Volume Services America, Inc.

Trademark Trial and Appeal Board

Mar 8, 2006

No. 78313276 (T.T.A.B. Mar. 8, 2006)

Mailed:
March 8, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Volume Services America, Inc.
________

Serial No. 78313276
_______

Karen A. Jeffers of Jeffers & Ireland, Professional
Corporation, for Volume Services America, Inc.

Richard F. White, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Hairston, Bucher and Zervas, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Volume Services America, Inc. seeks registration on
the Principal Register of the following mark:

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78313276
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for services identified in the application as “concession
stands, retail kiosks, roving vendor services featuring
foods, beverages, souvenirs, novelties and/or sundries” in
International Class 35.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this mark based upon Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d). The Trademark Examining Attorney
has found that applicant’s mark, when used in connection
with the recited services, so resembles the following mark:

1 Application Serial No. 78313276 was filed on October 14,
2003 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. An Amendment to Allege Use (AAU)
was filed on March 21, 2005, claiming use anywhere and use in
commerce at least as early as September 1, 2004, accompanied by a
specimen, which is a photograph showing applicant’s mark used in
connection with a concession stand (infra, p. 16).
Serial No. 78313276
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registered for “restaurant services” in International Class
42,2 as to be likely to cause confusion, to cause mistake or
to deceive.
Applicant and the Trademark Examining Attorney fully
briefed the case, but applicant did not request an oral
hearing. We affirm the refusal to register.
Applicant argues that: when these two marks are
compared in their entireties, they simply are not that
similar; because applicant has included its “Centerplate”
house mark within its composite design, this removes any
possibility that consumers would be confused as to the
source of the services provided under the TOP DOG mark; the
services provided by applicant and the markets in which
those services are rendered are totally different from the
restaurant services provided by registrant; the cited mark
is not a strong mark as applied to restaurant services, and
hence, is not entitled to a wide scope of protection; and
finally, that any protection afforded to the cited
registration has been eroded due to the encroachment of
other similar marks and the lack of vigilance of its owner
in policing its trademark rights.

2 Registration No. 1792053 issued to Franchises Unlimited,
Inc., on September 7, 1993, claiming first use anywhere and first
use in commerce at least as early as March 1, 1991; Section 8
affidavit accepted; renewed. Registrant disclaimed the words
FAST FOODS apart from the mark as shown.
Serial No. 78313276
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By contrast, the Trademark Examining Attorney contends
that: the dominant feature of both marks is the wording
TOP DOG; the addition of applicant’s house mark will
increase the likelihood of confusion rather than
distinguish the marks; applicant’s services and
registrant’s services are closely related in that they both
involve the sale of food; many fast-food and casual dining
restaurants have made a common practice of establishing
food stands and kiosks under their respective restaurant
marks; the alleged limited geographical scope of
registrant’s two small restaurants is not a factor for
consideration herein; applicant has not shown that the
cited mark is weak; and finally, even if the cited mark is
not entitled to a broad scope of protection, under the
statute and trademark case law, it is still entitled to
protection against registration by a subsequent user of a
similar mark for closely related goods or services.
Likelihood of confusion analysis
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
Serial No. 78313276
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confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods or services. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The marks
We turn first to the du Pont factor focusing on the
similarity of the marks in their entireties. The Trademark
Examining Attorney argues that the commercial impression
created by applicant’s mark is highly similar to that of
the registered mark:
Registrant’s mark: Applicant’s mark:

