K Mack Bros. LLC

Trademark Trial and Appeal BoardSep 9, 2016

No. 86180041 (T.T.A.B. Sep. 9, 2016)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: September 9, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re K Mack Bros. LLC _____ Serial No. 86180041 _____ Derek Andersen of Pia Anderson Dorius Reynard Moss for K Mack Bros. LLC. Diane Collopy, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop, Managing Attorney). _____ Before Quinn, Masiello, and Hightower, Administrative Trademark Judges. Opinion by Masiello, Administrative Trademark Judge: K Mack Bros. LLC (“Applicant”), dba Mo’ Bettahs, has filed an application1 to register on the Principal Register the mark MO’ BETTAHS in standard characters for the following services: Restaurant services featuring Hawaiian-style food and steak plates; Restaurant services, including sit-down service of food and take-out restaurant services; Restaurant services, namely, providing of food and 1 Application Serial No. 86180041, filed January 30, 2014 under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), on the basis of Applicant’s use of the mark in commerce, stating December 6, 2013 as the date of first use and first use in commerce. Serial No. 86180041 2 beverages for consumption on and off the premises, in International Class 43. The Trademark Examining Attorney2 refused registration under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used in connection with Applicant’s services, so resembles the registered mark EAT MO’ BETTAH in standard characters as to be likely to cause confusion, or to cause mistake, or to deceive. The cited mark is registered for: Restaurant services; Take-out restaurant services, in International Class 43.3 When the refusal was made final, Applicant appealed and filed a request for reconsideration, which the Examining Attorney denied.4 Applicant and the Examining Attorney have filed briefs, and Applicant has filed a supplemental brief and a reply brief. Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). 2 The case was originally assigned to Examining Attorney Cynthia Rinaldi. After Applicant filed its brief, the case was reassigned to the current Examining Attorney. 3 Reg. No. 3816273, issued July 13, 2010. Section 8 affidavit accepted; Section 15 affidavit acknowledged. 4 After Applicant filed its brief, the new Examining Attorney requested that the application be remanded to her in order to supplement the record. 9 TTABVUE. The Board granted that request. 10 TTABVUE. Serial No. 86180041 3 1. The services; trade channels; customers. We will first consider the similarity or dissimilarity of the services as identified in the application and the cited registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The services are identical to the extent that both the application and the cited registration cover “take-out restaurant services”; and they are otherwise legally identical because Registrant’s identified “restaurant services” include within their scope the remainder of Applicant’s identified services, which are more specifically identified restaurant services. We must presume that Registrant’s services encompass all services of the type identified. Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973); see also In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006). Accordingly, the du Pont factor regarding the similarity or dissimilarity of the services heavily favors a finding of likelihood of confusion. As Applicant’s services are legally identical to those of Registrant, we must presume that they move in the same channels of trade and are offered to the same classes of consumers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB Serial No. 86180041 4 2011); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). Accordingly, the du Pont factors relating to the similarity or dissimilarity of trade channels and classes of customers favor a finding of likelihood of confusion. 2. The marks. We now turn to a consideration of the similarity or dissimilarity of the marks at issue in their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). While we consider each mark in its entirety, 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 that our ultimate conclusion rests upon a comparison of the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). The two marks are similar in appearance and sound by virtue of the close similarity between Applicant’s term MO’ BETTAHS and Registrant’s term MO’ BETTAH. The term EAT in Registrant’s mark and the final letter S in Applicant’s mark are points of difference in appearance and sound. With respect to the meaning of the two marks, the Examining Attorney has shown that “mo’ bettah” is slang for “more better,”5 and Applicant has conceded this interpretation.6 Applicant does not contend that the final letter S in its mark alters this interpretation of “mo’ bettah,” but argues: 5 Definitions from , Office Action of March 21, 2016 at 4, 13. 