1995,
respectively.
_____
of Trapiani and Molldrem, Jr. for G-Mar
ion.
nd Andrew F. Pratt of Dorsey & Whitney
ee Corporation.
______
and Wendel, Administrative Trademark
dministrative Trademark Judge:
enced applications, as amended, seek
mark “TULLY’S” for “retail coffee store
ces,” in Class 42, and for “coffee,” in
ly. The applications were based on
t has used the mark with these services
ember 16, 1992.
Opposition Nos. 103,825 and 105,490
2
Opposer timely filed a Notice of Opposition to each
application. As grounds for opposition in each proceeding,
opposer asserted that it had used the mark “TULLY’S” since
as early as June of 1991 in connection with restaurant
services, and that applicant’s mark, as used in connection
with the goods and services identified in each opposed
application, so resembles opposer’s mark that confusion is
likely.
Applicant denied the essential allegations set forth in
the Notices of Opposition. The two proceedings were
subsequently consolidated. A trial was conducted and both
parties presented arguments at an oral hearing before the
Board on April 25, 2000.
The record before us in this consolidated proceeding
includes the application files of the two opposed
applications, the testimony, with attached exhibits, of
several witnesses, and materials made of record by notices
of reliance, all of which have been specifically listed in
the briefs filed by the parties.
Before we begin our discussion of the merits of the
various claims and defenses, we must turn our attention to
the outstanding motion, filed by applicant on November 2,
2000, to strike opposer’s October 16, 2000 Supplemental
Notice of Reliance. Both parties filed arguments with
respect to this motion.
Opposition Nos. 103,825 and 105,490
3
By means of the Supplemental Notice of Reliance which
applicant has moved to strike, opposer seeks to introduce
into the record a copy of an article appearing in the
October 16, 2000 edition of The Syracuse (New York) Post-
Standard newspaper. The article is about the 2000 American
League championship series in professional baseball.
Opposer contends that the photograph accompanying the
article shows a sign advertising applicant's coffee, and
that because the game was televised nationwide, people
across the country were exposed to the advertisement showing
applicant's mark used in connection with applicant’s
products.
We have not considered this evidence because it was not
filed within the period established for opposer to introduce
evidence in this proceeding and opposer has not
satisfactorily explained why it could not have been
submitted during the established period. Moreover, even if
we were to consider this late-filed evidence to have been
timely submitted because it had been unavailable previously,
as applicant points out, it would be of little assistance to
opposer in establishing opposer’s claims in this proceeding.
The photo is not in focus, and there is no evidence that
establishes that it originated from or was displayed during
any television broadcast in such a way that it would have
been clearly visible and therefore viewed by any appreciable
Opposition Nos. 103,825 and 105,490
4
number of people watching the game on television in
applicant’s trading area.
As noted in the Board's denial of opposer's
October 14, 1997 motion for summary judgment, the central
issues in this proceeding are priority, likelihood of
confusion, including analysis of the similarities in the
goods and services and the channels of trade through which
they move in commerce, the strength of opposer’s mark, and
whether opposer has abandoned its mark.
Based on careful consideration of the record and the
arguments before the Board, we find that opposer has
established its priority, that opposer’s mark has not been
abandoned, and that confusion is likely with respect to
applicant's mark for both coffee, in Class 30, and retail
coffee store services and cafe services in Class 42.
Opposer’s priority is not seriously disputed. The
record establishes that opposer, G-Mar Development
Corporation, opened a “TULLY’S” restaurant and first used
the mark “TULLY’S GREAT FOOD AND GOOD TIMES” in Batavia, New
York in June of 1991, whereas applicant first sold coffee
and operated coffee shops under the mark “TULLY’S” in the
Seattle, Washington area at the end of the following year.
As noted above, however, in addition to disputing the
issue of whether confusion is likely, applicant strongly
urges the Board to conclude that opposer has abandoned any
Opposition Nos. 103,825 and 105,490
5
rights it may have had in the “TULLY’S” mark by virtue of
the fact that it has allowed the mark to be used by another
entity, GiBar Development Corporation, without a license
from opposer, G-Mar Development Corporation.
