Backcountry Provisions, Inc.

Trademark Trial and Appeal Board

Sep 21, 2007

No. 78769198 (T.T.A.B. Sep. 21, 2007)

Mailed:
September 21, 2007
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Backcountry Provisions, Inc.
________

Serial No. 78769198
_______

Susan F. Fisher of Fairfield and Woods, P.C. for Backcountry
Provisions, Inc.

Michael Webster, Trademark Examining Attorney, Law Office
102 (Karen Strzyz, Managing Attorney).
_______

Before Quinn, Bucher and Wellington, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Backcountry Provisions, Inc. seeks registration on the
Principal Register of the mark shown below:

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78769198
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for services recited in the application, as amended, as
“restaurant and delicatessen featuring sandwiches, soup,
carry-out and catering sold solely through applicant’s
retail outlets” in International Class 43.1
This case is now before the board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation 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 identified goods, so resembles the mark
BACKCOUNTRY for “restaurant services,”2 as to be likely to
cause confusion, to cause mistake or to deceive.
The Trademark Examining Attorney and applicant have
fully briefed the case. We affirm the refusal to register.
In arguing for registrability, applicant contends that
the Trademark Examining Attorney has violated the anti-

1 Application Serial No. 78769198 was filed on December 8,
2005 based upon applicant’s allegation of first use anywhere and
use in commerce at least as early as July 1, 1999. According to
the application, “the mark consists of a circle filled with a
drawing of a donkey with pack provisions on its back, and an
outside ring with the words ‘Backcountry Provisions’ in it.”

2 Registration No. 1675449 issued to Backcountry Barbeque,
Inc. on February 11, 1992 based on an application filed on May
29, 1990 claiming first use anywhere and first use in commerce at
least as early as August 11, 1986; renewed. According to the
Assignment Division of the United States Patent and Trademark
Office, this registration is currently owned by Cook’s Back
Country Barbecue, Inc., Reel 1694, Frame 0832.

Serial No. 78769198
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dissection rule in the way he applied the law when comparing
the two marks; and that applicant’s mark and the registered
mark are dissimilar as to appearance, sound, connotation and
commercial impression.
By contrast, the Trademark Examining Attorney contends
that the services are legally identical; that applicant may
not, by using extrinsic evidence, restrict in any way the
scope of registrant’s services or the nature of its mark;
that in comparing the marks in their entireties, the marks
are highly similar in sound, connotation and commercial
impression inasmuch as applicant has merely added a design
and a highly suggestive term to the registered mark; and
that the word BACKCOUNTRY – the entirety of registrant’s
mark – is the first and most dominant portion of applicant’s
composite mark.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
confusion is based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on this issue. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
Serial No. 78769198
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(Fed. Cir. 2003). In any likelihood of confusion analysis,
however, two key, although not exclusive, considerations are
the similarities between the marks and the relationship
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also In re Dixie Restaurants Inc.,
105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The Services
As seen above, the services in the cited registration
are recited merely as “restaurant services.” Applicant’s
amended services are recited as “restaurant and delicatessen
featuring sandwiches, soup, carry-out and catering sold
solely through applicant’s retail outlets.” As to this
critical du Pont factor, as argued by the Trademark
Examining Attorney, applicant and registrant offer legally
identical restaurant services. On the face of the cited
registration, registrant’s services are not limited in any
way (e.g., as to type of cuisine, channel of trade, classes
of purchasers, etc.). Although applicant points to
registrant’s website for the proposition that registrant
offers Lexington-style, wood-cooked barbecue, we cannot
resort to such extrinsic evidence in order to restrict
registrant’s services. See, e.g., In re Bercut-Vandervoort
Serial No. 78769198
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& Co., 229 USPQ 763, 764 (TTAB 1986) [evidence that relevant
goods are expensive wines sold to discriminating purchasers
must be disregarded given the absence of any such
restrictions in the application or registration].
Furthermore, the fact that applicant, in addition to
reciting “restaurant [services]” specifically enumerates
“delicatessen,” “carry-out” and “catering” services, does
not eliminate this overlap in restaurant services. Hence,
this du Pont factor favors the position of the Trademark
Examining Attorney.
Channels of trade
As to the related du Pont factor focusing on the
channels of trade, we are not persuaded by applicant’s
attempt to restrict its recitation of services by adding
“sold solely through applicant’s retail outlets.” In fact,
even if one reads this limitation at the end of the
recitation of services as applying back to “restaurant”
services, this purportedly-limiting language has no
meaningful effect on applicant’s actual trade channels. As
noted by the Trademark Examining Attorney, restaurant
services are generally provided by a restaurateur at her own
establishment. The question is whether consumers would
believe the services provided at applicant’s “outlets” are
Serial No. 78769198
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associated in some way with the same, potentially-anonymous
source as the services provided at registrant’s
establishment(s). Also, the fact that registrant currently
operates in North Carolina and applicant’s outlets are
located in the Rocky Mountain West is also irrelevant when
deciding nationwide registrability. Accordingly, this
du Pont factor too points toward a likelihood of confusion
herein.
Condition of purchases
Moreover, we must presume that these legally-identical
services will be perceived identically by potential
purchasers, and that they will both be available to all
classes of potential customers, including ordinary
consumers. We assume that these respective services are not
expensive, and that ordinary consumers will not exercise a
high degree of care in selecting these restaurant services.
Accordingly, this related du Pont factor also supports the
position of the Trademark Examining Attorney herein.
The marks
We turn then to the du Pont factor focusing on the
similarity or dissimilarity of the respective marks in their
entireties as to appearance, sound, connotation and
commercial impression. See Palm Bay Imports Inc. v. Veuve
Serial No. 78769198
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Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005). We begin this part
of the analysis mindful of the fact that when marks would
appear on identical services, the degree of similarity in
the marks necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992).
Yet, as to each of the methods for comparison,
applicant argues that the respective marks are not at all
confusingly similar. Applicant has also repeatedly accused
the Trademark Examining Attorney of dissecting the marks in
his analysis of the similarities of the two marks.
While we must consider the similarity or dissimilarity
of the marks when viewed in their entireties, “there is
nothing improper in stating that, for rational reasons, more
or less weight has been given to a particular feature of the
mark, provided [that] the ultimate conclusion rests on
consideration of the marks in their entireties.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Undeniably, there are obvious differences in the
appearance of these two marks if one subjects them to a
side-by-side comparison. Appellant’s composite mark shares
Serial No. 78769198
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only a single word, BACKCOUNTRY, with the cited mark, adding
the word “PROVISIONS,” the image of a pack animal, and all
three of these components contained within two concentric
circles. It is in this context that applicant argues that
its constant inclusion of the image of a pack animal, with
the words BACKCOUNTRY PROVISIONS, changes the appearance of
the mark as a whole. However, under actual market
conditions, consumers generally do not have the luxury of
making side-by-side comparisons between marks. Hence, the
proper test in determining likelihood of confusion is not
whether the marks can be distinguished in a side-by-side
comparison, but rather, the decision must be based on the
similarity of the general commercial impressions engendered
by the involved marks. See Puma-Sportschuhfabriken Rudolf
Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255
(TTAB 1980).
As to the dissimilarities in sound, again it is
undeniable that registrant’s “Backcountry” mark contains
three syllables while applicant’s “Backcountry Provisions”
mark contains six syllables. On the other hand, the
Trademark Examining Attorney points out that customers tend
to focus more on the first word of a composite mark, and
significantly, the seemingly arbitrary word “Backcountry” is
presented in a larger and bolder font than is the highly-
Serial No. 78769198
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suggestive word “Provisions.”3 Accordingly, in the instant
case, we have given more weight to the arbitrary BACKCOUNTRY
portion of applicant’s mark, which is identical to the
entirety of registrant’s mark.4
The Trademark Examining Attorney points out that the
word portion is normally accorded greater weight as
customers will call for these services with the literal
portion of the mark. See, e.g., In re Dakin's Miniatures

