Brothers Franchising & Development, LLCv.Ronald Garcia and Laura Garcia

Trademark Trial and Appeal BoardMay 21, 2019

91227068 (T.T.A.B. May. 21, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: May 21, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Brothers Franchising & Development, LLC v. Ronald Garcia and Laura Garcia _____ Opposition No. 91227068 _____ Cynthia A. Moyer, John C. Pickerill, and Laura L. Myers of Fredrikson & Byron, P.A. for Brothers Franchising & Development, LLC Kevin M. Welch of The Law Office of Kevin M. Welch for Ronald Garcia and Laura Garcia _____ Before Mermelstein, Ritchie and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: Ronald Garcia and Laura Garcia (“Applicants”) seek registration on the Principal Register of BROTHER’S BURRITOS in standard characters, with BURRITOS Opposition No. 91227068 - 2 - disclaimed,1 for “restaurant services, including sit-down and take-out service of food” in Int. Class 43. Brothers Franchising & Development, LLC (“Opposer”) opposes registration of the marks based on alleged likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with Opposer’s following live registered marks, shown below, status and title copies of which were submitted for the record:2 Registration Number Mark Services Reg. No. 4738963 BROTHERS (standard characters) Bar and restaurant services Reg. No. 4029137 BROTHERS BAR & GRILL (BAR & GRILL disclaimed) Bar and restaurant services Reg. No. 2644084 (EST. 1967 disclaimed) Bar and restaurant services Reg. No. 2644083 BROTHERS EST. 1967 (EST. 1967 disclaimed) Bar and restaurant services Reg. No. 2414423 (EST. 1967 and BAR & GRILL disclaimed) Bar and restaurant services Reg. No. 2358395 IT’S BROTHERS EST. 1967 (EST. 1967 disclaimed) Bar and restaurant services 1 Application Serial No. 86676200 was filed on June 26, 2015 based on use of the mark in commerce as of November 7, 2014 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). 2 1 TTABVUE (Notice of Opposition). Citations refer to TTABVUE, the Board’s online docketing system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Opposition No. 91227068 - 3 - In their answer, Applicants deny the salient allegations in the notice of opposition and list numerous putative “affirmative defenses”3 that consist of amplifications of Applicants’ denials. Applicants did not pursue any affirmative defenses in their brief.4 The opposition is fully briefed. I. Evidentiary Record With the exception of Opposer’s Reply Brief, the parties did not cite to the record by reference to TTABVUE, the Board’s online docketing system, and we therefore direct their attention to Turdin, 109 USPQ2d at 1476 n.6: Because the Board primarily uses TTABVUE in reviewing evidence, the Board prefers that citations to material or testimony in the record that has not been designated confidential include the TTABVUE docket entry number and the TTABVUE page number. For material or testimony that has been designated confidential and which does not appear on TTABVUE, the TTABVUE docket entry number where such material or testimony is located should be included in any citation. See also TBMP §§ 106.03, 801.01, 803.03 (June 2018). The record includes the pleadings and pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the opposed application. Opposer introduced the testimony declaration of Tony DeSalvo, its Chief Operating Officer, with one accompanying exhibit.5 Applicants submitted a Notice of Reliance6 on a third-party 3 4 TTABVUE. 4 44 TTABVUE. 5 23 TTABVUE. 6 40 TTABVUE. The Board previously struck Applicants’ First Notice of Reliance, 39 TTABVUE, and Applicant availed itself of the opportunity to cure. Opposition No. 91227068 - 4 - registration,7 screenshots of Opposer’s websites from various locations,8 and deposition testimony of Ronald Garcia, along with deposition exhibits.9 Neither party lodged any evidentiary objections. II. Standing Opposer must prove standing by showing a real interest in the outcome of the proceeding and a reasonable basis for believing that it would suffer damage if the mark is registered. See 15 U.S.C. § 1063; Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). Opposer’s pleaded registrations, for which Opposer has proven status and title, establish its standing. See Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727- 28 (Fed. Cir. 2012); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). III. Priority Because Opposer has made its registrations of record, which Applicants have not counterclaimed to cancel, priority is not an issue as to the marks and services covered by the registrations. See Top Tobacco LP v. N. Atl. Op. Co., 101 USPQ2d 1163, 1169 (TTAB 2011) (citing King Candy, Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 7 41 TTABVUE 3-4. 8 Id. at 6-28 (brothersbar.com). 9 42 TTABVUE. We note that Applicants’ introduction of this deposition by notice of reliance does not appear to be provided for under the Trademark Rules. However, in this case, given the prior motion to strike and the lack of objection to this notice of reliance, we will consider the admissibility of the deposition as stipulated. See Trademark Rule 2.120(k)(2), 37 C.F.R. § 2.120(k)(2). Opposition No. 91227068 - 5 - 82 USPQ 108 (CCPA 1974)). See also Massey Junior Coll., Inc. v. Fashion Inst. of Tech., 492 F.2d 1399, 181 USPQ 272, 275 n.6 (CCPA 1974) (“prior use need not be shown by a plaintiff relying on a registered mark unless the defendant counterclaims for cancellation.”); Itel Corp. v. Ainslie, 8 USPQ2d 1168, 1169 (TTAB 1988) (“because of the existence of opposer’s valid and subsisting registration, it need not prove prior use as to the services recited therein”). IV. Likelihood of Confusion The determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, hereinafter referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). A likelihood of confusion analysis often focuses on the similarities between the marks and the similarities between the 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 goods and differences in the marks.”). Opposer bears the burden of proving its claim of likelihood of confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848. A. The Services, Trade Channels and Classes of Consumers “[L]ikelihood of confusion can be found ‘if the respective [services] are related in some manner and/or if the circumstances surrounding their marketing are such that Opposition No. 91227068 - 6 - they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs. 101 USPQ2d at 1722 (internal citations omitted). Our comparison of the services must be based on the identifications in the application and Opposer’s registrations. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). As identified, Opposer’s unrestricted “restaurant services” are identical to Applicants’ “restaurant services, including sit-down and take-out service of food.” Applicants improperly stray from the identifications of services at issue to make a variety of arguments based on actual marketplace conditions, such as the nature of the restaurants and their operating hours. Given the absence of restrictions in the recitations of services, see Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1357 (Fed. Cir. 2000), we cannot consider such alleged actual marketplace differences. Stone Lion Capital Partners, 110 USPQ2d at 1162 (“It was proper, however, for the Board to focus on the application and registrations rather than on real world conditions, because ‘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.’” (quoting Octocom Sys., 16 USPQ2d at 1787)). Furthermore, because the services in the pleaded registrations are identical to Applicants’ identified services, we presume that they travel through the same channels of trade to the same class of purchasers, considerations under the third du Pont factor. See American Lebanese Syrian Assoc. Charities Inc. v. Child Health Opposition No. 91227068 - 7 - Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011) (where the services were legally identical, “the marketing channels of trade and targeted classes of consumers and donors are the same”); see also In re Viterra, 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). These factors weigh strongly in favor of likely confusion. B. The Strength of Opposer’s Marks Before we turn to the similarity of the marks, we consider the strength of Opposer’s marks, as that will affect the scope of protection to which they are entitled. Regarding conceptual strength, BROTHERS in connection with restaurant services is arbitrary as a “known word used in an unexpected or uncommon way.” See Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173 (Fed. Cir. 2004) (defining an arbitrary mark as a “known word used in an unexpected or uncommon way” and observing that such marks are typically strong); see also Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (arbitrary terms are conceptually strong trademarks). The strength of a mark under the fifth DuPont factor rests on the extent to which “a significant portion of the relevant consuming public . . . recognizes the mark as a source indicator.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (citing Palm Bay Imps., 73 USPQ2d at 1694). This factor involves assessing the mark “‘along a spectrum from Opposition No. 91227068 - 8 - very strong to very weak.’” Id. (internal citations omitted). A very strong mark receives a wider latitude of legal protection in the likelihood of confusion analysis. See Palm Bay Imps., 73 USPQ2d at 1694 (strong marks “enjoy wide latitude of legal protection” and are “more attractive as targets for would-be copyists”). The commercial strength of a mark may be measured indirectly by the volume of sales and advertising expenditures in connection with the services sold under the mark, and other factors such as length of time of use of the mark; widespread critical assessments; notice by independent sources of the services identified by the marks; and the general reputation of the services. Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014); see also Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1308 (Fed. Cir. 2002) (recognizing indirect evidence as appropriate proof of strength). In support of the strength of its marks, Opposer points to use of its marks since 1990 and its 20 restaurants under the marks located in 10 states, many of which “are located near large cities and college campuses.”10 Opposer also provided testimony that “[o]ver the past ten years, Opposer’s restaurants have generated over $288 million in revenues and Opposer has invested over $6.5 million in advertising tis restaurants under the BROTHERS marks.”11 The probative value of the revenue and advertising figures is lessened because we lack context for it, both in terms of the 10 23 TTABVUE 2 (DeSalvo Declaration). 11 Id. at 3. Opposition No. 91227068 - 9 - nature of the advertising in terms of the marks at issue,12 cf. Bridgestone Ams. Tire Ops., LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1063-64 (Fed. Cir. 2012) (“many commercial examples in which the marks … are prominently featured”), and information about the industry as points of reference to compare Opposer’s revenues and expenditures. See Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002) (“some context in which to place raw [sales and advertising] statistics is reasonable”). Nevertheless, the evidence has some persuasive value. Under the sixth DuPont factor, proof of recent consumer exposure to third-party use of similar marks in connection with similar services may show commercial weakness of a mark in that consumers generally distinguish among marks consisting of or containing “brothers” based on minor distinctions. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Third-party registrations also may be considered “powerful” evidence of conceptual weakness of a term. However, the record in this case includes only one third-party registration for the mark , with BBQ disclaimed, for, inter alia, restaurant services.13 Applicants also point to the “XSearch Search Summary in Applicants’ application” as supposedly showing “258 live marks in relevant international classes 12 Id. at 5-6. 