Lidl Stiftung & Co. KG

Trademark Trial and Appeal Board

Dec 30, 2004

No. 76297319 (T.T.A.B. Dec. 30, 2004)

Mailed: December 30, 2004
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Lidl Stiftung & Co. KG
________
Serial No. 76297319
______
Wendy S. Harvey of Osha & May L.L.P. for Lidl Stiftung &
Co. KG.
Susan Leslie DuBois, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
_______
Before Simms, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Lidl Stiftung & Co. KG (applicant), a German
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark
STEAKCOUNTRY for “meat, frozen meat; meat products namely
roast, burgers, minced meat beef, meatballs, meat salad,
also deep frozen; prepared meals consisting primarily of
meat with the addition of vegetable, farinaceous pastes,
potatoes, and/or rice,” in Class 29; and “prepared meals
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76297319
2
consisting essentially of vegetables, farinaceous pastes,
potatoes and/or rice; with the addition of meat and also
deep frozen,” in Class 30.1
The Examining Attorney has refused registration under
Section 2(d) of the Act, 15 USC §1052(d), on the basis of
two registrations owned by Posh Foods, L.L.C. for the mark
STEAKOUNTRY in typed form as well as in stylized lettering,
both for restaurant services (Registration No. 2,332,533,
issued March 21, 2000; and Registration No. 2,338,356,
issued April 4, 2000). Applicant and the Examining
Attorney have submitted briefs, but no oral hearing was
requested.2
The Examining Attorney argues that confusion of the
marks is likely because the only difference in the marks is
that applicant’s mark contains an additional “C”, but that
the marks are otherwise very similar in commercial
impression and identical in pronunciation. The Examining
Attorney argues that consumers will likely not notice the
minor difference in the marks, and that, in any event, the
average purchaser normally retains a general, rather than a
specific, impression of a trademark. Also, the Examining