Although applicant argues that GiBar is not a “related
company” within the meaning of Section 45 of the Lanham Act
in the sense that G-Mar cannot claim that it has common
ownership with GiBar or that GiBar has a license from G-Mar
to use the mark in question, it is clear from the evidence
of record that opposer has exercised sufficient control over
the services rendered under the mark by GiBar in order for
us to recognize an implied license from opposer. Seventy-
five per cent of G-Mar is owned by John Giamartino, and his
brother David Giamartino owns the other twenty-five per
cent, while GiBar is owned in equal shares by John
Giamartino, David Giamartino and Richard Bartlett. John
Giamartino is president of both corporations, and he has
testified about the ways in which he and John Rybak, who
works directly under him as the supervisor of all five
restaurants which use the mark, maintain the quality and
consistency of the services rendered under it, whether the
particular restaurant is owned by G-Mar or by GiBar. The
record makes it clear that the same degree of control is
exercised over all five restaurants. Each is under the
direct control of John Giamartino and each is supervised by
Opposition Nos. 103,825 and 105,490
6
Mr. Rybak. All of the restaurants use identical menus and
operate in the same way with the same standards and similar
motifs. Customers receive the same quality of food and
service at each restaurant, regardless of whether it is
owned by GiBar or GiBar. The managers of all five
restaurants meet regularly and answer directly to Mr. Rybak,
who conducts monthly inspections of all of the “Tully’s”
restaurants. We agree with opposer that the facts in this
opposition proceeding do not support applicant’s contention
that opposer has abandoned its mark any more than the facts
in Woodstock’s Enterprises Inc. (California) v. Woodstock’s
Enterprises Inc. (Oregon), 43 USPQ2d 1140 (TTAB 1997), aff’d
unpublished opinion, Appeal No. 97-1580, (Fed. Cir. March 5,
1998), established that the mark in that case had been
abandoned by virtue of uncontrolled use by another entity.
Turning next to the central issue in this proceeding,
likelihood of confusion, the first issue we must address is
whether the marks are similar. In this regard, we reject
applicant’s contention that we cannot find similarity
because the record does not show opposer’s use of “TULLY’S”
by itself as a mark, but instead is replete with examples of
the use of stylized presentations of the name “TULLY’S”
together with the slogan, “GREAT FOOD AND GOOD TIMES.”
Simply put, the name “TULLY’S” is the dominant portion
of opposer’s mark. It is the nondescriptive, non-suggestive
Opposition Nos. 103,825 and 105,490
7
component of the mark that people are likely to remember and
use when referring to applicant’s services or recommending
them to others. This record shows that opposer’s mark is
strong, in that opposer has extensively used and promoted it
and that it is not used or registered by others for similar
services.
The dominant component of opposer’s mark, “TULLY’S,” is
applicant’s mark in its entirety. The marks of the parties,
therefore, when considered in their entireties, are very
similar in commercial impression, such that their use in
connection with commercially related goods and services is
likely to cause confusion.
As noted above, the evidence in this case establishes
that opposer’s restaurant services are related to the goods
and services set forth in the opposed applications, namely,
“retail coffee shop services,” “cafe services” and “coffee.”
The parties spent considerable effort debating the
differences and similarities between applicant’s particular
coffee shop services and cafe services and the particular
services opposer actually renders at its restaurants, which
are of the type which is commonly referred to as “sports bar
restaurants,” featuring not just food, but also alcoholic
beverages and video entertainment provided by means of a
number of televisions throughout the restaurants showing
sporting events. We must determine the likelihood of
Opposition Nos. 103,825 and 105,490
8
confusion, however, based on the way applicant’s goods and
services are identified in the opposed applications, without
restrictions or limitations that are not specifically
reflected therein. Toys “R” Us, Inc. v. Lamps R Us, 219
USPQ 340, 343 (TTAB 1083) and cases cited therein. As
opposer points out, applicant’s goods are not identified in
the opposed applications as “gourmet, whole-bean, premium
coffee,” but rather just as “coffee,” and the services are
not stated to be “gourmet, specialty coffee shop services”
or “coffee shop services not including serving meals or
alcoholic beverages.” The ordinary meaning of the word
“cafe” includes a restaurant, barroom, and even a cabaret or
nightclub, according to Webster’s Ninth New Collegiate
Dictionary, (1985 edition), of which the Board may take
judicial notice. Opposer renders bar and restaurant
services under its mark. Notwithstanding applicant’s
arguments to the contrary, its coffee shop and cafe services
are simply types of restaurant services, just as opposer’s
restaurant services fall within that broad description of
services. Confusion is clearly likely when cafes, coffee
shops and restaurants are promoted and operated under the
same or similar marks.
This record also shows that confusion is likely when
these similar marks are used in connection with opposer’s
services and the goods of applicant, coffee. The evidence
Opposition Nos. 103,825 and 105,490
9
in this proceeding shows that applicant, as well as other
businesses, such as Chock Full O’ Nuts Corporation and
applicant’s business model and principal competitor,
Starbucks Corporation, have registered or seek to register
their respective marks both for coffee and for cafe and
restaurant services. Opposer’s May 14, 1999 Notice of
Reliance includes copies of third-party registrations of
marks wherein both coffee and restaurant services are
listed. Third-party registrations listing both these
products and these services are evidence that tends to show
that the goods and services listed therein may be expected
by consumers to emanate from the same entities. In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). In
view of this practice, it is reasonable to conclude that
ordinary consumers, the class of customers for the goods and
services of both parties, who are familiar with opposer’s
use of its mark in connection with its restaurant services,
would, upon seeing both applicant’s coffee and retail coffee
shop and cafe services offered under applicant’s mark, be
likely to assume some connection with or sponsorship by
opposer. This is precisely the kind of confusion that
Section 2(d) of the Lanham Act is designed to preclude.
