Byung Ha Chang

Trademark Trial and Appeal Board

Jun 12, 2019

87503270 (T.T.A.B. Jun. 12, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: June 12, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Chang
_____

Serial No. 87503270

_____

Taylor J. Howard of the Law Offices of Yohan Lee,
for Byung Ha Chang.

Brian Pino, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
_____

Before Ritchie, Adlin, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Byung Ha Chang (“Applicant”) seeks registration on the Principal Register of the
mark IZAKAYA KOPAN RAMEN (and design), as shown below, for “Restaurant
services,” in International Class 43.1

1 Serial No. 87503270, filed on June 23, 2017, under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), based on alleged dates of first use and use in commerce on May 26, 2017.
The application includes the following translation statement: The English translation of
“IZAKAYA” in the mark is “GASTROPUB.”
Serial No. 87503270
- 2 -

Pursuant to a requirement by the Examining Attorney, Applicant disclaimed the
terms "IZAKAYA" AND "RAMEN." The mark includes the following description:
The mark consists of a bowl with a pair of chopsticks with the wording
"IZAKAYA KOPAN RAMEN" on the bottom of the bowl. Color is not
claimed as a feature of the mark.

The Examining Attorney refused registration of Applicant’s applied-for mark
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a prior registration
for KOPAN, in standard character form, for the following services in International
Class 43:
Kids cafe services; Canteen services; Snack bar services; Shaved ice
with fruit shop services in the nature of a restaurant; Fruit cafes;
Restaurant services; Buffet restaurants; Salad bars in the nature of
restaurants; Western style restaurants; Providing of food and drink; Ice
cream shop services in the nature of a restaurant; Cafes; Carry out
restaurant services; Fast-food restaurant services

When the refusal was made final, Applicant filed a request for reconsideration
and an appeal. When the request for reconsideration was denied, the appeal was
resumed. Both Applicant and the Examining Attorney filed briefs. For the reasons
discussed herein, we affirm the Section 2(d) refusal to register.
Serial No. 87503270
- 3 -
I. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973); see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976); see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). “Not all of
the [du Pont] factors are relevant to every case, and only factors of significance to the
particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). We consider the du Pont
factors for which there is argument or evidence.
A. The Services, Trade Channels and Purchasers
We consider first the relationship between the respective services as identified in
the application and the cited registration. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (goods as
identified in involved application and cited registration compared). Both the
Serial No. 87503270
- 4 -
application and the cited registration identify “restaurant services,” and thus the
services are identical. Applicant argues that Applicant’s and Registrant’s restaurants
are “dramatically different in the style of food they offer and the atmosphere that
they offer.” 7 TTABVUE 9. It is axiomatic, however, that because the restrictions
asserted by Applicant are not listed in either the application or in the cited
registration, we may not consider these alleged differences. See Octocom Systems, Inc.
v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990) (“The authority is legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to the particular nature of an
applicant’s goods, the particular channels of trade or the class of purchasers to which
the sales of goods are directed.” (citations omitted)). The services are identical.
As for the channels of trade, when as here, the respective identifications of goods
or services are identical, the identified goods or services are presumed to travel in the
same channels of trade to the same class of purchasers. In re Viterra, Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); (“[A]bsent restrictions in the
application and registration, goods and services are presumed to travel in the same
channels of trade to the same class of purchasers.”). Thus, Applicant’s argument and
evidence of marketplace use is not persuasive. We must presume the trade channels
and classes of purchasers are the same for Applicant’s and Registrant’s restaurant
services.
Serial No. 87503270
- 5 -
We find that these factors weigh heavily in favor of finding a likelihood of
confusion.
B. Strength of the Cited Mark
With the March 26, 2018 Response to Office Action, Applicant responded to an
information requirement regarding the “significance” of KOPAN as follows:
KOPAN appearing in the mark has no significance nor is it a term of art
in the relevant trade or industry or as used in connection with the goods
or services listed in the application, or any geographical significance.

Regarding any possible translation of “KOPAN,” Applicant stated as follows:
KOPAN does not have a relevant translation in Korean, however
according to Google translate, this is a Korean word that translates to
“splinter” in English (see attached PDF). There is no Chinese or
Japanese translation for the word Kopan.

