Houlihan’s Restaurants, Inc.v.Hooligan’s Pub & Oyster Bar, Ltd.

Trademark Trial and Appeal Board

Mar 28, 2001

No. 91110160 (T.T.A.B. Mar. 28, 2001)

03/28/01 Paper No. 20
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Houlihan’s Restaurants, Inc.
v.
Hooligan’s Pub & Oyster Bar, Ltd.
_____
Opposition No. 110,160
to application Serial No. 74/680,068
filed on May 25, 1995
_____
Arthur H. Seidel and Susan F. Evans of Seidel Gonda Lavorgna &
Monaco, P.C. for Houlihan’s Restaurants, Inc.
Jefferson F. Scher and Maria T. Giammanco of Carr & Ferrell LLP
for Hooligan’s Pub & Oyster Bar, Ltd.
______
Before Quinn, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
An application was filed by Hooligan’s Pub & Oyster Bar,
Ltd. to register the mark HOOLIGAN’S for “restaurant, bar and
lounge services.”1
Registration has been opposed by Houlihan’s Restaurants,
Inc. under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when applied to applicant’s services, so
resembles opposer’s previously used and registered marks as to be
likely to cause confusion, to cause mistake or to deceive.
Opposer has pleaded ownership of the following registered marks:
1 Application Serial No. 74/680,068, filed May 25, 1995, alleging first
use on May 1, 1987.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 110,160
- 2 -
HOULIHAN’S for “restaurant and bar services”2; HOULIHAN’S for
“prepared entrees consisting primarily of meat, fish, poultry or
vegetables; prepared appetizers consisting primarily of meat,
fish, poultry or vegetables; soups, garden salads, vegetable
salads”3; HOULIHAN’S for “ladies’ and men’s casual clothing and
sportswear, namely, shirts, pants, sweaters, sweatshirts and
sweatpants”4; and
for “restaurant and bar services”5:
Applicant, in its answer, denied the salient allegations of
the opposition.
The record consists of the pleadings; the file of the
involved application; trial testimony, with related exhibits,
taken by opposer; and applicant’s responses to opposer’s
interrogatories as well as an entry from a slang dictionary, all
introduced by way of opposer’s notice of reliance. Applicant
neither took testimony nor introduced any other evidence. Both
2 Reg. No. 1,835,780, issued on May 10, 1994; Records of the U.S.
PTO also show that a §8 affidavit has been accepted and a §15
affidavit has been acknowledged.
3 Reg. No. 2,018,664, issued on November 26, 1996.
4 Reg. No. 1,675,147, issued on February 11, 1992; Records of the
U.S. PTO also show that a §8 affidavit accepted and a §15 affidavit
acknowledged.
5 Reg. No. 1,984,915, issued on July 9, 1996.
Opposition No. 110,160
- 3 -
opposer and applicant filed main briefs on the case and opposer
filed a reply brief. An oral hearing was not requested.
Opposer, according to Susan Hamilton, opposer’s manager of
legal affairs, operates 106 restaurants in 24 states, Mexico and
Puerto Rico, and has specific plans to expand its market into 22
additional states. While some restaurants are company owned and
the balance are franchisees, all are operated in much the same
way. The HOULIHAN’S name appears on restaurant signs, on menus,
in advertisements, as well as in telephone book listings,
restaurant guides and other promotional materials. The
HOULIHAN’S name is also used in connection with various
promotional materials from wineglasses and mugs to an array of
clothing items.
Applicant currently operates three HOOLIGAN’S restaurants in
Miami, Florida, and licenses the mark for use in connection with
restaurant services in other Southeastern and Mid-Atlantic
States.
Before turning to the merits of the likelihood of confusion
claim, we direct our attention to a few preliminary matters.
The first relates to newly raised claims in applicant’s
brief that opposer is not entitled to rely upon the registrations
introduced during the testimony of Ms. Hamilton, and that we
should exclude her testimony as to first use of opposer’s
HOULIHAN’S mark on grounds of hearsay and inadequate foundation.
