International Grill, Inc. dba Massis Kabob

Trademark Trial and Appeal Board

Dec 2, 2016

No. 86452464 (T.T.A.B. Dec. 2, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: December 2, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re International Grill, Inc.
dba Massis Kabob
_____

Serial No. 86452464
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Mark R. Kendrick of Kendrick Intellectual Property Law,
for International Grill, Inc.
Tamara Frazier, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
_____

Before Kuczma, Goodman, and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
International Grill, Inc., doing business as Massis Kabob (“Applicant”) seeks
registration on the Principal Register of the following word and design mark:

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(with “KABOB,” “ORIGINAL,” and “SINCE 1976” disclaimed) for “restaurant and
catering services, restaurant services featuring middle-eastern cuisine” in
International Class 43.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it
so resembles the registered mark THE ULTIMATE KABOBERY (in standard
characters, with “ULTIMATE” disclaimed) for “restaurant services” in International
Class 43, as to be likely to cause confusion or mistake, or to deceive.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We reverse the refusal to register.
I. Analysis
We base our determination of likelihood of confusion under Section 2(d) on an
analysis of all of the probative facts in evidence that are relevant to the factors
enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Ind., Inc., __U.S.
__, 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Varying weights may be

1 Application Serial No. 86452464 was filed on November 12, 2014 based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. 15 U.S.C. § 1051(b).

2 Registration No. 4163655 issued on the Principal Register on June 26, 2012. The Examining
Attorney’s final refusal was also predicated on Registration Nos. 3767160 and 3767164, both
of which were cancelled on November 4, 2016. We give no consideration to the cancelled
registrations.
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assigned to each DuPont factor depending on the evidence presented. Citigroup Inc.
v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011). These evidentiary factors “may play more or less weighty roles in any
particular determination.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688
(Fed. Cir. 1993).
We have considered each DuPont factor that is relevant, and have treated any
other factors as neutral. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378,
78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc.,
114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for
which we have evidence, we focus our analysis on those factors we find to be
relevant.”). The relevant DuPont factors in this proceeding are discussed below.
A. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we compare Applicant’s and Registrant’s marks in
their entireties, taking into account their appearance, sound, connotation and
commercial impression. DuPont, 177 USPQ at 567; Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
The Examining Attorney’s core position is that “the dominant feature of the
Registrant’s mark is “KABOBERY”, and the parties’ marks share this same identical
unique and coined term.”3

3 Examining Attorney’s brief, 7 TTABVUE 6.
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Applicant argues that the Examining Attorney has provided no support for the
assertion that KABOBERY is the dominant feature of Registrant’s mark, or that
potential customers are likely to be confused as to the source of services.4 Analogizing
to Ferro Corp. v. Ronco Labs., Inc., 356 F.2d 122, 148 USPQ 497 (CCPA 1966) and
similar cases, Applicant contends that despite having the single word “KABOBERY”
in common, its word and design mark, taken in its entirety, is readily distinguishable
from Registrant’s.5
In Ferro, opposer Ferro Corporation, which owned nine federal registrations for
marks containing the prefix FERRO or a variation thereof, opposed Ronco’s
application to register the word and design mark
for rust-preventative oils. The Board found that the applicant’s mark
was “highly suggestive” of the use of its product, but nonetheless registrable: “it is
apparent that the only feature which applicant’s mark has in common with opposer’s
marks and trade name is the term “FERRO” * * * it is concluded that applicant’s
“FERRO-GARD” and design sufficiently differs from each of opposer’s mark [sic] and
its trade name as to avoid any likelihood of confusion or mistake.” Id. at 498-99. When
Ferro appealed the Board’s ruling to the Court of Customs and Patent Appeals,
applicant, Ronco, argued that the common element, FERRO, was not the dominant
component, and that the term GARD and design sufficed to distinguish its mark:

4 Applicant’s brief p. 14, 7 TTABVUE 15, Applicant’s reply brief p. 2, 10 TTABVUE 3.
5 Applicant’s brief pp. 12-13, 7 TTABVUE 13-14.
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Appellee [Ronco] argues that when the complete mark sought to be
registered is compared to appellant’s marks there is little resemblance
between them. Appellee argues that considering the presence of the
animated bolt carrying a flag on which are the letters “VCI”; and that
the word “gard” is in larger and bolder lower case letters than the term
“Ferro” which is in smaller letters and above the term “gard,” there is
no likelihood of confusion. In short, appellee argues that the term “gard”
and the design dominate the mark sought to be registered and thus the
likelihood of confusion is not present.

