Campo's Deli at Market, Inc.

Trademark Trial and Appeal Board

Aug 7, 2012

No. 77768687 (T.T.A.B. Aug. 7, 2012)

Hearing: Mailed:
March 29, 2012 August 7, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Campo’s Deli at Market, Inc.
________

Serial No. 77768687
_______

J. Conor Corcoran for Campo’s Deli at Market, Inc.

Evelyn Bradley, Trademark Examining Attorney, Law Office
105 (Thomas Howell, Managing Attorney).
_______

Before Quinn, Shaw and Greenbaum, Administrative Trademark
Judges.

Opinion by Greenbaum, Administrative Trademark Judge:

On June 25, 2009, Campo’s Deli at Market, Inc. filed
an application to register PHILADELPHIA’S CHEESESTEAK (in
standard characters, CHEESESTEAK disclaimed) on the
Principal Register for “sandwiches; sandwiches, namely,
cheesesteaks” (in International Class 30). Applicant
claims 2009 as its date of first use anywhere and in
commerce.1

1 In its Request for Reconsideration, applicant filed an
amendment to change the date of first use and first use in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77768687
2
The examining attorney refused registration on three
grounds: (1) under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), because applicant’s mark, when applied to
applicant’s goods, so resembles three previously
registered marks, , PHILADELPHIA
CHEESESTEAK CO., and THE ORIGINAL PHILADELPHIA CHEESESTEAK
CO. (the latter two in standard characters), for “prepared
foods, namely, meat” (in International Class 29), and owned
by the same entity, as to be likely to cause confusion;2 (2)
under Section 2(e)(2) of the Trademark Act, 15 U.S.C. §
1052(e)(2), because the mark is primarily geographically
descriptive of applicant’s goods; and (3) the specimens of
record do not show use of the mark for applicant’s goods
under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§
1051 and 1127.
When the refusals were made final, applicant
concurrently filed a request for reconsideration, which the

commerce to January 1, 2009, but the examining attorney did not
act on the amendment. In the event applicant ultimately prevails
in any appeal, the application will be forwarded to the examining
attorney for action on the amendment.
2 Respectively, Registration No. 2053943 (PHILADELPHIA
CHEESESTEAK CO. disclaimed), registered April 22, 1997, renewed;
and Registration Nos. 2809682 and 2809683 (CO. disclaimed),
registered February 3, 2004 (in both instances, under the
provisions of Section 2(f) of the Trademark Act, 15 U.S.C. §
1052(f)), Section 8 & 15 affidavits accepted and acknowledged.
Serial No. 77768687
3
examining attorney denied, and an appeal of the final
refusals. Applicant and the examining attorney filed
briefs, and an oral hearing was held.
For the reasons discussed below, we affirm the
refusals under Sections 2(d) and 2(e)(2) of the Trademark
Act, and reverse the refusal under Sections 1 and 45 of the
Trademark Act.
Before turning to the merits of the refusals, we note
that applicant, in its appeal brief, listed the serial
numbers and literal elements of four applications, now
registrations, that were originally listed, among others, in
response to the Section 2(e)(2) refusal in the initial
Office action. Applicant never submitted copies of those
registrations. This is not the proper way to make such
applications and registrations of record.3 See In re Volvo
Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998). See
also In re Promo Ink, 78 USPQ2d 1301 (TTAB 2006)(submitting
list of registrations is insufficient to make them of
record). However, because the examining attorney, during
prosecution, did not advise applicant of this procedural

3 It is well-established that in order to make third-party
registrations properly of record, “applicant should submit copies
of the registrations themselves, or the electronic equivalent
thereof” from the USPTO's electronic databases, now known as TARR
or TESS. In re Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6
(TTAB 1996) (citing In re Smith and Mehaffey, 31 USPQ2d 1531
(TTAB 1994)). Such submissions should be made prior to appeal or,
if after appeal, pursuant to a remand of the matter to the
examining attorney for further examination. Trademark Rule
2.142(d).

