ALP of South Beach Inc.

Trademark Trial and Appeal Board

Mar 27, 2006

No. 75819306 (T.T.A.B. Mar. 27, 2006)

Hearing: Mailed:
September 13, 2005 March 27, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ALP of South Beach Inc.
________

Serial No. 75819306
_______

Albert Robin of Cowan Liebowitz & Latman, P.C. for ALP of
South Beach Inc.

Jennifer D. Chicoski, Trademark Examining Attorney, Law
Office 115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Bucher, Rogers and Kuhlke, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
ALP of South Beach Inc. seeks registration on the
Supplemental Register of the term shown below:

for services recited in the application, as amended, as
“restaurants providing full service to sit-down patrons,
excluding cafeteria-style restaurants,” in International
THIS DISPOSITION IS
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75819306
- 2 -
Class 42.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon the ground that this
term is deceptive under Section 2(a) of the Act.2
Applicant and the Trademark Examining Attorney
submitted briefs, and both appeared at an oral hearing held
on September 13, 2005 before this panel of the Board.
We affirm the refusal to register.

1 Application Serial No. 75819306 was filed on the Principal
Register on October 12, 1999 based upon applicant’s allegation of
first use anywhere and first use in commerce at least as early as
June 1998. On July 10, 2001, applicant indicated its willingness
to amend its application to the Supplemental Register on remand
to the Trademark Examining Attorney for purposes of obtaining a
registration of its mark.
2 Given the tortured prosecution history of this application,
the Board sought to clarify the outstanding issues at the
beginning of the oral hearing. Based upon those discussions,
applicant subsequently agreed with the Trademark Examining
Attorney to amend this application unequivocally to the
Supplemental Register, and to delete the earlier-proffered
disclaimer of the word CAFETERIA apart from the specific
presentation of this word as shown in the drawing. The record
shows that this was done in an Examiner’s Amendment dated October
5, 2005. As a result, the issue of deceptive misdescriptiveness
under Section 2(e)(1) of the Act is now moot.
Moreover, the Trademark Examining Attorney’s earlier
contention that this term is incapable of being recognized as a
source indicator under Section 23 of the Act pertained only to
the source-indicating capability of the particular stylization of
the lettering of CAFETERIA as shown in the mark, i.e., , and
was made at a time in the prosecution of this application when
the word CAFETERIA had been disclaimed apart from the mark as
shown. Hence, we presume that the Trademark Examining Attorney’s
refusal based upon the incapability of the particular stylization
of the lettering of CAFETERIA as shown in the mark to serve a
source-indicating function, is also now moot.
Serial No. 75819306
- 3 -
The test for determining whether a mark is deceptive
under Section 2(a) has been stated by the Court of Appeals
for the Federal Circuit as:
(1) Is the term misdescriptive of the
character, quality, function,
composition or use of the goods (or
services)?
(2) If so, are prospective purchasers
likely to believe that the
misdescription actually describes the
goods (or services)?
(3) If so, is the misdescription likely to
affect the decision to purchase?

In re Budge Manufacturing Co., Inc., 857 F.2d 773,
8 USPQ2d 1259, 1260 (Fed. Cir. 1988) [LOVEE LAMB held
deceptive for seat covers not made of lambskin]. See
also, In re Woolrich Woolen Mills, Inc., 13 USPQ2d
1235 (TTAB 1989) [WOOLRICH for clothing not made of
wool found not to be deceptive under §2(a)].
We find that the word CAFETERIA used in connection
with restaurant services that explicitly exclude cafeteria-
style restaurants does misdescribe the services. In fact,
applicant appears to admit the same:
Indeed, “cafeteria” is defined in Webster’s
New World Dictionary as “a self-service
restaurant or lunchroom.” ALP’s restaurant
is neither self-service nor a cafeteria. As
shown by the materials submitted with the
Leonard Declaration, ALP operates a very
trendy “sit-down” restaurant at which
patrons are served food and beverages.
Serial No. 75819306
- 4 -
Applicant’s appeal brief, p. 5.
The next part of the Budge test is whether any
prospective purchaser is likely to believe the
misdescription. In re Quady Winery Inc., 221 USPQ 1213,
1214 (TTAB 1984).
The Trademark Examining Attorney argues from the
evidence of record in this case that there are clearly
restaurants that are categorized in restaurant guides, for
example, as “cafeterias,” and judging by a large sampling
of eateries from around the country, one can find most
anywhere in this country an establishment that refers to
itself as a “cafeteria.” The Trademark Examining Attorney
argues from the record that some restaurant patrons prefer
cafeteria-style restaurants for their variety of foods,
convenience and overall value. Hence, at least some
potential patrons are quite likely to believe that a
restaurant calling itself CAFETERIA meets the common
dictionary definition of a “cafeteria.”
In support of her position, the Trademark Examining
Attorney relies upon cases where a trademark is applied to
consumer goods such as clothing, shoes or seat covers,
Serial No. 75819306
- 5 -
which marks may contain, for example, some form of the word
SILK3 or HYDE/HIDE.4
Given the nature of the misdescription of these
restaurant services – a fact that applicant has admitted –
we must decide whether or not the instant case is at all
analogous to these SILK or HYDE/HIDE cases.
It is true that we are not dealing here with small
labels on clothing, shoes or seat covers, “which [labels]
purchasers may or may not note and which may or may not
always be provided.” In re Budge Manufacturing Co. Inc.,
supra at 1261. Nonetheless, our primary reviewing court
has held that when considered in conjunction with the
identified goods or services, “the mark standing alone must
pass muster, for that is what the applicant seeks to
register, not extraneous explanatory statements,” Id. See
also, In re Berman Bros. Harlem Furniture Inc., 26 USPQ2d
1514 (TTAB 1993) [FURNITURE MAKERS held deceptively

