24/7 Eats, LLC

Trademark Trial and Appeal Board

May 8, 2012

No. 85066363 (T.T.A.B. May. 8, 2012)

Mailed: May 8, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re 24/7 Eats, LLC
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Serial No. 85066363
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Michael A. Cornman of Ladis & Parry, LLC for 24/7 Eats, LLC

Eugenia K. Martin, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
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Before Kuhlke, Wellington and Lykos, Administrative Trademark
Judges.

Opinion by Lykos, Administrative Trademark Judge:

24/7 Eats, LLC (“applicant”) filed an application to
register the mark THE HIGHLINER in standard character format for
“restaurant services” in International Class 43.1
The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark
so resembles the registered mark HIGHLINER COFFEE CO also in
standard character format for “cafe services; and carryout
restaurant services featuring coffee, candy and baked goods” in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85066363
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International Class 42,2 that when used on or in connection with
applicant’s identified services, it is likely to cause confusion
or mistake or to deceive.
For the reasons discussed herein, the Board affirms the
refusal to register.
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
likelihood of confusion. 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). We discuss each of the du Pont
factors as to which applicant or the examining attorney
submitted argument or evidence or which we deem relevant.
Applicant in its appeal brief has focused primarily on the
first du Pont factor - the appearance, sound, connotation and
commercial impression of the marks. Before discussing this
factor, however, we will briefly address applicant’s argument
regarding the relatedness of the parties’ services. Applicant
contends that the respective services are “distinct”

1 Application Serial No. 85066363, filed June 18, 2010, pursuant to
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).

2 Registration No. 2575762, issued June 4, 2002, under Section 1(a)of
the Trademark Act, claiming dates of first use and first use in
commerce on February 1, 1999; Sections 8 and 15 affidavits
acknowledged and accepted; renewed. The terms COFFEE CO are
disclaimed.
Serial No. 85066363
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(Applicant’s Brief, p. 4) because they fall in two separate
international classes.
The fact that the services fall in different international
classes does not affect the likelihood of confusion analysis.
The language in the recitation of services, not classification,
controls our analysis. In this particular instance, the
difference in classification of applicant’s and registrant’s
services reflects the creation of a new International Class 43
to encompass restaurant services upon implementation of the
Eighth Edition of the Nice Agreement on January 1, 2002. As
such, registrant’s services identified as “carryout restaurant
services featuring coffee, candy and baked goods” are
encompassed by applicant’s more broadly identified and
unrestricted provision of “restaurant services” such that they
are legally identical. See Citigroup Inc. v. Capital City Bank
Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re La Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB
2008). Moreover, because the services are legally identical and
unrestricted, they are presumed to move in the same channels of
trade and to be sold to the same classes of consumers. See
Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 939
(Fed. Cir. 1983). See also In re Linkvest S.A., 24 USPQ2d 1716,
1716 (TTAB 1992) (because there are no limitations as to
channels of trade or classes of purchasers in either the
Serial No. 85066363
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application or the cited registration, it is presumed that the
services in the registration and the application move in all
channels of trade normal for those services, and that the
services are available to all classes of purchasers for the
listed services). For these reasons, we find that the second
and third du Pont factors weigh in favor of finding a likelihood
of confusion.
Turning now to the first du Pont factor, the question is
not whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in their entireties that confusion as to
the source of the goods or services offered under the respective
marks is likely to result. The focus is on the recollection of
the average purchaser, who normally retains a general rather
than a specific impression of trademarks. In re Jack B. Binion,
93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106 (TTAB 1975).
Applicant argues that the marks at issue are “strikingly
disparate in meaning” and that this alone is sufficient to avoid
a likelihood of confusion. Applicant’s Brief, p. 3. More
specifically, applicant contends that its mark THE HIGHLINER
refers to “a ‘thing’ of some sort” by virtue of the inclusion of
the word ‘THE’” whereas registrant’s mark HIGHLINER COFFEE CO
instead refers to a “‘company’ in general and ‘coffee company’
Serial No. 85066363
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in particular.” Id. Applicant further maintains that “a
‘highliner’ is not a ‘company’” and that consumers familiar with
High Line Park in the Chelsea neighborhood of New York City
where applicant’s restaurant is located would associate
applicant’s mark with that park. Id. By contrast, applicant
contends that the term “highliner” as used in registrant’s mark
has the connotation of an Alaskan fishing vessel. See Request
for Reconsideration, Exhibit A.
Applicant places a great deal of significance on the
addition of the term “THE” in applicant’s mark as engendering a
distinct commercial impression when considered in relation to
applicant’s recited services. In making this argument,
applicant relies on the following discussion from In re
MicroStrategy Incorporated, Application Serial Nos. 75666992 and
7566993 (TTAB 2002), a non-precedential decision, involving
applications to register the mark THE INTELLIGENCE COMPANY:
We find that, considering the mark in its entirety, it is
not merely descriptive. Clearly, the terms “The” and
“Company” have little or no trademark significance alone.
However, THE INTELLIGENCE COMPANY, when considered in
connection with applicant's identified goods and services,
connotes a company with intelligence, i.e., defined as “the
ability to learn or understand or to deal with new or
trying situations.” At most, it is suggestive of the
purported qualities of its employees or the skill with
which applicant renders its services, or suggestive of the
quality of applicant's software.