Serial No. 77768687
4
error at a point where applicant could have corrected the
deficiency, the examining attorney’s objection, raised for
the first time in her appeal brief, is considered to be
waived. In re Dist. of Columbia, 101 USPQ2d 1588, 1592 n.5
(TTAB 2012). Accordingly, we will consider the same list of
registrations set out in applicant’s brief “for whatever
limited probative value such evidence may have.” In re
Broyhill Furniture Indus. Inc., 60 USPQ2d 1511, 1513, n.3
(TTAB 2011).
Likelihood of Confusion
The first issue in this appeal is likelihood of
confusion, which requires us to consider the evidence in
relation to the relevant factors set out in 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 Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot,
Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed.
Cir. 2000). In considering the evidence of record on these
factors, we must keep in mind that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
The first factor concerns the similarities and
Serial No. 77768687
5
dissimilarities of applicant’s and registrant’s marks.
Under this factor, we look to see whether the marks, in
their entireties, are similar in appearance, sound,
connotation, and commercial impression. Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691-92 (Fed. Cir. 2005).
Applicant’s mark is PHILADELPHIA’S CHEESESTEAK and
registrant’s marks are PHILADELPHIA CHEESESTEAK CO. and
design, PHILADELPHIA CHEESESTEAK CO. (in standard
characters), and THE ORIGINAL PHILADELPHIA CHEESESTEAK CO.
(in standard characters). The marks are very similar in
sound, appearance and meaning because they contain the same
words: “PHILADELPHIA” and “CHEESESTEAK”. The inclusion or
omission in the marks of an apostrophe “s” is an
insignificant difference that is used to denote possession,
and does not alter the similarity of the commercial
impression of applicant’s mark to each of registrant’s
marks. In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)(“The
absence of the possessive form in applicant’s mark BINION
has little, if any, significance for consumers in
distinguishing it from the cited mark.”)(internal citations
omitted).
Applicant argues that the marks are “entirely
different”, however, applicant does not argue that
registrant’s inclusion of the laudatory term “THE ORIGINAL”
or the design of a cheesesteak in two of the cited marks
Serial No. 77768687
6
differentiates those marks from applicant’s in any
meaningful way, and, indeed, they would not. App. Br. p. 4.
Instead, applicant contends that the presence of “CO.”
in the cited marks is the distinguishing feature.
Specifically, applicant contends that “CO.” identifies a
particular company that is a wholesale provider of raw,
sliced meat to cheesesteak retailers like applicant, while
applicant’s mark identifies a product, specifically, a
cheesesteak sandwich. App. Br. pp. 4-5. However, applicant
provided no evidence to support this contention. Moreover,
“CO.” is simply an entity designation with no source
identifying capacity. See In re Wm. B. Coleman Co., 93
USPQ2d 2019 (TTAB 2009). Accordingly, this attempt to
distinguish the marks in terms of meaning is not persuasive.
We conclude that applicant’s and registrant’s marks
contain virtually identical terms, namely, “PHILADELPHIA’S
CHEESESTEAK” and “PHILADELPHIA CHEESESTEAK,” the marks sound
and look similar, and their meanings and commercial
impressions are also very similar. Therefore, despite some
minor differences, the marks, in their entireties, are very
similar, and we resolve this factor against applicant.
We now consider the relatedness of applicant’s and
registrant’s goods, bearing in mind the goods as they are
identified in the registrations and application. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). In this regard, we
find the record created by the examining attorney
Serial No. 77768687
7
establishes that registrant’s “prepared foods, namely,
meat” are closely related to applicant’s “sandwiches;
sandwiches, namely, cheesesteaks,” and that both products
may emanate from a single source. For example, the
examining attorney submitted several use-based, third-party
registrations which, in pertinent part, cover both types of
goods: Registration No. 3064770 (fully-cooked, pre-
portioned meat products, and meat sandwiches); Registration
No. 3552603 (meats and sandwiches); Registration No. 3706470
(canned cooked meat, hot dogs and hot dog sandwiches);
Registration No. 2774072 (meat, frozen and prepared entrees
consisting primarily of meat, fish, poultry or vegetables,
and sandwiches); and Registration No. 3259168 (meat, namely,
ribs and steaks, and pita bread sandwiches). This evidence
“serve[s] to suggest that such goods or services are of a
type which may emanate from a single source.” See In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n. 6 (TTAB
1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
The examining attorney also submitted internet
evidence showing third-party websites touting their
products, which include prepared meat and sandwiches, to
demonstrate that these goods originate from a common
source. For example, the June 1, 2011 final Office action
Serial No. 77768687
8
attached printouts for SCHWAN’S (steak and sandwiches)4 and
LOWFAT LIFESTYLE (prepared meat and sandwiches),5 and the
March 15, 2011 denial of applicant’s Request for
Reconsideration attached printouts for WENGER MEATS AND ICE
(deli meat and sandwiches),6 DIPASCALE’S (lunch meats and
sandwiches)7 and WASSLER’S MEAT MARKET (deli meat and
sandwiches).8
Moreover, as the examining attorney aptly notes,
sandwiches may contain prepared meat (Br. p. 8, unnumbered),
and as applicant admits, applicant purchases from registrant
the meat applicant uses in its own sandwiches. App. Br. p.
4.
Based on the record, we find that the goods are
related, and resolve the du Pont factor regarding the
similarity of the goods against applicant.
Applicant’s arguments regarding the parties’ actual
trade channels are not relevant to our determination for
registration. We must make our determination based on the
goods as they are identified in the application and
registrations, and not based on evidence of their actual
use. Octocom Systems Inc. v. Houston Computer Services

