Twenty Three East Adams Street Corp.

Trademark Trial and Appeal Board

Jan 29, 2009

No. 76978795 (T.T.A.B. Jan. 29, 2009)

Mailed:
January 29, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Twenty Three East Adams Street Corp.
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Serial No. 76978795
_______

Charles T. Riggs, Jr. of Patula & Associates, P.C. for
Twenty Three East Adams Street Corp.

Renee McCray, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Quinn, Walsh and Taylor, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Twenty Three East Adams Street Corp. (applicant) has
applied to register the mark shown below1 for “restaurant
and bar services” in International Class 43.2

1 Applicant provided a new drawing with the paper filed June 24,
2008. The new drawing, which displays the mark more clearly in
the same general style of lettering, was not entered. It must be
entered in the event this application proceeds to publication.
Our decision here would be same based on either drawing.
2 Application Serial No. 76978795, filed September 7, 2004,
claiming first use of the mark anywhere and first use of the mark
in commerce on June 1, 1950.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76978795
2

The application includes the following statement: “The
term ‘MILLER'S’ is a surname. The term ‘MILLER'S’ does not
identify a living individual.” The application also
includes a claim of acquired distinctiveness under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f).
The Examining Attorney has finally refused
registration under Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d), based on a likelihood of confusion between
applicant’s mark and the mark in Registration No. 2850178,
owned by Ale House Management, Inc., shown here:

