Qreitem

Trademark Trial and Appeal Board

Jun 9, 1999

No. 75089246 (T.T.A.B. Jun. 9, 1999)

Paper No. 17
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 9, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Qreitem
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Serial No. 75/089,246
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James C. Wray, Esq. for Samir Qreitem.
Montia O. Givens, Trademark Examining Attorney, Law Office 101
(Chris Wells, Acting Managing Attorney).
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Before Simms, Hanak and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Samir Qreitem has filed an application to register the
mark "BACKYARD STEAKHOUSE" as a service mark for "restaurant
services".1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to his services, so resembles the
mark "BACK YARD BURGERS," which is registered for "restaurant

1 Ser. No. 75/089,246, filed on April 16, 1996, which alleges a bona
fide intention to use such mark in commerce. The word "STEAKHOUSE" is
disclaimed.
Ser. No. 75/089,246
2
services,"2 as to be likely to cause confusion, mistake or
deception.
Applicant has appealed. Briefs have been filed,3 but
an oral hearing was not held.4 We affirm the refusal to
register.
Turning first to consideration of the respective
services, we note that as identified in the application and cited
registration, the services are identical in all respects.
Although applicant urges that, in light of presence of the words
"STEAKHOUSE" and "BURGERS" in the marks at issue, his restaurant
services are "typically [rendered in] a large building [and are]
associated with up-scale, waiter-services dining," while
registrant’s restaurant services are "typically associated with a
meat patty product [which is] served in small fast-food type
carry out restaurants," it is well settled that the issue of
likelihood of confusion must be determined on the basis of the
services as they are set forth in the involved application and

2 Reg. No. 1,679,702, issued on March 17, 1992, which sets forth a date
of first use anywhere of November 15, 1986 and a date of first use in
commerce of March 21, 1987; combined affidavit §§8 and 15.
3 Applicant, after filing a reply brief which essentially reiterates
the arguments set forth in his initial brief, submitted a supplemental
reply brief which is accompanied by evidence of an asserted "plethora
of marks using BACKYARD and STEAK" which applicant states "was
obtained by a simple search of the Internet's World Wide Web." Such
evidence, however, is manifestly untimely under Trademark Rule
2.142(d) and applicant has made no showing that the evidence, which
shows only a few examples of third-party uses of marks incorporating
the term "BACKYARD" in connection with restaurant services, is newly
discovered or otherwise was previously unobtainable. Accordingly, no
further consideration will be given thereto.
4 Although an oral hearing was scheduled at applicant's request,
applicant subsequently submitted a communication stating that he would
not attend the oral hearing.
Ser. No. 75/089,246
3
cited registration. See, e.g., CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy Corp.,
697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and Paula
Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901,
177 USPQ 76, 77 (CCPA 1973). Furthermore, the record contains
evidence, in the form of several restaurant menus obtained from
the Internet, showing that steak houses5 typically offer burgers
as entrees in addition to steaks. Thus, it is plain that such
restaurants would include burgers as a menu item and that, in
view of this overlap, applicant’s steak house restaurant services
must be considered to be closely related to the type of
restaurant services provided by registrant. Clearly, if offered
under the same or similar marks, confusion as to the source or
sponsorship of such services would be likely to occur.
Turning, therefore, to consideration of the marks at
issue herein, applicant argues that, when considered in their
entireties, the respective marks are not only different in sound
and appearance, but the connotation and overall commercial
impression each mark conveys are dissimilar. In particular,
applicant contends that his mark "has an incongruous meaning--a
big building--a steakhouse in a back yard," while registrant’s
mark is not incongruous in that it signifies burgers "just like
the ones that come from your back yard." Applicant accordingly
maintains that inasmuch as "BACKYARD STEAKHOUSE does not look
like or sound like BACK YARD BURGERS" and has a "completely

5 According to the record, Webster’s II New Riverside University
Dictionary defines "steak house" as "[a] restaurant specializing in
beefsteak dishes."
Ser. No. 75/089,246
4
different" meaning as "a building in a backyard, rather than a
patty grilled in a back yard," confusion as to origin or
affiliation is not likely to occur.
We agree with the Examining Attorney, however, that
such confusion is likely since the dominant and distinguishing
portion of each mark is the term "BACKYARD" or "BACK YARD".6
While applicant is correct that the respective marks must be
compared in their entireties, it is nevertheless the case that,
in articulating reasons for reaching a conclusion on the issue of
likelihood of confusion, "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] the ultimate
conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.3d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). For instance, "that a particular
feature is descriptive or generic with respect to the involved
goods or services is one commonly accepted rationale for giving
less weight to a portion of a mark ...." 224 USPQ at 751.
Here, as confirmed by applicant’s disclaimer thereof,
the word "STEAKHOUSE" in his "BACKYARD STEAKHOUSE" mark is a
generic term for applicant’s restaurant services. Similarly, it
is obvious that the word "BURGERS" in registrant’s "BACK YARD
BURGERS" mark is at least highly suggestive, if not highly
descriptive, of registrant's restaurant services. It is thus the

6 As shown by the excerpt made of record by the Examining Attorney from
Webster’s II New Riverside University Dictionary, the term "back
yard," which is defined as "[a] yard behind a house," is also commonly
spelled as "backyard".
Ser. No. 75/089,246
5
word "BACKYARD" and its legal equivalent "BACK YARD" which, when
the respective marks are considered as a whole, form the
dominating and distinguishing elements thereof. See, e.g., In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997) [dominant portion of mark "THE DELTA CAFE" and
design ("CAFE" disclaimed) for restaurant services is the word
"DELTA," citing In re National Data Corp., 224 USPQ at 751].
We consequently concur with the Examining Attorney that
applicant’s "BACKYARD STEAKHOUSE" mark, in addition to
similarities in sound and appearance, projects a commercial
impression which is substantially similar to that engendered by
registrant’s "BACK YARD BURGERS" mark. Both marks, as stated by
the Examining Attorney in her denial of applicant’s request for
reconsideration of the final refusal, essentially convey the same
overall commercial impression when used in connection with
restaurant services, namely, that of a restaurant offering "a
steak or burger that tastes just like one grilled in your own
home’s backyard".
There thus being nothing incongruous in the commercial
impression of applicant’s mark, we conclude that customers,
familiar with registrant’s "BACK YARD BURGERS" mark for
restaurant services, would be likely to believe, upon
encountering applicant’s substantially similar "BACKYARD
STEAKHOUSE" mark for restaurant services, that such services
emanate from or are otherwise sponsored by or affiliated with the
same source. Consumers, for example, could readily believe that
Ser. No. 75/089,246
6
registrant has expanded its burger restaurant services to a
separate or upscale line of steakhouse restaurants.
Decision: The refusal under Section 2(d) is affirmed.
R. L. Simms
E. W. Hanak
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board