13 41 TTABVUE 3-4 (Reg. No. 3089403). Opposition No. 91227068 - 10 - (042 and 043).”14 However, the record does not include the information on which it is based, and we therefore lack sufficient information to support Applicant’s assertion. A mere number of live marks that include some variant of “brother” without showing the corresponding marks, services and other relevant information, “has no probative value.” See Nat’l Fidelity Life Ins. v. Nat’l Ins. Trust, 199 USPQ 691, 694 n.5 (TTAB 1978); In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (“[T]he list does not include enough information to be probative. The list includes only the serial number, registration number, mark, and status (live or dead) of the applications or registrations. Because the goods are not listed, we do not know whether the listed registrations are relevant.”); Cf. Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991) (“None of the third party marks and uses of ACE made of record are nearly as closely related to the activities of the parties as the virtually identical uses of the parties are to each other”). Thus, with Applicants’ evidence consisting only of a single third-party registration, with no accompanying use evidence, we do not find it sufficient to demonstrate the weakness of Opposer’s marks. This “falls short of the ‘ubiquitous’ or ‘considerable’ use of the mark components present in [Juice Generation and Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 14 In addition, Applicants attempt to rely on “[t]he XSearch Report from Opposer’s application no. 86412793 for the mark BROTHERS [that allegedly] shows 815 live marks featuring the word ‘brother(s).’” 44 TTABVUE 7 (Applicants’ Brief). But Applicants’ arguments in this regard lack any evidentiary support. Opposition No. 91227068 - 11 - F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015)].” In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017); contrast Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030 (TTAB 2016) (weakness found based on at least 85 actual uses of ROSE-formative marks for similar services, eight similar third-party registrations, expert testimony and other evidence regarding the common nature of ROSE-formative marks in the industry, and testimony by opposer that it did not vigorously enforce its mark). Considering all the evidence regarding strength, we find that Opposer’s marks are not conceptually or commercially weak; rather, they have some moderate degree of commercial strength. However, even if we were to find the mark to be of ordinary strength, our ultimate ruling on the likelihood of confusion claim on this record would remain the same. C. Similarity of the Marks With respect to the marks, we must compare them “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). The test assesses not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the goods offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). Opposition No. 91227068 - 12 - We also bear in mind that, given the legally identical services, “the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). We focus our analysis on Opposer’s Reg. No. 4738963 for the standard-character mark BROTHERS. We consider this mark, which lacks any additional matter that might help distinguish the marks, the most relevant for the likelihood of confusion determination. See Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). In the applied-for standard-character mark BROTHER’S BURRITOS, the first word is virtually identical to, and phonetically the same as, Opposer’s mark. While Applicants’ use of BROTHER’S includes an apostrophe, we find that this does not meaningfully detract from the similarity of the words. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1032, 213 USPQ 185, 186 n.3 (CCPA 1982) (“This difference is de minimis, and we will refer to the marks and goods of the parties as identical.”); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (“The absence of the possessive form in Applicant’s mark … has little, if any, significance for consumers in distinguishing it from the cited mark”); In re Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986) (finding MCKENZIE’S and MCKENZIE “virtually identical in commercial impression”); Winn’s Stores, Inc. v. Hi-Lo, Inc., 203 USPQ 140, 143 (TTAB 1979) (finding “little if any trademark significance can be attributed to the apostrophe and the letter ‘s’ in opposer’s mark”). Also, BROTHER’S stands out as the dominant element of Applicants’ mark for two reasons. First, as the first word in Applicants’ Opposition No. 91227068 - 13 - mark, BROTHER’S is “most likely to be impressed upon the mind of a purchaser and remembered.” Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). Second, the only other word in Applicants’ mark, BURRITOS, has been disclaimed as descriptive or generic, diminishing its significance in the comparison of 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). Thus, while Applicants’ mark, considered in its entirety, contains an additional word that adds a visual and phonetic element not found in Opposer’s mark, because the dominant term in Applicants’ mark is nearly identical to Opposer’s mark, we find them similar overall in appearance and sound. See Nat’l Data Corp., 224 USPQ at 751 (“[I]n 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”); see also Stone Lion Capital Partners, 110 USPQ2d at 1161. The connotations and commercial impressions of the marks also are similar because of the shared term BROTHERS/BROTHER’S. The additional wording in Applicants’ mark merely conveys the featured food of Applicants’ restaurant services, but BROTHER’S remains the focal point of the connotation and commercial impression of Applicants’ mark, and BROTHERS is the entirety of Opposer’s mark. Thus, we find that consumers would attach a similar meaning and commercial impression to the marks. This DuPont factor weighs in favor of likely confusion. Opposition No. 91227068 - 14 - D. Degree of Care in Purchasing Opposer argues that the relevant services are inexpensive and subject to impulse purchasing, so that the degree of care in purchasing is lessened. Considering the identified services and the relevant evidence, we find that ordinary consumers purchasing restaurant services would exercise an ordinary degree of care. This factor is neutral. V. Conclusion Based on the similarity between Opposer’s strong marks and Applicants’ mark for legally identical services that travel in the same channels of trade, we conclude that a likelihood of confusion exists. Decision: The opposition is sustained.