3 In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002)
[SUPER SILK is deceptively misdescriptive for clothing made of
silk-like fabric]; and In re Shapely, Inc., 231 USPQ 72 (TTAB
1986) [SILKEASE held deceptive as applied to clothing not made of
silk].
4 R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786,
140 USPQ 276 (CCPA 1964) [DURA-HYDE deceptive for shoes made of a
plastic material having a leather-like appearance]; In re Intex
Plastics Corp., 215 USPQ 1045 (TTAB 1982) [TEXHYDE held deceptive
as applied to synthetic fabric for use in the manufacture of
furniture, upholstery, luggage, etc.); and Tanners' Council of
America, Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979)
[SOFTHIDE held deceptive for imitation leather material].
Serial No. 75819306
- 6 -
misdescriptive for retail furniture store services not
including the manufacture of furniture]; and In re Woodward
& Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) [CAMEO is
deceptively misdescriptive for jewelry items without cameos
or cameo-like elements].
However, applicant argues that we cannot find
deceptive misdescriptiveness herein if indeed the
determining factor is the probable reaction of reasonably
prudent members of the public.
Applicant points out repeatedly that its expenditures
on paid promotion have been most limited. Rather, it has
relied largely upon free publicity in the mass media and
word-of-mouth recommendations to build the “thunderous
success”5 of this enterprise. For example, applicant argues
that “the most effective method of obtaining new patrons
for a restaurant is word-of-mouth, a method which
necessarily includes some amount of description and which
could not lead to deception.” Applicant’s response of June
2, 2003. Additionally, applicant was able to take
advantage of various forms of mass media (television,
newspapers, glossy magazines, Internet sites, etc.), first
in New York City and then later in Miami, to create a buzz

5 Declaration of Susan Leonard, Chief Financial Officer of
ALP of South Beach Inc., ¶2, March 21, 2001.
Serial No. 75819306
- 7 -
for applicant’s establishments in Chelsea and South Beach,
respectively. Prospective patrons reading these free media
mentions would know the nature of applicant’s restaurant(s)
well before the targeted individuals ever entered onto the
premises. These generally positive media descriptions have
included “futuristic diner,”6 “post-modern, upscale diner”,7
and “24-hour glorified coffee shop.”8
We are not convinced, however, by applicant’s
arguments that everyone who comes into its CAFETERIA
establishments knows in advance the nature of the
restaurant. In reaching our decision herein on
deceptiveness, we cannot rely on applicant’s allegations
about its current marketing strategies. Any registration
that issues from this application will be national in
scope, and applicant clearly would not be limited to the
two establishments it currently operates. Certainly, we
cannot assume that word-of-mouth publicity and detailed
restaurant reviews are the only ways prospective consumers
would ever encounter the mark. We must presume that
magazine advertisements, classified ad listings, and
highway billboards could some day be part of applicant’s

6 “The Dish: Star-tested delectables to try at home,” In
Style, May 1999.
7 WHERE New York, 2002 – 2003.
8 “Gotham Style,” New York, June 1, 1998.
Serial No. 75819306
- 8 -
marketing mix, or alternatively, that a prospective patron
might well chance upon the restaurant when driving or
walking by,9 and come in for a meal after seeing the signage
on the exterior of the building.
It appears from a photograph of the Chelsea location
that applicant’s CAFETERIA mark is depicted on a canopy
directly above floor-to-ceiling, glass garage-door panels.
Applicant argues that any
passerby could easily see that
applicant’s establishment is
set up as a table-service
restaurant. Accordingly,

applicant contends that it would be impossible for the
potential patron – even one having no familiarity with the
nature of applicant’s services – to be able to view the
mark on the front of applicant’s restaurant without
simultaneously realizing applicant offers table service.
We agree with applicant that our determination cannot
be an exercise that takes place in the abstract. The
question of deceptive misdescriptiveness must be considered
in conjunction with the goods or services as seen in the
marketplace.

