Timber Pizza Company LLC

Trademark Trial and Appeal Board

Jun 30, 2020

87215852 (T.T.A.B. Jun. 30, 2020)

Mailed: June 30, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
————
In re Timber Pizza Company LLC
————
Serial Nos. 87215848 and 87215852
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Bradford C. Craig and Samar Aryani-Sabet of Blank Rome LLP,
for Timber Pizza Company LLC.
Andrea Nadelman, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
————
Before Taylor, Wellington, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Timber Pizza Company LLC (“Applicant”) seeks registration on the Principal
Register of the standard character mark TIMBER PIZZA CO. (PIZZA CO.
disclaimed)1 and the composite mark (PIZZA CO. disclaimed) 2 both for “Hats;

1 Application Serial No. 87215852, filed on October 26, 2016, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. 1051(a), and claiming February
2014 as both the date of first use and first use in commerce for the identified Class 43 services
and June 2014 as both the date of first use and first use in commerce for the identified Class
28 goods.
2 Application Serial No. 87215848, filed on October 26, 2016, based on an allegation of use in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 87215848 and 87215852
2
Shirts; Hooded sweat shirts; Sweat shirts; T-shirts” in International Class 25 and
“Restaurant and bar services; Providing of food and drink via a mobile truck” in
International Class 43.
The Trademark Examining Attorney refused registration of each of Applicant’s
marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
of likelihood of confusion with the following two registered marks, both owned by the
same Registrant, and only in regard to the Class 43 services identified in Applicant’s
involved applications:
• TIMBERS (in standard characters) for “restaurant services” in
International Class 43;3 and

• TIMBERS FAST-FOOD & DELI (in standard characters; FAST-
FOOD & DELI disclaimed) for “restaurant services, namely, fast-
food restaurants and delicatessens” in International Class 43.4

When the refusals were made final, Applicant appealed and requested
reconsideration in each of its involved applications. When the requests for
reconsideration were denied, the appeals resumed. Both Applicant and the

commerce under Section 1(a) of the Trademark Act, 15 U.S.C. 1051(a), and claiming April
2014 as both the date of first use and first use in commerce for the identified Class 43 services
and June 2014 as both the date of first use and first use in commerce for the identified Class
28 goods. The description of the mark reads as follows: “The mark consists of an inverted
triangle with the wording ‘TIMBER’ near the top of the inverted triangle and the wording
‘PIZZA CO.’ near the bottom of the inverted triangle. Each corner of the triangle is divided
by a line that forms a small triangular shape. The wording ‘TIMBER’ is separated from the
wording ‘PIZZA CO.’ by two horizontal lines extending across the inverted triangle. A
plurality of vertical lines extend between the two horizontal lines.” Color is not claimed as a
feature of the mark.
3 Registration No. 4483825 issued on February 18, 2014; renewed.
4 Registration No. 3521939 issued on October 21, 2008; renewed.
Serial Nos. 87215848 and 87215852
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Examining Attorney filed briefs in each appeal. After Applicant submitted its appeal
briefs, the Board granted the Examining Attorney’s motion to consolidate the
appeals.5 We therefore decide both appeals in a single opinion.6 For the reasons
explained below, we affirm the refusals to register.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however,
two key considerations are the similarities between the marks and the similarities
between the goods or services. See 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 effect of differences in the essential characteristics of
the [services] and differences in the marks.”). “[E]ach case must be decided on its own
facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475
F.2d 1197, 177 USPQ 386, 387 (CCPA 1973) (internal citations removed).
For purposes of our likelihood of confusion determination, we confine our

