International Restaurant Group, L.L.C.

Trademark Trial and Appeal Board

Mar 12, 2003

No. 76004737 (T.T.A.B. Mar. 12, 2003)

Mailed: 12 MAR 2003
Paper No. 15
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re International Restaurant Group, L.L.C.
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Serial No. 76/004,737
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John S. Egbert of Harrison & Egbert for International
Restaurant Group, L.L.C.
David C. Reihner, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Simms, Bottorff and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On March 17, 2000, International Restaurant Group,
L.L.C. (applicant) filed an application to register the
mark DIAMONDBACK’S A TEXAS BISTRO (in typed form) on the
Principal Register for “restaurant services” in
International Class 42.1 Applicant has disclaimed the
phrase “A Texas Bistro.”
1 Serial No. 76/004,737. The application contains an allegation
of first use and first use in commerce of September 14, 1998.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76/004,737
2
The examining attorney ultimately refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a prior registration for
the mark DIAMONDBACK (in typed form) also for restaurant
services.2
When the refusal was made final, applicant filed this
appeal.
The examining attorney argues that “the marks of the
parties are similar because applicant has taken the typed
mark of registrant and added to it subordinate,
geographical, and descriptive matter forming a typed mark
similar in meaning to registrant’s mark. When the
identical services of the parties are identified with their
respective marks, the patrons of the restaurants would
likely be confused about the sources of the services of the
parties.” Brief at 3.3
Applicant maintains that DIAMONDBACK is a weak mark,
the marks differ in commercial impression, there is a large
geographical distance between the locations, and that
“restaurant selection is not an ‘impulse buy’ and should be
2 Registration No. 1,973,717, issued May 14, 1996. Affidavits
under §§ 8 and 15 accepted or acknowledged.
3 The examining attorney also objects to new evidence that
applicant has attached to its brief. We agree with the examining
attorney’s objection and we will not consider this evidence for
the first time on appeal. 37 CFR § 2.142(d).
Ser No. 76/004,737
3
accorded the status of having sophisticated consumers.”
Brief at 3.
We affirm.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000).
We start by noting that both applicant and registrant
offer restaurant services and the services are identified
as “restaurant services” in the application and
registration. Therefore, the services are identical. In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533 (Fed. Cir. 1997) (Applicant’s restaurant services
identified as “restaurant services specializing in
Southern-style cuisine” legally identical to registrant’s
restaurant services identified as “hotel, motel, and
restaurant services”). Any differences between how the
services are actually provided are legally irrelevant. Id.
at 1534 (quotation marks omitted) (“[T]he second DuPont
factor expressly mandates consideration of the similarity
Ser No. 76/004,737
4
or dissimilarity of the services as described in the
application or registration”).
Next, we turn to the similarity of the marks. “If the
services are identical, ‘the degree of similarity necessary
to support a conclusion of likelihood of confusion
declines.’” Dixie Restaurants, 41 USPQ2d at 1534, quoting,
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). The
question here is whether the marks create the same
commercial impression. The test is not whether the marks
can be distinguished in a side-by-side comparison, but
whether they are sufficiently similar in their overall
commercial impression so that confusion as to the source of
the services marketed under the respective marks is likely
to result. “[T]here is nothing improper in stating that,
for rational reasons, more or less weight has been given to
a particular feature of the mark, provided [that] the
ultimate conclusion rests on consideration of the marks in
their entireties.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Here, both marks contain the same word DIAMONDBACK in
typed form. Applicant adds the letter “’S” and the
disclaimed phrase “A Texas Bistro.” Applicant argues that
the “significance of the commercial impression as applied
Ser No. 76/004,737
5
to the Applicant’s services is that Applicant is located in
the Southwest, namely, Texas. It could be argued that the
registrant’s commercial impression is in relation to the
famous ski and bike trails of the North Carolina area, from
which the name ‘DIAMONDBACK’ is taken.” Brief at 4. We
disagree. Applicant has taken the entire registered mark
and added subordinate matter to the mark that does not
change the commercial impression. “Regarding descriptive
terms, this court has noted that the ‘descriptive component
of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion.’” Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed.
Cir. 2000), quoting, National Data, 224 USPQ2d at 752.
While applicant argues that its mark creates the impression
of a “small café located in the Southwest serving tex-mex
