Lone Star Steakhouse & Saloon, Inc.v.Cedar Hills Ribs, Inc.

Trademark Trial and Appeal Board

Aug 6, 1999

No. 91094671 (T.T.A.B. Aug. 6, 1999)

Hearing: Paper No. 57
October 29, 1998 BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG, 6, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Lone Star Steakhouse & Saloon, Inc.
v.
Cedar Hills Ribs, Inc.
_____
Opposition No. 94,671
to application Serial No. 74/386,151
filed on April 29, 1993
_____
Jeffery A. Handelman of Brinks Hofer Gilson & Lione for Lone
Star Steakhouse & Saloon, Inc.
D. Randall King and Scott W. Johnston of Merchant, Gould,
Smith, Edell, Welter & Schmidt, P.A. for Cedar Hills Ribs,
Inc.
______
Before Quinn, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
An intent-to-use application was filed by Cedar Hills
Ribs, Inc. on April 29, 1993 to register the mark shown
below
Opposition No. 94671
2
for “restaurant services.” Applicant disclaimed the terms
“Grill and Bar.”
Lone Star Steakhouse & Saloon, Inc. has opposed
registration of the mark, alleging that opposer, directly
and through related companies, since prior to applicant’s
filing date, has provided restaurant services and sold
various items of clothing under the service marks,
trademarks and trade names LONE STAR and LONE STAR
STEAKHOUSE & SALOON, alone and in conjunction with other
words and designs, including the design of a five-point
star; that opposer is the owner of Registration No.
1,731,247 for the mark shown below
for “clothing, namely, men’s and women’s sport shirts, sweat
shirts, polo shirts and caps”1; that “the dominant portion
of Applicant’s mark--LONE SPUR--and the dominant portion of
Opposer’s marks--LONE STAR--are strikingly similar in
appearance, sound and commercial impression, and both
parties use their marks in association with restaurant
services”; and that applicant’s mark, if used in connection

1 Reg. No. 1,731,247, issued November 10, 1992, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed date of first use is October 1989.
Opposition No. 94671
3
with its restaurant services, would so resemble opposer’s
various previously used and registered marks, as to be
likely to cause confusion, mistake, or deception.
Applicant denied the salient allegations of the notice
of opposition.
The record consists of the pleadings; the affidavit
testimony2 (with exhibits) of Gerald T. Aaron, opposer’s
senior vice president, general counsel and secretary;
opposer’s notice of reliance on portions of the discovery
deposition (with exhibits) of David I. Segal, applicant’s
secretary and treasurer, and on status and title copies of
opposer’s pleaded registration and two additional
registrations; the affidavit testimony (with exhibits) of
David Segal,; applicant’s notice of reliance on portions of
the discovery depositions (with exhibits) of Gerald T. Aaron
and Dennis Lee Thompson, opposer’s senior vice president of
real estate and a director on the board, certain of
opposer’s answers to interrogatories, copies of portions of
opposer’s annual reports3, copies of several third-party
registrations, and copies of printed publications from the
dictionary and from the Nexis database; and the rebuttal

2 The parties filed a written stipulation that certain testimony
may be submitted in affidavit form pursuant to Trademark Rule
2.123(b).
3 Annual reports are not normally admissible by way of notice of
reliance (see TBMP §708, and cases cited therein). However,
inasmuch as opposer made no objection thereto (see TBMP §718.04),
these materials have been considered by the Board.
Opposition No. 94671
4
affidavit (with exhibits) of Gerald T. Aaron.
Both parties filed briefs on the case4, and an oral
hearing was held before this Board on October 29, 1998.
As noted above, opposer has filed status and title
copies of three registrations, including its pleaded
registration for the mark LONE STAR STEAKHOUSE & SALOON and
design5, as well as two other registrations (all three of
which opposer owns by assignment) for the mark shown below:

4 The portions of discovery depositions made of record herein
included a few objections by counsel. None of the objections
were preserved by raising same in the briefs on the case. See
TBMP §718.04.
5 The status and title copy of opposer’s Registration No.
1,731,247, submitted under a notice of reliance was prepared by
the Patent and Trademark Office in September 1996, and thus, does
not include information as to the Section 8 affidavit, which was
due on November 10, 1998. The records of this Office indicate
that opposer timely filed a combined Section 8 and 15 affidavit,
and that said combined affidavit was accepted by this Office.
When a registration owned by a party has been properly made of
record in an inter partes case, and there are changes in the
status of the registration between the time it was made of record
and the time the case is decided, the Board will take judicial
notice of, and rely upon, the current status of the registration
as shown by the records of the Patent and Trademark Office. See
TBMP §703.02(a), at page 700-10, and the cases cited therein.
The Board hereby takes judicial notice of the current status of
opposer’s pleaded registration.
Further, we note that the affidavit of Gerald T. Aaron refers to
opposer’s application Serial No. 74/248,299, which issued on
March 9, 1999 as Registration No. 2,229,771 for the same mark for
“restaurant services.” The claimed first use date is October
Opposition No. 94671
5
Reg. Nos. 1,155,907 and 1,318,227.6
In view of opposer’s ownership of a valid and
subsisting registration for the mark LONE STAR CAFE and
design for restaurant services, and nightclub services, the
issue of priority does not arise. See King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974); and Humana Inc. v. Humanomics Inc., 3 USPQ2d
1696 (TTAB 1987). Moreover, the evidence clearly shows that
opposer’s first use (October 1989) preceded the filing date
of applicant’s intent-to-use application (April 1993).
Thus, the sole issue before the Board is likelihood of
confusion. Based on the record before us in this case, we
find that confusion is not likely.
Opposer operates over 200 restaurants throughout the

