Flo Enterprise LLC

Trademark Trial and Appeal BoardMay 2, 2014

No. 85646495 (T.T.A.B. May. 2, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: May 2, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Flo Enterprise LLC _____ Serial No. 85646495 _____ Matthew H. Swyers of The Trademark Company, PLLC for Flo Enterprise LLC. Amy C. Kean, Trademark Examining Attorney, Law Office 112 (Angela Wilson, Managing Attorney). _____ Before Ritchie, Adlin and Masiello, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Flo Enterprise LLC (“applicant”) seeks registration of the mark shown below with SMOKEHOUSE GRILL disclaimed, for “Restaurant services.”1 The examining attorney refused registration of the mark under Section 2(d) of the Trademark Act 1 Application Serial No. 85646495, filed June 7, 2012 based on alleged first use dates of September 18, 2007. The registration includes the following description of the mark: “The Serial No. 85646495 2 of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, when used in connection with applicant’s services, so resembles the previously-registered mark ON Q CLUB, in standard characters and the form shown below (both with CLUB disclaimed) for “Restaurant and cocktail lounge services”2 that use of applicant’s mark in connection with applicant’s services is likely to cause confusion or mistake or to deceive. On Q Billiards, Inc. (“registrant”) owns both of the cited registrations. After the refusal became final, applicant appealed and applicant and the examining attorney filed briefs. Likelihood of Confusion 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 services. See 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) mark consists of a flame between the outlined texts ‘ON’ and ‘Q’, and the outlined texts ‘SMOKEHOUSE GRILL’ below.” 2 Registration Nos. 3422746 and 3422747, respectively, both issued May 6, 2008. Serial No. 85646495 3 goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). Turning first to the services, channels of trade and classes of consumers, they are identical. Applicant and registrant both offer “restaurant services,” with no limitations regarding channels of trade or classes of customers. Applicant’s argument that it uses its mark “exclusively in connection with a restaurant serving a range of barbequed and grilled meats and side dishes,” while registrant’s mark is for “an upscale eatery featuring a bar and dancing,” Affidavit of Willie Flott (“Flott Aff.”) at ¶¶ 2, 4,3 is unavailing. Because applicant’s identification of services contains no limitations with respect to channels of trade, applicant’s services are presumed to encompass all services of the type described, and the services are presumed to move in all normal channels of trade for those services and be available to all classes of consumers. Citigroup Inc. v. Capital City Bank Grp., 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); see also, Stone Lion Capital Partners, L.P. v. Lion Capital LLP, ___ F.3d ___, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“Even assuming there is no overlap between Stone Lion’s and Lion’s current customers, the Board correctly declined to look beyond the application and registered marks at issue. An application with ‘no restriction on trade channels’ cannot be ‘narrowed by testimony that the applicant’s use is, in fact, restricted to a particular class of purchasers.’”). 3 Submitted with applicant’s Office Action response of March 22, 2013. Mr. Flott is applicant’s owner. Serial No. 85646495 4 Applicant’s argument that registrant’s mark is no longer in use is also unavailing. In fact, having failed to petition for cancellation of the cited registered marks in an inter partes proceeding, applicant is precluded from arguing in this ex parte proceeding that registrant’s marks were abandoned. In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997). See also, Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 165 USPQ 515, 517 (CCPA 1970); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988). The legal identity of applicant’s and registrant’s services and their overlapping channels of trade not only weighs heavily in favor of a finding of likelihood of confusion, but also reduces the degree of similarity of the marks necessary to find a likelihood of confusion. In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). With respect to the marks, we must compare them “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. Cir. 2005) (quoting du Pont, 177 USPQ at 567). That is, we may not dissect the marks into their various components. 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). The test is not whether the marks can be distinguished when subjected to a side-by-side Serial No. 85646495 5 comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression 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). Of course, one feature of a mark may be more significant than another, and it is not improper to give more weight to the dominant feature of a mark in determining its commercial impression. In re Nat’l. Data Corp., 224 USPQ at 751 (“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 consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”). Here, we agree with the examining attorney that the dominant portion of both applicant’s and registrant’s marks is the identical term ON Q. Applicant disclaimed SMOKEHOUSE GRILL and registrant disclaimed CLUB and those words are merely descriptive of applicant’s restaurant services and registrant’s restaurant and cocktail lounge services. Bass Pro Trademarks, LLC v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1851 (TTAB 2008). In fact, the examining attorney has submitted evidence that “smokehouse grill” is merely descriptive of restaurants which serve grilled or barbequed food. Office Action of September 26, 2012. It is settled that descriptive words such as SMOKEHOUSE GRILL and CLUB are entitled to less weight than arbitrary or suggestive wording such as the Serial No. 85646495 6 term ON Q. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data, 224 USPQ at 752); In re Dixie Rests., Inc., 105 F.3d at 1405, 41 USPQ2d at 1533-34; In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not disclaimed word ROADHOUSE, is dominant element of BINION’S ROADHOUSE); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). In addition, the term ON Q in applicant’s mark is significantly larger than the merely descriptive and disclaimed term SMOKEHOUSE GRILL. Furthermore, in both applicant’s mark and the cited marks, the term ON Q appears first (because they will be read vertically), which also establishes that it is the dominant element of applicant’s and registrant’s marks. Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”); see also, Palm Bay Imports Inc., 73 USPQ2d 1692; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). While applicant’s mark includes a “flame” design, the flame is significantly smaller than the term ON Q, and in any event consumers would request applicant’s services using the term ON Q. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, Serial No. 85646495 7 1554 (TTAB 1987) (holding that “if one of the marks comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services” and “because applicant’s mark shares with registrant’s mark that element responsible for creating its overall commercial impression, the marks are confusingly similar”); see also, In re Viterra Inc., 671 F.3d at 1358, 101 USPQ2d at 1911. Moreover, the flame design in applicant’s mark is itself merely descriptive or at best suggestive of a “smokehouse grill” restaurant which offers barbequed food. In short, because applicant’s mark and the cited marks share the dominant wording ON Q, followed by terms which are merely descriptive for applicant’s and registrant’s services, the marks look and sound similar and convey similar meanings. This factor therefore also weighs in favor of finding a likelihood of confusion.4 In its March 22, 2013 Office Action response, applicant submitted copies of a number of third-party registrations to support its argument that “multiple ‘Q’ and even ‘ON Q’ marks for restaurant services can and should be permitted to exist on the register ….” Applicant’s Appeal Brief at 12. We disagree that the third-party registrations support the argument. The only third-party registrations upon which applicant relies which include the term ON Q (Registration Nos. 3246082 and 4 Applicant’s argument that its mark conveys a different meaning than registrant’s marks, because the Q in registrant’s marks will be perceived as referring to a pool cue is not well- taken. The cited marks are not registered for billiards-related goods or services, but for services identical to applicant’s services. There is no evidence of record which would support a finding that identical wording used for identical services can have one meaning when used by applicant and another when used by registrant. Serial No. 85646495 8 3788257) are registered for computer-related products and services and advertising services, not restaurant services. And the only third-party registrations upon which applicant relies which are registered for restaurant services (Registration Nos. 4210202, 2888680, 3310275, 3537541, 3289851, 3541539, 3517188, 3406301, 3761159, 3413165, 3622994 and 3352033) do not include ON Q, and are less similar to applicant’s mark than the marks cited by the examining attorney. In any event, it is settled that third-party registrations are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of registrations reposing in the U.S. Patent and Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). In other words, because there is no evidence that any of the marks in these third-party registrations are currently in use, the third-party registrations standing alone are not particularly relevant. Applicant’s argument that the relevant consumers “would also exercise a high level of sophistication” is belied by its admission that its meat and side dishes range in price “from $5.00 to $15.00 per item,” while registrant’s offerings may be “assumed” to range in price “from $8.00 to $30.00 per item.” Flott Aff. ¶ 9. Similarly, Mr. Flott indicates that applicant’s offerings are “for consumption in a casual environment” offered “through a food truck” and “marketed exclusively to individuals who are looking for a delicious and fast meal.” Id. ¶¶ 2, 3 (emphasis Serial No. 85646495 9 supplied). Applicant’s allegation that registrant’s mark is used for an “upscale eatery” is unsupported by any evidence of record. In any event, neither applicant’s nor registrant’s identifications of services are limited to a particular type of restaurant or consumer, much less sophisticated consumers, and the identified “restaurant services” may be marketed to and consumed by sophisticated and careful diners as well as patrons of fast food establishments who are more interested in speed than gourmet cuisine or ambience. See Stone Lion Capital, 110 USPQ2d at 1162-63. Giving applicant the benefit of the doubt, this factor is neutral.5 Finally, applicant argues that confusion is unlikely because there is no evidence of actual confusion. However, this is not relevant because there is also no evidence that there have been any meaningful opportunities for confusion to have occurred. See Cunningham, 222 F.3d at 943, 55 USPQ2d at 1847; Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Moreover, the lack of evidence of actual confusion carries little weight, J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965), especially in an ex parte context. See also In re Majestic Distilling Co., Inc., 315 F.3d at 1311, 65 USPQ2d at 1205 (“uncorroborated statements of no known instances of actual confusion are of little evidentiary value”); In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of applicant’s corporate 5 In any event, as applicant points out, “the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are immune from source confusion.” Applicant’s Appeal Brief at 8. Serial No. 85646495 10 president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion).6 There is no relevant evidence or argument concerning the remaining likelihood of confusion factors, and we therefore treat them as neutral. Conclusion After considering all of the evidence of record as it pertains to the relevant du Pont factors, including all of applicant’s arguments and evidence, even if not specifically discussed herein, we find that confusion is likely based on the identical services, similarity of the marks and overlapping channels of trade. Decision: The Section 2(d) refusal to register applicant’s mark is affirmed. 6 In any event, as applicant points out, “it is well settled that the relevant test is likelihood of confusion and not actual confusion.” Applicant’s Appeal Brief at 15.