Twenty Three East Adams Street Corp.

Trademark Trial and Appeal Board

Feb 13, 2009

No. 76610826 (T.T.A.B. Feb. 13, 2009)

Mailed:
February 13, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Twenty Three East Adams Street Corp.
________

Serial No. 76610826
_______

Charles T. Riggs, Jr. of Patula & Associates, P.C. for
Twenty Three East Adams Street Corp.

Renee McCray, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Quinn, Walsh and Taylor, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Twenty Three East Adams Street Corp. (applicant) has
applied to register the mark shown below for “food
products, namely, barbeque and steak sauce” in
International Class 30.1

1 Application Serial No. 76610826, filed September 7, 2004,
claiming first use of the mark anywhere and first use of the mark
in commerce on June 1, 1950.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76610826
2
The application includes the following statement: “The
term ‘MILLER'S’ is a surname. The term ‘MILLER'S’ does not
identify a living individual.” The application also
includes a claim of acquired distinctiveness under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f).
The Examining Attorney has finally refused
registration under Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d), based on a likelihood of confusion between
applicant’s mark and the mark in Registration No. 2850178,
owned by Ale House Management, Inc., shown here:

for services identified as “full service restaurant” in
International Class 43. The registration issued on June 8,
2004.
The Examining Attorney has also finally refused
registration under Trademark Act Section 1, 15 U.S.C.
§ 1051, and Trademark Rule 2.51(a), 37 C.F.R. § 2.51(a), on
the grounds that the mark in the drawing, shown above, does
not agree with the mark as displayed on the specimen shown
here:
Serial No. 76610826
3

Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm the refusal under
Section 2(d) and reverse the drawing/specimen refusal.
Likelihood of Confusion
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods [or
services] of the applicant, to cause confusion…” 15 U.S.C.
§ 1052(d). The opinion in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets
forth the factors to consider in determining likelihood of
confusion. Here, as is often the case, the crucial factors
are the similarity of the marks and the similarity of the
goods and services of the applicant and registrant.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
Serial No. 76610826
4
[or services] and differences in the marks.”). Below we
will consider each of the factors as to which applicant or
the Examining Attorney presented arguments or evidence.
First we consider whether the marks are similar. In
comparing the respective marks we must consider the
appearance, sound, connotation and commercial impression of
the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005).
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks. As the Court
of Appeals for the Federal Circuit observed, “… in
articulating reasons for reaching a conclusion on the issue
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 the ultimate
conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Furthermore, “… it is well established that the test
to be applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
Serial No. 76610826
5
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.” Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975) (internal citations
omitted).
Applicant argues that MILLER’S is primarily merely a
surname, and as such, “non protectible” absent a showing of
acquired distinctiveness. Applicant argues that no such
showing was made in the case of the cited registration.
Proceeding from that premise applicant argues further that
a proper comparison of the marks must focus on the display
or stylization of the respective word marks and
accompanying design elements, and not on the word MILLER’S
as such. Applicant finally argues that, when one compares
the display and design elements of the respective marks,
the marks are “extremely dissimilar.”
On the other hand, the Examining Attorney argues,
“… the marks are confusingly similar not only in appearance
and sound, but also in connotation and commercial
Serial No. 76610826
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impression because they contain the identical wording
MILLER’S.” Examining Attorney’s Brief at 5.
First, we reject the premise underlying applicant’s
arguments. That is, we may not assume, as applicant urges,
that the word MILLER’s in the registered mark is not
protected. We must accord the mark in the cited
registration, including the word portion, MILLER’S, the
full benefits set forth in Trademark Act Section 7(b), 15
U.S.C. § 1057(b), including the recognition that the
registration is prima facie evidence of the “validity of
the registered mark” and of “the registrant’s exclusive
right to use the registered mark in commerce on or in
connection with the goods or services specified in the
certificate…” 15 U.S.C. § 1057(b). Applicant’s argument
that we should accord the cited registration something less
than full effect is an impermissible collateral attack on
the registration. In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1535 (Fed. Cir. 1997). Consequently,
we decline to disregard the significance of MILLER’S in the
registered mark.
Furthermore, we concur with the Examining Attorney and
conclude that MILLER’S is the dominant element in both
applicant’s mark and the registered mark. Most
importantly, MILLER’S is dominant because it is the only
Serial No. 76610826
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word element in both marks. Here, as is generally the
case, the word elements in the respective marks are
dominant because potential purchasers commonly use word
marks in requesting goods or services. In re Dixie
Restaurants Inc., 41 USPQ2d at 1534.
There is nothing in the stylization of letters or the
designs at issue here which dictates any other construction
of the marks. For the record, we have considered
applicant’s many arguments concerning the importance of the
design elements here. We have also considered the cases
applicant cites and discusses, and find them
distinguishable. For example, in Massey Junior College,
Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181
USPQ 272 (CCPA 1974), the designs in the respective marks
not only differed, but the word and letter elements in the
respective marks also differed, unlike this case where the
word elements are identical.
Applicant also argues, “The connotation and commercial
impression of the cited registration is that of a family
oriented seafood restaurant in view of the depiction of a
funny man riding a swordfish. To the contrary, the
connotation and commercial impression of Applicant’s mark
is that of a more sophisticated, adult oriented British
Isle pub-style restaurant.” Applicant’s Brief at 7.
Serial No. 76610826
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Applicant has not provided any evidence to support this
conclusion. We conclude that there is no significant
difference between the marks in connotation, commercial
impression or otherwise; the dominant element in each mark
is the word MILLER’S which contributes most significantly
to the connotation and commercial impression, as well as
the appearance and sound.
Also, in our comparison of the marks we must take into
account the fallibility of human memory and strictly avoid
a simplistic side-by-side comparison. Sealed Air Corp. v.
Scott Paper Co., 190 at 108. Applicant’s suggestion that
potential customers for the respective goods and services
of applicant and registrant will distinguish those goods
and services on the basis of the differing stylization in
the letters in the respective marks or based on the
inclusion of the design element in the registered mark does
not comport with either the law or reality. Accordingly,
we conclude that the marks are similar when viewed in their
entireties.
Applicant also argues that we should accord the
registered mark, in particular, the word MILLER’S, a narrow
scope of protection because it is weak. To support this