4http://www.schwans.com/products/categoryDetail.aspx?c1=10428&c2=
9428&kwid=searchgg01084235-pcrid-5522709017&dmg=3320
5 http://www.lowfatlifestyle.com/sandwiches/sandwichindex.htm
6 http://www.wengermeats.com/index.php/butcher-shop/
7 http://meadowbrookfoods.com/deli.htm
8 http://www.wasslermeatmarket.com/
Serial No. 77768687
9
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1987).
(“[T]he 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.”).
See also Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
Further, because there is no limitation regarding the
trade channels for the parties’ goods, it is presumed that
the goods move in all the normal channels of trade and are
available to all potential customers, including retail
and/or wholesale establishments.
We conclude that these goods are closely related, and
the trade channels and purchasers of these products would
overlap. As to the common purchasers, we have no evidence
that the consumers of these goods would necessarily be
sophisticated, so we consider this factor to be neutral.
Finally, while the cited marks are registered on the
Supplemental Register or under the provisions of Section
2(f) of the Trademark Act, even “weak” or merely descriptive
marks are entitled to protection against a subsequent user’s
registration of a similar mark for closely related goods,
and this protection extends to marks registered on the
Supplemental Register. See, e.g., In re Clorox Co., 578
Serial No. 77768687
10
F.2d 337 (C.C.P.A. 1978); In re Hunke & Jocheim, 185 USPQ
188 (TTAB 1975).
In summary, when we consider the marks in their
entireties, we conclude that they are more similar than they
are different. See In re Chatam International Inc., 380
F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004). The goods
are also closely related, and are presumed to move in
similar trade channels to similar classes of purchasers.
The factor related to sophistication of purchasers is deemed
neutral. Under these circumstances, we conclude that
confusion is likely. We add that to the extent that we have
any doubts, we have resolved them, as we must, in favor of
the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988) and In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F.2d 918, 179 USPQ 729, 729-30 (CCPA 1973).
The Section 2(d) refusal is affirmed.
Geographic Descriptiveness
We turn now to the refusal based on geographic
descriptiveness. The test for determining whether a mark
is primarily geographically descriptive is whether (1) the
mark (or a portion thereof) is the name of a place known
generally to the public, and (2) the public would make a
goods/place association, that is, believe that the goods
identified in the application originate in that place. See
In re Societe Generale des Eaux Minerales de Vittel S.A.,
Serial No. 77768687
11
824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); In re Joint-
Stock Co. “Baik”, 80 USPQ2d 1305 (TTAB 2006); and In re JT
Tobacconists, 59 USPQ2d 1080 (TTAB 2001). If the goods do
in fact originate from the place named in the mark, the
requisite goods/place association can be presumed. See In
re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982).
We find, first, that the word “PHILADELPHIA’S” in
applicant’s mark is the possessive form of the name of a
place known generally to the American public, i.e., the city
of Philadelphia, Pennsylvania. Philadelphia is defined as
“the largest city of Pennsylvania, in the southeast part of
the state on the Delaware River.”9 The primary significance
of Philadelphia to the American purchasing public thus is a
known geographic area. Further, there is nothing in the
record to suggest that Philadelphia is either obscure or
remote. Cf. In re Societe Generale des Eaux Minerales de
Vittel S.A., 3 USPQ2d at 1451.
Next, we find that the term “CHEESESTEAK” in
applicant’s mark is at least highly descriptive (if not
generic) of applicant’s “sandwiches; sandwiches, namely,
cheesesteaks.” Applicant does not contest this point, and,
in fact, has disclaimed “CHEESESTEAK” apart from the mark as
shown.
We next turn to the question of whether applicant’s
mark, PHILADELPHIA’S CHEESESTEAK, is primarily
Serial No. 77768687
12
geographically descriptive. “Under the first prong of the
test – whether the mark’s primary significance is a
generally known geographic location – a composite mark such
as applicant’s proposed mark must be evaluated as a whole.…
It is not erroneous, however, for the examiner to consider
the significance of each element within the composite mark
in the course of evaluating the mark as a whole.” In re
Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778,
1782 (Fed. Cir. 2001) [internal citations omitted]. In this
connection, it is well settled that “the presence of generic
or highly descriptive terms in a mark which also contains a
primarily geographically descriptive term does not serve to
detract from the primary significance of the mark as a
whole.” In re JT Tobacconists, 59 USPQ2d at 1082. See
also In re Bacardi & Co. Ltd., 49 USPQ2d 1301 (TTAB 1997).
For the reasons set forth above, we find that the word
“PHILADLEPHIA’S” in applicant’s mark is a reference to a
well-known geographic place, and that the term “CHEESESTEAK”
is at least highly descriptive of applicant’s goods. We
further find that the presence of the highly descriptive
term “CHEESESTEAK” in applicant’s mark does not detract from
the primary geographical significance of the mark as a
whole. See In re Save Venice New York Inc., 59 USPQ2d 1778
(Fed. Cir. 2001); and In re Wada, 194 F.3d 1297, 52 USPQ2d
1539 (Fed. Cir. 1999).

