South-western Manage-ment, Inc.

Trademark Trial and Appeal Board

Mar 28, 2005

No. 78271067 (T.T.A.B. Mar. 28, 2005)

Mailed: 3/28/2005

THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE TTAB

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Southwestern Management, Inc.
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Serial No. 78271067
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Robert E. Purcell for Southwestern Management, Inc.

Elissa Garber Kon, Trademark Examining Attorney, Law Office
116 (Meryl Hershkowitz, Managing Attorney).
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Before Hanak, Walters and Bottorff, Administrative
Trademark Judges.

Opinion by Hanak, Administrative Trademark Judge:

Southwestern Management, Inc. (applicant) seeks to
register DELMONICO’S for “restaurant services.” The
application was filed on July 7, 2003 with a claimed first
use date of May 15, 1998.
Citing Section 2(d) of the Trademark Act, the
Examining Attorney refused registration on the basis that
applicant’s mark, as applied to restaurant services, is
likely to cause confusion with two registered marks owned
Ser. No. 78271067
2
by different entities. The first is for DELMONICO
registered for “macaroni, elbow macaroni, macaroni shells,
spaghetti, elbow spaghetti and egg noodles.” Registration
No. 541,258. The second is for DELMONICO registered for
“alimentary pastes.” Registration No. 877,486.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
Our primary reviewing Court has made it abundantly
clear on numerous occasions that “to establish likelihood
of confusion a party must show something more than that
similar or even identical marks are used for food products
and for restaurant services.” Jacobs v. International
Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA
1982)(emphasis added). See also Lloyd’s Food Products Inc.
v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027, 2030 (Fed.
Cir. 1993)(“So the board’s determination … disregards the
requirement that ‘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 Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir.
2003)(“Jacobs provides that ‘to establish likelihood of
confusion a party must show something more than that
Ser. No. 78271067
3
similar or even identical marks are used for food products
and for restaurant services.’”)(original emphasis).
To the best of this Board’s knowledge our primary
reviewing Court has identified only two ways in which the
“something more” requirement can be met. The first is if
the registered mark is not only identical to the applied
for mark, but in addition the registered mark is “well
known and famous.” Jacobs, 212 USPQ at 642. In this case,
the Examining Attorney has never contended that either of
the cited (registered) marks are famous.
The second way that the “something more” requirement
can be met is if the registered mark is not only identical
to applicant’s mark, but in addition, the registered mark
is “particularly unique.” In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1469 (TTAB 1988), aff’d as not citable
precedent 88-1444 (Fed. Cir. November 14, 1988). In the
Mucky Duck case applicant did not in any manner argue that
there were any third party marks even remotely similar to
the highly unique cited mark MUCKY DUCK.
In stark contrast, applicant here argues that
DELMONICO or DELMONICO’S are common names used by numerous
parties for a wide array of food items. In this regard,
applicant points out that the two cited registrations are
owned by different entities, thereby showing that DELMONICO
Ser. No. 78271067
4
or DELMONICO’S are hardly “particularly unique” terms as
was MUCKY DUCK. In addition, during the course of the
examination process, applicant properly made of record over
25 Internet references where the term DELMONICO is used in
connection with a wide array of different food items or
food recipes.
In sum, despite the fact that applicant’s mark is
essentially identical to the two cited marks, we find that
the Examining Attorney has simply failed to meet the strict
“something more” requirement in order to establish that
applicant’s use of its mark for restaurant services and the
use of the two cited marks for various food items is likely
to cause confusion. In so doing, we note that our primary
reviewing Court has on at least three occasions essentially
set forth a higher standard for finding a likelihood of
confusion when the services of “one of the parties” are
restaurant services, given “the very large number of
restaurants in this country.” Coors, 68 USPQ2d at 1064.
Decision: The refusal to register is reversed.