Serial No. 85066363
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Applicant uses this logic to argue that here the term “THE”
connotes something “not immediately generic …relating to inter
alia (1) the High Line park, a recently opened park in the same
neighborhood where Applicant has in fact now opened a
restaurant; (2) an inhabitant or promoter of the High Line park;
…” Applicant’s Brief, p. 7. Aside from the fact that non-
precedential opinions are not binding upon the Board, this case
is inapposite since it involved a descriptiveness refusal.
Moreover, the analysis used by the Board in that decision
provides little guidance regarding how to define the commercial
impression of applicant’s mark.
Applicant also relies on a another non-precedential
decision, Star Networks, Inc., v. Sprint Communications Co.
L.P., Cancellation. No. 22034 and Opposition. No. 88849 (TTAB
2001), for the proposition that the term “THE” is capable of
distinguishing a mark. Applicant further points to Shen Mfg.
Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350,
1356 (Fed. Cir. 2004) where the term “THE” was found to add
“source-identifying significance” to the mark since consumers
referred to applicant’s RITZ mark as “The Ritz.” In support
thereof, applicant maintains that its mark THE HIGHLINER
“relates to [a]pplicant’s particular, singular and superior
restaurant services” apart from other New York entities
incorporating the term “highline.” Applicant’s Brief, p. 8.
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Both decisions, however, stand in contrast to the general
principle that when comparing marks, the inclusion of the term
“the” at the beginning of one of the marks will generally not
affect or otherwise diminish the overall similarity between
the marks. See In re Thor Tech Inc., 90 USPQ2d 1634, 1635
(TTAB 2009) (finding WAVE and THE WAVE “virtually identical”
marks; “[t]he addition of the word ‘The’ at the beginning of
the registered mark does not have any trademark
significance.”); In re Narwood Prods. Inc., 223 USPQ 1034,
1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS
“virtually identical” marks; the inclusion of the definite
article “the” is “insignificant in determining likelihood of
confusion”); Bank of Am. Nat’l Trust & Savings Ass’n v. First
Nat’l Bank of Allentown, 220 USPQ 892, 896 (TTAB 1984)
(finding TIMESAVER and THE TIMESAVER STATEMENT to be
“confusingly similar” marks); Dog House, Inc. v. Dawg House,
Inc., 138 US{Q 466, 467 (TTAB 1963) (finding DAWG HOUSE and
design and THE DOG HOUSE and design to be “substantially
similar” marks). As previously stated by the Board in United
States National Bank of Oregon v. Midwest Savings and Loan
Association, 194 USPQ 232, 236 (TTAB 1977):
The definite article ‘THE’ likewise adds little
distinguishing matter because the definite article most
generally serves as a means to refer to a particular
business entity or activity or division thereof, and it
would be a natural tendency of customers in referring to
Serial No. 85066363
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opposer’s services under the mark in question to utilize
the article ‘THE’ in front of ‘U-BANK’ in view of their
uncertain memory or recollection of the many marks that
they encounter in their everyday excursion into the
marketplace.

Accord Jay-Zee, Inc. v. Hartfield-Zodys, Inc., 207 USPQ 269
(TTAB 1980) (“Since the psychological and marketing impact of
petitioner’s mark in its earlier version clearly was derived
from the word ‘IMAGE,’ the omission of the word ‘THE’ (the
definite article serving merely to emphasize ‘IMAGE’) from the
later version did not interrupt the continuity of use”); Bank of
Am. Nat’l Trust & Savings Ass’n v. First Nat’l Bank of
Allentown, 220 USPQ 892, 896 (TTAB 1984) (finding TIMESAVER and
THE TIMESAVER STATEMENT to be “confusingly similar” marks).
In addition, we find that the applicant has not demonstrated
that the word “THE” as used in applicant’s mark has “elevated
significance because of the well-known manner in which people
refer to” applicant’s restaurant services. See Shen Mfg. Co. v.
Ritz Hotel Ltd., 73 USPQ2d at 1356. While other entities in New
York may incorporate the term “highline,” this does not
necessarily lead to the conclusion that applicant’s own services
have garnered a superior level of perception from consumers.
Next we address applicant’s contention that because the
word “highliner” has multiple meanings, the disclaimed matter
“COFFEE CO” in registrant’s mark is of equal importance.
Relying on evidence from applicant’s website showing the
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depiction of a fishing vessel, applicant maintains that the term
HIGHLINER in registrant’s mark relates to fishing whereas
applicant’s mark connotes High Line Park in New York city.
Applicant therefore maintains that “COFFEE CO” holds source
identifying significance such that the commercial impression of
the marks is distinct.
Disclaimed matter is typically less significant or less
dominant when comparing marks. See In re Dixie Rests., Inc.,
105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997);
In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752
(Fed. Cir. 1985). That is not to say that the disclaimed matter
“COFFEE CO” in registrant’s mark has been given no
consideration. We find that the term HIGHLINER in registrant’s
mark is the dominant term because the phrase “COFFEE CO” has no
other meaning other than describing the type of restaurant
services provided – a café featuring coffee. Thus, the first du
Pont factor weighs in favor of finding a likelihood of
confusion.
Considering all of the evidence of record, we conclude that
the marks are similar in sight, sound, appearance and commercial
impression, and that applicant’s services, as identified, are
legally equivalent to registrant’s services such that they must
be presumed to be sold through the same channels of trade to the
same classes of purchasers. To the extent that there are any
Serial No. 85066363
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other relevant du Pont factors, we treat them as neutral.
Weighing all of the relevant factors, we find a likelihood of
confusion between applicant's mark and the cited registration.
Decision: The refusal to register pursuant to Section 2(d)
is affirmed.