Of course, under actual market conditions, consumers
generally do not have the luxury of making this kind of
side-by-side comparison. Rather, the proper test in
determining likelihood of confusion must be based on the
similarity of the general overall commercial impressions
Serial No. 78313276
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engendered by the involved marks. See Puma-
Sportschuhfabriken Rudolf Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255 (TTAB 1980).
While we compare the marks in their entireties, our
primary reviewing Court has held that in articulating
reasons for reaching a conclusion on the question 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 or portion of a mark.
That is, one feature of a mark may have more significance
than another. See Sweats Fashions Inc. v. Pannill Knitting
Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987);
and In re National Data Corporation, 753 F.2d 1056, 224
USPQ 749, 752 (Fed. Cir. 1985).
When a mark such as applicant’s consists of a word
portion and a design portion, the word portion is more
likely to be impressed upon a purchaser’s memory.
Therefore, the word portion is normally accorded greater
weight in determining likelihood of confusion. In re
Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999);
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987);
and Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB
1976).
Serial No. 78313276
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We find that the dominant features of both marks are
the two words, TOP DOG. As to the cited mark, the wording
FAST FOODS is descriptive of the recited restaurant
services (and has been disclaimed). Hence, these words
have minimal significance as a source identifier. While
applicant makes much of the presence of the wording, “A
Centerplate Brand,” on its composite mark, this wording
appears in such small lettering that many consumers may
well overlook it.
As to sound, these two words, TOP DOG, would be used
in calling for both applicant’s and registrant’s services.
As to connotation, both marks convey the same laudatory
suggestion of being “the leader,” or “the best.”
Alternatively, in the context of applicant’s and
registrant’s services, the marks may suggest the
availability of hot dogs.
As to appearance, both place the word “Top” directly
above the word “Dog.” However, applicant argues that its
mark “contains a unique and prominent design element”
clearly missing from registrant’s mark. We find that
applicant’s addition of this design element and the slight
stylization in the lettering of registrant’s mark cannot
serve to distinguish the marks or obviate the likelihood of
confusion.
Serial No. 78313276
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In response to applicant’s claim that the addition of
its house mark (“A Centerplate Brand,”) will obviate a
likelihood of confusion, the Trademark Examining Attorney
argues as follows:
[W]here marks are otherwise virtually the
same, the addition of a house mark is more
likely to add to the likelihood of confusion
than to distinguish the marks. Key West
Fragrance & Cosmetic Factory, Inc. v. Mennen
Co., 216 USPQ 168 (TTAB 1982). It is likely
not only that the two products sold under
these marks would be attributed to the same
source but also that purchasers would
mistakenly assume that both were products of
applicant by virtue of its use of A
CENTERPLATE BRAND with the shared wording
TOP DOG. See In re Dennison Mfg. Co., 229
USPQ 141, 144 (TTAB 1986), citing Menendez
v. Holt, 128 US 514 (1888) [“It is a general
rule that the addition of extra matter such
as a house mark or trade name to one of two
otherwise confusingly similar marks will not
serve to avoid a likelihood of confusion
between them.”]; A. T. Cross Co., v. Jonathan
Bradley Pens, Inc., 470 F.2d 689, 176 USPQ
15 (2nd Cir. 1972); W. E. Bassett Co. v.
Revlon, Inc., 435 F.2d 656, 168 USPQ 1 (2nd
Cir 1970); Hat Corp. of America v. John B.
Stetson Co., 223 F.2d 485, 106 USPQ 200
(CCPA 1955); Hammermill Paper Co. v. Gulf
States Paper Corp., 337 F.2d 662, 143 USPQ
237 (CCPA 1964).

We agree with the Trademark Examining Attorney that
this Centerplate tagline, if seen, increases the likelihood
of confusion. Given the highly similar commercial
impressions created by these marks, customers who are
acquainted with applicant’s composite mark, including those
Serial No. 78313276
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aware of applicant’s tagline, “A Centerplate Brand,” for
concession stands, retail kiosks and roving vendor services
featuring foods and beverages, would be likely to believe,
upon encountering registrant’s similar TOP DOG mark for its
restaurant services, that such services emanate from, or
are sponsored by or associated in some way, with, TOP DOG,
“A Centerplate Brand.” Should applicant’s use of this
designation for its services become widespread, the
confusion that might arise could well be that of “reverse
confusion.” As explained by our principal reviewing Court:
The trademark law not only protects the
consumer from likelihood of confusion as to
commercial sources and relationships, but
also protects the registrant and senior user
from adverse commercial impact due to use of
a similar mark by a newcomer. The term
“reverse confusion” has been used to
describe the situation where a significantly
larger or prominent newcomer “saturates the
market” with a trademark confusingly similar
to that of a smaller, senior registrant for
related goods or services. …

The junior user does not seek to benefit
from the goodwill of the senior user;
however, the senior user may experience
diminution or even loss of its mark’s
identity and goodwill due to extensive use
of a confusingly similar mark by the junior
user.

