Capital Restaurant Holdings, Inc.v.DeConna Ice Cream Company, Inc.Download PDFTrademark Trial and Appeal BoardJun 21, 2010No. 92029900 (T.T.A.B. Jun. 21, 2010) Copy Citation 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 - 5 - “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 - 6 - 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 - 7 - 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 Copy with citationCopy as parenthetical citation