1989, and there is a disclaimer of the words “steakhouse &
saloon.”
6 Reg. No. 1,155,907, issued May 26, 1981, Section 8 affidavit
accepted, Section 15 affidavit acknowledged, for “restaurant
services” and “nightclub services featuring musical
entertainment,” with claimed dates of first use of February 2,
1977. The term “cafe” is disclaimed.
Reg. No. 1,318,227, issued February 5, 1985, Section 8 affidavit
accepted, Section 15 affidavit acknowledged, for “adult clothing
for everyday wear, namely, men’s and women’s jackets,
sweatshirts, t-shirts, hats, ball caps, vests, boots, shoes,
socks, shirts, jeans and trousers” and “tie tacks and belts,”
with a claimed date of first use of February 1977.
Opposition No. 94671
6
United States, having opened the first one in North Carolina
in October 1989. Opposer’s business grew from approximately
8 restaurants in 1991 to over 200 in 1996. According to Mr.
Dennis Thompson, opposer’s senior vice president of real
estate and a director, approximately 3 of opposer’s
restaurants operate under the mark LONE STAR CAFE, and the
remainder operate under the mark LONE STAR STEAKHOUSE &
SALOON. Opposer has a medium-priced menu, offering a
variety of items such as steaks, chicken, fresh fish,
burgers, and kabobs. The atmosphere is that of a “Texas
roadhouse” featuring country western music, free buckets of
roasted peanuts with peanut shells on the floor, and the
like.
Opposer’s revenues have grown from gross sales of
$4,360,000 in 1990 to over $4,000,000,000 in 1996; and since
1990 opposer has spent over $2,645,000 on advertising and
promotional expenditures, generally advertising in
newspapers, magazines, and through direct mail, by
couponing, and on the radio and television. Further, the
record is clear that opposer has received media coverage in
local and national publications, in the nature of restaurant
reviews as well as business stories about the success of
opposer corporation.
Applicant corporation is located in New Hope,
Minnesota. Although the involved application is based on
Opposition No. 94671
7
intent to use, the record shows that applicant opened a
restaurant in Minnetonka, Minnesota under the mark LONE STAR
GRILL AND BAR in February 1991; and that upon receipt of a
cease and desist letter from opposer, applicant changed the
name to LONE SPUR GRILL AND BAR in February 1994.
Applicant’s restaurant is moderately priced, and is “tex-
mex,” offering a Southwestern cuisine such as fajitas,
tacos, quesadilla, enchilada, pork and beef ribs and beef
brisket, but offering only one steak item. Applicant
advertises in newspapers, magazines, on billboards, and by
direct mail couponing.
Our determination of likelihood of confusion must be
based on our analysis of all of the probative facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue. See In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In the present case, both opposer and applicant offer
“restaurant services.” Opposer’s additional “nightclub
services featuring musical entertainment” are closely
related to applicant’s restaurant services. Finally,
opposer’s clothing items are collateral goods presumably
sold in connection with the restaurant and nightclub
services. Thus, we find that applicant’s services and
opposer’s goods and services are identical or closely
related.
Opposition No. 94671
8
Inasmuch as neither applicant’s application nor
opposer’s registrations include any type of restriction as
to trade channels or purchasers, we must presume that the
involved services and goods are sold in all the normal
channels of trade to the normal classes of purchasers for
such services and goods. See Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); and In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994). We find that the channels of trade
and the classes of purchasers are the same.
It is our consideration of the similarity or
dissimilarity of the marks which is pivotal in this case.
See Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330,
21 USPQ2d 1142 (Fed. Cir. 1991). Opposer contends that the
dominant portions of the respective marks are LONE STAR
(opposer) and LONE SPUR (applicant); that the dominant
features are similar in sound and appearance, and both
project a “Texas” or “cowboy” theme; and that applicant’s
use of a star in the design portion of its mark reinforces
“the conceptual similarities” in the marks. Applicant
contends that its mark is completely different in sound,
appearance and commercial impression from either and both of
opposer’s involved marks. Specifically, applicant argues
that the word “LONE” is the only word the respective marks
have in common; that each mark has a wholly distinct design;
Opposition No. 94671
9
that opposer’s mark “LONE STAR” connotes the State of Texas,
and opposer’s design mark featuring the five-pointed star
resembling a badge conveys an “Old West” image, whereas
applicant’s mark “LONE SPUR” is suggestive of a Southwestern
image.
It is well settled that marks must be considered in
their entireties. As the Court of Appeals for the Federal
Circuit stated in the case of In re Electrolyte Laboratories
Inc., 913 F.2d 930, 16 USPQ2d 1239 (Fed. Cir. 1990), “There
is no general rule as to whether letters or design will
dominate in composite marks; nor is the dominance of letters
or design dispositive of the issue. No element of a mark is
ignored simply because it is less dominant, or would not
have trademark significance if used alone. See Spice
Island, Inc. v. Frank Tea & Spice Co., 505 F.2d 1293, 184
USPQ 35 (CCPA 1974) (improper to ignore portion of composite
mark.).” Subsequently, in the case of In re Hearst Corp.,
982 F.2d 493, 25 USPQ2d 1238 (Fed. Cir. 1992), the Court
stated “Marks tend to be perceived in their entireties, and
all components thereof must be given appropriate weight.
See Opryland USA Inc. v. Great American Music Show, Inc.,
970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).”
Thus, we consider applicant’s mark and opposer’s marks
in their entireties. When so viewed, we find that the
involved marks are quite different in appearance,
Opposition No. 94671
10
connotation, and overall commercial impressions. See Hard
Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB
1998); and General Mills Inc. v. Health Valley Foods, 24
USPQ2d 1270 (TTAB 1992).
The words “LONE STAR” have a distinct meaning and a
clear association with the state of Texas. Applicant
submitted Webster’s New World Dictionary which has an entry
for “Lone Star State” as “nickname of Texas”; and several
Nexis stories which appeared in newspapers or magazines
referring to both “Texas” and to “Lone Star” or “Lone Star
state.” This “Texas” connection or suggestion would be
obvious to the purchasing public.
Applicant’s word mark, on the other hand is “LONE SPUR”
which has a suggestion of the West or the Southwest, but not
specifically, Texas. The only element shared in common
between applicant’s and opposer’s marks is the term “LONE.”
Opposer’s argument that LONE STAR and LONE SPUR both
convey “cowboy” or “Old West” connotations ignores the very
clear and specific meaning of LONE STAR as the nickname of
Texas and the very distinct and separate design features of
the involved marks.
The design elements of the respective marks are also
significant factors in the overall commercial impressions of
the marks. The separate and stylized lettering and the
separate and stylized design features of opposer’s marks are
Opposition No. 94671
11
not similar to the stylized lettering and design of
applicant’s applied-for mark. One of opposer’s marks
includes Western stenciled-type lettering with a five-
pointed star which resembles a sheriff’s badge and a line
drawn between the words “steakhouse” and “saloon.”
Opposer’s LONE STAR CAFE mark appears in more art-deco
script with the short end of the “L” in the word “lone”
underlining the words and curving off to form a circle which
encloses therein a design of a five-pointed star (not
resembling a sheriff’s badge) and the word “cafe.”
Applicant’s mark is obviously a line drawing the outline of
a mountain range with a five-pointed star in the sky over
the mountains.7 The mere existence of a star in applicant’s
mark does not support a finding of likelihood of confusion
between these marks.8 And the stylized lettering in
applicant’s mark is also distinct from either of opposer’s
styles of lettering. The words “CAFE” and “STEAKHOUSE &
SALOON” in opposer’s marks and the words “GRILL AND BAR” in

