MDSfest, Inc.

Trademark Trial and Appeal Board

Sep 22, 2016

No. 86754306 (T.T.A.B. Sep. 22, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: September 22, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MDSfest, Inc.
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Serial No. 86754306
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Sandra J. Franklin for MDSfest, Inc.

Gretta Yao, Trademark Examining Attorney, Law Office 118,
Thomas G. Howell, Managing Attorney.
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Before Mermelstein, Shaw and Heasley,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
MDSfest, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark LEGENDARY BEEF in standard characters for “Butcher cuts of beef; raw
meats,” in International Class 29.1
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used in connection

1 Application Serial No. 86754306 was filed on September 11, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on an intent to use the mark in commerce.
Applicant has disclaimed the wording “BEEF.”
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with Applicant’s goods, so resembles the mark LEGENDARY STEAK ONLINE.
TRADITION ON YOUR TABLE2 in standard characters for, inter alia, “Beef,” in
International Class 29, as to be likely to cause confusion.
When the refusals were made final, Applicant appealed. The Applicant and
Examining Attorney have filed briefs. We affirm the refusal to register.
Analysis
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the goods and the similarities between the marks. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).
A. The similarity or dissimilarity of the goods, trade channels, and classes of
consumers.
We start our analysis with the second and third du Pont factors and look at the
relationship between the goods at issue, the channels of trade in which they travel
and the classes of consumers. We base our evaluation on the goods as they are
identified in the application and registration. Stone Lion Capital Partners, LP v. Lion

2 Registration No. 4344038, issued May 28, 2013. The registration disclaims the wording
“STEAK ONLINE.”
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Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys.,
Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). In other words, an applicant may not restrict the scope of the goods covered
in the cited registration by argument or extrinsic evidence. In re Midwest Gaming &
Entm’t LLC, 106 USPQ2d 1163, 1165 (TTAB 2013).
Applicant’s goods are “Butcher cuts of beef; raw meats” and Registrant’s relevant
goods are “Beef.” The goods are, in part, legally identical inasmuch as Registrant’s
broadly-worded “Beef” encompasses Applicant’s more narrowly-worded “Butcher cuts
of beef.” Similarly, Applicant’s broadly-worded “raw meats” encompasses Registrant’s
more narrowly-worded “Beef.” See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB
1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Turning to the trade channels and classes of consumers, since Applicant’s goods
and those in the cited registration are unrestricted, they are presumed to move in all
channels of trade normal for such goods and are available to all potential classes of
consumers ordinary for the goods. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012) (Absent restrictions in an application and/or registration,
identical goods are “presumed to travel in the same channels of trade to the same
class of purchasers.”) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
Applicant argues that the channels of trade of Applicant’s and Registrant’s goods
are different because “Appellant sells directly to local consumers in its grocery stores,
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while the owner of the cited Registration sells only online.”3 This argument is
unavailing. When comparing channels of trade:
The authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which sales
of the goods are directed.
Octocom, 16 USPQ2d at 1787. The du Pont factors relating to similarity of the goods,
similarity of channels of trade, and classes of consumers favor a finding of likelihood
of confusion.
B. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.

Next, we consider the similarity of the marks. In comparing the marks we must
consider their appearance, sound, connotation and commercial impression. Palm Bay
Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). The emphasis of our analysis must be on the
recollection of the average purchaser, who normally retains a general, rather than
specific, impression of trademarks. Although we consider the mark as a whole, “in
articulating reasons for reaching a conclusion on the issue of confusion, there is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark. . . .” In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).

