Raj & Raj Realty, Ltd.

Trademark Trial and Appeal Board

Jan 11, 2001

No. 75586706 (T.T.A.B. Jan. 11, 2001)

1/11/01
Hearing: Paper No. 13
September 20, 2000 PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Raj & Raj Realty, Ltd.
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Serial No. 75/586,706
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Chris J. Coschignano, P.C. and Eric P. Milgrim, Esq. for
Raj & Raj Realty, Ltd.
Steven Berk, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
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Before Hohein, Hairston and Holtzman, Administrative
Trademark Judges.1
Opinion by Hairston, Administrative Trademark Judge:
Raj & Raj Realty, Ltd. has filed an application to
register the mark shown below,
1 Judge Holtzman has been substituted for Judge McLeod who is no
longer with the U.S. Patent and Trademark Office. See In re Bose
Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985).
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/586,706
2
for restaurant services.2
Registration has been finally refused by the Trademark
Examining Attorney under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), on the ground that applicant’s mark,
when used in connection with the identified services, so
resembles each of the following marks, which are registered
to the same entity, as to be likely to cause confusion,
mistake or deception:
SINGLETON for “fresh and frozen fish and
shellfish”;3
SINGLETON SUPREME for “frozen shellfish”;4
and the mark shown below
for “fresh and frozen seafood”.5
Applicant has appealed. Briefs have been filed and an
oral hearing was held before the Board.
2 Serial No. 75/586,706, filed November 12, 1998, which alleges
dates of first use of January 15, 1998.
3 Registration No. 1,222,770 issued January 4, 1983; combined
Section 8 & 15 affidavit filed.
4 Registration No. 1,190,854 issued February 23, 1982; combined
Section 8 & 15 affidavit filed.
5 Registration No. 1,202,907 issued July 27, 1982; combined
Section 8 & 15 affidavit filed.
Ser No. 75/586,706
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Applicant, in urging reversal of the refusal to
register, contends that when the marks are viewed in their
entireties, its mark is different from each of the cited
marks; and that its restaurant services and registrant’s
seafood are not related because its restaurants do not
specialize in seafood, but instead feature “American
cuisine” with some seafood on the menu. Also, applicant
maintains that there have been no instances of actual
confusion.
The Examining Attorney, on the other hand, argues that
applicant’s mark and each of the cited marks are very
similar because of the shared presence of the term
“SINGLETON(S).” Further, the Examining Attorney contends
that applicant’s restaurant services and registrant’s
seafood are related because seafood and restaurant services
are commonly marketed by a single entity under a single
mark. Also, the Examining Attorney notes that applicant
serves seafood in its restaurants.
Our determination under Section 2(d) of the Trademark
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. In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
any likelihood of confusion analysis, two key
Ser No. 75/586,706
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considerations are the similarities between the marks and
the similarities between the goods and/or services.
We note, at the outset, that there is no per se rule
which requires a finding that confusion is likely whenever
food items and restaurant services are sold under similar
marks. See, e.g., Jacobs v. International Multifoods
Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA 1982) [no
likelihood of confusion between BOSTON TEA PARTY for tea
and BOSTON SEA PARTY for restaurant services; “a party must
show something more than that similar or even identical
marks are used for food products and for restaurant
services”]; and In re Central Soya Company, Inc., 220 USPQ
914 (TTAB 1984) [no likelihood of confusion between POSADA
(stylized) for Mexican style prepared frozen enchiladas and
LA POSADA for lodging and restaurant services].
Turning first to the marks, although there are
similarities between them due to the shared presence of the
term “SINGLETON(S),” we find that there are specific
differences between applicant’s mark and each of the cited
marks. In particular, the plural “SINGLETONS,” the
inclusion of the initials “H” and “R,” and the prominent
design feature in applicant’s mark [which includes HSR in
large letters] results in a mark that, when considered in
its entirety, is different in appearance from SINGLETON,
Ser No. 75/586,706
5
SINGLETON SUPREME and CLARA SINGLETON and the design of a
boat.
Moreover, as to the respective services and goods, we
are not persuaded, on this record, that restaurant services
and seafood are related. In support of his contention that
such goods and services are related, the Examining Attorney
submitted five third-party registrations of marks which
cover “fish”, on the one hand, and “restaurant services,”
on the other hand. However, there are several problems
with the registrations. One of the registrations issued
under Section 44(e) of the Trademark Act, rather than on
the basis of use in commerce, and two of the registrations
are clearly house marks and cover a variety of food items
and other unrelated products/services. In short, these
registrations do not satisfy the “something more” evidence
requirement set forth by the Court in Jacobs v.
International Multifoods Corp., supra at 643 [of 212 USPQ].
While the Examining Attorney has relied on In re Azteca
Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999), in
support of his contention that restaurant services and
seafood are related, we believe that case is
distinguishable from the facts herein. In that case, the
Board found a likelihood of confusion between the
applicant’s restaurant services rendered under the mark
Ser No. 75/586,706
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AZTECA MEXICAN RESTAURANT and the registrant’s Mexican food
products sold under the mark AZTECA. Not only were the
marks in In re Azteca substantially similar, but the record
therein consisted of ten use-based third-party
registrations of marks which were registered for restaurant
services, on the one hand, and food items, on the other
hand. In addition, five of the registrations covered both
restaurant services and Mexican food items.
In sum, when we consider the specific differences in
applicant’s mark and the cited marks with the fact that
this record lacks the “something more” necessary to
establish that restaurant services and seafood are related,
it is our view that applicant’s use of the mark HSR HR
SINGLETONS and design is not likely to cause confusion with
the marks SINGLETON, SINGLETON SUPREME and CLARA SINGLETON
and design.
Decision: The refusal to register is reversed as to
each of the cited registrations.