Capital Restaurant Holdings, Inc.v.DeConna Ice Cream Company, Inc.

Trademark Trial and Appeal Board

Jun 21, 2010

No. 92029900 (T.T.A.B. Jun. 21, 2010)

Mailed:
June 21, 2010
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Capital Restaurant Concepts, Ltd. (now, Capital Restaurant
Holdings, Inc.)
v.
DeConna Ice Cream Company, Inc.
________

Cancellation No. 92029900
against Registration No. 1869833
filed on December 27, 1999
_______

Simor L. Moskowitz and Matthew J. Cuccias of Jacobson
Holman, PLLC for Capital Restaurant Concepts, Ltd. (now,
Capital Restaurant Holdings, Inc.)

Craig W. Turner of Craig W. Turner, PA for DeConna Ice Cream
Company, Inc.
_______

Before Bucher, Cataldo and Mermelstein, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Capital Restaurant Concepts, Ltd. (now, Capital
Restaurant Holdings, Inc.) (petitioner) has petitioned to
cancel the registration owned by DeConna Ice Cream Company,
Inc. (respondent) for the mark OLD GLORY for goods
identified as “three colored (red, white and blue) flavored
ices” in International Class 30.1

1 Registration No. 1869833 issued on December 27, 1994; renewed.
The registration shows claims of first use anywhere at least as
early as April 1993 and first use in commerce at least as early
as June 1993.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92029900
- 2 -
As grounds for cancellation, petitioner asserts that it
is the owner of registrations for two previously registered
marks for “restaurant services”
namely OLD GLORY2 and a special
form drawing (at right) that
petitioner refers to as its “old
logo.”3 Petitioner also claims two
subsequently-issued registrations of
its “new logo,” as shown as right,
registered for, inter alia,
“restaurant services.”4

Petitioner argues that as a result of the similarity
between the parties’ marks as applied to their respective
goods and services, confusion is likely among consumers as
to the source of those goods and services.
Respondent, in its answer, denies the salient
allegations in the petition for cancellation.

2 Registration No. 1769503 issued on May 4, 1993; renewed.

3 Registration No. 1793266 issued on September 14, 1993;
renewed. No claim is made to the right to use the words “All
American Bar-B-Que” apart from the mark as shown.

4 Registration Nos. 3118681 and 3245233 issued on July 25,
2006 and May 22, 2007, respectively. Although petitioner has not
established priority as to the mark in these registrations, and
hence, they do not play a critical role in our decision, these
later-issued registrations were also made of record herein. The
record does demonstrate continuous use of this modernized form of
the composite mark to the present.

Cancellation No. 92029900
- 3 -
During its testimony period, respondent did not submit
any testimony or other evidence. Only petitioner filed a
final brief in the case. The sole issue on final decision
in this proceeding is petitioner’s claim of priority and
likelihood of confusion.
Preliminary Matter
In order to show that the same marks have been adopted
by a single party for frozen desserts and restaurant
services, petitioner attached to its trial brief a number of
third-party registrations. Inasmuch as copies of these
registrations were not submitted during petitioner’s
testimony period, we have given them no consideration.
The Record
The record in this case consists of the pleadings and
the file of respondent’s involved Registration No. 1869833
and petitioner’s involved registrations. Petitioner filed two
Notices of Reliance on December 10, 2007, introducing, inter
alia, status and title copies of the two previously-issued
registrations listed above and excerpts of various online and
printed publications. Petitioner also took the testimony
deposition, with associated exhibits, of Paul J. Cohn, a
Senior Executive Officer and co-founder of Capital
Restaurant Concepts (“Cohn Tr.”), taken on May 15, 2009, and
Cancellation No. 92029900
- 4 -
submitted on June 12, 2009. Finally, on May 19, 2009,
petitioner submitted under Notice of Reliance additional
samplings of online and printed publications as well as
written discovery served on respondent and respondent’s
responses thereto.
Facts
Applicant bills its Old Glory All-American Bar-B-Que
restaurant as follows:
DC’s premiere barbecue restaurant features
ribs, chicken, shrimp, pulled pork,
slathered with your choice of six sauces.
Plus the area’s largest bourbon selection,
all in a rustic Georgetown setting.5

