United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 90033647
Mark: GRACE
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Correspondence Address:
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Applicant: Ryan Westover
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
· Section 2(d) Refusal – Likelihood of Confusion
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
General Principles
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Applicant’s and Registrants’ Marks and Goods
Applicant has applied for the mark “GRACE” in connection with “Restaurant services, take-out restaurant services, bar and cocktail lounge services” in International Class 43.
U.S. Reg No. 3848141
Mark: GRACE'S ON KIRBY
Goods/Services:
“Restaurants” in International Class 43.
U.S. Reg No. 5286200
Mark: GRACE STREET
Goods/Services:
“Coffee and juice bar services; Restaurant and café services; Coffee and tea bars; Restaurant and bar services” in International Class 43.
U.S. Reg No. 3931488
Mark: GRACE HOTELS
Goods/Services:
“Hotels, motels, inns, restaurants, bars, and catering services; hotel, motel, inn, restaurant, bar and catering services” in International Class 43.
U.S. Reg No. 6054070
Mark: GRACE & FLAVOR
Goods/Services:
“Bar services; Café services” in International Class 43.
As Pertaining to U.S. Reg. No. 3848141 (GRACE'S ON KIRBY with design)
Comparison of the Marks GRACE'S ON KIRBY and GRACE
In the present case, both the applied-for mark and the registered mark begin with the wording “GRACE”. Indeed, the entirety of applicant’s mark, “GRACE”, is included in registrant’s mark, “GRACE'S ON KIRBY”. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Further, the marks share a common connotation, namely, that of the first name “GRACE.” See the attached excerpt from an entertainment website featuring famous women named “GRACE”, indicating the public is familiar with the name “GRACE.”
Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). In this case, the prominent feature in both marks is the wording “GRACE”. Therefore, although registrant’s mark includes the additional wording “ON KIRBY”, which appears to merely indicate a location, the dominant commercial impression of the marks is the same, the wording “GRACE”.
Further, the public is familiar with restaurants abbreviating their marks to just the first word of their marks. For instance, Carrabba’s Italian Grill makes reference to itself as “Carrabba’s” on its website and in advertising. See attached excerpt from Carrabba’s Italian Grill. See also similar website excerpts from Panera Bread as “Panera” and Maggiano’s Little Italy as “Maggiano’s”. Therefore, the public seeing just the initial wording of the registered mark could reasonably be understood as an abbreviation of the registered mark.
When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Thus the design portions of the marks do not obviate the likelihood of confusion.
Therefore, the marks are confusingly similar.
Relatedness of the Compared Services
Applicant’s services are identified as follows: “Restaurant services, take-out restaurant services, bar and cocktail lounge services”
Registrant’s services are identified as follows: “Restaurants” in International Class 43.
The registration and application each identify services in the field of restaurant services. Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the application uses broad wording to describe “Restaurant services, take-out restaurant services, bar and cocktail lounge services”, which presumably encompasses all services of the type described, including registrant’s more narrow “Restaurants”. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
Thus, a likelihood of confusion exists because the marks create a confusingly similar commercial impression and the services at issue are closely related.
As Pertaining to U.S. Reg. No. 5286200 (GRACE STREET in standard characters)
Comparison of the Marks GRACE STREET and GRACE
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
In the present case, applicant has applied to register the mark “GRACE” with a circle design. Registrant’s mark is “GRACE STREET” in standard characters. As in the previous section, the wording of the applied for mark is completely encompassed in the registrant’s mark. Therefore, the word portion “GRACE” in each of these marks is identical in appearance and sound and thus the marks are identical in part. Additionally, as discussed in the previous section, these marks carry the same connotation of an individual’s name, with registrant’s full mark being the name “GRACE” combined with a word to indicate location. Further, the evidence referenced in the previous section provided examples of restaurants that abbreviated their full mark to just the first word in the mark. Thus, the relevant public is familiar with the practice of restaurants, such as registrant’s “GRACE STREET”, abbreviating to a single word, for example applicant’s mark “GRACE”.
Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Here, the marks share the similar terms “GRACE”, created a similar overall commercial impression.
A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). Here, the applied-for mark is written in a stylized manner, however, the registered mark is in standard characters and has the potential to be presented in the same style.
As discussed in the previous section, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the services. See previous section for relevant citations. Thus, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar. See previous section for relevant citations. Therefore, the design portion of the applied-for mark does not obviate the likelihood of confusion with the registered mark.
Thus, the marks are confusingly similar.
Relatedness of the Compared Services
The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The compared services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Applicant’s services are identified as follows: “Restaurant services, take-out restaurant services, bar and cocktail lounge services” in International Class 43.
Registrant’s services are identified as follows: “Coffee and juice bar services; Restaurant and café services; Coffee and tea bars; Restaurant and bar services” in International Class 43.
The plain reading of the above identifications indicates that the applicant and registrant have common services, such as restaurant and bar services. As demonstrated in the previous section, restaurant services, similar to registrant’s services, travel in the same channels of trade as take-out restaurant services and bar and cocktail lounge services, similar to applicant’s services.
Further, bars featuring items such as coffee, juice, and tea are commonly incorporated into restaurants, bars, and cocktail lounges. The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar services as those of both applicant and registrant in this case. This evidence shows that the services listed therein, namely, take-out restaurant services, bar and cocktail lounge services, similar to applicant’s services, and coffee and juice bar services, restaurant and café services, and restaurant and bar services, similar to registrant’s services, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Thus, a likelihood of confusion exists because the marks create a confusingly similar commercial impression and the services at issue are closely related.
