Theme Food, Inc.v.Live Bait, L.L.C.

Trademark Trial and Appeal Board

Jul 23, 2008

No. 92044254 (T.T.A.B. Jul. 23, 2008)

Decision Mailed:
July 23, 2008
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Theme Food, Inc.
v.
Live Bait, L.L.C.
_____

Cancellation No. 92044254
_____

Michael A. Cornman and Elliot W. Lipins of Schweitzer Cornman
Gross & Bondell LLP for Theme Food, Inc.

India E. Vincent, Howard P. Walthall, Jr. and Andrea L. Weed of
Burr & Forman LLP for Live Bait, L.L.C.
_____

Before Hohein, Cataldo and Wellington, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Theme Food, Inc. ("petitioner") has petitioned to
cancel the registration owned by Live Bait, L.L.C. ("respondent")
of the mark "LIVE BAIT" for "restaurant services" in
International Class 42.1
Petitioner, in seeking cancellation, alleges among
other things that "[f]rom at least as early as August 1988 and

1 Reg. No. 2,336,220, issued on March 28, 2000 from an application
filed on June 25, 1999 on the basis of an alleged bona fide use of the
mark in commerce, which sets forth a date of first use anywhere and in
commerce of the mark of February 1, 1993; affidavit §8 accepted.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Canc. No. 92044254
2
continuously through the present, Petitioner has owned and
operated a restaurant under Petitioner's ... mark LIVE BAIT";
that such mark "was registered for restaurant services in
International Class 042 in the USPTO by two of its owners on June
20, 1989 by way of US Registration No. 1,544,956, which
registration provided legal notice to the ... [respondent] and
all others in the period June 20, 1989 to June 20, 1995 of the
Petitioner's LIVE BAIT service mark"; that such registration "was
cancelled by the USPTO on December 26, 1995, notwithstanding that
the Petitioner was using the mark and failed, through oversight,
to file a timely Declaration of Use"; that, "[i]n fact
Petitioner's LIVE BAIT restaurant was in full operation at the
time of cancellation of Registration No. 1,544,956 and has
continued in full operation through the present time"; that
petitioner "has filed a new application Serial No. 78/568,256 in
the USPTO to secure registration in International Class 042 for
its LIVE BAIT mark"; that "[u]pon information and belief, ...
[respondent] was actually aware of the existence of and operation
of the Petitioner's LIVE BAIT restaurant in 1993 when ...
[respondent] commenced usage of the mark LIVE BAIT"; and that the
existence of respondent's "Registration No. 2,336,220 for
restaurant services in [International] Class 042 on the Principal
Register impedes the Petitioner's ability to secure registration
of its LIVE BAIT mark for restaurant services and interferes with
its ability to expand its restaurant services into Alabama and
other regions of the U.S."; and that such registration "gives a
presumption of its ownership of the mark LIVE BAIT for restaurant
Canc. No. 92044254
3
services in derogation of petitioner's superior rights" in its
mark.
Respondent, in its answer, admits that "Registration
[No.] 1,544,936 was cancelled by the USPTO on December 26, 1995"
and that petitioner has filed a new application, Serial No.
78/568,256, in the USPTO to secure registration in International
Class 42 for its LIVE BAIT mark, but has otherwise denied the
salient allegations of the petition to cancel.
The record consists of the pleadings; the file of the
involved registration; the testimony and exhibits thereto,
submitted by petitioner as its case-in-chief, of one of its three
present shareholders, Charles Milite;2 and the testimony and
exhibits thereto, filed by respondent as its case-in-chief, of a
"member manager" of respondent, Terry W. Humphryes.3 Both
parties filed a main brief and petitioner submitted a reply
brief. As such briefs make clear, both parties have tried and
argued this case as one which solely involves the ground of
priority of use and likelihood of confusion. We accordingly have
so treated this case.
Preliminarily, it is noted that there is no issue as to
petitioner's standing to bring this proceeding. As previously
indicated, respondent has admitted in its answer to the petition
to cancel that that petitioner has filed a new application,
Serial No. 78/568,256, in the USPTO to secure registration in