6 Applicant’s supplemental brief at 3 n.1, 13 TTABVUE 5. Serial No. 86180041 5 Applicant’s Mark … will be understood by a consumer to mean just “more better.” However, “more better” in this context refers generally to a state of mind or being that is “more better” …”7 By contrast, Applicant contends the following with respect to the meaning of Registrant’s mark EAT MO’ BETTAH: [T]he term “eat” is used as a command in the Registered Mark [which] will be understood by consumers as a command to “eat mo’ bettah.”8 Applicant emphasizes that its own mark lacks any such command to eat.9 The Examining Attorney responds with the following argument: As the direct object of the phrase EAT MO BETTAH, the term MO BETTAH … answers the question “what?” posed by the verb EAT. … Thus, the implication of the command is that the consumer should EAT at an establishment identified as MO BETTAH.10 Applicant argues that EAT is the dominant portion of the cited mark because it is the first word in the mark, differentiating it from Applicant’s mark.11 The Examining Attorney contends that the dominant portion of Registrant’s mark is MO’ BETTAH; and that “the term EAT is unlikely to have great source-identifying significance” because it is “highly suggestive in the field of restaurant services” and “is frequently used in connection with restaurant services.”12 The Examining 7 Id. 8 Applicant’s reply brief at 2, 16 TTABVUE 4 (emphasis in original). 9 Applicant’s brief at 3-4, 7 TTABVUE 6-7. 10 Examining Attorney’s brief, 15 TTABVUE 9. 11 Applicant’s brief at 3, 7 TTABVUE 6. 12 Examining Attorney’s brief, 15 TTABVUE 9. Serial No. 86180041 6 Attorney has submitted evidence from the internet showing use of the term EAT by four third-party restaurants in the following phrases: EAT MOR CHIKIN EAT FRESH. EAT FAST. EAT VIET. EAT-A-PITA EAT MEXICAN FOOD13 The hortatory or “command” function of the word EAT in Registrant’s mark clearly affects the meaning of the mark as a whole. However, in the context of restaurant services, the exhortation to “eat” is little different from the exhortation to “buy” in the context of goods. Because EAT has a well-recognized descriptive or suggestive meaning in the field of restaurants, it is relatively weak as a source- indicating component of the mark, see Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015), and does not substantially alter the commercial impression of Registrant’s mark. Nor do we find the final letter S in Applicant’s mark, which might be understood as creating a possessive or plural form of the mark, sufficient to distinguish the marks. Trademarks must be considered in light of the fallibility of memory, In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014), and customers might easily overlook or forget Applicant’s final letter S. In addition, it is well-established that the singular and plural forms of the same term do not generally create such different commercial impressions that confusion would be avoided. See, e.g., In re Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227 (CCPA 1969); In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012). 13 Office Action of March 21, 2016 at 6-10. Serial No. 86180041 7 Overall, we find that Applicant’s mark MO’ BETTAHS is highly similar in commercial impression to Registrant’s mark EAT MO’ BETTAH. Accordingly, the du Pont factor of the similarity or dissimilarity of the marks weighs in favor of a finding of likelihood of confusion. 3. Absence of actual confusion. Applicant contends that its mark and the cited registered mark have been used “concurrently for multiple years” without actual confusion.14 The record of this case contains no information regarding the extent to which Applicant has used and promoted its mark, or of the extent of use of Registrant’s mark. Thus, there is no basis upon which to determine whether there have been meaningful opportunities for actual confusion to occur in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Moreover, the uncorroborated statement that there are no known instances of actual confusion by Applicant’s counsel is of little or no evidentiary value. In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). Accordingly, the du Pont factor of the length of time during and conditions under which there has been contemporaneous use without evidence of actual confusion is considered neutral. 4. Conclusion. We have considered all of the arguments and evidence of record, including those not specifically discussed herein, and all relevant du Pont factors. In view of the 14 Applicant’s brief at 4, 7 TTABVUE 7. Serial No. 86180041 8 similarities between the marks, the identity of the services, and the presumption that the goods will travel through the same trade channels to the same classes of customers, we find that Applicant’s mark so resembles the cited registered mark as to be likely to cause confusion, mistake or deception as to the source of Applicant’s services. Decision: The refusal to register is affirmed.