Applicant argues that John Giamartino's testimony, (pp.
160-61), constitutes an admission that there is no
likelihood of confusion between opposer's use of its mark
Opposition Nos. 103,825 and 105,490
10
for restaurant services and Tully's use of its mark for
coffee. Applicant's counsel posed the following question to
the witness: "In terms of just sale of coffee, whole bean
and ground coffee, do you think there is any likelihood of
confusion as a result of simultaneous use of the marks?"
His answer was that if applicant were in the business of
selling only coffee, Mr. Giamartino did not believe that
confusion would be likely. The evidence, however, as noted
above, shows that consumers have a basis for assuming that a
single mark may be used for both restaurant services and
coffee. The third-party registrations of record as well as
the newspaper and magazine articles submitted by opposer
with the same Notice of Reliance establish this.
In view of the fact that applicant itself uses its mark
in connection with both these goods and these services,
applicant's contention that they are commercially unrelated
would appear to be disingenuous. Moreover, and again in
view of the fact that applicant uses its mark in connection
with both the goods and the services, the hypothetical posed
to Mr. Giamartino by applicant's attorney is not the
situation with which we are faced on this record. Maybe
opposer would not be concerned if applicant were to use its
mark only on coffee, but this is not the case. Applicant's
use in connection with both coffee and retail coffee store
Opposition Nos. 103,825 and 105,490
11
and cafe services is a pleaded basis for this proceeding.
This obviously presents a problem for opposer.
The logical extension of applicant's argument in this
regard would result in the issuance of a registration to
applicant for the goods, coffee, but registration of
applicant's service mark for retail coffee store and cafe
services would be refused under Section 2(d) of the Act. It
is unclear to us why applicant would want to create such a
situation. Would applicant contend that the sign outside
its business establishment identifies the source of the
coffee sold inside, but not the coffee store and cafe
services rendered therein?
Another unpersuasive argument applicant makes is that
opposer conceded the issue of likelihood of confusion in
this proceeding when, during the prosecution of its
application to register its own mark, G-Mar argued that
there was no likelihood of confusion between its mark for
restaurant services and applicant's mark for the goods and
services specified and the applications herein opposed. It
is well settled that an opposer is not estopped in an
opposition proceeding from taking a position with regard to
the likelihood of confusion which is different from that
which it took before the Examining Attorney during
prosecution of its application. West Chemical Products,
Inc. v. Candle-Lite, Inc., 173 USPQ 190 (TTAB 1972).
Opposition Nos. 103,825 and 105,490
12
Applicant's argument that "TULLY'S" is not distinctive
because of the existence of a municipality named ”Tully”
located near Syracuse, New York, is without merit.
Applicant does not even allege that there is a goods/place
association between applicant's goods and services and this
particular town, so applicant has failed to establish that
registration should be refused on the basis of geographical
descriptiveness or misdescriptiveness. In re Nantucket,
Inc., 213 USPQ 889 (CCPA 1982). We have nothing upon which
to base a conclusion that opposer’s mark is not distinctive.
Lastly, we must dismiss applicant's contention that
because this record does not include evidence that actual
confusion has occurred, confusion is not likely. Evidence
of incidents of actual confusion is notoriously difficult to
obtain, and is clearly not necessary in order to establish
that confusion is likely. Helena Curtis Industries, Inc. v.
Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). As we stated
in Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, at
1774, (TTAB 1992), “…the absence of any reported instances
of actual confusion would be meaningful only if the record
indicated appreciable and continuous use by applicant of its
mark for a significant period of time in the same markets as
those served by opposer under its marks.” In the instant
case, in view of the relatively limited geographic area in
which applicant has operated its coffee stores and cafes and
Opposition Nos. 103,825 and 105,490
13
the fact that the restaurants using opposer’s mark are all
located in a relatively small geographic area on the other
side of the country, the opportunity for actual confusion
appears to have been quite limited, so we cannot conclude
that because the parties are unaware of any actual confusion
in connection with their marks, confusion is not likely.
In summary, the record in this case establishes that
confusion is likely because the mark applicant seeks to
register and opposer’s mark, when considered in its
entirety, are similar, and the goods and services specified
in the opposed applications are commercially related to
opposer’s services. Opposer has neither admitted that
confusion is unlikely nor abandoned its mark by virtue of
allowing uncontrolled use of it by GiBar.
Decision: The oppositions are sustained and
registration to applicant is refused under Section 2(d) of
the Lanham Act.