2 Mr. Milite was also an original shareholder in petitioner when it was
formed in March 1986. (Milite dep. at 5 and 27.)

3 Mr. Humphryes is "considered a member and a manager" of respondent,
which is "a manager-operated L.L.C." (Humphryes dep. at 5.)
Canc. No. 92044254
4
International Class 42 for petitioner's LIVE BAIT mark. Such
application, as confirmed by the testimony of Mr. Milite, has
been rejected on the basis of respondent's involved registration.
(Milite dep. at 25.) Petitioner, therefore, has adequately
proven its standing to be heard on its claim of priority of use
and likelihood of confusion. See, e.g., Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982) [to have standing in a cancellation proceeding, "it would
be sufficient that appellee prove that it filed an application
and that a rejection was made because of appellant's
registration"].
Moreover, there is no issue that petitioner, rather
than respondent, has priority of use. Respondent, in its brief,
concedes that "in this case, it is undisputed that Petitioner has
been utilizing its ['LIVE BAIT'] mark since at least as early as
September 1987, approximately five years before ...
[respondent's] predecessor's use of the ['LIVE BAIT'] mark
began." Specifically, Mr. Milite testified that petitioner,
which was formed around March 1986 "for the purpose of operating
a restaurant in New York City," opened its "Live Bait Restaurant
in September 1987 and has been running [such restaurant]
consecutively ever since." (Id. at 5.) Mr. Humphryes, on the
other hand, testified that respondent presently operates two
"Live Bait Restaurant[s] in Orange Beach, Alabama," with a third
such business under construction and about to open. (Humphryes
dep. at 5.) The first of such restaurants, he further testified,
opened in "1993," with the second facility opening around "2002."
Canc. No. 92044254
5
(Id. at 6.) While he also testified that, in 1993, the first of
such restaurants was owned by a Bill Taylor rather than
respondent, Mr. Humphryes noted that respondent bought the
restaurant in "June of 1998" as "an asset purchase," including
the acquisition of "the buildings and land, all of the equipment,
trade name, [and] good will." (Id. at 46.) Thus, it is plain
that petitioner has established that it has priority of use of
its "LIVE BAIT" mark, as respondent admits.
In consequence thereof, the only issue to be determined
in this proceeding is whether there is a likelihood of confusion
from contemporaneous use by the parties of their respective "LIVE
BAIT" marks in connection with restaurant services. Respondent
argues, among other things, that because the parties use their
marks in different logos (with respondent's "LIVE BAIT" mark
accompanied by a "fish skeleton" design (id. at 23), while
petitioner's mark frequently appears in a "child's scribble"
(Milite dep. at 10) as "LiVE bAiT")4 and render their restaurant

4 Although respondent also contends that the parties use their marks in
connection with distinct slogans and geographical references, it is
settled that, insofar as the registrability of respondent's mark is
concerned, the issue of likelihood of confusion in this proceeding
must be determined solely on the basis of the manner in which
respondent's mark is set forth in its involved registration, which is
the words "LIVE BAIT" and nothing more. The reason for such is
because Section 2(d) of the Trademark Act precludes registration of "a
mark which so resembles a mark registered in the Patent and Trademark
Office ... as to be likely ... to cause confusion ...." Therefore,
the facts that (i) respondent has often used its "LIVE BAIT" mark in
conjunction with the slogans "Catch me, clean me, grill me, eat me"
and "Dead Food Live Music," while petitioner has used its "LIVE BAIT"
mark in connection with the slogan "If you want home cookin' stay
home," and (ii) respondent's has used its mark with the geographical
designation "Orange Beach, Alabama," while petitioner has used its
mark with the geographical term "New York," are simply irrelevant and
immaterial to the issue of likelihood of confusion. See, e.g., Sealy,
Inc. v. Simmons Co., 265 F.2d 934, 121 USPQ 456, 459 (CCPA 1959);
Burton-Dixie Corp. v. Restonic Corp., 234 F.2d 668, 110 USPQ 272, 273-
Canc. No. 92044254
6
services under different themes (with respondent's premises
modeled on a "beach" environment (Humphryes dep. at 7), while
petitioner's services feature "a [S]outhern style roadside
roadhouse" motif modeled on "a truck stop somewhere in Carolina"
(Milite dep. at 7-8) so as to appeal to different clienteles),
confusion is not likely. Alternatively, respondent asserts that
"even if there were a likelihood of confusion," it "is entitled
to maintain" its involved registration, "subject only to a
geographic restriction excluding New York City" as "the area
where Petitioner was actively doing business at the time of ...
[issuance of respondent's] registration."
Turning, therefore, to the issue of whether there is a
likelihood of confusion from contemporaneous use by the parties
of their respective "LIVE BAIT" marks in connection with
restaurant services, our determination thereof is based on an
analysis of all of the facts in evidence which are pertinent to
the factors bearing on such issue as set forth 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). However,
as indicated in Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in any likelihood of
confusion analysis, two key considerations are the similarity or
dissimilarity in the goods and/or services at issue and the

