For registration claims, it is well-settled that the issue of likelihood of confusion must be "based on an analysis of the mark as applied to the . . . services recited in applicant's application vis-a-vis the . . . services recited in an opposer's registration, rather than what the evidence shows the . . . services to be." Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1491 (Fed. Cir. 1987). Because the Court previously compared the services actually provided by Century and C21 (dkt. 177 at 22:15-33:10), the analysis of this factor will not rely on findings in the March 16 Order.

Our precedent requires the Board to look to the registration to determine the scope of the goods/services covered by the contested mark. See Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat'l Ass'n, 811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); Dixie, 105 F.3d at 1407-08, 41 USPQ2d at 1534; Commerce Drug Co. v. Kirkman Labs., Inc., 461 F.2d 833, 835, 174 USPQ 265, 267 (CCPA 1972); see also United States Dep't of Commerce, Patent and Trademark Office, Trademark Manual of Examining Procedure, § 1207.01 (2nd ed., Rev. 1, Apr. 1997) (stating that the likelihood of confusion inquiry concerns the applicant's mark "when used on or in connection with the goods or services identified in the application") ("TMEP"). Proceedings before the Board are concerned with registrability and not use of a mark.

The Supreme Court itself has cautioned that broad language in judicial opinions must be read in light of the issue before the court. See Armour Co. v. Wantok, 323 U.S. 126, 133 (1944); see also Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1494 (Fed. Cir. 1987). In Steel Co. the Court recognized that "some" of its prior cases "must be acknowledged to have diluted the absolute purity of the rule that Article III jurisdiction is always an antecedent question."

On appeal, the only issue the parties raised was likelihood of confusion, and this court affirmed the Board on that issue without consideration of the augmented panel's ruling, made at an earlier stage of the same case, on the use issue. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). I do not understand why, if the court in that case limited its decision to the issue the parties presented to it, it should not follow the same course here. If, as the dissent now argues, the Crocker prior use ruling was erroneous, one would think that the court contemporaneously reviewing the second Crocker decision would have corrected that error.

“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 set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed.” Octocom Sys., Inc. v. Hous. Comput. Servs., Inc., 918 F.2d 937, 942 (Fed.Cir.1990) (citing cases); see also In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363 (Fed.Cir.2009) (defining the genus of goods or services at issue as the genus of goods or services for which the applicant sought protection, as set forth in its trademark application); Can. Imperial Bank of Commerce v. Wells Fargo Bank, Nat'l Ass'n, 811 F.2d 1490, 1492–93 (Fed.Cir.1987). Thus, the correct question is not whether “churrascos” is generic as applied to Cordua's own restaurants but rather whether the term is understood by the restaurant-going public to refer to the wider genus of restaurant services.

Broad statements in judicial opinions must be interpreted in light of the issue before the court, and cannot uncritically be extended to significantly different situations. N. States Power Co. v. United States, 224 F.3d 1361, 1367 (Fed. Cir.2000) (citing Armour Co. v. Wantock, 323 U.S. 126, 133, 65 S.Ct. 165, 89 L.Ed. 118 (1944) and Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1494 (Fed. Cir.1987)). In the present case, in which Perez admittedly received 31 days written notice, the "reasonable cause" clause does not come into play.

When the registration does not contain limitations describing a particular channel of trade or class of customer, the goods or services are assumed to travel in all normal channels of trade. See Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1492, 1 USPQ2d 1813, 1814-15 (Fed. Cir. 1987). The Board properly based its analysis on Packard's registration, which contains no restrictions as to a particular class of consumer or channel of trade, and assumed that applicant and opposer's goods and services may be marketed "in some of the same manners" to the same classes of purchasers.

It is a truism that bears repeating that broad language in an opinion must be read in light of the issue before the court. See Armour Co. v. Wantok, 323 U.S. 126, 133 (1944); Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1494 (Fed. Cir. 1987). The court of appeals' statements in Northern States Power, made in explaining why it was denying mandamus, cannot properly be interpreted as a holding that the utilities were precluded from suing the government for breach of contract by the contract's administrative disputes resolution provision.

"`Likelihood of confusion must be determined based on an analysis of the mark as applied to the . . . services recited in applicant's application vis-a-vis the . . . services recited in [a] . . . registration, rather than what the evidence shows the . . . services to be.'" Canadian Imperial Bank v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987) (quoting approvingly the board's formulation of the test). Indeed, the second DuPont factor expressly mandates consideration of the similarity or dissimilarity of the services "as described in an application or registration.

CBS Inc. v. Morrow, 708 F.2d 1579, 1581, 218 USPQ 198, 199 (Fed. Cir. 1983). See Canadian Imperial Bank v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). In this case, regardless of whether or not golf shirts having collars are treated as being specifically different from athletic shirts, the goods are likely to be sold in department stores or specialty shops in close proximity to each other.