John P. Callaghan IV

Trademark Trial and Appeal Board

Oct 27, 2008

No. 77061354 (T.T.A.B. Oct. 27, 2008)

Mailed:
October 27, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re John P. Callaghan IV
________

Serial No. 77061354
_______

John S. Artz of Dickinson Wright PLLC for John P. Callaghan
IV.

Andrea P. Butler, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Zervas, Walsh, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

On December 11, 2006, John P. Callaghan IV filed an
application to register the following mark:

for “bar and restaurant services” in International Class
43. The application is based on applicant’s allegation
that he first used the mark in commerce on June 1, 2004.
The examining attorney refused to register the mark
under Section 2(d) of the Trademark Act based on a prior
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
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registration (Registration No. 2740854) for the mark
O’CALLAGHAN HOTELS (in typed form) for, “hotels; resort
hotels” in International Class 43. 15 U.S.C. § 1052(d).
The mark issued on July 23, 2003 on the Supplemental
Register and contains a disclaimer of HOTELS.
After the examining attorney made the refusal final,
this appeal followed.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant
to the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973).
However, as indicated in Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976), in any likelihood of confusion analysis, two key
considerations are the relatedness of the goods/services at
issue and the similarity or dissimilarity of the respective
marks in their entireties.
We first consider the marks at issue. In doing so, we
examine the similarities and dissimilarities of the marks
in their appearance, sound, meaning, and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). The test, under the first du
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Pont factor, is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of
their overall commercial impression that confusion as to
the source of the goods offered under the respective marks
is likely to result. The focus is on the recollection of
the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). Furthermore, although the marks at issue must be
considered in their entireties, it is well-settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
In applying the aforementioned principles, it is
immediately apparent that the dominant elements in
applicant’s mark and the registered are nearly identical.
Specifically, the literal portion O’CALLAGHAN’S in
applicant’s mark and O’CALLAGHAN in the registered mark
figure prominently in the respective marks and they are
nearly identical – one is merely the possessive form of the
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other. There is only a slight visual difference and they
will be pronounced the same but for the “s” at the end in
applicant’s mark. Although applicant’s mark contains two
identical interlocking ring designs, the name O’CALLAGHAN’S
in the center is most prominent. Applicant’s use of the
surname (in possessive form) dominates this mark because it
is the portion of the mark which is capable of being
verbalized by purchasers. See In re Appetito Provisions
Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). In the
registered mark, the term HOTELS is generic for
registrant’s services and is disclaimed. While we have not
disregarded this term in our comparison of the respective
marks as a whole, it is entitled to less weight than the
term O’CALLAGHAN because generic terms are accorded less
weight in the likelihood of confusion analysis. See In re
Chatam International Inc., 380 F.3d 1340; In re National
Data Corp., 753 F.2d 1056.
The commercial impressions created by both marks and
their connotations are also very similar. Both marks imply
that a person with the surname “O’CALLAGHAN” is the
proprietor of both establishments and thus the source of
the respective services. The possessive form has little,
if any, significance for consumers in distinguishing the
parties’ marks. See, e.g., Wilson v. Delaunay, 245 F.2d
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877, 114 USPQ 339, 341 (CCPA 1957) (“It is evident that
there is no material difference, in a trademark sense,
between the singular and plural forms of the word ‘Zombie’
and they will therefore be regarded here as the same
mark”). The interlocking ring design also does not create
a strong, separate commercial impression because it appears
simply as a geometric design to those who do not recognize
it as reminiscent of a Celtic knot. To those who perceive
it as Celtic in nature, they will view it as underscoring
the Irish origin of the surname.
In view thereof, we find the respective marks taken as
a whole are similar in appearance, sound, connotation, and
commercial impression. This du Pont factor thus weighs
strongly in favor of finding a likelihood of confusion.
We turn now to the similarity or dissimilarity of
registrant’s hotel/resort hotel services and applicant’s
bar and restaurant services. In this regard, the examining
attorney submitted evidence in the form of third-party
registrations for marks registered in connection with
restaurant, bar and hotel services, and excerpts from
internet websites indicating that hotels (including resort
hotels) offer restaurant services at the same location.
Specifically, the examining attorney introduced twenty-one
(21) use-based, third-party registrations which show that
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various entities have adopted a single mark under which
they provide all three services: hotel, restaurant and bar
services; and four (4) such registrations for hotel and
restaurant services (not bar services).1 Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
These third-party registrations support a finding that
applicant’s bar and restaurant services are related to
registrant’s hotel services.
The internet evidence also demonstrates that consumers
are accustomed to restaurant and bar services being
rendered inside (or at the same location as) hotels.
According to the U.S. Bureau of Labor Statistics (BLS)
website, many hotels will also have “cocktail lounges and
formal fine-dining restaurants.”2 The BLS website also
identifies “waiters and waitresses” among the list of ten
“largest occupations in hotels and other accommodations”
for 2004, thus indicating a prevalence of restaurant

1 Attached to Office actions dated April 10, 2007 and October 24,
2007.

2 Attached to Office action dated October 24, 2007.
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service within hotels. The remaining internet evidence
consists in large part of third-party hotel websites
indicating the presence of restaurants at the same
location.
Applicant argues that “when hotels do have a
restaurant within, the restaurant is typically under
separate ownership and has a name separate and distinct
name from the from the (sic) hotel.” Applicant did not
submit any evidence in support of this proposition.
Nonetheless, even if we assumed that restaurants within
hotels may conduct business under a different trademark
from that of the hotel, we find it equally possible that
hotel restaurants may employ the same trademark for the
different services. Also, even if a distinct mark were
used to identify the restaurant or bar in a hotel, the
“hotel” mark may nonetheless also be associated with the
restaurant or bar located in the hotel.
Based on the record before us, we conclude that the
restaurant and bar services recited in the application are
related to the cited registrant's hotel services.
Consequently, the factor involving the similarity of
applicant’s and registrant’s services favors a finding of a
likelihood of confusion.
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Further, inasmuch as the recitations of services in
both the involved application and the cited registration
are not limited to any specific channels of trade, we
presume an overlap and that the services would be offered
in all ordinary trade channels for these services and to
all normal classes of purchasers. See In re Linkvest S.A.,
24 USPQ2d 1716 (TTAB 1992). In other words, the channels
of trade and classes of purchasers are the same inasmuch as
they will include the general public.
In summary, weighing all the relevant du Pont factors,
we conclude that consumers who are familiar or otherwise
acquainted with registrant's O’CALLAGHAN HOTELS mark for
hotel and resort hotel services would be likely to believe,
upon encountering applicant's substantially similar
O’CALLAGHAN’S (stylized with design) mark for restaurant
services that the respective services emanate from, or are
sponsored by or affiliated with, the same source.
Decision: The examining attorney's refusal to
register under Section 2(d) is affirmed.