74 (CCPA 1956); Hat Corp. of America v. John B. Stetson Co., 223 F.2d
485, 106 USPQ 200, 203 (CCPA 1955); and ITT Canteen Corp. v. Haven
Homes Inc., 174 USPQ 539, 540 (TTAB 1972).
Canc. No. 92044254
7
similarity or dissimilarity of the respective marks in their
entireties.5 Such considerations, along with the factor of the
length of time during and conditions under which there has been
contemporaneous use without evidence of actual confusion, are the
principal du Pont factors which need to be addressed.
Focusing first on the du Pont factor which pertains to
the similarity or dissimilarity of the services at issue,
petitioner correctly notes in its reply brief that it is well
settled that the issue of likelihood of confusion must be
evaluated on the basis of the identification of services as set
forth in the involved registration, regardless of what the record
may reveal as to the particular nature of those services, their
actual channels of trade, and/or the classes of purchasers to
which the services are in fact directed and sold. See, e.g.,
Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); and Canadian Imperial
Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815-16 (Fed. Cir. 1987). Here, as broadly
identified in its involved registration, respondent's "restaurant
services" are not limited or restricted to just a beach theme
like that actually utilized by respondent but, instead, also
plainly encompass a Southern style roadside roadhouse motif
modeled on a Carolina truck stop like that used by petitioner in
connection with its restaurant services. In short, respondent's
"restaurant services" must be deemed to include restaurant

5 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
Canc. No. 92044254
8
services which are legally identical to those rendered by
petitioner. Such identity in the respective services of the
parties is thus a factor which strongly favors a finding of a
likelihood of confusion.
As to the marks at issue, petitioner is also correct
that respondent's "LIVE BAIT" mark, in the standard character or
typed format in which it is registered, is legally identical to
petitioner's "LIVE BAIT" mark in appearance. See, e.g., Phillips
Petroleum Co. v. C. J. Webb, Inc. 442 F.2d 1376, 170 USPQ 35, 36
(CCPA 1971) [a mark registered in standard character or typed
form is not limited to being depicted in any particular manner of
display]. Respondent's mark thus includes such manner of display
as the "child's scribble" format ("LiVE bAiT") utilized by
petitioner. Moreover, it is clear that the parties' marks are
also identical in sound and meaning and that, when used in
connection with restaurant services, such marks engender the same
overall commercial impression. Respondent, we observe, notably
acknowledges in its brief that "the identical word portions of
the marks tend to indicate a likelihood of confusion,
particularly with respect to restaurants which are often
recommended by word of mouth," citing In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). The
identity of the respective marks is thus a factor which strongly
favors a finding of a likelihood of confusion.
Respondent, nonetheless, insists that confusion is not
likely based the du Pont factor of the lack of any incidents of

essential characteristics of the goods [and/or services] and
Canc. No. 92044254
9
actual confusion between the parties' use of their respective
"LIVE BAIT" marks. Specifically, based solely on the following
testimony by Mr. Humphryes, respondent maintains that "[d]uring
more than fourteen years of concurrent use of these marks, the
parties are not aware of any instances of actual confusion caused
by their respective uses of the 'Live Bait' marks in issue"
(italics in original; underlining added):
Q. Are you aware of any customers of
the Live Bait restaurants in Orange Beach who
have mentioned a New York restaurant that had
the same name?