Opposition No. 110,160
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Applicant alleges that opposer has failed to follow the
rules for offering evidence sufficient to establish that the
registrations are still subsisting. Opposer, as plaintiff in
this proceeding, did not submit with the notice of opposition
status and title copies of the registrations prepared and issued
by the PTO.6 Rather, opposer relied upon photocopies of its
original certificates of registrations introduced during the
testimony of Ms. Hamilton.7 However, applicant points to a
defect in opposer’s attempt to make these registrations of
record:
… Ms. Hamilton authenticated a purported photocopy
of this and other certificates of registration as
“business records.” Ms. Hamilton never testified
as to the status of those registrations…
Accordingly, the Opposer cannot rely on
Registration No. 1,835,780 (or its other
registrations) to establish priority of use in
this proceeding. (applicant’s appeal brief, p.
2).
6 Registrations. (1) A registration of the opposer or
petitioner pleaded in an opposition or petition to
cancel will be received in evidence and made part of
the record if the opposition or petition is
accompanied by two copies (originals or photocopies)
of the registration prepared and issued by the Patent
and Trademark Office showing both the current status
of and current title to the registration… [37 C.F.R.
§2.122(d)(1)].
7 Registrations. (2) A registration owned by any party
to a proceeding may be made of record in the
proceeding by that party by appropriate identification
and introduction during the taking of testimony or by
filing a notice of reliance, which shall be
accompanied by a copy (original or photocopy) of the
registration prepared and issued by the Patent and
Trademark Office showing both the current status of
and current title to the registration. The notice of
reliance shall be filed during the testimony period of
the party that files the notice. [37 C.F.R.
§2.122(d)(2)].
Opposition No. 110,160
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We agree with applicant that these registrations were not
properly made of record. Contrary to opposer’s assertion in its
reply brief on appeal, the copies accompanying Ms. Hamilton’s
testimony (Exhibit 2 for Reg. No. 1,835,780; Exhibit 12 for Reg.
No. 2,018,664; Exhibit 13 for Reg. No. 1,675,147; and Exhibit 15
for Reg. No. 1,984,915) are not, “in fact, status and title
copies, as is apparent from the exhibits … ” (opposer’s reply
brief, p. 9). Status and title copies are an official
acknowledgment by the Office as to what the Office’s records show
with respect to a particular registration as of the time of the
mailing of the copies to the party in a time frame
contemporaneous with their production in the Office proceeding.
However, in this case, there is no indication that these
photocopies of the pleaded registrations have been prepared and
issued by the Patent and Trademark Office as required by Rule
2.122(d)(2). Rather, the relevant registration documents are
merely photocopies of the registrations as issued. The fact that
opposer's copies of these registration shows that they originally
issued to opposer on May 10, 1994, November 26, 1996, February
11, 1992 and July 9, 1996, respectively, does not establish that
title thereto still resided in opposer at the time of filing of
the notice of opposition on April 30, 1998, or that they were
still valid and subsisting as of that date. Peters Sportswear
Co., Inc. v. Peter's Bag Corporation, 187 USPQ 647 (TTAB 1975).
Because opposer did not submit official status and title copies
Opposition No. 110,160
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whereon the Patent and Trademark Office had entered data as of a
contemporaneous date, these registration copies are insufficient
in and of themselves to establish a prima facie case of ownership
on behalf of the opposer. See Hollister Incorporated v. Downey,
565 F.2d 1208, 196 USPQ 118 (CCPA 1977); Industrial Adhesive
Company v. Borden, Inc., 218 USPQ 945 (TTAB 1983); A.R.A.
Manufacturing Company v. The Equipment Company, Inc., 183 USPQ
558 (TTAB 1974); and Maybelline Company v. Matney, 194 USPQ 438
(TTAB 1977); See also TBMP §703.02(a).
Furthermore, after introducing the copies of the original
certificates of registration during the taking of the testimony
of Ms. Hamilton, opposer failed to elicit any testimony from her
with respect to the status and title of these registrations at
the time of her testimony. Thus, opposer has failed to establish
that it is the current owner of the pleaded registrations, or
that they are alive and subsisting. See Maybelline Company v.
Matney, supra.8
The second objection applicant makes in its main brief is
that Ms. Hamilton’s testimony as to opposer’s first use of the
HOULIHAN’S mark in 1972 should be disregarded on grounds of
hearsay and inadequate foundation:
8 Opposer’s counsel had Ms. Hamilton clarify later in her testimony
that the two older registrations that had originally issued to
Gilbert/Robinson, Inc., had since been assigned to opposer due to a
name change, arguably showing title with opposer at some prior date.
