88348982 (T.T.A.B. Feb. 8, 2021)

Take Five Co.

Trademark Trial and Appeal BoardFeb 8, 2021

88348982 (T.T.A.B. Feb. 8, 2021)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: February 8, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Take Five Co. _____ Serial No. 88348982 _____ Michael T. Smith of Birch, Stewart, Kolasch & Birch LLP, for Take Five Co. Ronald E. DelGizzi, Trademark Examining Attorney, Law Office 107, J. Leslie Bishop, Managing Attorney. _____ Before Wellington, Coggins, and Dunn, Administrative Trademark Judges. Opinion by Coggins, Administrative Trademark Judge: Take Five Co. (“Applicant”) seeks registration on the Principal Register of the standard character mark MANPUKU for “providing of food and drink,” in International Class 43.1 The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that 1 Application Serial No. 88348982 was filed on March 20, 2019, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as August 1998. According to the application, “The English translation of ‘MANPUKU’ in the mark is ‘full’ as in ‘full belly’ and ‘full of fortune’.” Serial No. 88348982 - 2 - Applicant’s MANPUKU mark, as applied to the services identified in the application, so resembles the composite MANPUKU REVOLUTION mark shown below for, inter alia, Restaurant services, namely, providing ramen noodle soup and Chinese noodles accompanied by soup for dipping; restaurant services, namely, providing Japanese cuisine; Restaurant services, namely, providing food and drink; providing information relating to providing food and drink; providing food and drink catering services; providing information relating to restaurant and catering services, in International Class 43,2 on the Principal Register as to be likely to cause confusion, to cause mistake, or to deceive. The cited registration contains the following statements: The mark consists of a rectangle with a rounded bottom edge that is divided into two parts, the top part being a smaller rectangular shape and the bottom having a rounded bottom edge, all outlined in red. Japanese characters appear in the top portion in red. The wording “MANPUKU REVOLUTION” appears in the bottom portion in red between rows of Japanese characters in red. A stylized red mouth and tongue outlined in red appear below the characters inside the rounded bottom portion of the rectangle. The color white represents background color and is not claimed as a feature of the mark. 2 Registration No. 5521761, issued July 24, 2018. The registration covers additional goods and services not cited by the Examining Attorney. Serial No. 88348982 - 3 - The color red is claimed as a feature of the mark. The English translation of the word “MANPUKU” in the mark is “eat happy.” The non-Latin characters in the top portion of the mark transliterate to “Subete no hito ni Manpuku to Koufuku o” and this means “A full belly and happiness to all people” in English. The non-Latin characters in the bottom portion of the mark transliterate to “MANPUKU KAKUMEI” and this means “eat happy revolution.” When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. Applicable Law Our determination of the issue of likelihood of confusion is based on an analysis of all 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) (“DuPont”). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162- 63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative Serial No. 88348982 - 4 - effect of differences in the essential characteristics of the goods and differences in the marks.”). A. Identity of the services, channels of trade, and classes of purchasers We initially turn to the comparison of the services under the second DuPont factor. In making our determination regarding the relatedness of the services, we must look to the services as identified in Applicant’s application and the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); In re Info. Builders Inc., 2020 USPQ2d 10444, *2 (TTAB 2020). “[R]egistration must be refused in a particular class if Applicant’s mark for any of its identified goods or services in that class is likely to cause confusion with the Registrant’s mark for any of its identified goods or services.” In re Info. Builders Inc., 2020 USPQ2d 10444 at *2 (citing SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983), and Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335 , 209 USPQ 986, 988 (CCPA 1981)). Applicant’s services are “providing of food and drink.” Registrant’s services include “restaurant services, namely, providing food and drink.” The Examining Attorney argues that the “services are legally identical” inasmuch as “Registrant has specified that it provides food and drink through a restaurant while the Applicant has not limited the venue [for its provision of food and drink]. Applicant’s more Serial No. 88348982 - 5 - broadly written services encompass providing food and drink at a restaurant . . . .” 8 TTABVUE 12.3 We agree that the services are legally identical in part, and Applicant does not argue otherwise. See Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (where the services in an application or registration are broadly described, they are deemed to encompass all the goods of the nature and type described therein); In re Hughes Furniture Indus., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.”’). The third DuPont factor concerns “[t]he similarity or dissimilarity of established, likely-to-continue trade channels.” Stone Lion Capital v. Lion Capital, 110 USPQ2d at 1161 (quoting DuPont, 177 USPQ at 567). Inasmuch as the provision/providing of food and drink identified in the application and the cited registration are legally identical in part, we must presume that the channels of trade and classes of purchasers for these services are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Moreover, this principle is borne out by the evidence of record in the application. As the Examining Attorney points out, Registrant’s services also include the more limited service of “providing Japanese cuisine” and “Applicant’s specimens refer to the mark being used in conjunction with 3 Citations to the briefs refer to the Board’s TTABVUE docket system. Citations to the prosecution file refer to the downloadable .pdf version of the Trademark Status & Document Retrieval (“TSDR”) system record. Serial No. 88348982 - 6 - Japanese barbeque restaurants.” 8 TTABVUE 12. Indeed, the specimens reveal that Applicant specializes in Japanese cuisine, operating a “chain of Japanese barbecue (yakiniku) restaurants.” March 20, 2019 Specimen at TSDR 2. For these reasons we find that the services are in part legally identical, and offered via the same channels of trade to the same classes of consumers. Thus, the second and third DuPont factors weigh in favor finding a likelihood of confusion. B. Similarity or dissimilarity of the marks in their entireties We next consider whether Applicant’s and Registrant’s marks are similar when viewed in their entireties in terms of appearance, sound, connotation, and commercial impression. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1689 (Fed. Cir. 2005)). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). Accord Krim- Ko Corp. v. Coca-Cola Bottling Co. , 390 F.2d 728 , 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted). The test under the first DuPont factor is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar that confusion as to the source of the goods offered under the respective marks is likely to result. See In re i.am.symbolic, llc, 123 Serial No. 88348982 - 7 - USPQ2d at 1748; Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). Consumers may not necessarily encounter the marks in close proximity and must rely upon their recollections thereof over time. In re Mucky Duck Mustard, 6 USPQ2d 1467, 1468 (TTAB 1988). Inasmuch as the services at issue are the provision/providing of food and drink, the average purchaser is an ordinary consumer. Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, “our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on a comparison of the entire marks, not just part of the marks.” In re Ox Paperboard, LLC, 2020 USPQ2d 10878, *4 (TTAB 2020) (citing Stone Lion, 110 USPQ2d at 1161). On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, 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 a consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Serial No. 88348982 - 8 - Applicant’s mark is MANPUKU. The registered composite mark is with MANPUKU REVOLUTION the only Latin-character text therein. The Examining Attorney argues that MANPUKU is a dominant element of the cited mark, 8 TTABVUE 6, but Applicant counters that such a conclusion rests on an impermissible dissection of the cited mark and is unsupported by any evidence. 6 TTABVUE 4. Applicant argues that the design element is the dominant portion of Registrant’s mark because it “consumes almost the entirety of the space created by the mark” and therefore conveys a significantly different commercial impression than Applicant’s single-word mark. Id. at 5. While we note that Applicant’s mark is fully incorporated within Registrant’s mark, we also note that Registrant’s mark contains significant design elements, particularly the overall stylized shape of a human head with a smiling mouth and lip- licking element lending to the commercial impression of enjoyment of or happiness through delicious and satisfying food. When a mark comprises both words and a design, the words are normally accorded greater weight because they are more likely to be impressed upon a purchaser’s memory and would typically be used by purchasers to request the services. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012). Such is the case here with the wording MANPUKU REVOLUTION, which is the only Latin-character wording in the cited mark. The MANPUKU term in the cited mark, which is followed Serial No. 88348982 - 9 - by the term “revolution,” is identical in sound to Applicant’s MANPUKU mark. Nonetheless, we do not disregard the design elements of Registrant’s mark. Indeed, it is the focus of Applicant’s argument. As noted above, we assess not whether the marks can be distinguished in a side- by-side comparison, with a list of specific differences, but rather whether their overall commercial impressions are so similar that confusion as to the source of the goods offered under the respective marks is likely to result. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., 101 USPQ2d at 1721); Ox Paperboard, 2020 USPQ2d 10878 at *4. Here, we are not persuaded that the overall design of the cited mark leads to an altogether different commercial impression. Applicant states that its mark MANPUKU means “‘full’ as in ‘full belly’ and ‘full of fortune’.” November 29, 2019 Response to Office Action (TSDR 1). The Examining Attorney’s evidence supports this “full” meaning with additional nuances such as “have a surfeit of,” “cause surfeit,” “filling the stomach,” and “full stomach.” June 3, 2019 Office Action (TSDR 9 (wordhippo.com), 11 (jlearn.net/dictionary), and 13 (nihongomaster.com/dictionary)). Indeed, Applicant’s specimen educates its diners that “Manpuku . . . means ‘to be happy with a full stomach’ in Japanese . . . .” March 20, 2019 Specimen (TSDR 2). This is a similar meaning to the “manpuku” wording and the non-Latin characters translation in