A. No, sir.

(Humphryes dep. at 15.) However, contrary to respondent's
contention that it has used its mark "in nationwide commerce,"
there is no showing on this record that the parties' use of their
respective marks has ever significantly extended into the area of
use of the other party. In order for an asserted lack of any
incidents of actual confusion to be a meaningful factor, the
record must demonstrate that there has been appreciable and
continuous use by respondent of its mark in the same market(s) as
those served by petitioner under its mark. See, e.g., Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
Specifically, there must be evidence showing that there has been
an opportunity for instances of actual confusion to occur and
here the record is devoid of any such proof. See, e.g.,
Cunningham v. Laser Golf Corp., supra at 55 USPQ2d 1847 (Fed.
Cir. 2000). Thus, the fact that respondent is unaware of any

differences in the marks." 192 USPQ at 29.
Canc. No. 92044254
10
instances of actual confusion is not a meaningful factor in the
determination of whether confusion is likely to occur.
We accordingly conclude, in light of the above, that
contemporaneous use by respondent of its "LIVE BAIT" mark in
connection with "restaurant services" is likely to cause
confusion with the prior use by petitioner of its "LIVE BAIT"
mark for its restaurant services. However, citing and chiefly
relying on Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512,
204 USPQ 820 (CCPA 1980), respondent alternatively contends that
it "is entitled to maintain its registration subject to a
geographic restriction for Petitioner's actual use," which
respondent asserts is the area comprising "New York City."
Respondent insists that, "with [such] a geographic restriction in
place there is no chance of a likelihood of confusion."
Respondent's alternative contention is not well taken
inasmuch as possible concurrent rights are determined by the
Board only in a concurrent use proceeding rather than a
cancellation proceeding. See Sections 2(d), 17 and 18 of the
Trademark Act; Trademark Rules 2.99(h) and 2.133(c); and TBMP
§1101.02 (2d ed. rev. 2004). As petitioner correctly points out
in its reply brief (footnote omitted):6

6 While, subsequent to the Selfway case cited by petitioner, Section 18
of the Trademark Act was amended to give the Board authority to
partially restrict a registration in a cancellation proceeding by
limiting the identification of goods and/or services so as to avoid a
likelihood of confusion on the register, see Eurostar Inc. v. "Euro-
Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1268-70 (TTAB 1994), it
remains the case that any geographic limitation thereto, as petitioner
accurately points out, will be considered and determined by the Board
only in the context of a concurrent use proceeding. Snuffer & Watkins
Management Inc. v. Snuffy's Inc., 17 USPQ2d 1815, 1816 (TTAB 1990).

Canc. No. 92044254
11
Respondent argues at length in its brief
that if the Board finds that there is a
likelihood of confusion between the parties'
identical marks which are used in connection
with identical services, respondent as an
alleged innocent adopter should be entitled
to maintain its registration with a
geographic limitation on the registration for
New York City. .... However, under Section
18 of the Trademark Act, a geographic
limitation to a registration cannot be made
in a cancellation proceeding. The Weiner
King case upon which Respondent bases its
request for a geographic restriction on its
registration involved a concurrent use
proceeding and a cancellation proceeding and
a civil litigation rather than a cancellation
proceeding alone.

In Selfway, Inc. v. Travelers Petroleum,
Inc., 579 F.2d 75[, 198 USPQ 271] (CCPA
1978)[,] the court found that under Section
18 of the Lanham Act, the Board could not
place geographical limitations on a
registration in a cancellation proceeding and
the only relief available in a cancellation
proceeding is an entire cancellation of a
registration. See also Snuffer & Watkins
Management Inc. v. Snuffy's Inc., 17 USPQ2d
1815 (TTAB 1990) (The Board cannot partially
cancel a registration in a cancellation
proceeding by placing geographical
restrictions thereon because "the
Commissioner has elected to exercise his
authority to geographically restrict a
registration only in the context of a
concurrent use proceeding"). According,
Respondent's request for a geographical
limitation on the registration must be
denied. Instead, since Petitioner has shown
a likelihood of confusion the Petitioner's
petition should be granted and the
Respondent's [registration of its] mark must
be cancelled in its entirety.

Determination of whether respondent is entitled to a concurrent
use registration for its "LIVE BAIT" mark for restaurant services
is thus improper in this proceeding and the issue will not be
considered further. Respondent's involved registration, instead,
must be cancelled in its entirety due to a likelihood of
Canc. No. 92044254
12
confusion of such mark with petitioner's prior and continuing use
of the mark "LIVE BAIT" in connection with restaurant services.
Decision: The petition to cancel is granted and Reg.
No. 2,336,220 will be cancelled in due course.