Id. at 499.
The Court ruled in favor of Ronco: “Considering the many dissimilarities between
appellant’s marks and the mark sought to be registered, we agree with appellee’s
argument and the board’s holding. It is not believed that appellant is, by virtue of
prior registrations, entitled to the sole possession of the term ‘ferro.’” Id.
Here, as in Ferro, the marks’ common element, “KABOBERY”, has a highly
suggestive connotation. A “kabob” (sometimes spelled “kebab”) is “a small piece of
marinated meat used as for shish kebab,” that is, “pieces of meat or vegetables grilled
on a long thin stick, or slices of grilled meat served in pita bread.”6 The suffix “-ery”
connotes, in this context, a “place of doing, keeping, producing, or selling (the thing
specified) .”7 Adding the suffix “-ERY” to the generic or
descriptive “KABOB” yields the highly suggestive term “KABOBERY”: a place for

6 Collins American English Dictionary, CollinsDictionary.com, March 9, 2015 Office Action
pp. 18-19.
7 Merriam-Webster Dictionary, Merriam-Webster.com. The Board may take judicial
notice of definitions from dictionaries, including online dictionaries that exist in printed
format or have regular fixed editions. E.g., In re Cordua Rests. LP, 110 USPQ2d 1227, 1229
n.4 (TTAB 2014) aff’d 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016). The Board also may
notice dictionary definitions sua sponte, as we do with respect to this definition. See
University 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).

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producing or selling kabobs.
Where, as here, the common element of marks is highly suggestive and weak,
other matter in the marks may suffice to differentiate them and avoid likely
confusion. E.g., General Mills Inc. v. Fage Dairy Proc. Ind. SA, 100 USPQ2d 1584,
1602 (TTAB 2011) judgment set aside, opinion not vacated 110 USPQ2d 1679 (TTAB
2014) citing In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed.
Cir. 1986); Embarcadero Techs., Inc. v. Rstudio Inc., 105 USPQ2d 1825, 1837 (TTAB
2013) (“The common element STUDIO is highly suggestive and weak and commonly
adopted in the field of software. Consumers, viewing the marks in their entireties,
will therefore focus on the initial letters, R and ER, and when viewing these marks
on or in connection with the respective types of software and services, they will be
able to distinguish the marks.”); Top Tobacco LP v. North Atl. Op. Co., Inc., 101
USPQ2d 1163, 1174 (TTAB 2011) (“[C]onsumers encountering this mark [ZIG ZAG
CLASSIC AMERICAN BLEND] will focus on the ZIG ZAG element and relegate the
wording CLASSIC AMERICAN BLEND as highly suggestive of the tobacco goods.”);
Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005)
(NORTON MCNAUGHTON ESSENTIALS for ladies’ sportswear not confusingly
similar to ESSENTIALS for women’s clothing because ESSENTIALS is a highly
suggestive term for articles of clothing) cited in Coach/Braunsdorf Affinity, Inc. v. 12
Interactive, LLC, 110 USPQ2d 1458, 1478 (TTAB 2014); In re Huncke & Jocheim, 185
USPQ 188, 189 (TTAB 1975) (“…the addition of other matter to a highly suggestive
or descriptive designation, whether such matter be equally suggestive or even
descriptive, or possibly nothing more than a variant of the term, may be sufficient to
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distinguish between them so as to avoid confusion in trade.”). See generally 4
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:48 (4th ed. 2016).
The additional word and design elements in Applicant’s mark suffice
to differentiate it. MASSIS is clearly its dominant element, set forth in large stylized
white lettering thrown into high relief against a black background. The words THE
ORIGINAL KABOBERY and SINCE 1976 are relegated to smaller supporting roles,
providing supplemental information that appears in much smaller, lower-case letters
in the surrounding reddish-brown circle and the white area it encloses. We do not
agree with Applicant’s contention that the design element predominates over the
literal elements in its mark.8 Unlike In re Covalinski, 113 USPQ2d 1166 (TTAB 2014)
and like decisions where marks were dominated by their design features, the design
elements here serve as a backdrop, emphasizing the literal elements, which should
be given greater weight. See generally In re Viterra Inc., 671 F.3d 1358, 1362, 101
USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (in composite marks, words normally given
greater weight) cited in Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016). And
the literal element they emphasize most is MASSIS.
In both connotation and appearance, then, Applicant’s mark can be differentiated
from Registrant’s. In terms of sound, Applicant’s mark consists of seven words,
“MASSIS KABOB THE ORIGINAL KABOBERY SINCE 1976,” which, despite some
overlap, would be pronounced differently from Registrant’s mark. See Rocket