food” (Brief at 4), nothing in the cited registration
prevents registrant from also operating a similar
restaurant. In this case, the descriptive matter would not
create a significantly different commercial impression and
the apostrophe “s” would hardly be noticed. We find that
that the marks DIAMONDBACK and DIAMONDBACK’S A TEXAS BISTRO
are very similar in appearance, sound, meaning, and
commercial impression.
Ser No. 76/004,737
6
In a very relevant case involving restaurant
services, the Federal Circuit determined that there was a
likelihood of confusion between the marks DELTA in typed
form and THE DELTA CAFÉ and design. Dixie Restaurants, 41
USPQ2d at 1534 (more weight given to common dominant word
DELTA). See also Wella Corp. v. California Concept Corp.,
558 F.2d 1019, 1022, 194 USPQ 419, 422 (CCPA 1977)
(CALIFORNIA CONCEPT and design held likely to be confused
with CONCEPT for hair care products). Therefore, we
conclude that when the marks DIAMONDBACK and DIAMONDBACK’S
A TEXAS BISTRO are used on identical services, potential
purchasers are likely to believe that there is, at the very
least, some association or relationship to the source of
those services, and therefore, confusion is likely.
In response to applicant’s other arguments, there is
no evidence of record to support its argument that the
“term ‘DIAMONDBACK’ is a very dilute mark similar to such a
degree that the public is inundated with this term in day
to day life on an assortment of goods and services.” Brief
at 6. Applicant’s “evidence” consists of a list containing
registration and/or application numbers, the mark and the
status of the application or registration. Such a printout
is not proper evidence. “[W]e do not consider a copy of a
Ser No. 76/004,737
7
search report to be credible evidence of the existence of
the registrations and uses listed therein. The minimum we
would accept in the case of federal registrations are soft
copies of the registrations themselves.” In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
Furthermore, [a]s to strength of a mark, however,
registration evidence may not be given any weight.” Olde
Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542, 1545 (Fed. Cir. 1992) (emphasis in original).4
Applicant also argues that “the purchase of
Applicant’s services are by sophisticated purchasers who
exercise extra care with regard to purchasing such
services.” Brief at 2. Applicant’s and registrant’s
services are both identified as restaurant services without
any limitation as to cost or style of service. There is no
evidence to support applicant’s assertion that restaurant
purchasers, in general, are necessarily sophisticated
purchasers. In re Opus One Inc., 60 USPQ2d 1812, 1817
(TTAB 2001) (“There is no evidence in the record from which
we might conclude that wine and restaurant services, in
general, are necessarily expensive, or that purchasers
4 The examining attorney also noted that “there is only one
subsisting U.S. Trademark Registration containing the word
‘Diamondback’ for restaurant services, and that registration is
owned by registrant.” Examining Attorney’s Brief at 9.
Ser No. 76/004,737
8
thereof are necessarily sophisticated and careful in making
their purchasing decisions”). See also Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1742 (TTAB 1991).
Even if the purchasers were sophisticated, this conclusion
would not avoid confusion when marks as similar as the
marks at issue here are used on identical services. In re
Total Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB 1999)
(“We recognize applicant's attorney's point that its
software is expensive and that purchasers of it are likely
to be sophisticated. Suffice it to say that no evidence in
support of these assertions was submitted. In any event,
even careful purchasers are not immune from source
confusion”). See also In re Hester Industries, Inc., 231
USPQ 881, 883 (TTAB 1986) (“While we do not doubt that
these institutional purchasing agents are for the most part
sophisticated buyers, even sophisticated purchasers are not
immune from confusion as to source where, as here,
substantially identical marks are applied to related
products”).
Regarding applicant’s argument that there is a large
geographical distance between the parties, this is not
significant inasmuch as the cited registration is
geographically unrestricted. Giant Food, Inc. v. Nation's
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed.
Ser No. 76/004,737
9
Cir. 1983) (“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”);
Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70, 73
(TTAB 1981) (“[T]he possible geographical separation
between the parties, although the evidence does show an
overlap on occasion, is of no significance in this
proceeding because applicant is seeking territorially
unrestricted registrations for its marks and, if granted,
the presumptions afforded the registrations under Section
7(b) include a presumption of use or the right to use the
registered marks throughout the United States”).
Decision: The Examining Attorney’s refusal to
register applicant’s mark DIAMONDBACK’S A TEXAS BISTRO for
restaurant services on the ground that it is likely to
cause confusion with the registered mark DIAMONDBACK also
for restaurant services under Section 2(d) of the Trademark
Act is affirmed.