Sacco

Trademark Trial and Appeal Board

Mar 12, 2008

No. 78688885 (T.T.A.B. Mar. 12, 2008)

Mailed:
12 March 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sacco1
________

Serial No. 78688885
_______

Kathleen A. Pasulka of Procopio Cory Hargreaves & Savitch
LLP for Joe Sacco.

John E. Michos, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Rogers, Drost, and Cataldo, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 9, 2005, applicant Joe Sacco applied to
register the mark KICK’N WINGS (standard character mark) on
the Principal Register for “restaurant services” in Class
43. Application Serial No. 78688885 is based on
applicant’s allegation of a bona fide intent to use the

1 The application identifies the applicant as “Sacco, Joe/Joe
Sacco.” In response to the examining attorney’s inquiry
concerning ownership, applicant responded: “The USPTO
instruction requested that the individual’s name be typed
backwards slash forwards. There is only one Applicant, Joe
Sacco.” Response dated September 6, 2006 at 1.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78688885
2
mark in commerce. Applicant has disclaimed the word
“Wings.”
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), because of the following two
registrations.
Registration No. 2381484
KICK’N WINGS (typed or standard character form)
For: "poultry" in Class 29
Disclaimer: Wings
Registration date: August 29, 2000
Affidavits: §§ 8 and 15

Registration No. 1752747

For: "poultry; namely, prepared chicken"2 in Class 29
Registration date: February 16, 1993
Renewed

The current owner of both registrations is identified
as Perdue Holdings, Inc.
After the examining attorney made the refusal final,
this appeal followed.
Inasmuch as the issue in this case involves a
determination of whether there is a likelihood of

2 The term “wings” has been deleted from the registration’s
identification of goods.
Ser No. 78688885
3
confusion, we consider the facts of record in view of the
relevant factors set out in In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot, Inc. v.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir.
2000). In considering the evidence of record on these
factors, we must keep in mind that “[t]he fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
We begin by comparing the marks at issue here.
Applicant’s mark is KICK’N WINGS. Registrant’s marks also
contain the identical words KICK’N WINGS although in one
(the ‘747 registration), registrant adds a design that does
not appear to include the apostrophe before the letter “N.”
Thus, one registration is identical to applicant’s mark and
the other registration contains the identical words. In
these situations, “even when goods or services are not
competitive or intrinsically related, the use of identical
marks can lead to an assumption that there is a common
source.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
Ser No. 78688885
4
1687, 1689 (Fed. Cir. 1993). See also Amcor, Inc. v. Amcor
Industries, Inc., 210 USPQ 70, 78 (TTAB 1981)(When the
marks are identical, “the relationship between the goods on
which the parties use their marks need not be as great or
as close as in the situation where the marks are not
identical or strikingly similar”).
Applicant argues that “KICKIN is not uncommon for food
products as well as restaurant services.” Brief at 3. In
its brief and in its response dated September 6, 2006 at 1,
applicant also listed some marks and argues that:
A search of the Internet proves this point as well as
the registered marks on the Principal Register. For
example: TENDERS! WHERE THE CHICKEN IS KICKIN! For
restaurant services, KICKIN’ CORNBREAD for cornbread,
ASS KICKIN’ for sauces and bread, KICKIN CORNBREAD,
for cornbread, KICKIN KARIBBEAN for chicken wing
sauce, KICKING HORSE COFFEE for coffee, KICKIN’ CAJUN
for meat snacks, and KICKIN’ IT with FLAVOR for
tortilla chips.

According to applicant, “[a]ll of these marks are
owned by parties other than those of the cited
Registrations.” Brief at 3.
The examining attorney has objected to these
registrations because applicant “has not properly made any
third party registrations of record.” Brief at unnumbered
p. 6. While we normally require copies of registrations to
be submitted before we will consider them on appeal, there
are exceptions.
Ser No. 78688885
5
Copies of third-party registrations that are submitted
with an applicant’s brief may be considered in certain
circumstances, even if the examining attorney objects
to the registrations or does not discuss them in the
examining attorney’s brief. If the applicant, during
the prosecution of the application, provided a listing
of third-party registrations, without also submitting
actual copies of the registrations, and the examining
attorney did not object or otherwise advise applicant
that a listing is insufficient to make such
registrations of record at a point when the applicant
could cure the insufficiency, the examining attorney
will be deemed to have waived any objection as to
improper form.

TBMP § 1207.03 (2d ed. rev. 2004).