5 31 TTABVUE in Application Serial No. 87215848.
Unless otherwise specified, all TTABVUE and Trademark Status and Document Retrieval
(“TSDR”) citations reference the docket and electronic file database for Application Serial No.
87215848. All citations to the TSDR database are to the PDF version of the documents.
6 Applicant had requested an oral hearing on this consolidated appeal, see 36 TTABVUE, but
subsequently withdrew the request. See 39 TTABVUE.
Serial Nos. 87215848 and 87215852
4
discussion to the standard character mark TIMBERS in cited Registration No.
4483825 because this mark is most similar to Applicant’s involved marks. Thus, if a
likelihood of confusion is found with this mark, there is no need to discuss the mark
in the other cited registration. Conversely, if a likelihood of confusion is not found
with the mark subject to Registration No. 4483825, we would not find confusing
similarity with the mark in the other cited registration.
A. Similarity of the Services
We initially compare 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 applications and cited Registration No. 4483825. See
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Computs. Servs. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must be decided on the basis of
the identification of goods [or services] set forth in the application regardless of what
the record may reveal as to the particular nature of an applicant’s goods [or services],
the particular channels of trade or the class of purchasers to which the sales of goods
[or services] are directed.”)); see also In re Giovanni Food Co., 97 USPQ2d 1990, 1991
(TTAB 2011).
Moreover, we need not find similarity as to each and every service listed in an
applicant’s recitation of services. It is sufficient for a refusal based on likelihood of
confusion that relatedness is established for any item encompassed by the
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identification of goods or services in a particular class in the application. See SquirtCo
v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983) (holding that a
single good from among several may sustain a finding of likelihood of confusion);
Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion
with respect to any item that comes within the identification of goods or services in
the application).
The services in Registration No. 4483825 are identified as “restaurant services.”
Applicant’s Class 43 services are identified as “restaurant and bar services; providing
of food and drink via a mobile truck.” The identifications overlap and are legally
identical in part with regard to “restaurant services.”
Thus, the second DuPont factor strongly favors a finding of likelihood of
confusion.
B. Similarity of Trade Channels and Classes of Purchasers
We now consider the third DuPont factor involving the established, likely-to-
continue channels of trade of the services. Because we have found that Applicant’s
and Registrant’s services are legally identical in part, we must presume that these
services are provided in the same trade channels and are offered to the same classes
of purchasers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (finding Board entitled to rely on this legal presumption in determining
likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721,
723 (CCPA 1968) (where there are legally identical goods, the channels of trade and
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classes of purchasers are considered to be the same). We thus find, at a minimum,
that the channels of trade and classes of purchasers overlap.
Accordingly, the third DuPont factor also weighs heavily in favor of finding a
likelihood of confusion.
C. Strength/Weakness of the Cited TIMBERS Mark
“In determining strength of a mark, we consider both inherent strength, based on
the nature of the mark itself, and commercial strength or recognition.” Bell’s Brewery,
Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017) (citing
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476
(TTAB 2014)); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681,
1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).”). “[T]he
strength of a mark is not a binary factor” and “varies along a spectrum from very
strong to very weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted). “The weaker [the
registrant’s] mark, the closer an applicant’s mark can come without causing a
likelihood of confusion and thereby invading what amounts to its comparatively
narrower range of protection.” Id. at 1676 (internal citations omitted). See also Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1693 (Fed. Cir. 2005) (“Evidence of third-party use of similar marks
on similar goods [or services] is relevant to show that a mark is relatively weak and
entitled to only a narrow scope of protection.”).
Serial Nos. 87215848 and 87215852
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The sixth DuPont factor requires us to consider evidence of the number and
nature of similar marks in use on similar services. DuPont, 177 USPQ at 567;
Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030,
1033 (TTAB 2016).7 Applicant contends that the cited TIMBERS mark is a weak,
commonly used term for restaurant services and, therefore, consumers will look to
the other features in Applicant’s marks to differentiate the marks in appearance,
sound, meaning and commercial impression.8 Specifically, Applicant maintains that
the designation TIMBER or TIMBERS is diluted when used in associated with
services similar to those identified in the cited Registration No. 4483825, namely,
“restaurant services.”9 To demonstrate such weakness, Applicant has submitted, as
identified below, thirty-three (33) third-party websites showing uses of the wording
TIMBER or TIMBERS as a source indicator for restaurants or eateries:10
• BIG TIMBER BREWING COMPANY in Elkins, WV;
• TIMBER BAR in Timber, MT;
• TIMBER CREEK PIZZA CO. in Lake Mills, WI;
• TIMBER GASTRO PUB in Post Falls, ID;
• TIMBER KITCHEN & BAR in Bangor, ME;
• TIMBER STEAKHOUSE in Portland, ME;

7 The fifth DuPont factor concerns the fame of the prior mark. DuPont, 177 USPQ at 567.
Because there is no evidence of record regarding the fame of the cited TIMBERS mark, the
fifth DuPont factor is neutral.
8 Applicant’s Appeal Brief, p. 6, 28 TTABVUE 11.
9 Id.
10 December 1, 2017 Request for Reconsideration, Exh. C, 4 TTABVUE 179-391.
Serial Nos. 87215848 and 87215852
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• TIMBER TAVERN BAR & GRILL in Syracuse, NY;
• TIMBER CREEK BAR & GRILL in Louisburg, KS;
• TIMBERS DINER in Fleetwood, PA;
• THE TIMBERS RESTAURANT AND DINNER THEATRE in Mt. Gretna,
PA;