DAKIN
Applicant’s marks Registrant’s marks

Inc., 59 USPQ2d 1593 (TTAB 1999). In the Dakin’s case, the
Board held that the presence of various design elements in

3 In order to clear up any misunderstanding that applicant may
have, whatever weakness the Trademark Examining Attorney may have
ascribed to the word “Provisions” alone as a source indicator
does not taint the entire mark. Applicant spends a significant
portion of its reply brief (at 4 and 5) arguing that its mark is
not merely descriptive. This is a position the Trademark
Examining Attorney never took at any time during the prosecution
of this application.

4 We also cannot resort to extrinsic evidence such as
registrant’s website or a classified advertisement, as applicant
would have us do, to modify the nature of registrant’s service
mark or trade name to “Backcountry Barbecue” or “Backcountry Bar-
B-Q.”
Serial No. 78769198
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the parties’ marks does not dispel likelihood of confusion,
because it is the word portion that consumers will remember.
However, applicant argues that its customers are likely
to envision appellant’s entire composite design because of
the overall impression created by the consistent usage of
the composite on all of applicant’s signage, menus, napkins,
decor, advertising and carry-out bags. In fact, applicant
contends that the overall impression conveyed by its mark
“is one of the Old West when the Rocky Mountains were
sparsely populated by Native Americans, settlers, and
miners, and of the equipment and food that pack animals
carried to settlements and mines during the 1800’s.”
(Applicant’s reply brief at 4). However, we find that the
word “Backcountry” alone is entirely consistent, for
example, with the connotation and commercial impression of a
remote wilderness area reachable only by horseback.5
Interestingly, we note that a likelihood of confusion was
found in Dakin’s in spite of the difference in commercial
impressions between that applicant’s horses/western themes
and the cuddly bear/baby themes of that registrant.

5 backcountry: n. sparsely inhabited rural areas;
wilderness: exploring the backcountry on horseback, THE NEW OXFORD
AMERICAN DICTIONARY, 2nd ed. 2005.

Serial No. 78769198
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Apart from the design feature, appellant argues that
its customers are likely to call for appellant’s services
using both of the mark’s two literal elements, namely,
“Backcountry” and “Provisions.” However, the Trademark
Examining Attorney has shown that the word “Provisions” that
applicant has added to registrant’s mark is a highly
suggestive term for a service offering food. This is
certainly a commonly-accepted rationale for giving somewhat
lesser weight to a portion of a mark in reaching a
likelihood of confusion determination.
Accordingly, we find that this critical factor supports
a finding of likelihood of confusion.
Resolving Doubt
Finally, as pointed out by the Trademark Examining
Attorney, any doubt we may harbor regarding a likelihood of
confusion must be resolved in favor of the prior registrant.
Conclusion

Inasmuch as the respective services are legally
identical, will presumably move through the same channels of
trade to the same ordinary consumers, and the respective
marks, in their entireties, are highly similar in sound,
connotation and commercial impression, we find a likelihood
of confusion herein.
Serial No. 78769198
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Decision: The refusal to register under Section 2(d)
of the Lanham Act is hereby affirmed.