Applicant included with the response a printout of Google translate, showing a
translation of “KOPAN” as “splinter.” Neither the application nor the cited
registration contains a translation statement for “KOPAN.”
On brief, Applicant argued that “it has recently come to light that KOPAN as used
in the mark is a fanciful term that combines the words Korea and Japan.” 7
TTABVUE 4. The Examining Attorney objected to this new argument. Applicant did
not cite any record evidence to support this argument, and we do not consider it. We
further note that Applicant’s argument that “KOPAN” is “fanciful” does nothing to
change our conclusion. To the extent that Applicant is actually arguing that the term
is suggestive, it is nevertheless inherently distinctive and entitled to protection
against confusingly similar marks. See generally Two Pesos Inc. v. Taco Cabana Inc.,
Serial No. 87503270
- 6 -
505 U.S. 763, 23 USPQ2d 1081, 1083 (1992) (suggestive, arbitrary and fanciful marks
are deemed inherently distinctive).
C. The Marks
We next compare the marks in their entireties in appearance, sound, connotation
and commercial impression. Palm Bay Imps., 73 USPQ2d at 1692. The test is not
whether the marks can be distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of the services offered under
the respective marks is likely to result. Coach Servs., Inc. v. Triumph Learning LLC,
101 USPQ2d at 1721. Under actual marketing conditions, consumers do not
necessarily have the luxury of making side-by-side comparisons between marks, and
must rely upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corp.,
206 USPQ 255, 259 (TTAB 1980). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. In re Assoc. of the U.S. Army, 85 USPQ2d 1264, 1268 (TTAB 2007);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Here, the
average purchaser includes any consumer of restaurant services.
The mark in the cited registration consists solely of the term KOPAN in standard
character form. This term is incorporated in Applicant’s mark, with the
nondistinctive literal terms “IZAKAYA” and “RAMEN,” along with a design of a bowl
Serial No. 87503270
- 7 -
with chopsticks, . Applicant disclaimed the descriptive terms “IZAKAYA”
and “RAMEN.” With the March 26, 2018 Response to Office Action, Applicant stated
that “The English translation of Izakaya in the mark is Gastropub.” Applicant further
conceded on brief that “Applicant’s mark IZAKAYA KOPAN RAMEN is descriptive
as to ‘izakaya,’ meaning gastropub in Japanese, and ‘ramen,’ describing one of the
food items on the menu, both of which have been disclaimed pursuant to offices
actions.” 7 TTABVUE 5.
While a mark must be considered as a whole, it is well-settled that disclaimed,
generic or descriptive matter may have less significance in likelihood of confusion
determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight in reaching a conclusion
on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 41 USPQ2d at 1533-34; In re
Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is
often “less significant in creating the mark’s commercial impression”).
Furthermore, while we recognize that Applicant’s mark has a design element, it
is the wording by which consumers will call for or refer to the respective services. See
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (quoting
CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983)). Applicant’s
design of what appears to be a ramen “bowl,” with a “pair of chopsticks” further
Serial No. 87503270
- 8 -
emphasizes the literal element of Applicant’s mark. Since the mark in the cited
registration is registered in standard character form, there is no specific limitation
as to Registrant’s display of the word “KOPAN,” which could be presented in the same
size, font and color as in Applicant’s mark. See Viterra, 101 USPQ2d at 1910-11.
To the extent “KOPAN” may have a suggestive meaning, both marks have the
same connotation and commercial impression of offering Asian cuisine. To the extent
consumers may understand the term “KOPAN” as completely fanciful, Applicant’s
mark may be perceived as an extension of Registrant’s restaurant services. Where,
as here, the marks appear on services that are identical, the degree of similarity
between the marks necessary to support a finding of likely confusion declines.
Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d
1061, 1064 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). We find that the marks are sufficiently
similar in sight and sound, and especially so in connotation and commercial
impression, for confusion to arise when the marks are used for identical services. The
first du Pont factor also favors finding a likelihood of confusion.
II. Conclusion
After considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, we find that the services are identical, and presume that
they would travel through the same channels of trade to some of the same general
consumers. The mark in the cited registration is inherently distinctive, and we find
Serial No. 87503270
- 9 -
that the marks as a whole are similar in sight and sound and especially in connotation
and commercial impression.
Accordingly, we find a likelihood of confusion exists between Applicant’s applied-
for mark and the cited mark KOPAN for the identified services.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.