• TIMBER’S RESTAURANT & ICE CREAM in Fayetteville, PA;
• THE TIMBERS RESTAURANT in Oakland, NJ;
• TIMBERS STEAKHOUSE & SEAFOOD in Angola, IN;
• TWISTED TIMBER in Boise, ID;
• URBAN TIMBER in Sumner, Kent, and Puyallup, WA;
• TIMBER CHARLIE’S BAR & RESTAURANT in Newberry, MI;
• TIMBER LANE COFFEE in Boscobel, WI;
• TIMBERLOFT BBQ & SOUTHERN FLARE in Gordonsville and
Grandville, TN;

• TALL TIMBER RESTAURANT, LOUNGE, & MOTEL in Randle, WA,
• TIMBER RIDGE LODGE & WATERPARK in Lake Geneva, WI
• TIMBER COVE RESTAURANT in Jenner, CA;
• TIMBER & SALT in Redwood City, CA;
• THE TIMBERHOUSE RESTAURANT in Quilcene, WA;
• TIMBER CREEK TAP & TABLE in Meadville and Mercer, PA;
• THE TIMBERS RESTAURANT & FISH MARKET on Sanibel Island, FL;
• TIMBERSTONE GRILL in Hammondsport, NY;
• TIMBER INN BAR & GRILL in Downsville, WI;
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• TIMBER GARDENS RESTAURANT in London, England;11
• TIMBERS RESTAURANT in Cadillac, MI;
• TIMBER WOOD FIRE BISTRO in Omaha, NE;
• TIMBERWOOD GRILL in Charlottesville, VA
• BELLYTIMBER TAVERN in Richmond, VA; and
• TIMBER PUB & GRUB in Boring, OR.
Additionally, Applicant submitted ten (10) active, use-based third-party
registrations for TIMBER-formative marks for “restaurant services,” as displayed
below:12
MARK REGISTRATION NO. RELEVANT SERVICES
TIMBERLINE 5025666 Resort hotel services,
restaurant and bar
services

4997142 Resort hotel services,
restaurant and bar
services

11 This particular website concerns a restaurant in a foreign country, i.e., the United
Kingdom. While it is settled that “[i]nformation originating on foreign websites or in foreign
news publications that are accessible to the United States public may be relevant to discern
United States consumer impression of a proposed mark,” see In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir. 2007), this particular website does not
demonstrate the weakness of the term TIMBER(S) in relation to restaurant services provided
in U.S. commerce. Accordingly, we have given no consideration to this foreign third-party
use.
12 Id. at Exh. A, 4 TTABVUE 29-78. Applicant also submitted a copy of Reg. No. 3566943 for
the mark TIMBER CREEK GRILL BUFFET and design. This registration, however, has
been cancelled. A cancelled registration is only evidence that the registration issued and it
does not carry any of the legal presumptions under Section 7(b) of the Trademark Act, 15
U.S.C. § 1057(b). See Bond v. Taylor, 119 USPQ2d 1049, 1054-55 (TTAB 2016); In re Kysela
Pere et Fils Ltd., 98 USPQ2d 1261, 1264 (TTAB 2011) (“‘dead’ or cancelled registrations have
no probative value at all.”). As such, we have given no consideration to this particular
registration.
Serial Nos. 87215848 and 87215852
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MARK REGISTRATION NO. RELEVANT SERVICES

5182587 Resort hotel services,
restaurant and bar
services
TIMBERLINE LODGE 5067245 Resort hotel services,
restaurant and bar
services
TIMBER & SALT 4867735 Restaurant services,
including sit-down service
of food and take-out
restaurant services;
restaurant services,
namely, providing of food
and beverages for
consumption on and off the
premises
TIMBERLAKE LODGE 4117953 Hotel and restaurant
services.
TALL TIMBER 3626439 Restaurant services
TIMBERWOOD TAP
HOUSE
5218030 Restaurant and bar
services.