Here, the examining attorney did not advise applicant
that he needed to submit copies of these registrations that
applicant referred to in his response to the first Office
action. Therefore, we will consider the information that
applicant has made of record. TBMP § 1208.02 (2d ed. rev.
2004) (“The Board will not consider more than the
information provided by applicant. Thus, if applicant has
provided only a list of registration numbers and marks, the
list will have very limited probative value”).
Applicant also submitted two pages of GOOGLE search
results. These truncated search results are entitled to
little weight. In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Because the
GOOGLE search report provides very little context of the
use of ASPIRINA on the webpages linked to the search
Ser No. 78688885
6
report, it is of little value in assessing the consumer
public perception of the ASPIRINA mark”). Some of these
search engine results are difficult to understand or not
relevant. See, e.g., www.darkstarlings.com (“o wait don’t
forget that lovable psychotic squirrel foamy!! Kicken
wings!…”); www.wwhh.net (Wheels Wings-N-Hobbies Forums …
kicken new computer”); and www.urbandictionary.com (no
identified reference to Kicken wings). However, there is a
reference to “Kicken Chicken Pizza” (www.chiefsonline.com);
“Our famous oven baked wings: Choose from · Kicken · Hot ·
Medium · Mild…” (pigseye.keenesaw.com); and “Kicken Wings
recipe” (www.epicurious.com). While these uses generally
show the term as “Kicken,” and this evidence is entitled to
only very limited weight, it does undercut the examining
attorney’s argument (Brief at 6) that “Registrant’s marks
include a novel contraction of the word ‘kicking.’”
Nonetheless, the limited evidence that applicant has made
of record does not establish as fact applicant’s contention
that because “of the many uses of the word KICK’N, in
various forms, … the public will be able to differentiate
between the source of Applicant’s services and the goods
sold by” registrant. Brief at 3.
We conclude that the wording in the marks is identical
in sound, appearance, meaning, and commercial impression.
Ser No. 78688885
7
The addition of the design in the ‘747 registration does
not overcome the fact that words are identical and they
would dominate the mark because it is likely to be the way
purchasers refer to the cited registrant’s prepared
chicken.
Next, we consider whether applicant’s restaurant
services are related to registrant’s poultry and prepared
chicken. We must consider the goods and services as they
are identified in the application’s and registration’s
identifications of goods and services. Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“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 [or services] set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods [or
services], the particular channels of trade or the class of
purchasers to which the sales of goods [or services] are
directed”). The “prepared chicken” in cited Registration
No. 1752747 can include chicken that is available for carry
out at restaurants, grocery stores, and similar
establishments.
Ser No. 78688885
8
Inasmuch as the goods and services here involve
restaurant services and food items, we must also consider
that there is no per se rule that confusion is likely
simply because “similar or even identical marks are used
for food products and for restaurant services.” Jacobs v.
International Multifoods Corporation, 668 F.2d 1234, 212
USPQ 641, 642 (CCPA 1982). See also In re Coors Brewing
Co., 343 F.3d 1340, 68 USPQ2d 1059, 1064 (Fed. Cir. 2003)
(“But the registered mark in this case is simply for
restaurant services in general, and the Board’s conclusion
that restaurant services and beer are related is based on
the fact that a tiny percentage of all restaurants also
serve as a source of beer, which is a very weak evidentiary
basis for a finding of relatedness”). The Federal Circuit
further explained, however, that the outcome would have
been different “if the registrant’s mark had been for a
brewpub or for restaurant services and beer. In that case,
the goods and services associated with the two marks would
clearly be related.” Id.
The examining attorney has submitted numerous use-
based registrations to show that the same entity has
registered a common mark for restaurant services and
chicken food products.
Ser No. 78688885
9
No. 1461151 – “restaurant services” and “barbecued
chicken wings”

No. 3127996 – “eat in and take out restaurant
services” and “chicken wings served with a variety of
sauces and prepared in a variety of ways”

No. 2898622 - “delicatessen, restaurant and catering
services” and “meat and poultry”

No. 2965476 - “restaurant services” and “fried chicken
and shish ka bobs”

No. 3068668 - “restaurant and catering services” and
“meat and poultry”

No. 1896345 - “restaurant and catering services” and
“prepared frozen or packaged entrees or meals
consisting primarily of meat, fish, poultry, and/or
vegetables”

In addition, other registrations show that the same
mark has been registered for restaurant services and also
for prepared chicken for consumption on and off the
premises of the restaurants. See, e.g., Registration Nos.
1896345, 2736423, 2866170, 2934591, 3042453, and 3110692.
These registrations suggest, in general, that poultry
and restaurants services are related; and more
specifically, that restaurant services and takeout and
prepared chicken items are also related. See In re
Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214,
1217-18 (TTAB 2001) (“The registrations show that entities
have registered their marks for both television and radio
broadcasting services. Although these registrations are
Ser No. 78688885
10
not evidence that the marks shown therein are in use or
that the public is familiar with them, they nevertheless
have probative value to the extent that they serve to
suggest that the services listed therein, including
television and radio broadcasting, are of a kind which may
emanate from a single source. See, e.g., In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993);
and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470
at n. 6 (TTAB 1988)").
Furthermore, not only does applicant’s identification
of restaurant services include restaurants that sell
chicken, but also applicant has disclaimed the word “Wings”
and argued (response dated September 6, 2006 at 2) that
KICK’N is “the dominant portion of both marks, with the
rest being descriptive.” Our case law has recognized that
the “something more” requirement of Jacobs includes
situations where the specific food items of one entity are
likely to be sold in the other’s restaurant. See In re
Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209, 1211
(TTAB 1999) (“The average consumer, therefore, would be
likely to view Mexican food items and Mexican restaurant
services as emanating from or sponsored by the same source
if such goods and services are sold under the same or
substantially similar marks”); In re Opus One Inc., 60
Ser No. 78688885
11
USPQ2d 1812, 1815 (TTAB 2001) (“The fact that applicant’s
restaurant serves the type of goods (indeed the actual
goods) identified in the cited registration is certainly
probative evidence which supports a finding under the
second du Pont factor that applicant’s services and
[registrant’s] goods are related”). Therefore, we find
that applicant’s restaurant services and registrant’s
poultry and prepared chicken are related. Furthermore,
patrons of restaurants serving chicken to eat in or take
out are likely to overlap with purchasers of prepared
chicken and poultry in grocery stores.
Because the wording in the marks is identical and
restaurant services, which would include restaurants that
serve chicken, are related to poultry and prepared chicken,
we conclude that that consumers are likely to believe that
there is an association between applicant’s KICK’N WINGS
restaurant services and registrant’s KICK’N WINGS poultry
and KICK’N WINGS and design prepared chicken.
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.