3 Applicant’s Br., pp. 1-2; 4 TTABVUE 2-3.
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Applicant’s mark is LEGENDARY BEEF whereas Registrant’s mark is
LEGENDARY STEAK ONLINE. TRADITION ON YOUR TABLE. In comparing the
marks, we note that they are similar to the extent that LEGENDARY, the first word
in both marks, is identical in appearance, sound and meaning. It is well-established
that prospective consumers are often more inclined to focus on the first word, prefix
or syllable in any trademark or service mark. See Palm Bay, 73 USPQ2d at 1692;
Presto Prods., Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t
is often the first part of a mark which is most likely to be impressed upon the mind
of a purchaser and remembered. . . .”). In addition, the second words in both marks
are similar in that they have similar descriptive meanings, i.e., “steak” is a kind of
“beef.”
Applicant argues, inter alia, that the marks are distinguishable because
Registrant’s mark contains the “very dominant” wording TRADITION ON YOUR
TABLE and ONLINE.4 We disagree. Regarding the cited mark, we find
LEGENDARY to be the dominant portion of Registrant’s mark because the terms
STEAK and ONLINE are descriptive, respectively, of the goods and at least one of
the ways in which Registrant’s goods may be sold. The phrase TRADITION ON
YOUR TABLE is less dominant because it is likely to be viewed as a subordinate or
secondary tag line due to its position following LEGENDARY STEAKS ONLINE.
LEGENDARY is the dominant and sole distinctive element of Applicant’s mark, as
the remaining word, BEEF, merely describes Applicant’s goods. We thus find

4 Applicant’s Br., pp. 2-3.
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LEGENDARY to be the dominant term in both Applicant’s and Registrant’s mark,
and therefore it is entitled to more weight in our analysis. Nat’l Data, 224 USPQ at
751.
Applicant further argues that the marks are distinguishable because its mark has
only one word in common with Registrant’s mark. This argument too is unpersuasive.
If, as here, the dominant portion of both marks is the same, then the marks may be
confusingly similar notwithstanding peripheral differences. See In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010) (ML is likely to be
perceived as a shortened version of registrant’s mark, ML MARK LEES); Stone Lion
Capital, 110 USPQ2d at 1161 (STONE LION CAPITAL incorporated the entirety of
the registered marks LION CAPITAL and LION).
In sum, we find the marks are more similar than dissimilar in appearance, sound,
meaning and overall connotation. This du Pont factor favors a finding of likelihood of
confusion.
C. The number and nature of similar marks in use on similar goods.
Applicant argues that “there is a crowded field of marks using the word
LEGENDARY” thereby “demonstrating that fine distinctions are being allowed,
making it necessary for consumers to discern different sources of goods and services
using LEGENDARY in their marketing.”5 In support, Applicant attached to its brief
eight TESS printouts of registrations containing the term LEGENDARY used in

5 Applicant’s Br., pp. 3-4.
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connection with food or restaurant services.6 Although LEGENDARY does appear to
be registered by a number of third parties for use in connection with food and
restaurant services, we do not find that these registrations establish that confusion
is unlikely when the instant marks are used on identical goods. That is, even
assuming, arguendo, that LEGENDARY is weak for food and restaurant services, it
is not so weak that confusion is unlikely as between LEGENDARY BEEF and
LEGENDARY STEAK ONLINE. TRADITION ON YOUR TABLE for identical goods.
Even weak marks are entitled to protection against registration of similar marks. See
In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982).
D. Conclusion.

We have considered all of the arguments and evidence of record, including any not
specifically discussed herein, and all relevant du Pont factors. We find that
Applicant’s mark so resembles the cited registered mark as to be likely to cause
confusion, mistake or deception as to the source of Applicant’s goods.
Decision: The refusal to register Applicant’s mark is AFFIRMED on the ground
of likelihood of confusion with the mark in Reg. No. 4344038, under Trademark Act
Section 2(d).

6 We have considered these printouts because the Examining Attorney discussed them in her
brief without objection to their admission. See In re Litehouse Inc., 82 USPQ2d 1471, 1475
n.2 (TTAB 2007) (Third-party registrations submitted for first time with applicant’s appeal
brief considered because the Examining Attorney did not object in her brief and instead
presented arguments in rebuttal of this evidence); Trademark Trial and Appeal Board
Manual of Procedure (TBMP) § 1207.03 (June 2016).