1 Application Serial No. 76297319, filed August 9, 2001, based
on Section 44(e) of the Act, on German Registration No. 396 07
363, issued April 29, 1996.
2 Exhibits submitted with applicant’s brief for the first time
are excluded as untimely. See Trademark Rule 2.142(d).
Serial No. 76297319
3
Attorney argues that the goods and services of applicant
and registrant are related. In support of the refusal, the
Examining Attorney has submitted numerous third-party
registrations for such marks as MASSA for grilled
sandwiches, prepared entrees and restaurant services (Reg.
No. 2,533,825, issued Jan. 29, 2002); GRANDMA LEE’S BAKERY
& RESTAURANT and design for such goods as soups, salads,
meat, fish, poultry, vegetable and pasta entrees, as well
as restaurant services including carry-out services (Reg.
No. 2,422,446, issued Jan. 23, 2001); ROBERTO’S for Mexican
entrees and restaurant services (Reg. No. 1,826,505, issued
March 15, 1994, renewed); AMERICAN CAFÉ for such goods as
sandwiches and pasta, meat, seafood, poultry and vegetable
entrees as well as restaurant services (Reg. No. 1,329,876,
issued April 9, 1985, Section 8 accepted); Island Grill and
design for meat, fish, poultry and cooked vegetables as
well as restaurant services including carry-out services
(Reg. No. 2,585,892, issued June 25, 2002); and Friendly’s
(stylized) for such prepared foods as meat, fish and
poultry as well as restaurant and carry-out services (Reg.
No. 1,595,593, issued May 8, 1990, renewed). While the
Examining Attorney concedes that there is no per se rule
concerning finding likelihood of confusion in cases
involving similar marks for food items and for restaurant
Serial No. 76297319
4
services, the Examining Attorney contends that it is
reasonable for purchasers to expect both food products and
restaurant services to emanate from a single entity. In
this regard, the Examining Attorney contends that it would
not be uncommon for restaurants to market their menu items
under the same mark as the restaurant. Also, restaurant
diners will undoubtedly purchase food products such as meat
products in grocery stores. Furthermore, because the
identification of registrant’s restaurant services is not
limited, one may presume that those restaurant services
include all normal items of food that are featured in
restaurants. The Examining Attorney also argues that
purchasers of applicant’s food items and registrant’s
restaurant services would be ordinary members of the
general public, and that these goods and services may be
relatively inexpensive. Accordingly, the Examining
Attorney maintains that purchasers familiar with
registrant’s STEAKOUNTRY restaurant services would assume
that STEAKCOUNTRY prepared food products are frozen or
prepackaged food items from the same source as the
restaurant services. The Examining Attorney also asks us
to resolve any doubt in favor of the prior registrant.
The Examining Attorney has cited such cases as In re
Appetito Provisions Co., Inc., 3 USPQ2d 1553 (TTAB
Serial No. 76297319
5
1987)(involving Italian sausages and restaurant services)
and In re Best Western Family Steak House, Inc., 222 USPQ
827 (TTAB 1987)(involving frankfurters and bologna and
restaurant services).
Applicant, on the other hand, argues that confusion is
unlikely because “STEAK” is a weak and commonly used word
in connection with a wide variety of goods and services,
and that purchasers are not likely to believe that all
products which use this word in the mark come from the same
source. Applicant also points to the minor differences in
the marks as being sufficient to avoid likelihood of
confusion. Applicant also argues that its goods and
registrant’s services are distinct and are offered in
different channels of trade because applicant sells its
prepackaged food products only in its own discount retail
food stores whereas, according to information from the
Internet, registrant offers only all-you-can-eat buffet
restaurant services. These goods and services, applicant
argues, are not marketed in such a way that they would be
encountered by the same purchaser. Applicant contends that
the third-party registrations are not significant because
they do not relate to all-you-can-eat buffet restaurant
services on the one hand and discount retail prepackaged
food products on the other. Applicant also contends that
Serial No. 76297319
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the percentage of restaurants that also offer their
products in grocery stores is relatively small and
insignificant, and that there is no evidence in this case
that registrant is likely to bridge the gap and offer the
food it serves in the retail or discount retail food
market. Applicant also notes that some of the third-party
registrations involve fast food or “express-type”
restaurant services.
In sum, applicant argues that the ordinary, prudent
purchaser will not mistakenly assume that applicant’s
STEAKCOUNTRY goods originate with registrant’s STEAKOUNTRY
restaurant.
Our determination of likelihood of confusion under
Section 2(d) of the Act is based on an analysis of all of
the probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. See
In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re E.I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Two key considerations are the marks and the goods or
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental
inquiry mandated by [Section] 2(d) goes to the cumulative
Serial No. 76297319
7
effect of differences in the essential characteristics of
the goods and differences in the marks.”).
With respect to the marks STEAKCOUNTRY and
STEAKOUNTRY, we agree with the Examining Attorney that
those marks are substantially identical in sound,
appearance and meaning or connotation. Although we can
take judicial notice that “steak” may be a relatively
commonly used term in the food and restaurant business, the
marks here include the equally, if not more prominent, word
“KOUNTRY” or “COUNTRY.” If these nearly identical marks
were used in connection with related goods and services,
confusion would be likely.
Concerning applicant’s meat products and prepared
meals and registrant’s restaurant services, as the
Examining Attorney has argued, we must analyze this case on
the basis of the goods and services set forth in
applicant’s application and in registrant’s registrations.
Because there are no limitations in the respective
application and registrations relating to the channels of
trade or classes of purchasers, we must presume that
applicant’s goods and registrant’s services encompass all
goods and services of the type described, and that they
move in all normal channels of trade to all potential
customers. See Canadian Imperial Bank of Commerce v. Wells
Serial No. 76297319
8
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987);
and In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). We do not
analyze this case, therefore, on the basis of the fact that
registrant may offer only all-you-can-eat restaurant
services and that applicant sells its food products only
through its own discount food stores.
The third-party registrations suggest that the same
source may offer goods similar to applicant’s as well as
restaurant services under the same mark. See In re
Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218
(TTAB 2001); and In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993). While the third-party registrations do
not specifically indicate that the listed food products are
also sold in grocery stores and supermarkets as well as in
the restaurants, we do agree with the Examining Attorney’s
argument that the public has become at least somewhat
accustomed to seeing the same mark used in connection with
restaurants and in connection with those same restaurants’
food products sold in grocery stores and supermarkets. The
fact that the Examining Attorney has not offered any
evidence that this particular registrant is likely to
“bridge the gap” and begin selling its entrees or prepared
meals in supermarkets is not critical to the outcome of
this case. Such evidence would be very difficult for the
Serial No. 76297319
9
Examining Attorney to produce in any ex parte case. See In
re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629 (Fed.
Cir. 2003) and cases cited therein.
We also observe that applicant’s food products and
registrant’s restaurant services are relatively inexpensive
goods and services which are purchased by the general
public. To the extent that these goods and services are
not purchased with much care, this factor also favors a
finding of likelihood of confusion, especially in view of
the near identity of the marks.
Finally, any doubt with respect to the issue of
likelihood of confusion must be resolved in favor of the
prior user and registrant. See In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 840, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988);
and In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289 (Fed. Cir. 1984).
Accordingly, we conclude that consumers aware of
registrant’s STEAKOUNTRY restaurant services who then
encounter applicant’s STEAKCOUNTRY meat products and
prepared meals in food and grocery stores are likely to
believe that applicant’s food products emanate from or are
otherwise sponsored or produced by the same source that
provides the STEAKOUNTRY restaurant services.
Serial No. 76297319
10
Decision: The refusal of registration under Section
2(d) is affirmed.