However, this did not cure the failure to elicit testimony on the
extant status of any of the four claimed properties.
Opposition No. 110,160
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In her deposition, Ms. Hamilton testified that she
was first employed by the Opposer on March 15,
1993. [page cites omitted] Accordingly, Ms.
Hamilton cannot have personal knowledge of this
fact [date of first use]. Her testimony was “I
believe the first Houlihan’s opened April 15th,
1972.” No basis is supplied for this belief, no
records cited, no foundation established at Ms.
Hamilton’s deposition… The Board should disregard
Ms. Hamilton’s testimony as lacking foundation
and/or hearsay. (appeal brief p. 1).
In response, opposer cites to the relevant section of the
Federal Rules of Civil Procedure dealing with the effect of
errors in depositions, arguing that this was a defect that could
have been easily remedied had it been raised at the time of the
deposition.9
On this point, we agree with opposer that the final clause
of Rule 32(d)(3)(A) applies to the situation at hand. In this
case, had opposer’s counsel been faced with this challenge at the
time of the deposition, he could have elicited more information
from Ms. Hamilton about how her job duties and years of
experience had permitted her to acquire her personal knowledge of
relevant facts to which she was testifying. Accordingly, we find
that applicant’s objection to Ms. Hamilton’s testimony on grounds
of hearsay and inadequate foundation has been waived.
9 Fed. R. Civ. Pro. 32(d)(3) As to Taking of Deposition. (A)
Objections to the competency of a witness or to the
competency, relevancy, or materiality of testimony are not
waived by failure to make them before or during the taking
of the deposition, unless the ground of the objection is one
which might have been obviated or removed if presented at
that time.
Opposition No. 110,160
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With these procedural decisions in mind, we turn our
attention first to the issue of priority. Without reliance on
the federal registrations, we turn to Ms. Hamilton’s testimony.
Although Ms. Hamilton was not hired by opposer until 1993, her
duties as opposer’s manager of legal affairs included the
maintenance of the company’s trademark records. We should add,
however, that the written transcript of her brief testimony on
the dates of first use makes her appear to be somewhat
tentative.10 Nonetheless, we have deemed her competent to
testify to the dates on which opposer first used the HOULIHAN’S
name, and find the totality of her testimony probative enough to
establish opposer’s common law rights in the HOULIHAN’S service
mark as of 1973. This clearly precedes any date on which
applicant can rely, and hence, we find that the record shows
opposer to be the prior user. Accordingly, inasmuch as opposer
has established its priority, the only question to be determined
herein is whether the contemporaneous marketing of the respective
services of the applicant and the opposer under the designations
here involved is likely to cause confusion or to cause mistake or
to deceive. TE Automatic Electric Incorporated v. Merit
International Corp., 196 USPQ 263 (TTAB 1977).
10 Her statement about opposer’s first use date began with the
phrase, “I believe … ” (p. 9). Then several times she misstates the
first date of use anywhere as 1992, before correcting herself each
time to 1972. On the date of first use in commerce of the HOULIHAN’s
mark, after coaching, she appears to read the year 1973 from the face
of the document (p. 15).
Opposition No. 110,160
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Hence, we turn our attention to the issue of likelihood of
confusion. Our determination under Section 2(d) is based upon an
analysis of all of the 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 (CCPA
1973). The factors deemed pertinent in this proceeding now
before us are discussed below.
Turning first to the services, it appears as if the services
are identical in the case of restaurant and bar services. Thus,
we must presume that applicant and opposer are entitled to offer
their services in all normal trade channels for such services,
and to all normal classes of customers for such services. See
In re Elbaum, 211 USPQ 639 (TTAB 1981). In any case, the
probative evidence placed in the record by opposer merely
confirms that the services offered under these respective marks
are actually quite similar.
Furthermore, as to the du Pont factor focusing on the
conditions under which and buyers to whom sales are made, nothing
in this record persuades us that purchasers of restaurant and bar
services are necessarily sophisticated purchasers who would be
immune to source confusion when faced with similar marks used on
the identical services involved in this case. See In re
Continental Graphics Corp., 52 USPQ2d 1374 (TTAB 1999), and
Refreshment Machinery Incorporated v. Reed Industries, Inc., 196
USPQ 840 (TTAB 1977). To the contrary, these services are
Opposition No. 110,160
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relatively inexpensive, and are sold to members of the general
public rather than to sophisticated purchasers. As a result, the
purchase of these services would not be the subject of a great
deal of thought or analysis.