5334238 Taproom services
featuring beer brewed on
the premises.
TIMBERWOOD GRILL 5218029 Restaurant and bar
services.

The Federal Circuit has stated that evidence of the extensive registration and use
of a term by others can be “powerful” evidence of weakness. See Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc., 15
USPQ2d at 1674. Moreover, third-party registrations may be relevant to show that
the mark or a portion of the mark is descriptive or suggestive, such that the public
Serial Nos. 87215848 and 87215852
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will look to other elements to distinguish the source of the goods or services, in the
same way dictionary definitions are used to illustrate how a term is perceived in the
trade or industry and, therefore, may be considered somewhat weak. Juice
Generation, 115 USPQ2d at 1675 (third-party registration evidence may show that a
term carries a highly suggestive or descriptive connotation in the relevant industry
and therefore may be considered somewhat weak). See also Tektronix, Inc. v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976); In re J.M.
Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); United Foods Inc. v. J.R. Simplot
Co., 4 USPQ2d 1172, 1174 (TTAB 1987).
With regard to Applicant’s third-party registration evidence, we note that none
of the third-party registrations submitted by Applicant contain only the term
TIMBER(S) standing alone or in combination with generic or descriptive wording.
Instead, all of the third-party registrations contain additional distinctive wording.
Specifically, in addition to the term TIMBER, the registered marks contain the added
wording LINE, LODGE, & SALT, LAKE LODGE, and TALL. We find that these
registered marks convey differing connotations and overall commercial impressions
than the cited mark TIMBERS. Furthermore, as a general proposition, use-based
third-party registrations alone are not evidence that the marks shown therein are in
use, or that the public is familiar with them. Conde Naste Publ’ns, Inc. v. Miss
Quality, Inc., 507 F.2d 1404, 184 USPQ 422, 424-25 (CCPA 1975); Jansen Enters. Inc.
v. Rind, 85 USPQ2d 1104, 1110 (TTAB 2007). Thus, we do not find that the third-
party registration evidence submitted by Applicant is sufficient to justify the
Serial Nos. 87215848 and 87215852
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registration of what could be another confusingly similar mark, as explained more
fully below. Mead Johnson & Co. v. Peter Eckes, 195 USPQ 187, 191 (TTAB 1977).
Nor do we find that the third-party registration evidence diminishes the
distinctiveness of or narrows the scope of protection afforded to the cited TIMBERS
mark.13
Further, while Applicant’s Internet evidence shows that a significant number of
food providers utilize the term TIMBER or TIMBERS in their brand names, we are
not persuaded that Registrant’s TIMBERS mark is as weak as Applicant contends it
to be. Applicant’s evidence falls short in demonstrating weakness of the term
TIMBER(S) when used in connection with restaurant services. Of the thirty-three
website excerpts provided by Applicant, nineteen utilize the term TIMBER or
TIMBERS with distinctive wording that significantly alters the connotation of the
TIMBER[S] element. Specifically, the distinctive wording includes: BIG, CREEK,
TWISTED, URBAN, CHARLIE’S, LOFT, TALL, RIDGE, COVE, & SALT. The
additional wording in these third-party marks suggests a unique geographic place,
type of setting, or affiliation with an individual. We accordingly find that these
particular third-party uses do little to diminish the distinctiveness of the cited
TIMBERS mark.