9 http://education.yahoo.com/reference/dictionary/entry/Philadelphia
Serial No. 77768687
13
In sum, we find under the first prong of the Section
2(e)(2) test that the primary significance of applicant’s
mark is that of a well-known geographic place, i.e., the
city of Philadelphia, Pennsylvania.
We next turn to the second prong of the test, i.e.,
whether purchasers would make a goods/place association
between applicant’s goods and the place named in the mark.
Applicant acknowledges that it is located in Philadelphia.
Additionally, in response to the first and final Office
actions, and in its brief, applicant states that the
specimens of record are photographs of its booth at the
Philadelphia Phillies’ baseball stadium and of its store on
Market Street in Philadelphia. App. Br. p. 9.
Applicant nonetheless asserts that its mark is not
primarily geographically descriptive. Instead, applicant
likens its mark to “Boston baked beans,” “Swiss cheese,’ and
“Italian spaghetti,” arguing that its use of PHILADELPHIA’S
designates a kind or type of sandwich that is available
nationwide, and that no cheesesteak purchaser would believe
that the cheesesteak came from anywhere other than where it
was purchased. App. Br. pp. 7-8.
However, applicant’s use of the possessive noun
“PHILADELPHIA’S” in the composite mark PHILADELPHIA’S
CHEESESTEAK underscores the geographic significance of the
mark, namely, that applicant’s cheesesteak is of, or from,
Philadelphia.

09/23/2009 10:42:44 AM, attached to September 30, 2009 Office action.
Serial No. 77768687
14
Applicant further argues that the apostrophe “s” in
“PHILADELPHIA’S” signifies quality. However, applicant
presents no evidence in support of this statement, which is
simply conjecture. Even if applicant were to establish that
“PHILADELPHIA’S” connotes quality in certain circumstances,
this implication would be secondary to the primary
significance of “PHILADELPHIA’S” as a geographic indicator.
See In re Monograms America, Inc., 51 USPQ2d 1317 (TTAB
1999) and cases cited therein.
As noted above, applicant’s flagship store and
applicant’s second location at the Philadelphia Phillies
baseball stadium are both located in Philadelphia. As a
result, we find that applicant’s goods originate in
Philadelphia, Pennsylvania, and we may presume that
purchasers would make a goods/place association between
applicant’s goods and Philadelphia, a geographic location
that is neither obscure nor remote. In re Chalk’s
International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991);
and In re California Pizza Kitchen Inc., 10 USPQ2d 1704
(TTAB 1988). Further, applicant has not presented
sufficient evidence to rebut this presumption of a
goods/place association.
Finally, applicant’s listing of third-party
registrations is not evidence that the subject marks are in
use or that the relevant purchasing public is familiar with
them. See, e.g., AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); and In
Serial No. 77768687
15
re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
Moreover, we must determine each case on its own merits, and
nothing in this record indicates the reasons, or with what
statutory limitations, those third-party registrations were
allowed. See, e.g., In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (TTAB 1991). Accordingly, the third-
party registrations have limited probative value.
We have considered all of the arguments and evidence
made of record by applicant and the examining attorney,
including any arguments and evidence not specifically
discussed herein. We find that applicant’s mark,
PHILADELPHIA’S CHEESESTEAK, identifies a well-known
geographic location, and that purchasers would make a
goods/place association between applicant’s goods
(cheesesteaks) and the place named in the mark
(Philadelphia). Because both elements of the
Section 2(e)(2) refusal have been established, we find that
the examining attorney has established, prima facie, that
applicant’s mark is primarily geographically descriptive of
applicant’s goods. Applicant’s arguments and evidence to
the contrary are not persuasive.
The Section 2(e)(2) refusal is affirmed.
Specimens
Finally, we turn to the refusal to register under
Sections 1 and 45 of the Trademark Act on the ground that
Serial No. 77768687
16
applicant’s specimens do not support use of the mark for
the identified goods.
Section 45 of the Trademark Act, 15 U.S.C. § 1127
permits registration of a mark when the specimens evidence
use on goods in commerce and “when it is placed in any
manner . . . on the displays associated therewith . . . and
the goods are sold or transported in commerce.”
As specimens of use, applicant submitted, among other
things, several photographs demonstrating use of
PHILADELPHIA’S CHEESESTEAK in displays and advertising in
connection with the sale of applicant’s cheesesteaks at
specific points of sale. In particular, the record
includes a photograph of applicant’s satellite location at
the Philadelphia Phillies’ baseball stadium, Citizens Bank
Park, where applicant’s trademark is clearly visible on
applicant’s sign, and the menu lists “cheese steaks” as one
of applicant’s “specialties” on the menu on the wall behind
the counter:
Serial No. 77768687
17

The examining attorney rejected all of the specimens,
arguing that they comprise advertising material or pictures
of a restaurant, which are inappropriate specimens for
applicant’s goods. Br. pp. 20-24 (unnumbered). We
disagree, and find instead that the specimen above is
Serial No. 77768687
18
acceptable because it is a point-of-sale display associated
with the goods, “designed to catch the attention of
purchasers and prospective purchasers as an inducement to
consummate a sale and which prominently display[s] the mark
in question and associate[s] it or relate[s] it to the
goods in such a way that an association of the two is
inevitable. . . .” In re Bright of America, Inc., 205 USPQ
63, 71 (TTAB 1979). See also In re Marriott Corp., 459
F.2d 525, 173 USPQ 799, 800 (CCPA 1972) (menu held an
acceptable “display” because the mark appeared on the menu
in close proximity to an illustration and/or description of
the particular sandwich identified by the mark).
The refusal under Sections 1 and 45 is reversed.

Decision: The refusals under Sections 2(d) and 2(e)(2)
of the Trademark Act, 15 U.S.C. §§ 1052(d) and (e)(2) are
affirmed, and the refusal under Sections 1 and 45 of the
Trademark Act, 15 U.S.C. §§ 1051 and 1127 is reversed.10

10 As discussed in footnote 1, in the event applicant ultimately
prevails in any appeal, the application will be forwarded to the
examining attorney for action on the amendment.