Giant Eagle, Inc.

Trademark Trial and Appeal Board

Feb 9, 2001

No. 75451317 (T.T.A.B. Feb. 9, 2001)

U
David V. R
Giant Eagl
Ingrid C.
111 (Craig
Before Cis
Judges.
Opinion by
On Ma
referenced
CHICKEN” o
services,
prepared c
on applica
these serv
of 1995.
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.2/09/01 Paper No.
RFC
NITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Giant Eagle, Inc.
________
Serial No. 75/451,317
_______
adack of Eckert Seamans Cherin & Mellott, LLC for
e, Inc.
Eulin, Trademark Examining Attorney, Law Office
Taylor, Managing Attorney).
_______
sel, Bucher and Rogers, Administrative Trademark
Cissel, Administrative Trademark Judge:
rch 16, 1998, applicant filed the above-
application to register the mark “RIVER CITY
n the Principal Register for “supermarket
namely, a supermarket department providing
hicken,” in Class 35. The application was based
nt’s claim of use of the mark in connection with
ices rendered in interstate commerce since March
Ser No. 75/451,317
2
The Examining Attorney, in addition to raising several
informalities including requiring applicant to disclaim the
descriptive word “CHICKEN” apart from the mark as shown,
refused registration under Section 2(d) of the Lanham Act.
The Examining Attorney held that applicant’s mark, “RIVER
CITY CHICKEN,” as used in connection with the services of a
supermarket department providing prepared chicken, so
resembles the mark “RIVER CITY,” which is registered1 for
“wholesale distributorship featuring meat and fish
products,” that confusion is likely.
Applicant disclaimed the exclusive right to use
“CHICKEN” apart from the mark as shown, but presented
arguments to the Examining Attorney on the issue of
likelihood of confusion with the cited registered mark.
The Examining Attorney, however, was not persuaded, and the
refusal to register was made final in the second Office
Action. Submitted with that action were a number of third-
party registrations wherein the services set forth include
both wholesale food distributorship services and retail
store services featuring the same products to which the
distributorship services relate. Several of these
1 Reg. No. 2,056,687 issued on the Principal Register to River
City Meat & Foods, Inc. on July 10, 1995. The registration
claims first use and first use in commerce in December of 1993.
Ser No. 75/451,317
3
registrations specify both distributorship services and
retail store services featuring poultry, meats and fish, or
different combinations of these three products. Also
included with the final refusal to register were excerpts
retrieved from the Nexis
database of newspaper and
magazine articles. This evidence makes it clear that some
food wholesalers also operate their own retail
supermarkets.
Applicant responded to the final refusal to register
with a timely Notice of Appeal. Both applicant and the
Examining Attorney filed briefs,2 but applicant did not
request an oral hearing before the Board.
2 The Examining Attorney properly objected to the additional
evidence submitted with applicant’s appeal brief, so we have not
considered this evidence. Under Trademark Rule 2.142(d), the
record should be complete prior to filing the Notice of Appeal.
The Board has discretion under the rule to allow the record to be
supplemented after that time, but this discretion is not
exercised in circumstances such as this, where applicant has not
provided any explanation as to why the evidence could not have
been submitted timely. Moreover, even if we were to consider the
late-filed evidence, our conclusion that confusion is likely
would not change. Without evidence of the extent of use and
promotion of the marks applicant asserts are registered, we would
have no basis upon which to conclude that the consumers are so
familiar with them that they regard “RIVER CITY” as weak in
source-identifying significance and therefore look to other
elements in such marks to distinguish among them. Additionally,
none of the goods and services specified in these registrations
are sufficiently related to the services set forth in this
application or in the cited registration, so the registrations
would not establish weakness in “RIVER CITY” in connection with
the services at issue in this appeal.
Ser No. 75/451,317
4
Based on careful consideration of the record and the
arguments before us, we hold that the refusal to register
under Section 2(d) the Act is well taken.
Our primary reviewing court set forth the factors to
be considered in determining whether confusion is likely in
In re duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). Chief among these factors are the similarity
of the marks in their entireties as to appearance, sound,
meaning and commercial impression and the similarity of the
goods or services in question. The focus is on the
recollection of the average purchaser, who normally retains
a general, rather than specific, impression of trademarks.
Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ
537 (TTAB 1979).
While we cannot ignore disclaimed words in analyzing
marks to resolve the issue of likelihood of confusion, we
must recognize that some elements or features of particular
marks have more source-identifying significance than others
do. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189
USPQ 693 (CCPA 1976). Disclaimed, descriptive matter is
typically less significant then the other elements in a
particular trademark.
Consideration of these principals with regard to the
facts presented by the case at hand leads us to conclude
Ser No. 75/451,317
5
that the dominant portion of the mark applicant seeks to
register is “RIVER CITY,” which is, of course, the cited
registered mark in its entirety. Because both marks are
dominated by the same term, the commercial impressions they
create are very similar.
Applicant argues that the registered mark and the
dominant portion of applicant’s mark is weak in trademark
significance because “River City” is a term frequently used
in the Pittsburgh region. This argument is unsupported by
any evidence properly of record in this appeal.3
We thus turn to the relationship between the services
specified in the application and those set forth in the
cited registration. The materials submitted by the
Examining Attorney establish a clear relationship between
these services. The third-party registrations and the
excerpted articles show that consumers have a basis upon
which to assume that the use of the similar marks in
connection with both food distribution services and retail
supermarket services indicates that the services emanate
3 In addition, we note that applicant is not seeking a concurrent
use registration restricted to the Pittsburgh region, based on
use in that region. Instead, applicant seeks an unrestricted
registration. Thus, even if we were to accept applicant’s
argument regarding the strength of the term “RIVER CITY” in the
Pittsburgh region, this would not esablish weakness in the rest
of the country.
Ser No. 75/451,317
6
from a single source. Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993).
Applicant’s argument that confusion is not likely
because the mark it seeks to register is only used in
conjunction with applicant’s name, “GIANT EAGLE,” is not
well taken. Applicant is not seeking to register a
combination of its mark and its name, but rather only the
mark which is shown in the drawing which was submitted with
the application. That mark, “RIVER CITY CHICKEN,” is the
only mark which we can consider in determining whether
confusion is likely with the cited registered mark.
Applicant is free to use its mark with or without any other
words or designs, but in resolving this appeal, it would be
improper for us to consider wording which is not shown on
the drawing submitted with the application.
In a similar sense, we are not persuaded by
applicant’s argument that confusion is not likely because a
consumer would have to be familiar with applicant’s
supermarket in order to see the mark and purchase the
prepared foods sold in them, and such consumers will
therefore know that applicant is not a wholesale supplier
of similar goods. This is all speculation. We have no way
of knowing what level of understanding its customers have
of applicant’s business structure and activities, but the
Ser No. 75/451,317
7
record does show that consumers have a basis for believing
that wholesale distributors of food products also operate
supermarkets featuring those products, and that they would
expect both services to be provided under the same marks.
In summary, confusion is likely because when they are
considered in their entireties, the marks create very
similar commercial impressions, and the services set forth
in the application are clearly related to the services
specified in the cited registration.
Decision: The refusal to register under Section 2(d)
of the Lanham Act is affirmed.
Ser No. 75/451,317
8