for services identified as “full service restaurant” in
International Class 43. The registration issued on June 8,
2004.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
Serial No. 76978795
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Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods [or
services] of the applicant, to cause confusion…” 15 U.S.C.
§ 1052(d). The opinion in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets
forth the factors to consider in determining likelihood of
confusion. Here, as is often the case, the crucial factors
are the similarity of the marks and the similarity of the
services of the applicant and registrant. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976) (“The fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [or services]
and differences in the marks.”). Below we will consider
each of the factors as to which applicant or the Examining
Attorney presented arguments or evidence.
The services of applicant and the registrant need not
be identical to find likelihood of confusion under Section
2(d) of the Trademark Act. They need only be related in
such a way that the circumstances surrounding their
marketing would result in relevant consumers mistakenly
believing that the goods originate from or are associated
Serial No. 76978795
4
with the same source. See On-Line Careline Inc. v. America
Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir.
2000); In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
Furthermore, in comparing the services we must
consider the services as identified in the application and
cited registration. See also Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood
of confusion must be decided on the basis of the respective
descriptions of goods.”).
In this case the services are not only related, but
identical or overlapping. Applicant has not argued
otherwise. The “full service restaurant” services
identified in the registration logically include or overlap
with applicant’s “bar and restaurant services.”
Also, in view of the fact that the services are
identical or overlapping, we conclude that the channels of
trade for the services are also identical or overlapping.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987); In re Smith and Mehaffey,
31 USPQ2d 1531 (TTAB 1994).
Turning to the marks, as a starting point we observe
that, in cases such as this, where the applicant’s services
Serial No. 76978795
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are identical to or overlap with the services identified in
the cited registration, the degree of similarity between
the marks which is required to support a finding of
likelihood of confusion is less than it would be if the
services were not identical. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698
(Fed. Cir. 1992).
Furthermore, in comparing the marks we must consider
the appearance, sound, connotation and commercial
impression of the marks at issue. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks. As the Court
of Appeals for the Federal Circuit observed, “… 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 consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Serial No. 76978795
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Furthermore, “… it is well established that the test
to be applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.” Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975) (internal citations
omitted).
Applicant argues that MILLER’S is primarily merely a
surname, and as such, “non protectible” absent a showing of
acquired distinctiveness. Applicant argues that no such
showing was made in the case of the cited registration.
Proceeding from that premise applicant argues further that
a proper comparison of the marks must focus on the display
or stylization of the respective word marks and
accompanying design elements, and not on the word MILLER’S
as such. Applicant finally argues that, when one compares
the display and design elements of the respective marks,
the marks are “extremely dissimilar.”
On the other hand, the Examining Attorney argues,
Serial No. 76978795
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“… the marks are confusingly similar not only in appearance
and sound, but also in connotation and commercial
impression because they contain the identical wording
MILLER’S.” Examining Attorney’s Brief at 3.
First, we reject the premise underlying applicant’s
arguments. That is, we may not assume, as applicant urges,
that the word MILLER’s in the registered mark is not
protected. We must accord the mark in the cited
registration, including the word portion, MILLER’S, the
full benefits set forth in Trademark Act Section 7(b), 15
U.S.C. § 1057(b), including the recognition that the
registration is prima facie evidence of the “validity of
the registered mark” and of “the registrant’s exclusive
right to use the registered mark in commerce on or in
connection with the goods or services specified in the
certificate…” 15 U.S.C. § 1057(b). Applicant’s argument
that we should accord the cited registration something less
than full effect is an impermissible collateral attack on
the registration. In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1535 (Fed. Cir. 1997). Consequently,
we decline to disregard the significance of MILLER’S in the
registered mark.
Furthermore, we concur with the Examining Attorney and
conclude that MILLER’S is the dominant element in both
Serial No. 76978795
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applicant’s mark and the registered mark. Most
importantly, MILLER’S is dominant because it is the only
word element in both marks. Here, as is generally the
case, the word elements in the respective marks are
dominant because potential purchasers commonly use word
marks in requesting goods or services. In re Dixie
Restaurants Inc., 41 USPQ2d at 1534.
There is nothing in the stylization of letters or the
designs at issue here which dictates any other construction
of the marks. For the record, we have considered
applicant’s many arguments concerning the importance of the
design elements here. We have also considered the cases
applicant cites and discusses, and find them
distinguishable. For example, in Massey Junior College,
Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181
USPQ 272 (CCPA 1974), the designs in the respective mark
not only differed, but the word and letter elements in the
respective marks also differed, unlike this case where the
word elements are identical.
Applicant also argues, “The connotation and commercial
impression of the cited registration is that of a family
oriented seafood restaurant in view of the depiction of a
funny man riding a swordfish. To the contrary, the
connotation and commercial impression of Applicant’s mark
Serial No. 76978795
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is that of a more sophisticated, adult oriented British
Isle pub-style restaurant.” Applicant’s Brief at 7.
Applicant has not provided any evidence to support this
conclusion. We conclude that there is no significant
difference between the marks in connotation, commercial
impression or otherwise; the dominant element in each mark
is the word MILLER’S which contributes most significantly
to the connotation and commercial impression, as well as
the appearance and sound.
Also, in our comparison of the marks at issue we must
take into account the fallibility of human memory and
strictly avoid a simplistic side-by-side comparison.
Sealed Air Corp. v. Scott Paper Co., 190 at 108.
Applicant’s suggestion that potential customers for the
respective restaurant services of applicant and registrant
will distinguish those services on the basis of the
differing stylization in the letters in the respective
marks or based on the inclusion of the design element in
the registered mark does not comport with either the law or
reality. Accordingly, we conclude that the marks are
similar when viewed in their entireties.
Applicant also argues that we should accord the
registered mark, in particular, the word MILLER’S, a narrow
scope of protection because it is weak. To support this
Serial No. 76978795
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argument applicant has made of record third-party
registrations for the following marks for restaurant
services: ANNA MILLERS’ PIES; BILL MILLER BAR-B-Q;
MILLER’S ROAST BEEF; CHERRY MILLER’S CAFE; MILLER’S
CROSSING; and PETE MILLER’S.
Based on this evidence, we acknowledge that there are
numerous registrations for the surname “MILLER” in some
form in connection with restaurant services. Each third-
party mark does include some other wording unlike the marks
at issue here. In this case, both marks include the
identical wording MILLER’S, and no additional wording, and
as we noted, the services are identical or overlapping.
Under the particular circumstances before us, we find
applicant’s showing regarding “MILLER” insufficient to
conclude that there is no likelihood of confusion.
We likewise find unpersuasive applicant’s evidence of
multiple registrations for other marks, which include
apparent surnames, such as, LEE’S DELI and LEE’S
SANDWICHES, for restaurant services. We must decide each
case on its unique facts. Actions by examining attorneys
in other applications do not dictate our determination in
this case. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001).
Serial No. 76978795
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Applicant also argues that the potential purchasers of
restaurant services are sophisticated and that this fact
would preclude confusion in this case. Neither the
application nor the registration limit the restaurant
services in question in a way which would suggest that the
services are particularly expensive or which would
otherwise confine the services to knowledgeable or
sophisticated clientele. Accordingly, we conclude that
both applicant’s and registrant’s services would be
rendered to the general public and could include less
expensive offerings. Furthermore, as the Examining
Attorney notes, even sophisticated purchasers may be
subject to trademark confusion. In re Pellerin Milnor
Corp., 221 USPQ 558, 560 (TTAB 1983). Thus, we conclude
that the sophistication of purchasers is not a factor in
this case.
Finally, based of all evidence and argument in this
case bearing on the du Pont factors, we conclude that there
is a likelihood of confusion.
Decision: We affirm the refusal under Trademark Act
Section 2(d).