7 One of applicant’s advertisements (submitted by applicant)
shows the star directly over the “R” in the word SPUR, rather
than in the sky over the mountains. Although we find this use to
be curious, it is not the mark as applied-for by applicant, which
is what we must consider.
8 Opposer’s argument that “a spur is star-like in shape and
carries a strong association with Texas, the Lone Star State.”
(Opposer’s brief, p. 12) is not proven. To the contrary, opposer
submitted a dictionary definition of “spur” which clearly states
that a spur includes a “pointed or rowel-tipped projection.” A
part of a spur is shaped like a wheel or a star, but a spur is
not shaped like a star. Opposer’s two Nexis stories which
include both the words “Texas” and “spur” are insufficient
Opposition No. 94671
12
applicant’s mark are generic or highly descriptive words for
restaurant services, but are nonetheless another difference
when considering the marks in their entireties.
Applicant’s mark is different in appearance, meaning,
and commercial impression or image from the marks of
opposer.
The next du Pont factor we look at in this case is the
fame of opposer’s marks. Opposer contends that its marks
“have been extensively used and promoted” and “are strong
marks entitled to broad protection.” (Opposer’s brief, p.
9).
The record certainly establishes that opposer has
achieved success in expanding its business, as evidenced by
the various articles about opposer as a business and by the
large increase in the number of restaurants and in sales
revenues. Opposer’s LONE STAR STEAKHOUSE & SALOON mark is
of some renown, as evidenced by the numerous reviews of its
restaurants, and other stories regarding opposer’s
restaurants, and the growth in the number of opposer’s
restaurants and opposer’s sales revenues.9 However, there
is no evidence of consumer recognition of opposer’s marks,

evidence to prove a strong connection of spurs with Texas
specifically rather than with the West in general.
9 We note that opposer’s sales revenues and advertising figures
are not broken down by category of opposer’s LONE STAR CAFE mark
and opposer’s LONE STAR STEAKHOUSE & SALOON mark. Based on the
testimony of Dennis Thompson, we presume the vast majority of the
sales and advertising figures relate to the LONE STAR STEAKHOUSE
Opposition No. 94671
13
which would show that opposer’s mark is famous and entitled
to a broad scope of protection. See Fossil Inc. v. Fossil
Group, 49 USPQ2d 1451, 1457 (TTAB 1998). Cf. Kenner Parker
Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992); and Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992). Opposer’s marks, LONE STAR
STEAKHOUSE & SALOON and design and LONE STAR CAFE and design
may be of some renown, but there is not sufficient evidence
to establish that these marks are famous in the
understanding of the purchasing public.
Related to both the scope of protection afforded to
opposer’s marks, and to the question of the number and
nature of similar marks in use by others for similar goods
or services, applicant contends that opposer’s marks are
weak because the words “LONE STAR” are “highly descriptive”
of opposer’s services, and because the words “LONE STAR” are
in widespread use by third-parties. (Applicant’s brief, p.
13). In support of applicant’s assertion that opposer’s
mark, LONE STAR, is descriptive applicant offered the
dictionary definition of “Lone Star” as the nickname of
Texas; and applicant’s discovery deposition of Dennis
Thompson, opposer’s vice president of real estate and a
director, wherein when asked by applicant’s attorney “Is

