Sergio Abramof

Trademark Trial and Appeal Board

Mar 28, 2008

No. 78798777 (T.T.A.B. Mar. 28, 2008)

Mailed: March 28, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sergio Abramof
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Serial No. 78798777
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W. Edward Crooks of Hahn Loeser & Parks, LLP for Sergio Abramof.

Susan Kastriner Lawrence, Trademark Examining Attorney, Law
Office 116 (Michael W. Baird, Managing Attorney).
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Before Holtzman, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Sergio Abramof (applicant)
to register the mark SERGIO'S in standard character form for
services identified as "restaurant and bar services; restaurant
services; restaurants" in Class 43.1

1 Serial No. 78798777, filed January 25, 2006, based on an allegation
of first use and first use in commerce on November 30, 1994.

THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 78798777
2
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's services, so
resembles the mark shown below for "restaurant services" in Class
42, as to be likely to cause confusion.2

When the refusal was made final, applicant appealed. Briefs
have been filed.
Our determination under Section 2(d) 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, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

2 Issued January 15, 2002; Sections 8 and 15 affidavits accepted and
acknowledged.
Serial No. 78798777
3
The services in the application and cited registration are
identical to the extent that they both identify restaurants and
restaurant services. Contrary to applicant's apparent
contention, the fact that the classification of the services
differs in the application and registration is legally
irrelevant. Classification is an administrative matter for the
convenience of the Office, and it has no effect on the scope of
registrant's rights in the mark.
Because the services are identical, and there are no
limitations in the application or registration, we must assume
that the channels of trade and classes of purchasers for the
restaurant services are identical. See Interstate Brands Corp.
v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000); and In re Smith
& Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
We turn next to the marks, keeping in mind that when marks
would appear on identical services, the degree of similarity
between the marks necessary to support a finding of likelihood of
confusion declines. Century 21 Real Estate v. Century Life, 970
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Applicant contends that the marks are distinguishable,
arguing that registrant's mark "provides an immediate and
distinct impression of a Mexican food establishment"; that SUPER
SERGIO'S "utilizes alliteration to provide a very unique sound
and connotation--as that of a superhero"; and that registrant's
Serial No. 78798777
4
mark contains distinctive design elements that are not present in
applicant's mark. Applicant concludes that as a result of the
"dominant design elements in combination with the alliterative
and meaningful word combination, the two marks create vastly
different overall impressions."
In determining the similarity or dissimilarity of the marks
we must consider the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. While marks must
be considered in their entireties, it is well settled that "there
is nothing improper in stating that, for rational reasons, more
or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of the
marks in their entireties." In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
When we compare applicant's mark SERGIO'S with registrant's
mark SUPER SERGIO'S and design in their entireties, giving
appropriate weight to the features thereof, we find that the
similarities in the marks outweigh their differences.
The marks are very similar in sound. Applicant's entire
mark is the term SERGIO'S. The identical word SERGIO'S is a
significant part of the phrase SUPER SERGIO'S. SUPER is a
laudatory term which, rather than distinguishing the sound, is
more likely to simply suggest another restaurant owned by
registrant, one that perhaps is even bigger and better than the
Serial No. 78798777
5
original.3 The alliteration of SUPER SERGIO'S might make it
easier to remember the phrase, but it would not prevent
registrant's patrons from assuming that there is some connection
between the two restaurants.
There are differences between the marks in appearance. At
the same time, however, SERGIO'S remains a visually significant
component of registrant's mark. The word SERGIO'S is separated
from SUPER by the design element, and the large, bold lettering
of SERGIO'S creates a visual separation of that word from the
design.
While the design is visually prominent in registrant's mark,
we disagree that it is the "dominant" element of the mark as
applicant claims. It is the word portion of the mark, SUPER
SERGIO'S, rather than the design element in the mark, that is
more likely to have a greater impact on purchasers and be
remembered by them. See CBS, Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198, 200 (Fed. Cir. 1983) ("in a composite mark comprising a
design and words, the verbal portion of the mark is the one most
likely to indicate the origin of the goods to which it is
affixed"). The word portion of a composite word and design mark