Registrant’s composite mark, which apparently mean “eat happy” and “a full belly and happiness to all people,” respectively, and which meanings and their commercial impressions are reinforced Serial No. 88348982 - 10 - by the overall smiling, licking lips design element of the cited mark. Each mark conveys happiness through eating, Registrant’s mark doing so through both its wording (in Latin and non-Latin characters) and separately by its lip-licking design. See Herbko Int’l Inc. v. Kappa Books Inc., 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (“[T]he puzzle design does not convey any distinct or separate impression apart from the word portion of the mark. Rather, it serves only to strengthen the impact of the word portion in creating an association with crossword puzzles.”); In re Swatch Grp. Mgmt. Servs. AG, 110 USPQ2d 1751, 1762 (TTAB 2014) (“[T]he combination of the design with the word TOURBILLON reinforces the singular impression conveyed by the mark as a whole, which is nothing more than the significance of ‘tourbillon.’”), aff’d per curium, 599 F. App’x 959 (Fed. Cir. 2015). Applicant does not contend that the non-Latin characters in the cited mark create a particular impression, especially one separate from the design; but Applicant argues that “the additional wording and features in [R]egistrant’s mark cause the marks to convey significantly different commercial impressions.” 6 TTABVUE 6. However, while an addition to a mark may be sufficient to avoid a likelihood of confusion if the marks in their entireties convey significantly different commercial impressions (see, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004) (reversing Board’s holding that contemporaneous use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression)) such is not the case Serial No. 88348982 - 11 - here. The design elements of the cited mark do not significantly change the commercial impression of Registrant’s Latin or non-Latin wording. To the contrary, they reinforce such an impression and make it doubly similar to the satisfying, “full belly” commercial impression of Applicant’s mark. Because Applicant’s mark is presented in standard characters, it is not limited to any particular font style, size, or color. Trademark Rule 2.52(a). Applicant may therefore display its mark in any font or color similar to the way the MANPUKU REVOLUTION portion of the cited mark appears. See, e.g., In re Viterra, 101 USPQ2d at 1908 (holding that the specific font style of a mark cannot serve as the basis to distinguish it from a mark in standard character form); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (“[T]he rights associated with a standard character mark reside in the wording per se and not in any particular font style, size, or color.”) (citing Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011)). Indeed, it appears from the specimens that Applicant routinely displays its mark in a shade of red. March 20, 2019 Specimen at TSDR 1-3, 5, 7, 9-10. This increases the similarity of the marks as the color red is a claimed as a feature of the cited mark. In sum, although we have pointed to the identical portions of the marks, we acknowledge the fundamental rule that the marks must be considered in their entireties. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015); Massey Junior Coll., Inc. v. Fashion Inst. of Tech., 492 F.2d 1399, 181 USPQ 272, 273- Serial No. 88348982 - 12 - 74 (CCPA 1974). We note the specific differences pointed out by Applicant. These differences, however, are outweighed by the similarities of the marks, particularly that Applicant’s mark is wholly encompassed within the cited mark, and both the design and wording of the cited mark separately convey a similar commercial impression to Applicant’s mark. Thus, when comparing the marks overall, we find that they are similar in sound and overall commercial impression. See In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (Board held “if one of the marks comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services” and “because applicant’s mark shares with registrant’s mark that element responsible for creating its overall commercial impression, the marks are confusingly similar.”). For these reasons, we find that the marks are similar. The first DuPont factor thus also weighs in favor of finding a likelihood of confusion. This finding is bolstered here because, “[w]hen marks would appear on virtually identical . . . services, the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines.” In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting Century 21 Real Estate Corp. v. Century Life of Am., 23 USPQ2d 1698, 1799, (Fed. Cir. 1992)). See also In re Am. Cruise Lines, Inc., 128 USPQ2d 1157, 1160 (TTAB 2018) (citing, inter alia, Coach Servs. v. Triumph Learning, 101 USPQ2d at 1721). Serial No. 88348982 - 13 - C. Conclusion When we consider the record and the relevant likelihood of confusion factors, and all of Applicant’s arguments relating thereto, we conclude that consumers familiar with Registrant’s restaurant services of “providing Japanese cuisine” and “providing food and drink” offered under its composite MANPUKU REVOLUTION mark would be likely to believe, upon encountering Applicant’s proposed MANPUKU mark, that the identical services originated with or are associated with or sponsored by the same entity. Having found that the services are in part legally identical, and offered in the same channels of trade to the same classes of purchasers, and that the marks are similar in sound and commercial impression, we find that confusion is likely. II. Decision The refusal to register Applicant’s mark MANPUKU is affirmed.