13 We also note that the third-party registration for the mark BIG TIMBER BREWING
COMPANY and design (Reg. No. 5334238) is not registered for restaurant services but is
solely limited to taproom services. We further note that the four third-party registrations for
the TIMBERLINE-formative marks are all owned by the same registrant. Similarly, the
TIMBERWOOD TAP HOUSE and TIMBERWOOD GRILL registrations are also owned by
the same registrant. Thus, Applicant’s ten third-party registrations are attributed to only six
third-party registrants, only five of which provide restaurant services.
Serial Nos. 87215848 and 87215852
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Moreover, of the remaining fourteen food provider websites utilizing the term
TIMBER or TIMBERS in their brand names, none demonstrate use of the marks
throughout the United States. As the website and Facebook excerpts demonstrate,
all of the restaurants containing the term “TIMBER” or “TIMBERS” alone or in
combination with generic or descriptive wording are limited to single, local locations
that are remote from each other. There is no evidence that any of these single location
restaurants have any impact on interstate commerce and, therefore, they fail to
demonstrate the weakness of the term TIMBER in relation to restaurant services
provided through interstate commerce. Thus, the third-party uses which we may
consider are insufficient to establish that the wording TIMBERS is weak or diluted
when used in connection with “restaurant services.” Indeed, Applicant’s evidence falls
short of the persuasive evidence of numerous third-party uses such as those involved
in In re Broadway Chicken, 38 USPQ2d 1559 (TTAB 1996) or Steve's Ice Cream v.
Steve's Famous Hot Dogs, 3 USPQ2d 1477, 1479 (TTAB 1987), where the records
contained hundreds of examples of third-party use of the shared term in question.
Even if we were to find that TIMBER(S) is a somewhat weak mark in relation to
“restaurant services” and, as such, entitled to a narrower scope of protection, the
scope of protection to be accorded is still broad enough to prevent the registration of
a similar mark (as explained below) for services that are legally identical in part,
particularly since the cited TIMBERS mark, as noted below, is conceptually strong.
See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109
(CCPA 1974) (likelihood of confusion is to be avoided as much between weak marks
Serial Nos. 87215848 and 87215852
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as between strong marks); see also In re Farah Manufacturing Co., Inc., 435 F.2d 594,
168 USPQ 277, 278 (CCPA 1971).
Moreover, there is no evidence of record that TIMBER, or its plural form
TIMBERS, has any non-source identifying meaning with respect to “restaurant
services.” Thus, we find that the cited TIMBERS mark is conceptually and inherently
strong and, therefore, it is entitled to the normal scope of protection accorded an
inherently distinctive mark. Bells Brewery, 125 USPQ2d at 1348-49.
In sum, we find that although Applicant has submitted some evidence of third-
party use and registration of TIMBER-formative or TIMBERS-formative marks for
“restaurant services,” this evidence is not sufficient to demonstrate that the cited
TIMBERS mark is so weak in the field of restaurant services that it is entitled to only
a very narrow scope of protection. Moreover, there is no evidence of record concerning
the inherent weakness of the term TIMBER or TIMBERS for restaurant services. In
view thereof, the sixth DuPont factor regarding the number and nature of similar
marks in use on similar services only slightly favors Applicant.
D. Similarities of the Marks
We next address the DuPont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps., Inc., 73 USPQ2d at 1691
(quoting DuPont, 177 USPQ at 567). “The proper test is not a side-by-side comparison
of the marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning
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LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted).
Because this factor is 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 the entire marks, not just part of the marks. In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin
Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It
is axiomatic that a mark should not be dissected and considered piecemeal; rather, it
must be considered as a whole in determining likelihood of confusion.”). On the other
hand, there is nothing improper in assigning more or less weight to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. Nat’l Data, 224 USPQ at 751.
Applicant’s marks are TIMBER PIZZA CO. and . The mark in cited
Registration No. 4483825 is TIMBERS in standard characters. Here, the first word
in Applicant’s marks, i.e., TIMBER, is virtually identical to the cited mark TIMBERS.
The only difference is that the cited mark is the plural form of the dominant wording
in Applicant’s mark. An applied-for mark that is the singular or plural form of a
registered mark is essentially identical in sound, appearance, meaning, and
commercial impression, and thus the marks are confusingly similar. Swiss Grill Ltd.,
v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious
that the virtually identical marks [the singular and plural of SWISS GRILL] are
confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d
Serial Nos. 87215848 and 87215852
16
1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be
essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ
339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and
plural forms of ZOMBIE such that the marks were considered the same mark).
Furthermore, it is often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered when making purchasing decisions.
Palm Bay Imps., Inc., 73 USPQ2d at 1692; see also Presto Prods., Inc. v. Nice-Pak
Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). As such, consumers will focus more
on the TIMBER portion of Applicant’s marks as the source-indicator for Applicant’s
services.
Moreover, the inclusion of the descriptive and disclaimed wording PIZZA CO. in
Applicant’s marks does not detract from the overall similarities between Applicant’s
marks and the cited mark TIMBERS. Disclaimed matter that is descriptive of or
generic for a party’s goods or services is typically less significant or less dominant
when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d
1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TRADEMARK MANUAL OF EXAMINING
PROCEDURE (‘TMEP”) §1207.01(b)(viii), (c)(ii) (October 2018).
As to stylization, the cited TIMBERS mark is a standard character mark, and
marks appearing in standard character form may be displayed in any font style, color
and size, including the identical stylization of the literal portion of Applicant’s
Serial Nos. 87215848 and 87215852
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mark, because the rights reside in the wording and not in any particular
display or rendition. See SquirtCo, 216 USPQ at 939 (“[T]he argument concerning a
difference in type style is not viable where one party asserts rights in no particular
display. By presenting its mark merely in a typed drawing, a difference cannot legally
be asserted by that party.”); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186-
87 (TTAB 2018). Thus, because the cited TIMBERS mark may be displayed in the
identical manner as the literal portion of Applicant’s mark, the mere
stylization of the words in Applicant’s composite mark is insufficient to distinguish
the respective marks.
Finally, although one of Applicant’s marks includes a design element, “the verbal
portion of the mark is the one most likely to indicate the origin of the goods [or
services] to which it is affixed.” Jack Wolfskin, 116 USPQ2d at 1134 (citing CBS Inc.
v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)). Greater weight is
often given to the wording because it is the wording that purchasers would use to
refer to or request the goods or services. See, e.g., In re Viterra, Inc., 101 USPQ2d at
1911.
Quite simply, the dominant portion of Applicant’s marks, i.e., the term TIMBER,
is virtually identical to the cited TIMBERS mark in appearance, sound, connotation
and commercial impression. For the reasons discussed above, consumers are more
Serial Nos. 87215848 and 87215852
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likely to remember the term TIMBER than the other elements of Applicant’s marks.
Nat’l Data, 224 USPQ at 751. While we have not overlooked the design element or
stylization in one of Applicant’s involved marks or the disclaimed, descriptive
wording PIZZA CO. in each of Applicant’s marks, we nonetheless conclude that
Applicant’s marks and the cited TIMBERS mark, when considered in their entireties,
are substantially similar.
Thus, the first DuPont factor favors a finding of likelihood of confusion.
E. Extent of Potential Confusion
Applicant also argues that the twelfth DuPont factor, the extent of potential
confusion, i.e., whether de minimis or substantial, is also a relevant consideration.
According to Applicant, any potential confusion would be de minimis because where,
as here, numerous directly analogous “TIMBER”-formative marks coexist with the
cited mark TIMBERS on the Register and in the marketplace, the cited TIMBERS
mark is entitled to an exceedingly narrow scope of protection.14 Additionally,
Applicant argues that because its marks and the cited TIMBERS mark differ
significantly in appearance, sound, and connotation and convey entirely distinct
commercial impressions, there can be little doubt that any potential confusion is de
minimis, much less likely.15
We disagree. Because we have found that the marks at issue are similar and that
the parties’ respective services are legally identical in part and are provided in the