& SALOON mark, and not to the LONE STAR CAFE mark. In any event,
Opposition No. 94671
14
Lone Star descriptive of the State of Texas?,” Mr. Thompson
answered “I believe it is.”
Applicant also referenced a decision of the U.S. Court
of Appeals for the Eleventh Circuit in the case of Lone Star
Steakhouse & Saloon Inc. v. Longhorn Steaks Inc., 106 F.3d
355, 41 USPQ2d 1896 (11th Cir. 1997), modified on rehearing,
122 F.3d 1379, 44 USPQ2d 1217 (11th Cir. 1997).
Opposer contends that LONE STAR is suggestive and
inherently distinctive as established by the court in the
case of Lone Star Steakhouse & Saloon Inc. v. Alpha of
Virginia, Inc., 43 F.3d 922, 33 USPQ2d 1481 (4th Cir. 1995),
wherein that court stated that “the ‘Lone Star’ mark as used
by Lone Star Steakhouse is suggestive.” We are aware that
the Fourth Circuit case involved a defendant restaurant in
Virginia using the mark LONE STAR GRILL (and defendant
opened a second such restaurant in Baltimore, Maryland after
the lawsuit was commenced); and that in the Eleventh Circuit
case the defendant operated two restaurants in Atlanta,
Georgia under the mark LONE STAR STEAKS. The Eleventh
Circuit Court commented as follows on the previous Fourth
Circuit case:
“In the case before us, the district court reached a
contrary conclusion on somewhat similar facts.” ....and
“With great respect for the Fourth Circuit, we believe
the district court correctly applied the controlling
principles of law.” 41 USPQ2d at 1902.

this fact is not determinative of the issue before us.
Opposition No. 94671
15
We note these two Circuit Court cases, but our finding
on the issue of likelihood of confusion must be made
independently and in relation to the marks and the parties
before us.
Much of applicant’s evidence of specific third-party
uses of the term LONE STAR (e.g., LONE STAR STEAKS in
Georgia, LONE STAR GRILL in Virginia, LONE STAR OYSTER BAR
YACHT CLUB in Texas, LONE STAR OYSTER BAR in Florida, LONE
STAR RESTAURANT in Green Bay, Wisconsin, LONE STAR COFFEE in
Michigan) is countered by opposer’s evidence that these uses
have been pursued by opposer, several resulting in
litigation and/or settlement agreements.
Applicant also properly made of record search reports
produced by opposer in response to applicant’s
interrogatories, including, for example an electronic Dun &
Bradstreet Yellow Pages report of its search of “LONE STAR
STEAKS” and “TEXAS ROSE STEAKHOUSE,” dated January 1991, and
listing numerous pages of entities which use the term LONE
STAR in relation to restaurants, eateries and bars. These
reports are accepted under Fed. R. Evid. 803(17) as
exceptions to the hearsay rule. See In re Broadway Chicken
Inc., 38 USPQ2d 1559, 1565 (TTAB 1996). However, while
these materials are not excluded by the hearsay rule, such
lists do not prove use of the asserted trademarks or trade
Opposition No. 94671
16
names, or the public awareness thereof. Similarly,
applicant’s copies of third-party registrations do not prove
commercial use or that the public is familiar with the
marks.
However, opposer’s senior vice president, general
counsel and secretary, Gerald Aaron, testified that “there
have been people in the state of Texas using Lone Star that
I have not written to.” (Dep. pp. 31-32). Also, opposer
acknowledged an awareness of LONE STAR used on beer, and
LONE STAR used on bakery products. He did not testify that
any action had been taken with regard to any of these
entities.
Excluding the examples of uses which opposer has shown
are the subject of disputes and/or agreements with opposer,
and giving the search reports and third-party registrations
very little probative value, we find there is insufficient
evidence to prove that there are significant third-party
uses of the term LONE STAR on restaurants or related goods
and services.
The absence of any actual confusion is not a crucial
factor to our decision. The absence of confusion is not
surprising given the differences between applicant’s mark
and opposer’s marks, the relatively short duration of use by
applicant of its mark, and the absence of use by opposer in
the state of Minnesota.
Opposition No. 94671
17
The Trademark Act does not speak in terms of remote
possibilities of confusion, but rather, the likelihood of
such confusion occurring in the marketplace. Our primary
reviewing court has stated that more than a mere possibility
of confusion must be shown; instead, there must be
demonstrated a probability or likelihood of confusion. See
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
quoting from Witco Chemical Company, Inc. v. Whitfield
Chemical Company, Inc., 418 F.2d 1403, 164 USPQ 43 (CCPA
1969) as follows: “We are not concerned with mere
theoretical possibilities of confusion, deception, or
mistake or with de minimis situations but with the
practicalities of the commercial world, with which the
trademark laws deal." See also, Triumph Machinery Company
v. Kentmaster Manufacturing Company Inc., 1 USPQ2d 1826
(TTAB 1987).
Notwithstanding the identity or relatedness of the
services and goods, under the du Pont test, we conclude that
confusion is unlikely in this case.
Opposition No. 94671
18
Decision: The opposition is dismissed.
T. J. Quinn
C. E. Walters
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal