Costas Spiliadis

Trademark Trial and Appeal Board

May 18, 1999

No. 75264504 (T.T.A.B. May. 18, 1999)

Paper No. 10
HANAK/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 18, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Costas Spiliadis
________
Serial No. 75/264,504
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Michael A. Cornman of Schweitzer, Cornman, Gross & Bondell
LLP for Costas Spiliadis.
Michael C. Mason, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
_______
Before Hanak, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Costas Spiliadis (applicant) seeks to register
ESTIATORIO MILOS and fish design in the form shown below
for “restaurant services.” The intent-to-use application
was filed on March 26, 1997.
Ser No. 74/656,074
2
The Examining Attorney refused registration pursuant
to Section 2(d) of the Lanham Trademark Act on the basis
that applicant’s mark, as applied to applicant’s services,
is likely to cause confusion with the mark MILO’S (below),
previously registered for “restaurant services”
(Registration No. 1,178,661).
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
In any likelihood of confusion analysis, two key
considerations are the similarity of the marks and the
similarity of the goods or services. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
Ser No. 74/656,074
3
essential characteristics of the goods [or services] and
differences in the marks.”).
In this case, the services (restaurant services) are
absolutely identical.
Turning to a consideration of the marks, we note at
the outset that if the services are identical, “the degree
of similarity [of the marks] necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 877,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Obviously, the most prominent word in the applicant’s
mark is MILOS. Not only is this word depicted in decidedly
larger lettering, but in addition, it is the only arbitrary
word in applicant’s mark. The word ESTIATORIO not only
appear in much smaller lettering, but in addition, this
word is generic for restaurant services, and quite properly
has been disclaimed, as applicant acknowledges.
(Applicant’s brief page 4). ESTIATORIO is a Greek word
meaning restaurant. (Applicant’s reply brief page 1).
Thus, when considered in its entirety, the most
dominant portion of the applicant’s mark is the word MILOS,
and this word is virtually identical to registrant’s mark
MILO’S. In finding that the word MILOS is the dominant
portion of the applicant’s mark, we are not ignoring the
Ser No. 74/656,074
4
fish design or the very subordinate, generic word
ESTIATORIO. However, because restaurants are often
recommended by word of mouth and referred to orally, it is
not improper to give more weight to the word portion of
applicant’s mark and less weight to the design portion.
Moreover, it is not impermissible to give more weight to
the arbitrary word portion of the applicant’s mark (MILOS)
and less weight to the generic word. Stated somewhat
differently, we believe that customers will refer to
applicant’s restaurant as MILOS. Indeed, applicant’s own
evidence shows that applicant’s restaurant is repeatedly
referred to as simply MILOS. See Exhibit C made of record
by applicant.
This practice of recommending restaurants by word of
mouth and referring to them orally has been often
recognized by our primary reviewing Court. See In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed.
Cir. 1997); Giant Food, Inc. v. Nation’s Foodservice, Inc.,
710 F.2d 1565, 1570, 218 USPQ 390, 395 (Fed. Cir. 1983).
Indeed, the case of Dixie Restaurants is quite
instructive in that the Court found that applicant’s mark
THE DELTA CAFE and design (below) for restaurant services
was confusingly similar to the mark DELTA for hotel, motel
and restaurant services.
Ser No. 74/656,074
5
In so doing, the Court in Dixie Restaurants noted that
“neither the design element nor the generic term ‘cafe’
offers sufficient distinctiveness to create a different
commercial impression.” 41 USPQ2d at 1534. Obviously, the
fish design in applicant’s mark is of somewhat limited
consequence in that it indicates that applicant’s
restaurant specializes in seafood. A review of applicant’s
menu (Exhibit B) reveals that the vast majority of items
are seafood.
In short, we find that applicant’s mark and
registrant’s mark are similar enough such that when they
are used on identical restaurant services, there exists a
likelihood of confusion. In making this determination, we
have considered two additional arguments raised by
applicant.
First, applicant argues at pages 3 and 4 of its brief
that “MILO’S is the possessive of MILO, no more and no
less. MILOS is an entirely different word with an entirely
Ser No. 74/656,074
6
different meaning and with an entirely different
pronunciation, notwithstanding that the letters making up
each are the same. …MILOS is, in fact, the name of a Greek
Island.”
While there is no dispute that there is a Greek island
named Milos (or Milo), there is absolutely no evidence that
this small Greek island is known to American consumers. To
the very substantial portion of American consumers
unfamiliar with this Greek island, registrant’s mark and
the most prominent portion of applicant’s mark (MILOS)
would both be perceived as first names. Moreover, to that
very small portion of American consumers familiar with the
Greek island, said consumers could well overlook the
apostrophe in the registered mark and assume that it, like
applicant’s mark, refers to the Greek island.
As for applicant’s argument that MILO’S and MILOS have
“entirely different pronunciations,” we simply disagree.
Again, to the vast majority of American’s unfamiliar with
the Greek island of Milos (or Milo), both MILOS and MILO’S
would be pronounced in the identical manner. In any event,
it is well recognized that except for very common English
words, “there is no correct no pronunciation of a
trademark.” In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ
227 (CCPA 1969).
Ser No. 74/656,074
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Second, applicant relies upon a business yellow pages
search of both MILO’S and MILOS which “turned up 97 hits …
of which … 17 were clearly for food or restaurant
services.” (Applicant’s brief pages 5 and 6). Applicant
then goes on to allege that “the scores of different MILO’S
establishments … indicate the extreme weakness of the mark
of the cited registration.” (Applicant’s brief page 7).
In this regard, applicant cites the case of In re Broadway
Chicken, 38 USPQ2d 1559 (TTAB 1996).
There are two problems with applicant’s argument.
First, the “80 hits” for businesses unrelated to
restaurants are of virtually no probative value in
establishing that MILO’S or MILOS is an extremely weak
mark. As has been stated before, “the relevant inquiry
examines the number and nature of similar marks used for
[similar] services.” Century 21 Real Estate, 23 USPQ2d at
1701.
As for the 17 hits which applicant contends are
“clearly for food or restaurant services” (applicant’s
brief page 6), we simply note that said number is far short
of the “more than 575 entities whose names contain the term
BROADWAY and which offer restaurant services and/or related
services or goods.” Broadway Chicken, 38 USPQ2d at 1562.
Indeed, applicant’s own evidence proves just the opposite
Ser No. 74/656,074
8
point, namely, that MILO’S or MILOS is a very uncommon term
in the restaurant and food service business. If there are
only 17 such establishments using this name or mark in a
country of over 250 million residents, then this means that
the mark MILO’S or MILOS is used but once for every 15
million residents of this country.
Decision: The refusal to register is affirmed.
E. W. Hanak
T. J. Quinn
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board