9 “The [restaurant] design is specifically calculated to
attract passersby.” Interior Design, September 1998.
Serial No. 75819306
- 9 -
Applicant cites to Northwestern Golf Company v.
Acushnet Company, 226 USPQ 240 (TTAB 1985) [applicant’s
POWER STEP mark, as applied to golf clubs, is neither
deceptively misdescriptive nor deceptive, as the Board
concluded that “it is very difficult to see how purchasers
could be deceived by the mark into believing that the shaft
has but one step when even a quick glance at the golf club
will reveal that it has a multi-step shaft construction,
and purchasers are not likely to purchase golf clubs
without looking at them first”]; and In re Econoheat, Inc.,
218 USPQ 381 (TTAB 1983) [applicant’s mark SOLAR QUARTZ, as
applied to electric space heaters, is neither deceptively
misdescriptive nor deceptive, with the Board stating that,
“[i]nasmuch as the probable reaction of the public is the
key issue and since even a casual perception of applicant’s
heaters reveals that they operate just like any other
electrical appliance [designed to be plugged into an
electrical outlet], we do not believe that the public would
be deceived into believing applicant’s goods are solar-
powered”]. See applicant’s response of September 9, 2002.
We agree with applicant that what separates cases such
as Northwestern Golf and Econoheat (where marks were found
not to be deceptively misdescriptive or deceptive) from the
Serial No. 75819306
- 10 -
SILK and HYDE/HIDE cases cited by the Trademark Examining
Attorney (where marks were found to be deceptively
misdescriptive or deceptive), is that the Board found that
merely contemplating the involved consumer items in the
Northwestern Golf and Econoheat cases would be sufficient
to enable a reasonable consumer to draw a correct
conclusion about the nature of the respective products.
See also In re Robert Simmons, Inc., 192 USPQ 331, 333
(TTAB 1976) [the mark WHITE SABLE on artists’ paint brushes
does not deceive purchasers into believing that the
bristles are made from the hair or fur of a sable].
Applicant has pointed to cases where the casual
observer of consumer products is presumed to be able to
discover that the mark is obviously misdescriptive by
looking at the involved goods. We do not find these cases
involving a close-up visual examination of consumer items,
such as golf clubs, space heaters and paint brushes, to be
analogous to the allegedly misdescriptive service mark
involved herein. Applicant has cited no cases saying that
the owner of a service mark can advertise or display false
information prominently about its services to prospective
consumers, and then escape a finding of deceptiveness
because the sale may ultimately not be consummated when the
Serial No. 75819306
- 11 -
customer discovers the misrepresentation just in time to
avoid the transaction.
We really cannot be sure what portion of prospective
customers, at some point, actually believed the deceptive
misdescription. In his affidavit, Mark Thomas Amadei, Vice
President of ALP of South Beach Inc. and one of applicant’s
principals, states that only a very few prospective
customers appeared to have any misimpressions about the
nature of applicant’s services. We view this
acknowledgement as significant. That some prospective
customers did have a misimpression about the nature of
applicant’s services indicates to us that others may also
have been misled. We find that this is similar to
likelihood of confusion cases, where evidence of some
instances of actual confusion can serve as a powerful
demonstration that many more people are likely to be
confused. For each prospective patron who actually voiced
confusion over the misrepresentation, there may have been
many others who left the restaurant without complaining or
commenting.
We turn then to the third and final prong for
deceptiveness under the Budge test. Having found that
prospective patrons of applicant’s restaurant are
Serial No. 75819306
- 12 -
likely to believe that the misdescription actually
describes the services, we must still determine
whether the misdescription is likely to affect the
decision to purchase.
This final prong of the Budge test has been
restated as inquiring whether or not the
misrepresentation would materially affect the decision
to purchase the goods. In this context, applicant
argues that this prong is not met because (1)
applicant offers a higher class of services than the
lunchroom or self-service restaurant services that the
term CAFETERIA describes, and (2) the prospective
patron who realizes her mistake is able to walk away
from the reservation desk before purchasing a meal
requiring full table service.
Applicant dismisses the SILK and HIDE/HYDE cases,
arguing in this case that a table service restaurant is
preferable to a cafeteria. The SILK cases10 do discuss how
silk is more desirable as a fabric than synthetic materials
frequently used in its stead, or in a similar fashion, in
the HIDE/HYDE cases, leather is found is more desirable to

10 Supra, footnote 3.
Serial No. 75819306
- 13 -
most consumers than are often-cheaper leather substitutes.11
By contrast, applicant’s position – especially if one
assumes that as between competing styles of restaurants,
similar cuisine is being offered at comparable prices – is
that, for the majority of prospective diners, pushing a
tray through a lunchroom line is not preferable to being
seated at a table or booth with full table service provided
by capable wait staff. In other words, applicant contends
that if the instant case involves any “bait-and-switch” for
some prospective patrons, the “switch” here is to a higher
class of services.
However, the Trademark Examining Attorney takes the
position that, without a doubt, the cafeteria experience is
a desirable one for some portion of the population. She
argues that applicant has misrepresented its services by
choosing the term CAFETERIA to be used in connection with
restaurant services that exclude cafeteria-style
restaurants, and there is nothing in applicant’s alleged
mark that dispels the deceptive nature of this designation.
As she argued in her denial of applicant’s request for
reconsideration:
“Evidence of record shows that cafeterias
are generally less expensive than sit-down

11 Supra, footnote 4.
Serial No. 75819306
- 14 -
type restaurants and that they have
different characteristics that would be of
interest to potential consumers. Thus, the
misrepresentation is likely to affect the
decision to purchase.”
…
“The examining attorney has established
through submissions of stories from the
LEXIS/NEXIS Research Database as well as
listings of restaurants from the World Wide
Web that the fact that a restaurant calls
itself ‘CAFETERIA’ provides information to
consumers who would be influenced by the
particular meaning that the term ‘CAFETERIA’
has in the context of restaurants. The
affordability, time-savings, and other
aspects of a true cafeteria are not features
of the applicant’s trendy, popular,
expensive Manhattan or South Beach
restaurants catering to celebrities and
club-goers.”

In spite of applicant’s protests to the contrary, we
conclude that there are features of a cafeteria that some
prospective patrons will prefer to those of a table-service
restaurant. Thus, whether or not restaurant services have
significant attributes of a cafeteria may be material to
the decision to patronize a particular establishment.
We turn then to applicant’s argument that the
prospective patrons who realize their mistake are able to
walk away from the reservation desk before purchasing meals
requiring full table service. In essence, much of the
disagreement between applicant and the Trademark Examining
Attorney at the oral hearing seemed to focus on when in
Serial No. 75819306
- 15 -
this process the deception actually occurs, or is remedied.
The Trademark Examining Attorney argues that, even if it is
true that it would be obvious immediately to virtually all
consumers who reach the reservation desk that applicant’s
restaurant is not actually a cafeteria, by that point, the
deception has already taken place. In fact, the Trademark
Examining Attorney argues that deception attaches much
earlier in the process. She argues that the question of
whether a mark is deceptive must be made when the customers
encounter the mark.
We agree that while descriptiveness or
misdescriptiveness must be considered in relation to the
services, this does not mean that prospective purchasers
cannot be misled prior to arriving at the restaurant
itself. Upon encountering applicant’s mark for restaurant
services in a promotional context, some share of
prospective patrons will initially conclude, quite
erroneously, that the referenced restaurant is, indeed, a
cafeteria. Accordingly, we agree with the Trademark
Examining Attorney on this question, and find that the
critical point for gauging whether or not potential patrons
believe the misdescription inherent in applicant’s service
mark is earlier than applicant has argued.
Serial No. 75819306
- 16 -
Assume, as we must, that reasonable prospective
patrons of these services see informational signage
preceding an Interstate highway exchange notifying them of
the availability of CAFETERIA restaurant services among the
listed eateries, and they pull off at the designated exit
and then drive around until they find the restaurant. Or
perhaps another group of prospective patrons seeks out the
restaurant based on a classified advertisement for
“Cafeteria” under the heading “restaurant services,”
believing that it offers cafeteria services. Or maybe it
is a hungry family merely driving or walking by that
decides to come in for a cafeteria meal after seeing the
signage on the canopy on the exterior of the building.
By contrast, applicant takes the position that even
consumers who may have been misled at some earlier
timeframe, will discover their mistake once in the vicinity
of the restaurant.
We certainly cannot say that reasonably prudent
members of the public who wish to eat at a restaurant
having the trademark CAFETERIA would be able to ascertain
Serial No. 75819306
- 17 -
from across the street or on the sidewalk that applicant’s
restaurant is not a cafeteria.12
Should the exterior not prove to be the clue,
applicant argues that anyone who may continue to be misled
up to the point that they entered the restaurant would
quickly realize that the restaurant was not a cafeteria,
and any deceptiveness of the name would quickly be
dissipated. At least at the point of entry into the
restaurant, applicant points out, the prospective
restaurant patron will not believe the misdescription.
Because of all the visual cues, at that juncture, such a
belief is no longer plausible. Presumably some few
customers may well not be disabused of their erroneous
conclusions about the nature of the eating establishment
until finding themselves escorted to a table in the back of
a relatively small restaurant where they are handed a menu.
We too find it highly implausible that someone seeking out
a cafeteria experience would find herself ordering a table
service meal from the wait staff, thinking all the while
that she was eating in a cafeteria.