In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1688, 1690
(Fed. Cir. 1987). Yet applicant argues, based on its
research, that registrant has only two fast food
restaurants located in small towns in the foothills of
Serial No. 78313276
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western North Carolina. If we accept this allegedly
limited geographical reach of registrant’s restaurant
services as fact, registrant’s size does appear to pale in
comparison with applicant, who touts its forty years of
managing food and beverage concessions at high-volume
sports, entertainment and convention venues. Applicant’s
headquarters are also located in a neighboring state to
registrant’s restaurants. Accordingly, we find that
reverse confusion with applicant’s mark becomes highly
likely as to the mark in the cited registration.
Thus, although there are some differences in the
marks, we find that the marks are similar in their
entireties as to appearance, sound, connotation and
commercial impression.
The services
As noted earlier, applicant’s services are recited as
“concession stands, retail kiosks, roving vendor services
featuring foods, beverages, souvenirs, novelties and/or
sundries,” while registrant’s services are recited as
“restaurant services.”
The Trademark Examining Attorney has placed into the
record third-party registrations as well as Internet
evidence showing that food stands, kiosks and restaurants
Serial No. 78313276
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are commonly marketed under the same service marks. The
third-party registrations include the following examples:
CHARLIE
CHIANG’S
for “concession stands featuring Asian
cuisine and restaurant franchising” in
International Class 35; and “catering and
restaurant services” in Int. Class 43;3
SCORE AMORE for “concession stand services featuring
food” in International Class 35; and
“restaurant services” in Int. Class 43;4
FRESH
ATTRACTIONS
for “restaurant services and concession
stands featuring food and beverages” in
International Class 42;5
BIG BOY for ““restaurants; catering; concession
stands featuring food and souvenirs” in
International Class 42;6
WAFFLE
WORLD
for “restaurant services and retail food
services; namely, distribution of food
products through restaurants, kiosks,
portable and mobile locations” in Int.Cl. 42;7

for “concession stand and roving vendor
services featuring foods, beverages,
souvenirs, novelties and/or sundries” in
International Class 35;” and
“catering, food preparation, contract food
services and providing foods, beverages,
souvenirs, novelties and/or sundries in
cafeterias, carry-out restaurants,
restaurants, bars, and lounges,” in
International Class 42.8

3 Reg. No. 2866170, issued to Charlie Chiang’s, Inc. on July
27, 2004.
4 Reg. No. 2774857 issued to Levy (IP) Limited Partnership
Levy GP Corporation on October 21, 2003.
5 Reg. No. 2438641 issued to HMSHost Corporation on March 27,
2001.
6 Reg. No. 1823393 issued to Elias Brothers Restaurants, Inc.
on February 22, 1994, Section 8 affidavit accepted, Section 15
affidavit acknowledged; renewed.
7 Reg. No. 2307642 issued to Waffle World Ltd. on January 11,
2000, Section 8 affidavit accepted, Section 15 affidavit
acknowledged.
8 Reg. No. 2433973 issued to Volume Services America Holding,
Inc. on March 6, 2001. This registration is actually owned by
applicant.
Serial No. 78313276
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GO GOURMET! for “concession stands, retail kiosks and
roving vendor services featuring foods,
beverages, souvenirs, novelties and/or
sundries” in International Class 35; and
for “catering, food preparation, contract
food services in cafeterias, sports stadiums,
arenas, convention centers, carryout
restaurants, restaurants, bars and lounges”
in International Class 43.9

As argued by the Trademark Examining Attorney, these
third-party registrations have probative value to the
extent that they serve to suggest that the services listed
therein are of a kind that may emanate from a single
source. See In re Infinity Broad. Corp., 60 USPQ2d 1214,
1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck
Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).
The Trademark Examining Attorney’s Internet evidence
shows that national restaurant chains such as Carl’s Jr.,
KFC, Pizza Hut, Domino’s Pizza and Taco Bell, often
complement their traditional restaurants with kiosks and
stands, and that they often place these smaller outlets
within large recreational venues such as sports stadiums.
An article from Recreation Management Magazine submitted by
the Trademark Examining Attorney with one of the Office
actions asserts that managers of athletic stadiums and

