Sunshine Grille LLC

Trademark Trial and Appeal Board

Jul 11, 2008

No. 78804792 (T.T.A.B. Jul. 11, 2008)

Mailed: July 11, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sunshine Grille LLC
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Serial No. 78804792
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Morton J. Rosenberg of Rosenberg, Klein & Lee for Sunshine
Grille LLC.

Ameeta Jordan, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Drost, Zervas and Kuhlke, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Sunshine Grille LLC (“applicant”) has appealed from
the final refusal of the trademark examining attorney to
register the mark

THIS OPINION IS
NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 788804792
2
on the Principal Register for “restaurant services” in
International Class 43. Applicant seeks registration of
its mark under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), has disclaimed the term GRILLE and has entered
the following description of the mark:
The mark consists of the stylized words "SUNSHINE
GRILLE" in the color yellow over an orange
circular contour having yellow arcuate ray like
projections extending radially from the orange
circular contour. The color orange, appears in
the center of the sun, the color yellow appears
in the ray-like projections of the sun and in the
stylized wording "SUNSHINE GRILLE" and the color
black appears in the bordering of the lettering
"SUNSHINE GRILLE", the shadowing of the wording
"SUNSHINE GRILLE", the border of the ray-like
projections, the border of the sun's orange
center.”

The examining attorney has refused registration
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the following previously registered mark (Registration No.
1714533, issued September 8, 1992, renewed November 2,
2002) for “restaurant services” in International Class 42
as to be likely to cause confusion or mistake, or to
deceive:

Serial No. 788804792
3

The registration record states that registrant’s mark is
lined for the colors red, blue and yellow.
After the refusal was made final, applicant filed an
appeal. Both applicant and the examining attorney have
filed briefs. Upon careful consideration of applicant’s
and the examining attorney’s arguments and the evidence of
record, we conclude that applicant's mark is likely to be
confused with the cited mark and affirm the refusal to
register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are 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., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Serial No. 788804792
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Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
The Services
The application and the registration recite identical
services, namely, restaurant services. The du Pont factor
regarding the similarity of the services hence is resolved
in favor of finding a likelihood of confusion.
The Marks
Turning then to a consideration of the marks, we must
determine whether applicant's mark and registrant’s mark,
when compared in their entireties, are similar or
dissimilar in terms of sound, appearance, connotation and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). Although the marks must be
considered in their entireties, it is well settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985). Furthermore, the test is
not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks
are sufficiently similar in terms of their commercial
Serial No. 788804792
5
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Finally, when
marks appear on identical services, as it the case here,
the degree of similarity necessary to support a conclusion
of likelihood of confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 824, 23
USPQ2d 1698 (Fed. Cir. 1992).
Turning first to registrant’s mark, applicant
maintains that there are three words in registrant’s mark,
SUN, SHINE and CAFÉ rather than two words, SUNSHINE and
CAFÉ. We disagree. While the second letter “S” in
SUNSHINE is in capital letters, there is no space between
SUN and SHINE in registrant’s mark. Also, “sunshine” is an
English language word. See entry from The American
Heritage Dictionary of the English Language (4th ed. 2000)
submitted by the examining attorney with her brief, taken
from bartleby.com.1 In any event, the presence or absence

1 We take judicial notice of this definition. The Board may take
judicial notice of dictionary definitions, including online
dictionaries which exist in printed format. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002).
See also University of Notre Dame du Lac v. J. C. Gourmet Food
Serial No. 788804792
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of a space is not a significant difference. See Stockpot,
Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 54 (TTAB
1983), aff'd, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984)
(“There is no question that the marks of the parties
[STOCKPOT and STOCK POT] are confusingly similar. The word
marks are phonetically identical and visually almost
identical”); and In re Best Western Family Steak House,
Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little
doubt that the marks [BEEFMASTER and BEEF MASTER] are
practically identical”).
SUNSHINE is the dominant portion of registrant’s mark.
SUNSHINE is featured prominently in the mark, appearing in
large lettering spanning the width of the mark. Also, it
is part of the wording in registrant’s mark; the wording in
a composite mark rather than the design element of the
mark, 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 is generally

Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 788804792
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accorded greater weight because the wording would be used
to request or recommend the goods or services. See In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Further, the depiction of the sun in the middle of the mark
is much smaller than the word SUNSHINE, is not particularly
distinctive and merely serves to reinforce the meaning of
SUNSHINE. The depiction of the sun does not significantly
add to or change the commercial impression created by
SUNSHINE. As far as the term CAFÉ, it is a merely
descriptive or generic term for registrant’s services and
is in substantially smaller lettering than SUNSHINE. While
CAFÉ is not ignored, the fact is, that consumers are more
likely to rely on the nondescriptive portion of the mark,
that is, the words SUNSHINE, as an indication of source.
See In re National Data Corp., supra at 751 (“That a
particular feature is descriptive or generic with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark”).
SUNSHINE is also the dominant portion of applicant's
mark. SUNSHINE appears above GRILLE and GRILLE is a
descriptive term, which applicant has acknowledged by its
disclaimer thereof. The depiction of the sun serves as a
background element to the wording in applicant's mark and,
like the sun in registrant’s mark, merely reinforces the
Serial No. 788804792
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meaning conveyed by the word SUNSHINE. Also, as we have
noted above, the wording rather than the design in a mark
is more likely to have a greater impact on purchasers and
be remembered by them.
When we compare applicant's mark to registrant's mark
in their entireties, giving appropriate weight to the
features thereof, we find that applicant's mark is highly
similar in sound, connotation and overall commercial
impression to registrant’s mark due to the prominent shared
term SUNSHINE appearing in both marks, followed by the
descriptive or generic term for an eating establishment.
Any differences in the marks – most notably in terms of
appearance - are far outweighed by the similarities in the
marks. We therefore resolve the du Pont factor regarding
the similarity of the marks against applicant.
Strength of Registrant’s Marks
In support of its contention that the term SUNSHINE is
weak in connection with restaurant services, applicant has
noted that the examining attorney initially refused
registration in view of two additional registrations,
namely Registration Nos. 2371913 and 2407514, both for the
marks SUNSHINE (in typed form) for “fermented malt
beverages, namely, ale” and for various foods and drinks,
respectively. Applicant also introduced into the record
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approximately fifteen registrations including the words
SUNSHINE or SUN.
Third-party registrations are not evidence that the
marks shown therein are in use, or that the public is
familiar with them. In re 1st USA Realty Professionals
Inc., 84 USPQ2d 1581 (TTAB 2007). Also, most of the
registrations have limited probative value because they are
not for restaurant services or services related to
restaurant services. The registration for SUNDECK for
services including “restaurant and lounge services” also
has limited probative value because SUNDECK has a very
different commercial impression from SUNSHINE. Thus,
applicant has not persuaded us that the term SUNSHINE is a
weak term in connection with restaurant services, and we
accord registrant’s mark the normal scope of protection
afforded to registered marks.
Sophistication of Purchasers
Under the heading “Sophistication of the Consumer,”
applicant has argued that “Appellant’s services … are
directed to restaurant services which is easily
distinguishable by even the most naïve of consumers based
on Appellant’s mark.” While applicant's argument is not
clear, applicant is advised that “restaurant services”
encompass services provided in casual dining establishments
Serial No. 788804792
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to members of the general public. Therefore, we do not
attribute any particular sophistication to purchasers of
applicant's or registrant’s services.
Conclusion
Upon consideration of the relevant du Pont factors
discussed above, as well as the evidence of record and the
arguments of the examining attorney and applicant, we
conclude that when purchasers who are familiar with
registrant’s mark for restaurant services encounter
applicant's similar mark for identical services, they are
likely to be confused.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.