CRK II, LLC

Trademark Trial and Appeal BoardDec 9, 2013

No. 85521074 (T.T.A.B. Dec. 9, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: December 9, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re CRK II, LLC _____ Serial No. 85521074 _____ David M. Carter of The Van Winkle Law Firm for CRK II, LLC. Amy E. Hella, Trademark Examining Attorney, Law Office 110 (Chris A.F. Pedersen, Managing Attorney). _____ Before Bucher, Wolfson, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: On January 20, 2012, applicant CRK II, LLC applied to register the mark FOOD MATTERS MARKET, in standard characters, for “cafe services” in International Class 43.1 “Food” and “market” are disclaimed. Registration has been refused on the ground of likelihood of confusion with the following composite mark: 1 Application Serial No. 85521074, filed pursuant to Trademark Act Section 1(b), 15 U.S.C. § 1051(b) (intent to use). Serial No. 85521074 2 registered for “contract food services” in International Class 43.2 The appeal is fully briefed. Record The record on appeal includes the following evidence submitted by the examining attorney: • Printouts from the websites of six third parties offering café and contract food services under the same marks;3 • A printout from Google Finance stating that the publicly traded company Luby’s, Inc. operates in the restaurant industry and the contract food services industry, with primary brands including Luby’s Cafeteria and Luby’s Culinary Contract Services;4 and • Copies of five use-based third-party registrations covering both café and contract food services.5 The examining attorney also submitted a definition of “market” with her appeal brief.6 Applicant attached two exhibits to its appeal brief, comprising printouts of lists of applications and registrations obtained via applicant’s searches of the Trademark Electronic Search System (TESS) database and a copy of a registration owned by applicant.7 The examining attorney objects to the exhibits. In its reply 2 Registration No. 3450532, issued June 17, 2008. 3 May 2, 2012 Office action at 2-6, 14-15; Nov. 21, 2012 final Office action at 2-6, 14-17. 4 May 2, 2012 Office action, at 11-13. Applicant argues that Luby’s, Inc. uses another of its brands, FUDDRUCKERS, for café services. Reply Brief at 3, 7 TTABVUE 4. This argument is not supported by the record evidence. Rather, the conclusion we draw from the brief printout of record is that LUBY’S CAFETERIA is one of the marks Luby’s, Inc. uses in association with its restaurant services, and FUDDRUCKERS is another. 5 Id. at 19-32. 6 6 TTABVUE 15-17, Random House Webster’s Unabridged Dictionary 1177 (2d ed. 2001). 7 Appeal Brief, Exhibits A and B, 4 TTABVUE 18-26. Serial No. 85521074 3 brief, applicant asks that we consider this new evidence, comparing it to the dictionary definition submitted by the examining attorney with her brief.8 The record in an application should be complete prior to the filing of an appeal. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); In re Fitch IBCA Inc., 64 USPQ2d 1058, 1059 n.2 (TTAB 2002); In re Trans Cont’l Records Inc., 62 USPQ2d 1541, 1541 n.2 (TTAB 2002); Trademark Trial and Appeal Board Manual of Procedure (TBMP) §§ 1203.02(e), 1207.01 (3d ed. rev. 2 June 2013). It is well-established that the Board may take judicial notice of dictionary definitions. See, e.g., In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006) (“The Board has a long history of taking judicial notice of definitions excerpted from print dictionaries and submitted after appeal.”); Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); TBMP § 1208.04. The Board does not, however, take judicial notice of registrations that reside in the Patent and Trademark Office. See, e.g., Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012); In re Thomas Nelson Inc., 97 USPQ2d 1712, 1717 n.18 (TTAB 2011); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974); TBMP § 1208.02. Even were we to consider the lists of TESS results submitted by applicant, they would have virtually no probative value because there is no evidence concerning the underlying registrations, such as their present status or the goods or services involved. See In re Carolina Apparel, 48 USPQ2d 1542, 1543 n.2 (TTAB 1998) (“The Board does not take judicial notice of 8 Reply Brief at 1-2, 7 TTABVUE 2-3. Serial No. 85521074 4 third-party registrations, and the mere listing of them is insufficient to make them of record.”). Cf. TBMP § 704.12(a) n.1 (stating that “the Board does not take judicial notice of either third-party registrations or a party’s own registration[s]”).9 We also note that applicant could have requested remand to make additional evidence of record, but did not. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1244 n.4 (TTAB 2010). For these reasons, we take judicial notice of the definition of “market,” but have given no consideration to applicant’s evidence, which was not timely submitted during prosecution. Analysis Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. In re SL&E Training Stable Inc., 88 USPQ2d 1216, 1217 (TTAB 2008). See also 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.”). We consider each of the du Pont factors as to which applicant or the examining attorney submitted evidence. 9 The third-party applications are evidence only of the fact that they have been filed. Interpayment Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). Serial No. 85521074 5 A. Similarity of the Services, Channels of Trade, and Conditions of Sale We turn first to the similarity of the services, their channels of trade, and conditions of sale, the second through fourth du Pont factors. The services need not be identical or even competitive in order to support a finding of a likelihood of confusion. Rather, it is enough that the services are related in some manner or that the circumstances surrounding their marketing are such that they could be encountered by the same persons under conditions that could, because of the similarities of the marks, give rise to the mistaken belief that they originate from or are in some way associated with the same provider. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). The examining attorney made of record seven examples of third parties offering restaurant or café and contract food services under the same mark, as well as five use-based, third-party registrations covering both café and contract food services. The Internet evidence shows that the types of services offered by applicant and registrant travel through the same trade channels. The third-party registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, but they nonetheless have probative value to the extent that they serve to suggest that the identified services are of a kind that may emanate from a single source under a single mark. See In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); Venture Out Props. LLC v. Wynn Resorts Holdings LLC, 81 USPQ2d 1887, 1893 (TTAB 2007). Although the quantity of this Serial No. 85521074 6 evidence is not great, applicant provided no countervailing evidence, and we find it sufficient to satisfy the examining attorney’s burden. With respect to the conditions of sale, there is no evidence supporting applicant’s assertion that purchasers of its or registrant’s services are sophisticated.10 Moreover, because neither the identification in the application nor in the cited registration contains any limitations, we must assume that the services move in all normal channels of trade and are available to all classes of purchasers. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Based on the evidence discussed herein, we find that applicant’s identified services move in the same channels of trade and are sufficiently related to those in the prior registration that source confusion is likely. In our likelihood of confusion analysis, these findings under the second and third du Pont factors support a conclusion that confusion is likely. Because there is no record evidence regarding the fourth du Pont factor, we find it to be neutral. B. Similarity of the Marks We next consider the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of “the marks in their entireties as to 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 (Fed. 10 Reply Brief at 8, 4 TTABVUE 13. Serial No. 85521074 7 Cir. 2005) (quoting du Pont, 177 USPQ at 567). In a particular case, any one of these means of comparison may be critical. See Eveready Battery Co. v. Green Planet, Inc., 91 USPQ2d 1511, 1519 (TTAB 2009); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the services offered under the respective marks is likely to result. San Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d, No. 92-1086 (Fed. Cir. June 5, 1992). Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). On the other hand, 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 a consideration of the marks in their entireties. In re Nat’l Data, 224 USPQ at 751. Serial No. 85521074 8 The cited registered mark is the composite shown at right. Applicant’s mark is the standard character mark FOOD MATTERS MARKET, with both words “food” and “market” disclaimed. Disclaimed terms are typically accorded less weight, or are less significant, because they may be descriptive or generic. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In re Nat’l Data, 224 USPQ at 752). We find that the dominant portion of both marks is the phrase FOOD MATTERS. Notwithstanding the fact that “food” is disclaimed in applicant’s mark, we accord it more weight here due to its place of prominence as the first word in the mark. See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (on encountering the marks, consumers will first notice the identical lead word); Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.”). We also perceive a natural break in the mark FOOD MATTERS MARKET between FOOD MATTERS and MARKET, and find that despite the disclaimer of the word “food,” because of its placement and the natural break between the words “food matters” and “market,” FOOD MATTERS would be considered the dominant portion of applicant’s mark. We note once again that “market” is disclaimed and may be descriptive in association with applicant’s services, and also is less prominent due to its placement as the final word in applicant’s mark. Serial No. 85521074 9 Because we consider the marks in their entireties, we also recognize that the cited mark contains the additional phrase HEALTHY EATING FOR HEALTHY LIVING. Given its placement in much smaller letters below a line, we find this wording to contribute far less to the cited mark’s overall commercial impression than the phrase above it, FOOD MATTERS. The cited mark also incorporates images of vegetables in place of some letters.11 These depictions of food draw attention to and reinforce the significance of the phrase FOOD MATTERS. Furthermore, because applicant’s mark is in standard characters, it is “not limited to the mark depicted in any special form.” Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). Accordingly, we must consider all manners in which applicant’s mark could be depicted, including using the font of the cited registration. See Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011). Therefore, although there are differences between the marks in appearance and sound, we find that applicant’s mark is similar to the cited composite mark in connotation and overall commercial impression. The first du Pont factor supports a conclusion that confusion is likely. C. Other du Pont Factors Applicant makes arguments concerning several other du Pont factors. We have carefully considered them, even those not specifically discussed herein, but do not find them persuasive. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 11 The description of the mark states that “the first ‘O’ is a red pepper, the second ‘O’ is an egg plant [sic], the first ‘T’ is a cucumber and the second ‘T’ is a carrot.” Serial No. 85521074 10 1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont factors are relevant to every case, and only factors of significance to the particular mark need be considered.”). We note only that there is no record evidence that the term MATTERS – the only word in applicant’s mark not disclaimed – is “weak because it is laudatory.”12 Balancing the Factors In view of our findings that the marks are similar and that the services are related and move in the same or similar channels of trade, we find that applicant’s mark FOOD MATTERS MARKET for café services is likely to cause confusion with the registered mark for contract food services. To the extent there are any doubts, we resolve them, as we must, against applicant as the newcomer and in favor of the registrant. Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1202 (TTAB 2007); Hard Rock Café Int’l (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1514 (TTAB 2000). Conclusion Decision: The examining attorney’s refusal to register applicant’s mark under Section 2(d) of the Trademark Act is affirmed. 12 Appeal Brief at 11, 4 TTABVUE 16.