With these points in mind, we turn to a consideration of the
parties’ marks, keeping in mind as well that “when marks would
appear on virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely confusion
declines.” See Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
The marks are similar in appearance. Both marks have nine
letters. Of these nine letters, seven are identical. The small
changes in the third and sixth letters in applicant’s mark do not
serve to visually distinguish the marks in any meaningful way.
Additionally, when spoken, the three-syllable word
HOOLIGAN’S sounds quite similar to the three-syllable word
HOULIHAN’S. The first syllables of the marks begin with prefixes
that sound identical, “HOO-” and “HOU-.” The second syllables
are identical in every way, “-LI-.” In fact, both parties use
their respective first two syllables (“HOULI” and “HOOLI”) in
shortened forms for things from a cartoon character to menu
items. Granted, the final syllables of the marks (“-GAN” and “-
HAN”) have somewhat different pronunciations. However, we find
that in the context of the sound of the two marks in their
Opposition No. 110,160
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entireties, they certainly do not have radically different
pronunciations.
In its strongest argument for finding the marks to be
dissimilar, applicant contends that confusion is not likely
because “hooligan” is a dictionary word meaning “young ruffian”
or “hoodlum,” and thus prospective customers will perceive a
difference between applicant’s mark and the surname, HOULIHAN’S.
While the word “hooligan” does have a distinct dictionary
meaning, opposer points out that applicant has adopted the
possessive form of the word (HOOLIGAN’S). Hence, even on the
connotation prong of the trilogy, when presented in this form,
the mark is reminiscent of a surname and conveys a surname image
as does opposer’s name. Accordingly, we find that when
considered in their entireties, as they must be, the marks
HOULIHAN’S and HOOLIGAN’S are sufficiently similar in overall
commercial impression, that when used in connection with
identical services, consumers are likely to be confused as to
source. Furthermore, it is well recognized that purchasers are
not infallible in their recollection of marks and often retain
only a general or overall impression of the marks. See Grandpa
Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177
USPQ 573 (CCPA 1973); and Interco Inc. v. Acme Boot Company,
Inc., 181 USPQ 664 (TTAB 1974).
Opposer contends that its mark is well known and strong.
Indeed, the record reflects that the 106 restaurants trading
Opposition No. 110,160
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under the HOULIHAN’S name enjoyed gross revenues of $172 million
in the year 1998 alone. Accordingly, we find that opposer has
enjoyed success with the restaurant and bar services offered
under the HOULIHAN’S name. Further, the record is devoid of
evidence of any current third-party uses or registrations of
similar marks for restaurant and bar services. Although we are
willing to accept the claim that its mark is well known and
strong in the trade, based upon the current record, we do not
accord the status of “famous” to the HOULIHAN’S service mark.
Cf. Kenner Parker Toys v. Rose Art Industries, 963 F.2d 350, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992).
With regard to applicant’s assertion that neither party is
aware of any instances of actual confusion occurring as a result
of the contemporaneous use of the marks of applicant and opposer,
the record is fairly sparse as to the extent of promotion and use
of applicant’s service mark. Nonetheless, we note that
applicant’s use has been limited to the Southeastern and Mid-
Atlantic States, a region of the country where opposer has
located few restaurants to date. Thus, given minimal geographic
overlap, the opportunity for instances of confusion has been low.
More importantly, evidence of actual confusion is notoriously
difficult to obtain, particularly in the case of generally
inexpensive goods or services. See Helene Curtis Industries Inc.
v. Suave Shoe Corp., 13 USPQ2d 1618, 1623 (TTAB 1989). In any
event, the test under Section 2(d) of the Trademark Act is
Opposition No. 110,160
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likelihood of confusion rather than actual confusion. See Block
Drug Co. v. Den-Mat Inc., 17 USPQ2d 1315, 1318 (TTAB 1989).
Finally, if we are left with any doubt as to the likelihood
of confusion, such doubt must be resolved in favor of the prior
user and registrant, and against the newcomer, who has a duty to
select a mark which is not likely to cause confusion with
trademarks already in use. Burroughs-Wellcome Co. v. Warner-
Lambert Co., 203 USPQ 191 (TTAB 1979).
Decision: The opposition is sustained.