12 Of course, a federal trademark registration for this mark
issuing to applicant for the identified services would allow
applicant to have any type of fenestration it chose, including
smaller apertures having dark-tinted or heavily-glazed glass that
would make it impossible for prospective patrons to ascertain the
set-up of the restaurant’s interior from the sidewalk.
Serial No. 75819306
- 18 -
However, we disagree with the thrust of applicant’s
analysis. The question of materiality is “whether or not
the misleading information conveyed by the mark bestows
upon the service greater marketability and is the reason
why the services are desired and hence bought ….” In re
Lyphomed Inc., 1 USPQ2d 1430 (TTAB 1986). The emphasis
here ought not to be placed on the term, “and hence
bought,” as the factual situation of this type of service
mark presents us with the question of “pre-sale” deception.
True, the state of being misled may well be dispelled
before the customer completes the purchase. Nonetheless,
customers will have been misled by the name in the first
place – causing them to decide to patronize the restaurant.
The critical point is not when the customers walk into the
restaurant or when they are handed a menu, but when they
encounter the mark in an advertisement, informational road
sign, or the signage on the exterior of the restaurant, and
then in each of these cases, making a decision to purchase
the services. And whether prospective patrons who have
been misled actually stay upon learning of their
misapprehension ought not to be the determining factor
under Section 2(a) of the Act. Irrespective of exactly
where the patrons may be at the point they recognize the
Serial No. 75819306
- 19 -
deception (e.g., parking across the street, walking down
the sidewalk, standing at the reservation desk, or sitting
at a table), we find that by the time the prospective
patrons are faced with the choice of either completing the
purchase of a meal different from the one sought or finding
another restaurant, deception has already taken place.
Our concern over pre-sale deception has parallels
to the concept of “pre-sale confusion” in the context
of trademark infringement and likelihood of confusion.
See Grotrain, Helfferich, Schulz, Th. Steinweg Nachf.
V. Steinway & Sons, 523 F.2d 1331 (2nd Cir. 1975). The
defendant’s actions may attract or lure potential
customers by improperly benefiting from the goodwill
that the plaintiff developed in its mark, even though
any confusion as to the source of goods or services
may be dispelled before an actual sale occurs.13
Similarly, we find that the existence of pre-sale

13 “By the time [the customer looking for a deal on a Steinway
piano] gets to the store and realizes that the Steinweg is
not really a Steinway, she may decide that the Steinweg is
good enough and buy it anyway. Even is she doesn’t, the
deception may have cost her the better part of an
afternoon, gas, wear and tear on her car, and a not
insignificant bit of road rage. Courts correctly treat
such pre-sale confusion as unfair competition and trademark
infringement under the Lanham Act ….”
Cf. “Initial Interest Confusion: Standing at the Crossroads of
Trademark Law,” by Jennifer E. Rothman, 27 Cardozo Law Review,
105, 161 – 162, http://www.cardozolawreview.com/
PastIssues/ROTHMAN.FINAL.VERSION.pdf
Serial No. 75819306
- 20 -
deception does not depend upon whether or not a sale
is completed as a result of the deception. The mere
fact that one may have decided to go to applicant’s
restaurant in order to patronize a true cafeteria,
based solely upon applicant’s choice of a deceptively
misdescriptive name for a restaurant, is sufficient to
meet the test of the final prong of the Budge test for
deceptiveness.
Accordingly, we conclude that respondent’s mark
is deceptive under Section 2(a) of the Act.
Decision: The refusal to register this service mark
under Section 2(a) of the Lanham Act is hereby affirmed.
- o O o -
Rogers, Administrative Trademark Judge, dissenting:

Applicant has been using the mark for a
restaurant in New York City since June 1998. The involved
application, which seeks registration of the mark for
services identified as “restaurants providing full service
to sit-down patrons, excluding cafeteria-style
restaurants,” has been pending since October 12, 1999.
Serial No. 75819306
- 21 -
From the record, it appears clear the restaurant has
been successful. See, in particular, paragraph 2 of the
March 21, 2001 declaration of Susan Leonard, applicant’s
Chief Financial Officer, and paragraphs 2 and 8 of the
September 5, 2002 declaration of Mark Thomas Amadei,
applicant’s vice president, each submitted with a response
to an Office action. Ms. Leonard attests to the
“thunderous success” of the restaurant, the expenditure of
a million dollars “creating and merchandising” the
restaurant, and “increasing revenues during each year of
operation, with total revenues approaching $ 12,000,000.”
Mr. Amadei attested to the New York City restaurant having
served two million customers over a four-year period, to
extensive favorable publicity, and to applicant’s plans to
open two more CAFETERIA restaurants. While the record is
not definitive, it appears that a Miami, Florida CAFETERIA
restaurant opened in June 2003.
The June 1999 issue of Bon Appetit describes the New
York City restaurant as follows:
[I]t sits in the middle of the district
called Chelsea, and its spirit is true not
only to New York but also to the
neighborhood that has become the city’s
destination of the moment. That means sheer
downtown style gets added to the insomniac’s
hours—starting with the sleek geometric
dining room that maybe could pass for a
Serial No. 75819306
- 22 -
cafeteria only at Beverly Hills High. Then
there is the wait staff parading in Dolce &
Gabbana’s version of diner-wear (more high
fashion than short order) and a hostess with
blond braids who looks like Heidi heading
off to a rave.
…
But just when all the Holly Go lightly gloss
starts to seem a little heavy-handed, dinner
arrives and Cafeteria’s hip-hop veneer gives
way to a heartland hoedown.

The September 1998 issue of Interior Design, in an
article headed “Hold the Trays” (emphasis in original)
reported:
[Cafeteria] is an intriguing hybrid. While
its name was chosen to reflect a casual
attitude in keeping with neighborhood norms,
its sleek design, as conceived by Ilan
Waisbrod of Studio Gaia, recalls no
cafeteria we’ve ever known.

“The owners had in mind a cafeteria for the
year 2000,” Waisbrod says of his first
client encounter. “Who knows what that
means?”
…
Cafeteria is essentially a crisp white
volume with a quartet of glazed garage doors
that open the interior to the street in good
weather. The design is specifically
calculated to attract passersby. The
restaurant consists of three components:
the primary dining space, a bar and a below-
grade lounge ….14

14 The “New York Club Guide” in the December 1998 issue of
Details, commenting on the Cafeteria lounge, reports: Don’t be
fooled by the humble name: “Fabulous” is the only word to
describe the tiny late-night basement lounge of this Chelsea
restaurant. The Vibe: Star Trek meets Vogue: white foam egg
chairs, high-backed white vinyl banquettes, designer-blue walls,
gorgeous multiethnic bartenders. (emphasis in original).
Serial No. 75819306
- 23 -
And the Flatiron News (Volume 4, No. 4) reports, in a
short review titled “Tray Chic”:
The name is a bit misleading. Owners Adam
Newton, Mark Thomas Amedei, Susan Leonard,
and Stacy Pison have used a modish irony in
calling their restaurant Cafeteria. First
of all, it doesn’t look like any cafeteria
I’ve done time in, smoking and playing
cards, waiting for the hooter to signal the
end of lunch. Secondly, it is not self-
service.

From these descriptions, no reasonably prudent
consumer, reading about or visiting the restaurant, could
conclude that the establishment was a “cafeteria.”15
Notwithstanding that applicant’s New York restaurant
plainly would not be perceived to be a traditional
cafeteria, and that applicant seeks to register the mark
for any restaurant but a cafeteria-style restaurant, the
mark has been refused registration by the Examining
Attorney, on the theory that CAFETERIA is “deceptive” under
Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a).
Applicant’s attempt to bestow the word cafeteria with
a new meaning for the year 2000 (per Interior Design), or
its use of irony in naming its restaurant (per Flatiron
News), has resulted in applicant being subjected to the

15 The dictionary definition offered by the Trademark
Examining Attorney defines a cafeteria as “a restaurant in which
the customers are served at a counter and carry their meals on
trays to tables.” See Office action of March 14, 2000.
Serial No. 75819306
- 24 -
penalty of permanent denial of registration.16 Though the
Lanham Act encourages registration of marks being used in
commerce, and applicant’s mark appears from the record to
be working effectively in the marketplace, the Trademark
Examining Attorney’s refusal of registration raises certain
questions:
• Does the word “deceptive” in Section 2(a) of the
Act have a distinctly different meaning than the
word “deceive” in Section 2(d) of the Act, or
“deceptively” in Section 2(e) (apart from
deceptive being an adjective, deceive being a
verb and deceptively being an adverb)?
• Is there a sound basis in the law for protecting
even the most gullible or careless consumer under
Section 2(a) of the Act, or does the law require
proof that even a reasonably prudent consumer
would be deceived?
• How is the Board to interpret and apply the
instruction of the Court of Appeals for the

16 See In re California Innovations Inc., 329 F.3d 1334, 66
USPQ2d 1853, 1855 (Fed. Cir. 2003)(“[M]arks determined to be
primarily geographically deceptively misdescriptive are
permanently denied registration, as are deceptive marks under
§1052(a).”)(emphasis added).
Serial No. 75819306
- 25 -
Federal Circuit that, when assessing
registrability of a mark under Section 2(a), “the
mark standing alone must pass muster, for that is
what the applicant seeks to register, not
extraneous explanatory statements”?17
• Does this appeal raise concerns about “bait and
switch” marketing or theoretical “initial
interest deception” akin to the notion of
“initial interest confusion”?
• If the number of consumers who might be deceived,
or the nature of their deception, is speculative,
should the Board resolve doubt in favor of
publishing the mark for opposition?
These questions relate more to the second and third
factors of the Budge test. Therefore, it is necessary to
separately address the first factor in that test, i.e.,
does CAFETERIA misdescribe “the character, quality,
function, composition or use” of applicant’s recited
services? The answer to this question is not as clear as
it might appear at first glance.