8 Applicant’s brief p. 9 et seq., 7 TTABVUE 10.
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Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1075 (TTAB 2011) (ZU
ELEMENT sounds different from ELEMENT). Registrant’s mark consists of three
words: “THE ULTIMATE KABOBERY.” Of those three words, the first, “THE” is not
distinctive. In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (“The addition
of the word ‘The’ at the beginning of the registered mark does not have any trademark
significance.”). And the second, ULTIMATE, is rightly disclaimed as a merely
descriptive laudatory word. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001) (…“substantial evidence supports the Board’s finding that
consumers will immediately regard THE ULTIMATE BIKE RACK as a laudatory
descriptive phrase that touts the superiority of Nett Designs’ bike racks.”).
The word ULTIMATE does not impart the commercial impression that
Registrant’s KABOBERY is unique; rather, it touts the superiority of Registrant’s
kabobery over other, lesser kaboberies. Id. All in all, as in Ferro, if the marks are
considered in their entireties, as they must, see Stone Lion, 110 USPQ2d at 1161, the
different words and the design serve to distinguish them in appearance, sound,
connotation and commercial impression.
B. Similarity of the Services
The second DuPont factor addresses “[t]he similarity or dissimilarity and nature
of the … services as described in an application or registration….” DuPont, 177 USPQ
at 567.
Registrant’s “restaurant services” are clearly identical to Applicant’s identified
restaurant services, and encompass Applicant’s more narrowly defined “restaurant
services featuring middle-eastern cuisine.” See In re Midwest Gaming &
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Entertainment LLC, 106 USPQ2d 1163, 1165 (TTAB 2013) (registrant’s identified
‘restaurant and bar services’ encompass and are legally identical to Applicant’s
identified ‘bar services located in a casino’). The Examining Attorney has also
adduced evidence in the form of use-based third-party registrations and uses in
commerce establishing that a single entity may offer both catering services and
restaurant services under a single mark.9 See generally In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988) aff’d per curiam, 864 F.2d 149 (Fed. Cir.1988);
In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009).
Applicant does not dispute that its identified services are similar or related to
Registrant’s services. The second DuPont factor therefore weighs in favor of finding
a likelihood of confusion.
II. Balancing the Factors
We have considered all of the arguments and evidence of record, and all relevant
DuPont factors. We are mindful that under the second DuPont factor, the services are
the same or related, so the degree of similarity between the marks necessary to find
likelihood of confusion need not be as great as where there is a recognizable disparity
between the services. Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Nevertheless, under the first DuPont
factor, the dissimilarities in the subject marks in terms of appearance, sound,
connotation, and commercial impression outweigh their similarity. All other DuPont

9 See, e.g., Oct. 6, 2015 Office Action pp. 6-20; May 4, 2016 Office Action, pp. 3-46.

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factors are treated as neutral. On balance, we find that the applied-for mark is not
likely to cause confusion with the registered mark, THE ULTIMATE KABOBERY.
Decision: The refusal to register Applicant’s mark is reversed.