As Pertaining to U.S. Reg. No. 3931488 (GRACE HOTELS with design)
Comparison of the Marks GRACE HOTELS and GRACE
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
In the present case, applicant has applied to register the mark “GRACE” with a circle design. Registrant’s mark is “GRACE HOTELS” with design. Thus, applicant and registrant share the common first word “GRACE”. As was the case in the previous sections, the wording of the applied-for mark, “GRACE”, is completely encompassed in the registrant’s mark, “GRACE HOTELS”. Therefore, the word portion “GRACE” in each of these marks is similar in appearance and identical in sound. Additionally, as discussed in the previous section, these marks carry the same connotation of an individual’s name, with registrant’s full mark being the name “GRACE” combined with a descriptive word. See previous sections references and evidence for this similar in part discussion.
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Thus, registrant’s disclaimed wording in the mark, “HOTELS”, is less significant in creating the commercial impression. Further, as noted above, marks may be confusingly similar in appearance where similar terms or phrases appear in the compared marks and create a similar overall commercial impression. See references and evidence from the preceding sections. Therefore, the dominant commercial impression of both marks is applicant’s mark “GRACE” and the first word in registrant’s mark “GRACE”, a well-known first name.
As previously noted, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the services. See previous sections of this Office Action for references. Therefore, the design portion of the referenced marks does not obviate the likelihood of confusion and the marks are confusingly similar.
Relatedness of the Compared Services
The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
Applicant’s services are identified as follows: “Restaurant services, take-out restaurant services, bar and cocktail lounge services” in International Class 43.
Registrant’s services are identified as follows: “Hotels, motels, inns, restaurants, bars, and catering services; hotel, motel, inn, restaurant, bar and catering services” in International Class 43.
The plain reading of the identification of services found in the application and registration demonstrates similarities in service, namely, the shared services of restaurant and bar services. Indeed, it appears that all of applicant’s services more narrow services are of a type that may be offered by the registrant, reviewing the respective identifications alone.
Registrant offers additional services in the nature of hotel, motel, and inn services. However, these services are likely to be perceived by the public as being a complementary service to restaurants, as the relevant public is familiar with restaurants being a feature of hotels, motels, and inn services. The attached Internet evidence, consisting of excerpts from hotel websites featuring restaurant and cocktail services, establishes that the services are similar or complementary in terms of purpose or function. See attached websites from Four Seasons Hotel Washington D.C., the Watergate Hotel, and 1 Hotel South Beach. See also attached article from Washington Magazine discussing 13 hotels with notable restaurants in Washington DC. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar services as those of both applicant and registrant in this case. This evidence shows that the services listed therein, namely, restaurant and hotel services, similar to registrant’s services, and bar and cocktail lounge services, similar to applicant’s services, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Thus, a likelihood of confusion exists because the marks create a confusingly similar commercial impression and the services at issue are closely related.
As Pertaining to U.S. Reg. No. 6054070 (GRACE & FLAVOR in standard characters)
Comparison of the Marks GRACE & FLAVOR and GRACE
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
As noted in the previous sections, the applied-for mark, “GRACE” with design, and the registered mark, “GRACE & FLAVOR” in standard characters, share the similar term “GRACE” creating a similar overall commercial impression. See previous sections discussions and evidence indicating the wording is identical in part. Further, the entirety of the wording in the applied-for mark, “GRACE”, is found in the registered mark. Thus, both words are pronounced identically, in part and share the same connotation, in part, that of the name “GRACE”. See previous sections discussions and evidence indicating the marks have a similar pronunciation, in part, and similar connotation. Further, as discussed in the previous section, a mark in standard characters may be presented in any fashion. See references in comparison with “GRACE STREET”. Therefore, while the applied-for mark is written in a stylized manner, the registered mark is in standard characters and thus the registered mark has the potential to be presented in the same style as the applied-for mark.
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the attached evidence shows that the wording “FLAVOR” in the registered mark is merely descriptive of or generic for the registrant’s café and bar services. The attached definition from online dictionary MacMillan dictionary defines the word “FLAVOR” as a pleasant or strong taste, thus the word merely describes the food and drink provided in registrant’s café and bar services. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording the more dominant element of the mark. Therefore, the additional wording in the registered mark does not obviate the likelihood of confusion between the two marks.
As previously noted, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the services. See comparison with “GRACE'S ON KIRBY” discussion for evidence and references. Therefore, the design portion of the applied for mark does not obviate the likelihood of confusion and the marks are confusingly similar.
Relatedness of the Compared Services
The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
Applicant’s services are identified as follows: “Restaurant services, take-out restaurant services, bar and cocktail lounge services” in International Class 43.
Registrant’s services are identified as follows: “Bar services; Café services” in International Class 43.
The registration and application each identify services in the field of bar services. The registration also identifies the service “café service”. A café is a small restaurant selling light meals and drinks. See attached definition from online dictionary Lexico. Thus, registrant’s café services and applicant’s restaurant services are also similar. As noted in the previous sections, determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See the “GRACE'S ON KIRBY” comparison above for citations. In this case, the application has broader services that encompass all of the services identified in the registration. See the “GRACE'S ON KIRBY” comparison above for citations. Thus, applicant’s and registrant’s services are legally identical.
Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s services are related.
Thus, a likelihood of confusion exists because the marks create a confusingly similar commercial impression and the services at issue are closely related.
Other Considerations
HIRING TRADEMARK COUNSEL SUGGESTED
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
Rummery, Mary
/Mary Rummery/
Examining Attorney
Law Officer 105
571-270-0964
Mary.Rummery@USPTO.GOV
RESPONSE GUIDANCE