17 In re Budge Manufacturing Co., Inc., 857 F.2d 773, 8 USPQ2d
1259, 1260 (Fed. Cir. 1988) (LOVEE LAMB held deceptive for seat
covers not made of lambskin).
Serial No. 75819306
- 26 -
The majority is quite correct in observing that this
appeal arose from an application with a tortured
prosecution history. Applicant’s counsel and the Trademark
Examining Attorney each appeared, at times, to have been
discussing theoretical or presumed arguments or positions
of the other, with neither quite sure how many alternative
positions and arguments were being presented or maintained.
Accordingly, even the arguments in the briefs, not to
mention arguments advanced in Office actions and responses
thereto that preceded the appeal, must be viewed from the
perspective that they were advanced as alternative
positions; and statements made in conjunction with those
arguments may not actually represent concessions of any
issue to be examined under the Budge test. I therefore do
not view applicant as having conceded that CAFETERIA is
misdescriptive when used in connection with the offering or
rendering of the recited services.
The Trademark Examining Attorney argues that a term is
misdescriptive when it “conveys an idea that is false, yet
plausible” and asserts that CAFETERIA conveys a false idea
about applicant’s recited services because applicant has
limited the services in connection with which the mark is
used to restaurants excluding cafeterias. Brief,
Serial No. 75819306
- 27 -
unnumbered p. 5. This argument, however, does not reveal
what it is that a traditional cafeteria offers that
applicant’s non-cafeteria style restaurants do not, i.e.,
the argument does not explain the specific false, yet
plausible, idea that the mark conveys.
The record suggests that consumers have various ideas
of what makes a cafeteria a cafeteria, including value,
familiar food, and a casual atmosphere.
There are many references in the record to the value
that cost-conscious consumers find in cafeterias (indeed,
this is a point stressed by the Trademark Examining
Attorney in the context of explaining why some consumers
seek out cafeterias). The record is mixed as to the
relative cost of the menu items in applicant’s restaurant,
and therefore the value a patron receives. Many reviews
find the prices reasonable, but some say items are
overpriced. Nonetheless, discussion of the subject of
price and value in conjunction with applicant’s restaurant
bears out the Trademark Examining Attorney’s argument that
good value is one aspect of a traditional cafeteria.
In reviews of applicant’s restaurant, there are
references to the type of food one expects to find in a
cafeteria: “[I]nfected by the proletarian spirit, we chose
Serial No. 75819306
- 28 -
our food with this tradition in mind: meatloaf, hamburger,
tomato soup and a Caesar salad …” Flatiron News; and
“[T]here’s also plenty of greasy-spoon inspired treats for
those craving simpler pleasures: the Cafeteria Macaroni
and Cheese with a fontina twist, fried chicken [with] side-
kicking buttermilk waffles18 and maple sauce or their
exquisite house meatloaf.” Black Book. “Comfort food” is
a phrase that appears in numerous reviews. These
references to the food suggest that applicant’s restaurant
is viewed as serving food similar to traditional
cafeterias.
Finally, in some reviews of applicant’s restaurant
there are references to a dining establishment that is
simply a comfortable place: “Cafeterias are places
remembered not for what they were, but for who we sat with
when we were there. This Cafeteria is a place you visit to
be served a dollop of communitas, to join a crowd of locals
sharing the day’s dish, and to sluice your work-clogged
soul with a cleansing drink.” Flatiron News; “[I]ts name
was chosen to reflect a casual attitude in keeping with

18 The pairing of fried chicken and buttermilk waffles is
confirmed by reviews in, among others, the New York Post of
August 15, 1998, Time Out New York, August 6-13, 1998, issue no.
150 (the pairing “works”), and Manhattan File, September/October
1998.
Serial No. 75819306
- 29 -
neighborhood norms ….” Interior Design. The record
reveals that whether applicant’s restaurant is viewed as
casual and comfortable, or upscale and sleekly designed,
depends upon the point of view of the reviewer.
Nonetheless, the general point presented by discussions of
the décor and ambiance of applicant’s restaurant, is the
implication that a traditional cafeteria is a casual and
comfortable place.
One other aspect of the dining experience in a
traditional cafeteria is its self-service nature, whereby a
diner places food items on a tray and carries them to a
table. This is clearly not done in applicant’s restaurant.
In sum, the term cafeteria is in part descriptive and
in part misdescriptive of applicant’s restaurant. Many
consider it a restaurant that offers good value, although
some do not, and the record is more supportive than not of
a conclusion that the menu is much like that of a
traditional cafeteria, albeit with some twists. In these
respects, CAFETERIA may be viewed as more descriptive than
misdescriptive of applicant’s restaurant. On the other
hand, what passes for a casual restaurant in New York City
may not pass for a casual restaurant in many other areas of
the country; and the absence of trays and self-service is
Serial No. 75819306
- 30 -
clearly not at all like a traditional cafeteria. In this
sense, CAFETERIA may be more misdescriptive than
descriptive when used in conjunction with applicant’s
restaurant. The instant appeal, then, presents a different
case from In re Berman Bros. Harlem Furniture Inc.,
26 USPQ2d 1514 (TTAB 1993), where the term FURNITURE MAKERS
was in no way descriptive and instead was completely
misdescriptive of the services of an applicant that made no
furniture.19
The first factor of the Budge test seeks a yes or no
answer to the question whether a term is misdescriptive of
identified goods or services. The mark in this case
presents an issue of first impression, because the mixed
record makes it impossible to answer the question in a
simple yes or no fashion. For the sake of argument,
however, I shall presume that the answer to the question is
“Yes, CAFETERIA is misdescriptive of applicant’s recited