9 Reg. No. 2914967 issued to Volume Services America Holding,
Inc. on December 28, 2004. This registration too is owned by
applicant.
Serial No. 78313276
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other recreation facilities can increase the profitability
of the venue’s food services operations by adding “name
brand” snack bars and “full fledged” restaurants to their
mix of concessions. While applicant concedes that the
Trademark Examining Attorney has provided specific
instances where restaurant services are marketed under the
same service mark as concession services, applicant
disagrees with his conclusion that these services are
“commonly marketed” under the same service marks.
However, based upon all of the evidence in this
record, we find that applicant’s recited services are
closely related to registrant’s services. In addition to
the obvious fact that both restaurant services and
concession services involve the sale of prepared foods to
members of the general public, the Trademark Examining
Attorney has demonstrated that it is not unusual for fast-
food and casual dining restaurants to operate food stands
and kiosks under the same marks used to promote their
restaurants. Conversely, from several other subsisting
registrations owned by applicant (see VOLUME SERVICES
AMERICA and GO GOURMET!, supra), it is clear applicant
itself is also in the restaurant business. On its website,
applicant touts its ability as a concessionaire to partner
Serial No. 78313276
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with local restaurants and chefs in the area around any of
its sports facilities.
Channels of trade
In looking at the similarity or dissimilarity of
established, likely-to-continue trade channels, in the
absence of any limitations, we must presume that registrant
and applicant offer their respective services in all the
normal channels of trade to all the usual classes of
purchasers, namely to ordinary consumers, including those
consumers seeking food in low cost restaurants. Registrant
may indeed offer restaurant services to diners in two small
communities in North Carolina, while applicant offers food
and beverages at smaller outlets like roving vendor and
concession stands and retail kiosks. However, other than
suggestions about the relative size of the establishments
drawn from the plain meanings of the words in the
respective identifications of goods, there are no
limitations as to channels of trade. Presumably one of
applicant’s roving vendor stands could be located right
next door to one of registrant’s restaurants, competing
directly with registrant for its dining customers. In this
situation, there clearly is an overlap in the channels of
trade.
Serial No. 78313276
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As argued by the Trademark Examining Attorney:
… the geographical extent of applicant’s and
registrant’s activities is not a proper
factor for consideration here. In re Shell
Oil Co., [992 F.2d 1204] 26 USPQ2d 1687,
1689-90 (Fed. Cir. 1993); In re Infinity
Broadcasting Corp. of Dallas, 60 USPQ2d 1214
(TTAB 2001); In re Appetito Provisions Co.
Inc., 3 USPQ2d 1553, 1554 n.4 (TTAB 1987).

Under Section 7(b) of the Trademark Act, the cited
registration enjoys a presumption of an exclusive right to
nationwide use of the registered mark regardless of its
actual extent of use. Trademark Act Section 7(b),
15 U.S.C. §1057(b). See Giant Food, Inc. v. Nation's
Foodservice, Inc., 710 F.2d 1565, 1568, 218 USPQ 390, 393
(Fed. Cir. 1983); and Amcor, Inc. v. Amcor Indus., Inc.,
210 USPQ 70, 77 (TTAB 1981). Moreover, applicant is also
seeking a geographically-unrestricted registration. Hence,
applicant’s discussion of the alleged limited geographical
scope of registrant’s activities is not relevant to our
likelihood of confusion determination herein.
Similar marks in use on similar goods or services, and the extent to
which applicant has a right to exclude others from use of its mark

Turning to the du Pont factors focusing on the number
and nature of similar marks in use on similar goods or
services and the extent to which registrant has a right to
exclude others from use of its mark on its services,
Serial No. 78313276
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applicant argues that the cited registration is not
entitled to a wide scope of protection.
To the extent TOP DOG may be seen as laudatory (e.g.,
the best, a leader), when viewed on the spectrum of
distinctiveness, it is clearly not an arbitrary mark.
Moreover, applicant argues that the word “Dog” in
registrant’s mark could suggest that hot dogs may be one of
the items sold at a Top Dog Fast Foods restaurant. By the
same token, we find that applicant’s TOP DOG mark10 would
seem to suggest the availability of hot dogs even more
forcefully – especially as
seen on the specimens of
record where the TOP DOG
mark identifies a food
concession stand
“featuring” Hebrew National
brand ¼ pound hot dogs.
Applicant argues that a search of the Principal
Register reveals four other active registrations for the
mark TOP DOG, one of which is a registration for “sports
bar, grill and dance club services” [Reg. No. 2578144]:

10 We note that the composite image or logos shown in this
specimen of record differs in several ways from the mark shown in
the drawing. Here, the words TOP and DOG are in a straight line
rather than being on top of each other, and this presentation
does not have a large pictorial image of a hot dog and bun behind
the words TOP DOG as is shown in the drawing of record.
Serial No. 78313276
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TOP DOG for “wieners” in International Class 29.11

for “canned dog food” in International Class
31;12
TOP DOG for “address books, address labels,
photograph albums, scrapbook albums,
announcement cards, autograph books, baby
books, grocery bags, party bags, paper bags,
sandwich bags, bank checks, paper banners,
book covers, children's activity books,
coloring books, memorandum books, notebooks,
science fiction books, paper boxes,
calendars, greeting cards, playing cards,
caricatures, cartoons, disposable diapers,
diaries, easels, gift wrap, paper bows,
newsletters in the specific fields of comedy
and music, writing pads, sketch pads,
scratch pads, pencil cases, pencils, picture
books, pictures, postcards, posters, cartoon
prints, pictorial prints, drawing rulers,
paper table cloths, paper napkins, and
trading cards featuring cartoon characters,
namely a group of singing dogs” in
International Class 16.13

11 Reg. No. 0796054 issued to Sigman Meat Company, Inc., on
September 14, 1965 based on registrant’s claim of use at least as
early as May 19, 1963; renewed. This registration had initially
also been cited against applicant by the Trademark Examining
Attorney but was later withdrawn during the course of
prosecution.
12 Reg. No. 1150000 issued to Western Family Foods, Inc. on
March 31, 1981 based on registrant’s allegations of use at least
as early as June 1974; Section 8 affidavit accepted, Section 15
affidavit acknowledged; renewed.
13 Reg. No. 2072187 issued to Craig Huxley on June 17, 1997
based on registrant’s use in commerce since at least as early as
November 1994; Section 8 affidavit accepted, Section 15 affidavit
acknowledged.
Serial No. 78313276
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TOP DOG for “sports bar, grill and dance club
services” in International Class 42.14

As argued by the Trademark Examining Attorney, two of
these registrations are not probative inasmuch as they
cover unrelated goods (e.g., dog food, and paper products
featuring images of singing dogs). Applicant finds it
particularly significant that this latest intervening
registration, covering sports bar and grill services,
issued after the cited registration issued, while also
acknowledging that generally third-party registrations have
little probative value in this context. Applicant
concludes, nonetheless, that these multiple, third-party
registrations – when combined with the other du Pont
factors it scores in its favor – are an indication that the
cited mark is entitled to a narrow scope of protection.
Furthermore, applicant argues that in addition to previous
decisions by other Trademark Examining Attorneys,
registrant has ostensibly acquiesced in the co-existence of
a number of quite similar registrations, causing a serious
“erosion” of protection for the cited registration.
Of course, while the United States Patent and
Trademark Office (USPTO) strives for consistency, each case

14 Reg. No. 2578144, issued to Top Dog America’s Bar & Grill,
Inc. on June 11, 2002 based on registrant’s use in commerce since
at least as early as June 22, 1999
Serial No. 78313276
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must be decided on its own facts and record. We are not
privy to the records in the files of the intervening
registered marks. Furthermore, even if faced with these
records, previous decisions by Trademark Examining
Attorneys in approving other marks are without evidentiary
value and are not binding on the USPTO or on this Board.
In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994); and In re
National Novice Hockey League, Inc., 222 USPQ 638, 641
(TTAB 1984). Moreover, even weak marks are entitled to
protection against registration by a subsequent user of a
confusingly similar mark for closely-related services. See
Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439
(TTAB 1976).
Likelihood of Confusion conclusions
In conclusion, we find that the marks are confusingly
similar, that the services are closely related, that there
could be an overlap in the channels of trade, and that in
spite of several TOP DOG third-party registrations, it is
most consistent with the statute and past cases to accord
the cited registration the scope of protection to which it
is entitled, and find in this ex parte appeal that the
cited registration serves as a bar to applicant’s TOP DOG
mark under Section 2(d) of the Lanham Act.
Serial No. 78313276
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Decision: The Trademark Examining Attorney’s refusal
to register the instant mark based upon a likelihood of
confusion in connection with the cited registration, under
Section 2(d) of the Lanham Act, is hereby affirmed.