Since October 1991, applicant has continuously
offered goods and services in the heart of the Georgetown
neighborhood of Washington DC. The restaurant’s focus is
on hearty entrees to eat on the premises, along with
appetizers, sides, whisky and desserts.
Standing
Petitioner has submitted evidence of its use of OLD
GLORY for “restaurant services” and its registrations for
OLD GLORY and “Old Glory American Bar-B-Que and design” for

5 WHERE magazine, Washington DC, advertisement of Old Glory
restaurant, September 19, 1998, Cohn Tr. at 19, Exhibit 13.

Cancellation No. 92029900
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“restaurant services.” Accordingly, petitioner has shown
that it is not a mere intermeddler, and has therefore
established its standing. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185 (CCPA 1982).
Priority
Because this is a cancellation proceeding, priority is
in issue despite the fact that petitioner has made of record
its registrations for OLD GLORY and “Old Glory American
Bar-B-Que and design.” See Brewski Beer Co. v. Brewski
Brothers, Inc., 47 USPQ2d 1281, 1284 (TTAB 1998). Thus, we
must look to the actual dates of first use proved by the
parties, although each party may, in the absence of other
evidence, rely on the filing date of the application
underlying its respective registration(s). In this case,
petitioner can rely on the September 16, 1991, filing date
of its underlying applications. As noted, respondent
submitted no testimony or other evidence during trial.
Accordingly, the earliest date on which respondent can rely
is January 21, 1994, the filing date of its underlying
application. Accordingly, petitioner has established its
priority.
Cancellation No. 92029900
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Likelihood of Confusion
Respondent’s mark is identical to petitioner’s word
mark [Registration No. 1769503]. There is no evidence to
suggest that OLD GLORY is a weak mark for these goods and
services. The goods and services of both parties are
clearly subject to impulse purchase by ordinary customers
who will not exercise a great deal of care. While there is
no per se rule mandating a finding of likelihood of
confusion arising between similar marks for restaurant
services and particular items of food, something more is
required to support a finding of likelihood of confusion in
this case. Jacobs v. International Multifoods Corp.,
668 F.2d 1234, 212 USPQ 641 (Fed. Cir. 1982).
Mr. Cohn testified that petitioner sells frozen
desserts such as ice cream at its restaurant. Cohn Tr. at
6-7. In fact, these desserts have been reviewed favorably
by the media:
Cancellation No. 92029900
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Old Glory Barbecue
3139 M St. NW, Washington, D.C. 20007
Frommer’s Review
“… and desserts like apple crisp and coconut cherry cobbler all hit the spot.” 6

Old Glory All-American Bar-B-Que
3139 M St. NW (Wisconsin Ave. NW)
Washington, DC 20007
202-337-3406 |
“… Wind up with a satisfying dessert, either the apple crisp or a rich brownie
sundae.” 7

Accordingly, we find based upon the evidence of record,
that there is a commercial relationship between desserts,
including flavored ices/ice cream, and restaurant services.
We conclude, in light of the identical marks, and the
likelihood that the goods and services at issue are
purchased on impulse, that petitioner has established a
likelihood of confusion on this record. Respondent has not
submitted any evidence or argument to the contrary.
Decision: The petition to cancel is granted on the
ground of priority and likelihood of confusion.

6 FROMMER’S ONLINE GUIDE, NEW YORK TIMES travel guide, FORBES
TRAVELER, Cohn Tr. at 12, Exhibits 3 and 4, and Notice of reliance
of May 19, 2009, Exhibit 48.
http://www.frommers.com/destinations/washingtondc/D34797.html,
http://travel.nytimes.com/travel/guides/north-america/united-states/washington-
dc/restaurant-detail.html, and http://www.forbestraveler.com/restaurant-
review/washington-dc/Old-Glory-Barbecue.html

7 GAYOT – the guide to the good life, Notice of reliance of May
19, 2009, Exhibit 50. www.gayot.com/restaurants/old-glory-all-
american-bar-b-que-washington-dc-20007_8dc99230.html