3 We take judicial notice of the definition of "super" in The American
Heritage® Dictionary of the English Language (2007) (from the website
www.credoreference.com) as meaning, "1.Very large, great, or
extreme...; and "2.Excellent; first-rate: a super party." (Italics in
original.) The Board may take judicial notice of dictionaries,
including online dictionaries, which exist in printed format. See In
re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002).
Serial No. 78798777
6
is generally accorded greater weight, particularly in the case of
restaurants, because restaurants are often recommended by word of
mouth and referred to orally. See In re Dixie Restaurants Inc.,
105 F3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997).
Furthermore, applicant is seeking registration of the mark
in standard character form. This means that applicant is free to
present his mark in a variety of forms and styles, including the
same, bold, slightly curved style of lettering as registrant
uses, thereby increasing the visual similarity between the
marks.4 See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000) (typed drawings are not
limited to any particular rendition of the mark); and Phillips
Petroleum v. C.J. Webb, 442 F.2d 1376, 170 USPQ 35 (CCPA 1971).
The term SERGIO'S is also significant in conveying the
meaning and commercial impression of registrant's mark. As the
examining attorney notes, both marks create the impression of a
restaurant owned or operated by a person named "Sergio."
We disagree with applicant that "SUPER SERGIO'S" conveys the
meaning and commercial impression of a "superhero." The mark is
not SUPER SERGIO but rather SUPER SERGIO'S, in possessive form.
The term SUPER in this context is more likely to convey something

4 Contrary to the examining attorney's contention, however, rights in
the term SERGIO'S would not extend to include protection for that word
combined with other wording or design elements. See Fossil Inc. v.
Fossil Group, 49 USPQ2d 1451 (TTAB 1998) and In re Pollio Dairy
Products Corp., Inc., 8 USPQ2d 2012 (TTAB 1988).
Serial No. 78798777
7
about the restaurant itself, rather than a characteristic of
"Sergio" or his persona.
Moreover, the design element in registrant's mark, which
consists of a caricature of a man wearing a sombrero and a serape
over his shoulder, may add to, but does not significantly change,
the commercial impression created by SERGIO'S alone. The design
merely reinforces the meaning and commercial impression as a
reference to a person or character named "Sergio." To the extent
that registrant's mark, as applicant claims, creates the
impression of "a Mexican food establishment," this does not
distinguish the marks. Applicant's recitation is broadly worded
as "restaurant services," and it could include a restaurant
featuring Mexican food.
Applicant argues, for the first time in his brief, that
there are 38 third-party registrations that include the word
"SERGIO" or "SERGIO'S." Applicant did not identify the
registration numbers, the marks, or any information about the
goods and services and, in any event, as the examining attorney
correctly notes, applicant's reference to such registrations is
untimely under Trademark Rule 2.142(d). Accordingly, this du
Pont factor does not favor applicant.
Applicant appears to argue that the absence of evidence of
fame of the registrant’s mark should be treated as a factor in
applicant’s favor. However, because this is an ex parte
Serial No. 78798777
8
proceeding, we would not expect the examining attorney to submit
evidence of fame of the cited mark. This du Pont factor, as is
normally the case in ex parte proceedings, must be treated as
neutral.
Applicant's arguments concerning purchaser sophistication
and the absence of actual confusion are unsupported and
unpersuasive. The potential customers of restaurants include
ordinary members of the general public who are not necessarily
sophisticated and who may not necessarily exercise more than
ordinary care in selecting a restaurant. Accordingly, this du
Pont factor does not weigh in applicant's favor.
Nor does the asserted absence of evidence of actual
confusion weigh in favor of applicant. We have no information
regarding the nature or extent of applicant's and registrant's
use or whether a meaningful opportunity for actual confusion ever
existed. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768
(TTAB 1992). Thus, we consider this factor to be neutral. See
Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB 2005).
In view of the foregoing, and because similar marks are used
in connection with identical services, we find that confusion is
likely.
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.