14 Applicant’s Appeal Brief, p. 15, 28 TTABVUE 20.
15 Id.
Serial Nos. 87215848 and 87215852
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same or overlapping trade channels to the same or overlapping consumers and since
the evidence of record does not demonstrate that the cited TIMBERS mark is so weak
in relation to “restaurant services,” the potential for confusion cannot be deemed to
be de minimis.
Accordingly, this DuPont factor is neutral.
II. Conclusion
We have considered all of the arguments and evidence of record, and all relevant
DuPont factors of which there is evidence of record. Because we have found that the
marks at issue are similar and that Applicant’s identified services are legally
identical in part to Registrant’s services and that they would move in the same or
overlapping trade channels and would be offered to the same or overlapping classes
of purchasers, we conclude that Applicant’s marks, as used in connection with the
Class 43 services identified in its involved applications, so resemble the cited mark
TIMBERS as to be likely to cause confusion or mistake, or to deceive under Section
2(d) of the Trademark Act. The evidence of third-party registration and use of
TIMBER-formative marks, although one factor to be considered, does not persuade
us of a different result, because we believe that this factor is outweighed by the other
factors. In reaching this conclusion, we bear in mind that Applicant, as the newcomer,
has a legal duty to select a mark that avoids confusion with existing marks. See
Bridgestone Americas Tire Operations LLC v. Federal Corp., 673 F.3d 1330, 102
USPQ2d 1061, 1063 (Fed. Cir. 2012) (citing Hewlett-Packard Co. v. Packard Press,
Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001 (Fed. Cir. 2002) (“This court resolves
doubts about the likelihood of confusion against the newcomer because the newcomer
Serial Nos. 87215848 and 87215852
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has the opportunity and the obligation to avoid confusion with existing marks.”)); and
Planters Nut & Chocolate Co. v. Crown Nut Co., 305 F.2d 916, 924-25, 134 USPQ 504
(CCPA 1962) (“[A]ll doubt as to whether confusion, mistake, or deception is likely is
to be resolved against the newcomer.”).
Decision: The refusals to register Applicant’s marks in application Serial Nos.
87215848 and 87215852 under Section 2(d) of the Trademark Act as to the identified
Class 43 services are affirmed. Applicant’s involved applications, however, will
proceed to registration solely with regard to the goods identified in International
Class 25.