argument applicant has made of record third-party
registrations for the following marks for restaurant
Serial No. 76610826
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services: ANNA MILLERS’ PIES; BILL MILLER BAR-B-Q;
MILLER’S ROAST BEEF; CHERRY MILLER’S CAFE; MILLER’S
CROSSING; and PETE MILLER’S.
Based on this evidence, we acknowledge that there are
numerous registrations for the surname “MILLER” in some
form in connection with restaurant services. Each third-
party mark does include some other wording unlike the marks
at issue here. In this case, both marks include the
identical wording MILLER’S, and no additional wording.
Under the particular circumstances before us, we find
applicant’s showing regarding “MILLER” insufficient to
conclude that there is no likelihood of confusion.
We likewise find unpersuasive applicant’s evidence of
multiple registrations for other marks, which include
apparent surnames, such as, LEE’S DELI and LEE’S
SANDWICHES, for restaurant services. We must decide each
case on its unique facts. Actions by examining attorneys
in other applications do not dictate our determination in
this case. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001).
Applicant also argues that the potential purchasers of
sauces and restaurant services are sophisticated and that
this fact would preclude confusion in this case. Neither
the application nor the registration limit the sauces or
Serial No. 76610826
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restaurant services in question in a way which would
suggest that the goods and services are particularly
expensive or which would otherwise confine the offering of
goods and services to knowledgeable or sophisticated
clientele. Accordingly, we conclude that both applicant’s
and registrant’s goods and services would be rendered to
the general public and could include less expensive
offerings. Furthermore, as the Examining Attorney notes,
even sophisticated purchasers may be subject to trademark
confusion. In re Pellerin Milnor Corp., 221 USPQ 558, 560
(TTAB 1983). Thus, we conclude that the sophistication of
purchasers is not a factor in this case.
We now consider the respective goods and services.
The goods and services of applicant and the registrant need
not be identical to find likelihood of confusion under
Section 2(d) of the Trademark Act. They need only be
related in such a way that the circumstances surrounding
their marketing would result in relevant consumers
mistakenly believing that the goods and services originate
from or are associated with the same source. See On-Line
Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471 (Fed. Cir. 2000); In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Serial No. 76610826
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Furthermore, in comparing the goods and services we
must consider the goods and services as identified in the
application and cited registration. See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”).
The services identified in the cited registration are
“full service restaurant” services; the goods identified in
the application are “food products, namely, barbeque and
steak sauce.”
Applicant argues that the differences between the
respective goods and services “…further lessens any alleged
likelihood of confusion between the respective marks.”
Applicant’s Brief at 15. To support its position,
applicant has provided copies of registrations, owned by
different parties, for marks including similar word or
literal elements, for barbeque sauce on the one hand and
restaurant services on the other hand. Applicant argues
that these registrations suggest that consumers would not
be confused by use of the same or similar marks on barbeque
sauce and restaurant services.
The Examining Attorney argues that the food products
and food-related services at issue here are related because
Serial No. 76610826
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such products could emanate from the same source. The
Examining Attorney notes, and applicant acknowledges, that
applicant itself offers both restaurant services and
barbeque and steak sauce under the very mark it seeks to
register here. The Examining Attorney has provided copies
of several third-party, used-based registrations for marks
covering both sauces and restaurant services, including
barbeque sauces, for example, Registration Nos. 1856727,
1828341 and 1724044. See Attachments to Office Action
Denying Request for Reconsideration. These registrations
suggest that the goods and services are of a type which may
emanate from the same source. In re TSI Brands Inc., 67
USPQ2d 1657, 1659 (TTAB 2002); In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). In addition the
Examining Attorney has also provided excerpts from web
sites of restaurants, including, Delmonico’s, Smith &
Wollensky’s, Arthur Bryant’s, Ben Benson’s and
Ottomanelli’s showing use of the same mark on restaurant
services and sauces, including steak sauces.
There is no per se rule dictating that restaurant
services and food products are related. See Jacobs v.
International Multifoods Corporation, 668 F.2d 1234, 212
USPQ 641 (CCPA 1982) (BOSTON TEA PARTY for tea held not
likely to be confused with BOSTON SEA PARTY for restaurant
Serial No. 76610826
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services); In re Comexa Ltda., 60 USPQ2d 1118 (TTAB 2001)
(AMAZON and design for chili sauce and pepper sauce held
likely to be confused with AMAZON for restaurant services);
In re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209
(TTAB 1999) (AZTECA MEXICAN RESTAURANT for restaurant
services held likely to be confused with AZTECA for
partially prepared Mexican foods, namely tortillas).
We must consider the particular facts of each case to
determine whether the goods and services are related. The
cases indicate that “something more” must be present to
establish that confusion is likely. In re Comexa Ltda., 60
USPQ2d at 1120. In this case we conclude that something
more is indeed present. The record includes not only
third-party registrations showing marks registered for the
same goods and services, but examples of other restaurants
which offer the exact same types of sauces at issue here
under the restaurant mark, as applicant itself does.
Furthermore, the word portions of the marks at issue here