19 The Berman Bros. case, as one of the few cases involving
services, rather than goods, and either a Section 2(e)(1)
deceptive misdescriptiveness or Section 2(a) deceptiveness
refusal, might appear a guiding precedent for the case at hand.
I do not find it to be so, in part because it involved a
completely misdescriptive mark, while the case at hand does not.
Further, as discussed infra, the believable misdescription in
Berman Bros. would not immediately be dispelled upon viewing or
entering the Berman Bros.’ store, while no reasonable consumer
would persist in a belief that applicant’s restaurant is a
cafeteria upon merely looking at the restaurant from the front
door.
Serial No. 75819306
- 31 -
services.” I turn then, to the second and third factors of
Budge.
The second question of Budge is “are the prospective
purchasers likely to believe that the misdescription
actually describes the goods [or in this case services]?”
The question does not use the phrase “any prospective
purchaser”; nor does it use the phrase “any reasonably
prudent purchaser.” In fact, it is significant that the
Budge majority uses the plural “purchasers” rather than the
singular purchaser.
Judge Nichols, in a Budge concurring opinion, noted
that the Budge majority had transformed a question asked by
a panel of this Board (“is anyone likely to believe the
product is made of lamb or sheepskin?”) into the second
question of the Budge test (“are prospective purchasers
likely to believe that the misdescription actually
describes the goods?”): “Thus, ‘anyone,’ a single
individual, is transmuted into a class of persons.” I
note, too, that the Budge majority found “[t]he board’s
factual inference is reasonable that purchasers are likely
to believe …” (emphasis added). Thus, it appears clear
that the Budge majority would not subject a successful mark
to the harsh consequence of permanent non-registrability
Serial No. 75819306
- 32 -
when a single consumer might be misled. That concern may
very well have motivated and informed the Budge majority’s
transformation of the Board’s question from one focusing on
a single consumer to a question focusing on more than one
consumer.
Judge Nichols in the concurring opinion, however,
suggests that the real focus of the second question of the
Budge test should be not whether a misdescription is
believed by a single purchaser or multiple purchasers, but
whether any purchaser who believes the misdescription is a
reasonable person: “It is clearly what the board meant.”
Thus, it appears that the concern of Judge Nichols was not
the majority’s transformation of a board question cast in
the singular to one cast in the plural, but in the
majority’s failure to qualify the nature of purchasers that
would believe a misdescription as reasonable.
Notwithstanding the concern of Judge Nichols, there is
nothing in the Budge majority opinion that suggests belief
in a misdescription by unreasonable consumers would support
a permanent refusal of registration under Section 2(a).
As noted earlier in this dissenting opinion,
prohibitions against the registration of marks that would
deceive consumers are contained in Sections 2(a), 2(d) and
Serial No. 75819306
- 33 -
2(e) of the Act. There is no definition of deceive or
deceptive in Section 45 of the Act. There is nothing in
the statute to indicate that the prohibitions of these
various sections against registration of marks that, in
various ways, would deceive consumers, stem from different
root meanings of the verb deceive or the adjective
deceptive. Accordingly, the proscriptions against
registration of marks that would deceive ought to be read
in a consistent manner.
Under Section 2(d), we do not bar registration of a
mark that is likely to “deceive” only a gullible or
unreasonable consumer as to source. Rather, we bar
registration of a mark that is likely to confuse or deceive
a reasonably prudent consumer. See Cancer Care, Inc. v.
American Family Life Assurance Company of Columbus, 211
USPQ 1005, 1014 (TTAB 1981) (“a prudent and careful
individual”); Justin Industries, Inc. v. D. B. Rosenblatt,
Inc., 213 USPQ 968, 976 (TTAB 1981)(“purchasers might
reasonably assume”); Kraft, Inc. v. Balin et al., 209 USPQ
877 (TTAB 1981)(“the average reasonably prudent customer”);
West Point-Pepperell, Inc. v. Borlan Industries Inc.,
191 USPQ 53 (TTAB 1976)(“opposer has failed to persuade us
Serial No. 75819306
- 34 -
that … would be likely to cause confusion, mistake or
deception of average reasonably prudent purchasers”).
Similarly, the Board has applied the reasonably
prudent consumer test in assessing whether a mark is
deceptively misdescriptive under Section 2(e)(1). See R. J.
Reynolds Tobacco Company v. Brown & Williamson Tobacco
Corporation, 226 USPQ 169, 179 (TTAB 1985)(“On this
evidence, we do not believe reasonably prudent purchasers
are apt to be deceived.”). And the same reasonableness
requirement is applied when assessing whether a mark is
primarily geographically deceptively misdescriptive under
Section 2(e)(3). See In re Save Venice New York, Inc.,
259 F.3d 1346, 59 USPQ2d 1778, 1783 (Fed. Cir. 2001)(“we
consider whether the public would reasonably identify or
associate the goods sold under the mark with the geographic
location contained in the mark”).20
Given that the statute does not differentiate between
the deceit or deception that is the subject of the
proscriptions against registration in Sections 2(a), 2(d)
and 2(e), and that the reasonably prudent purchaser

20 While the California Innovations decision, supra, explained
that a Section 2(e)(3) refusal now requires the same proof as a
Section 2(a) refusal, when a geographic mark is involved, it said
nothing that would alter the reasonableness factor.
Serial No. 75819306
- 35 -
standard is applied in evaluating whether a refusal of
registration is warranted under Sections 2(d) and 2(e), the
same standard should be applied in evaluating whether a
refusal of registration is warranted under Section 2(a).
This is especially true when registration is sought only on
the Supplemental Register and when the refusal would amount
to a permanent bar against registration. As Judge Nichols
observed in the Budge concurring opinion, “unreasonable
persons are likely to believe anything.” Budge, 8 USPQ2d
at 1262. Unreasonable beliefs should not permanently bar
registration of a functioning, successful mark that an
applicant seeks to register on the Supplemental Register.
The Federal Circuit, in Budge, has explained that
“extraneous explanatory statements” which might serve to
obviate the deception created by a mark cannot be
considered in assessing whether the mark is deceptive, for
the mark alone is what the applicant seeks to register.
Budge, 8 USPQ2d at 1261. This is not unlike the rule that
says an applicant’s use of a house mark in conjunction with
a mark it seeks to register cannot be considered in
evaluating likelihood of confusion, when the house mark is
not part of the mark to be registered. See Frances Denney
v. Elizabeth Arden Sales Corp., 263 F.2d 347, 120 USPQ 480,
Serial No. 75819306
- 36 -
481 (CCPA 1959); and Blue Cross and Blue Shield Association
v. Harvard Community Health Plan Inc., 17 USPQ2d 1075, 1077
(TTAB 1990). In neither the deceptiveness refusal nor the
Section 2(d) refusal involving a house mark, however, do we
consider the mark in the abstract.
Registrability of a mark is always considered in
conjunction with the identified goods or services, for an
applicant cannot obtain rights in a mark in the abstract,
only in connection with specified goods or services. This
concept is not undone by the Federal Circuit’s statement in
Budge that “the mark alone must pass muster,” when its
registrability under Section 2(a) is in question. That
statement is, as noted, intended to exclude from the
calculation the extraneous statements or advertising that
are not proposed for registration. While extraneous
statements are excluded from the calculation, the
identification of goods or services must be considered.
Applicant’s identification excludes “cafeteria-style
restaurants.” Drafting of an identification to exclude an
item or service that would otherwise be described by a mark
can, however, result in refusal of registration on the
ground that the mark is deceptively misdescriptive. See
Berman Bros., supra. See also In re Woodward & Lothrop
Serial No. 75819306
- 37 -
Inc., 4 USPQ2d 1412 (TTAB 1987). These two cases are
distinguishable from the current case. In both Berman
Bros. and Woodward & Lothrop, registration was sought on
the Principal Register, not the Supplemental Register, and
the refusal was made under Section 2(e)(1) rather than
Section 2(a). Professor McCarthy has observed, in regard
to these respective refusals:
Apparently a mark can still have a
misleading connotation and still not be
“deceptive” under § 2(a). But under the
“deceptively misdescriptive” part of § 2(e),
a higher standard of truthfulness will be
required. That is, the consumer is entitled
to be told the truth, the whole truth and
nothing but the truth, whether the
misleading connotation is important or not.

2 J.T. McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 11.61 (4th ed. database updated December 2005).
These two cases are also distinguishable from the
present case insofar as both marks would have required even
reasonable purchasers to carefully examine, respectively,
the furniture or jewelry of the applicants to determine the
import of the marks. The case at hand would not require
even a gullible or careless consumer to engage in careful
examination of applicant’s restaurant. As revealed by the
descriptions recited earlier in this opinion, applicant’s
restaurant would not be mistaken for a traditional
Serial No. 75819306
- 38 -
cafeteria. And I do not believe it necessary or wise to
speculate about whether applicant’s identification of
services would leave open the possibility of applicant some
day adopting an exterior décor or look for its restaurants
that would mask their true nature. The Board must, of
course, assess a mark in light of what services are
encompassed by an identification, but this does not require
that we conjure up every possible way in which a service
might be offered so as to intentionally mislead the public.
There may in this case be some concern about “initial
interest deception,” or whether prospective patrons of
applicant’s restaurant are subjected to a “bait and
switch.” There can be no deception, however, of those
whose initial interest in applicant’s restaurant is
prompted by any of the restaurant reviews or entries from
restaurant guides contained in this record. Applicant’s
restaurant plainly has not been reviewed as a cafeteria
and, instead, has been reviewed as a sit-down restaurant.
Any prospective patron whose interest was piqued by a
review or guidebook entry would know what to expect.
On the other hand, a passerby who spied the awning
over applicant’s restaurant that, as shown by the photo in
the majority opinion, contains only the word CAFETERIA
Serial No. 75819306
- 39 -
thereon, might walk across the street, or park a car and
walk to the restaurant, thinking it a cafeteria. Even
reasonable consumers, passing by a restaurant with an
awning emblazoned with the word CAFETERIA, might stop to
see if it were a cafeteria. Yet these prospective patrons
would have but to look at the restaurant or its menu to
discover their misapprehension. This is scarcely the stuff
of a “bait and switch” operation, for the prospective
patron can easily turn away without having been hooked.
Further, I am not aware of any extension of the doctrine of
“initial interest confusion,” so often discussed in the
Internet context, to bar registration of marks that
assertedly may deceive for a moment. I do not think it
wise to rashly extend the doctrine to the case at hand.
Moreover, some courts require a showing of intentional
deception before imposing liability on a defendant accused
of creating initial interest confusion on the Internet.
See, e.g., Savin Corp. v. Savin Group, 68 USPQ2d 1893
(S.D.N.Y. 2003).
In this case, I have doubt about the extent of the
misdescription assertedly created by applicant’s mark; I do
not think reasonable consumers would be deceived; and I do
not think any misunderstanding that may be created in the
Serial No. 75819306
- 40 -
minds of a very few consumers21 would be more than fleeting.
Further, I do not find the record to support a conclusion
that the absence of self-service trays from applicant's
restaurants would be material to purchasing decisions of
prospective diners. Accordingly, I would reverse the
refusal of registration and register the mark on the
Supplemental Register.
- o O o -

21 See paragraph 4 of the Amadei declaration:
“During the past four years some 2,000,000 persons have
patronized the CAFETERIA restaurant …. There have been
only a couple of instances in which the patron initially
misperceived the nature of the restaurant. … In these
couple of instances, the patron quickly recognized that
CAFETERIA was a sit-down restaurant and proceeded to sit
down and eat.”

It is not for this Board to speculate about numerous theoretical
patrons who may not have voiced displeasure or misunderstanding,
when the result is a permanent bar of registration of a
functioning, successful mark.