are identical.
We have considered applicant’s various arguments to
the contrary and find them unpersuasive. In particular, we
find applicant’s reliance on third-party registrations for
other marks unconvincing. As we noted, we must judge each
case involving food products and restaurant services on its
Serial No. 76610826
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unique facts. Many of the examples applicant offers are
obviously different from this case. For example, there are
obvious differences in the word elements of the marks in
many instances, for example, SHAGGY’S (sauces) versus THE
SHAGGY DOG (RESTAURANT) and HELEN’S (sauces) versus HELEN
BACK CAFÉ and HELEN FITZGERALD’S (restaurants). More
generally, as we noted above, actions by examining
attorneys in other applications do not dictate our
determination in this case. In re Nett Designs Inc., 1339,
57 USPQ2d at 1566.
Accordingly, we conclude that the goods and services
of applicant and registrant are related, and furthermore,
based on all relevant evidenced of record in this case
bearing on the du Pont factors, we conclude that there is a
likelihood of confusion.
The Specimen/Drawing Refusal
The Examining Attorney has also refused registration
because the mark in the drawing, shown above, does not
agree with the mark as displayed in the specimen, also
shown above. The Examining Attorney notes that the drawing
shows the mark MILLER’S in stylized form and states, “The
specimen, comprised of a photographic image of applicant’s
label, depicts applicant’s mark as ‘MILLER’S PUB.’ The
term ‘PUB,’ although placed immediately beneath the term
Serial No. 76610826
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‘MILLER’S,’ is depicted in the same size, color and type
font as MILLER’S. Therefore, given the meaning and
connotation of the terms as used together on the specimen,
the commercial impression is that of a unitary phrase,
‘MILLER’S PUB.’” Examining Attorney’s Brief at 12. The
Examining Attorney thus concludes that the mark, as shown
on the drawing, is a “mutilation” of the mark as used on
the specimen.
Applicant argues that MILLER’S creates a distinct
commercial impression apart from PUB and other material on
its label. Applicant states, “The term ‘MILLER’S is
clearly the dominate (sic) term on the label, prominently
set forth at the top of the label, separately placed on its
own line, and comprising approximately one third (1/3) of
the viewable window (green background portion) of the
label.” Applicant’s Brief at 17. Applicant also argues
that the public uses “MILLER’S” alone in referring to or
ordering the product. Applicant argues further that “PUB”
is merely descriptive of sauces, and therefore, it is
separable from MILLER’S.
Both applicant and the Examining Attorney agree on the
legal standard, that is, we must determine whether
MILLER’S, as shown on applicant’s label specimen, creates a
distinct commercial impression apart from PUB and other
Serial No. 76610826
16
material on the label. The Institut National des
Appellations D'Origine v. Vintners International Co. Inc.,
958 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992) (CHABLIS
WITH A TWIST held registrable based on use of CHABLIS WITH
A TWIST CALIFORNIA, in part, because CALIFORNIA was held
merely descriptive); In re Servel, Inc., 181 F.2d 192, 85
USPQ 257 (CCPA 1950) (SERVEL held registrable based on use
of SERVEL INKLINGS, in part because “inklings was held
merely descriptive); In re Royal BodyCare Inc., 83 USPQ2d
1564 (TTAB 2007) (NANOCEUTICAL held registrable based on
use of RBC’S NANOCEUTICAL on specimen); In re Raychem
Corp., 12 USPQ2d 1399 (TTAB 1989) (TINEL-LOCK held
registrable based on use of TRO6AI-TINEL-LOCK-RING on
specimen); In re EMCO, Inc., 158 USPQ 622 (TTAB 1968)
(RESPONSER held registrable based on use of MEYER RESPONSER
on specimen).
While this is a close case, we conclude that MILLER’S
does create a separate commercial impression apart from PUB
and other material. We conclude so principally because PUB
is shown on a separate line below MILLER’S and because
applicant has shown that PUB is descriptive of sauces, such
as those identified in the application. See, e.g., The
Institut National des Appellations D'Origine v. Vintners
International Co. Inc., 22 USPQ2d at 1197 (“‘California’
Serial No. 76610826
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is, moreover, a geographically descriptive word wholly
devoid of trademark significance because it cannot
distinguish Vintners’ product from others. We, therefore,
conclude that there is no genuine dispute as to whether
there has been any ‘mutilation.’”).
The Examining Attorney has argued that applicant has
provided insufficient evidence of the use of PUB as a
descriptive term as applied to sauce in the United States,
and applicant takes the opposite position. Neither
identify or discuss any of the particulars of the evidence.
We have reviewed the evidence carefully and find numerous
examples from the Internet of uses of PUB as a descriptive
term applied to sauces in the United States, for example:
a website associated with Salter’s Chesapeake Gourmet
refers to “pub sauce”; a menu from the Captain Daniel
Packer Inn refers to “colonial pub sauce”; a menu from
Elliot Bay Brewery Pub refers to “pub sauce”; a review of
the Newport Steak House refers to “pub sauce”; an
advertisement for the Boar’s Head Tavern refers to “pub
style horse radish sauce”; and a review of the Salt Hill
restaurant refers to “pub sauce.” Attachments to
Applicant’s Response of June 30, 2008. We find this
evidence, all associated with establishments similar to
applicant’s, both probative and sufficient to establish
Serial No. 76610826
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that PUB is descriptive of sauces of the general type
identified here.
We have not relied on applicant’s representations
regarding references by its customers to its sauce as
MILLER’S. In posing that argument, applicant suggests that
the affidavit of Aris Gallios substantiates this claim. We
find no such support in the affidavit. There is no mention
of the way in which customers refer to applicant’s sauce in
that document.
Decision: We affirm the refusal under Section 2)d)
and reverse the refusal under Section 1 with regard to the
drawing and specimen. Registration is refused.