Carl's Jr. Restaurants LLC (by assignment from Carl Karcher Enterprises, Inc.)v.Carl's Bar & Delicatessen, Inc.

Trademark Trial and Appeal Board

Sep 26, 2013

No. 91188150 (T.T.A.B. Sep. 26, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Carl’s Jr. Restaurants LLC (by assignment from Carl Karcher Enterprises, Inc.)1

v.

Carl’s Bar & Delicatessen, Inc.
___

Opposition No. 91188150
to Application Serial No. 77403163
___

Steven J. Natuapsky and Jeffrey L. Van Hoosear of Knobbe, Martens, Olson &
Bear, LLP for Carl Karcher Enterprises, Inc.

Kenneth H. Jack of Davis & Jack, L.L.C. for Carl’s Bar & Delicatessen, Inc.
______

Before Grendel, Mermelstein and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Applicant Carl’s Bar & Delicatessen, Inc. (“applicant”) seeks registration of
the mark CARL’S BAR, in standard characters and with BAR disclaimed, for

1 Opposer’s unopposed motion to substitute Carl’s Jr. Restaurants LLC for Carl
Karcher Enterprises Inc. as opposer, filed May 16, 2013, is granted. Trademark Rule
2.127(a); TBMP § 512.01 (3d ed. rev.2 2013). The assignment of original opposer’s pleaded
registrations to Carl’s Jr. Restaurants LLC, which is one of a long series of transactions
involving the pleaded registrations on April 1 and 2, 2013, is recorded at Reel 4995/Frame
0829.
Opposition No. 91188150

2

“Restaurant, bar and catering services.”2 In its notice of opposition,3 Carl’s Jr.
Restaurants LLC alleges prior use and registration of CARL’S JR. and other marks
including CARL’S for restaurant services,4 and that use of applicant’s mark is likely
to cause confusion with, and dilute, opposer’s marks.5 In its answer, applicant
denies the salient allegations in the notice of opposition and specifically asserts that
its “Common Law rights long pre-date any of Opposer’s Common Law rights.”
Answer ¶ 7. Applicant also asserts, as affirmative defenses: (1) “estoppel by virtue
of the Opposer’s history of declaring in its own U.S.P.T.O. filings its understanding
that confusion in the marketplace … would not arise;” and (2) laches. Id. ¶¶ 10, 11.
Applicant did not pursue, or prove, any of its defenses, which have accordingly been
waived and will be given no further consideration. Miller v. Miller, 105 USPQ2d
1615, 1616 n.3 (TTAB 2013); Baroness Small Estates Inc. v. American Wine Trade
Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012).

2 Application Serial No. 77403163, filed February 21, 2008, alleging first use dates of
January 17, 2006.
3 Opposer filed a consolidated notice of opposition to application Serial Nos. 77403163
and 77403149, but applicant expressly abandoned the latter application, without opposer’s
consent, during the course of this proceeding. Accordingly, in its order of September 15,
2010, the Board entered judgment against applicant with respect to that application.
4 Opposer pleads ownership of registrations for the marks CARL’S JR. (Registration
No. 901315, issued October 20, 1970) and CARL’S JR. JR. (Registration No. 2141498,
issued March 3, 1998), both in typed format, CARL’S JR. (Stylized) with a color claim
(Registration No. 2290206, issued November 2, 1999), CARL’S JR. & Design with a color
claim (Registration No. 2288997, issued October 26, 1999), CARL’S JR. CHARBROILED
BURGERS & Design (Registration No. 3524587, issued October 28, 2008) and CARL’S
CLASSICS & Design (Registration No. 3489655, issued August 19, 2008), all for
“restaurant services”; and CARL’S JR. in typed format for related products including paper
napkins, drinking straws and paper cups (Registration No. 1400272, issued July 8, 1986).
5 The record reveals that the original and current opposer are part of a group of
affiliated companies which work together to operate the CARL’S JR. restaurant business,
and for convenience they are collectively referred to herein as “opposer.”
Opposition No. 91188150

3

On January 4, 2010, applicant filed its response to opposer’s motion for
summary judgment, along with an unconsented cross-motion to amend its involved
application to delete “restaurant and catering services” from its identification of
services. In its August 11, 2010 order denying opposer’s motion for summary
judgment, the Board deferred consideration of the motion to amend until final
hearing, Order of August 11, 2010 at 4, and we therefore address this motion below.
The Record
The record consists of the pleadings, the file of the involved application,
opposer’s notice of reliance (“NOR”) on its pleaded registrations, annual reports filed
with the Securities and Exchange Commission and other printouts from websites
(TTABVue Docket Nos. 19 and 23)6 and the testimonial deposition of Hilary
Burkemper, Carl Karcher Enterprises’s corporate counsel, and the exhibits thereto
(TTABVue Docket Nos. 26-31) (“Burkemper Tr.”). Opposer’s notice of reliance also
includes photographs and promotional, franchise and other materials which are not
admissible under notice of reliance pursuant to Trademark Rule 2.122(e) or Safer
Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010), and which have
therefore been given no consideration.
Applicant did not introduce any testimony or other evidence.7 Both parties
filed trial briefs, but only opposer appeared (by video) at the oral hearing held on
September 10, 2013.

6 Opposer filed a single notice of reliance, in two parts.
7 In the Board’s order denying opposer’s motion for summary judgment and deferring
consideration of applicant’s motion to amend, the parties were “reminded that evidence
Opposition No. 91188150

4

Background
Opposer opened its first full-service restaurant, Carl’s Drive-In Barbeque, in
California in 1945. The business expanded when opposer opened the first two
CARL’S JR. restaurants, also in California, in 1956. Opposer’s “fast-food” or “quick-
service” restaurant business continued to expand, with opposer opening its first
restaurant outside of California in 1979. Carl Karcher Enterprises became publicly
traded in 1981, opposer expanded to Arizona in 1982 and was first franchised in
1984. Burkemper Tr. 29-31 and Exs. 17, 18. There are now over 1200 CARL’S JR.
restaurants, in a number of mostly Western and Southwestern states, and opposer
has approximately 11,000 employees. Id. at 29-30 and Exs. 18 and 35. Opposer
offers beer at “some” of its restaurants, but there is no evidence when it first started
doing so or how many of its locations offer beer. Id. at 25-26 and Exs. 14, 15.
Standing and Priority
During its trial period, opposer offered in evidence plain copies of its pleaded
registrations (the most recent of which issued in 2008) with its notice of reliance
and through the Burkemper deposition. The copies are of the type placed in an
application file upon registration; they reflect the status of and title to the
registrations as of the day the registrations issued. However, they do not reveal the
current status or title of the registrations, as required under Trademark Rule
2.122(d)(2). Copies of Office records submitted to show the current status of and

submitted in support of or in opposition to a motion for summary judgment is of record only
for consideration of that motion. Any such evidence to be considered at final hearing must
be properly introduced during the appropriate trial period.” Order of Aug. 11, 2010, at 3
n.2.
Opposition No. 91188150

5

title to pleaded registrations must be reasonably contemporaneous with their
submission. Compare Hard Rock Café Int’l (USA) Inc. v. Elsea, 56 USPQ2d 1504,
1511 (TTAB 2000) (status and title copies prepared three years prior to opposition
not reasonably contemporaneous) with Royal Hawaiian Perfumes, Ltd. v. Diamond
Head Prods. Of Haw., Inc., 204 USPQ 144, 146 (TTAB 1979) (status and title copy
of registration prepared two months prior to filing of opposition is reasonably
contemporaneous). The most recently-issued of opposer’s pleaded registrations was
issued several years prior to the filing of opposer’s notice of reliance. Accordingly,
the evidence submitted with opposer’s notice of reliance is not acceptable as
evidence of the status of and title to opposer’s pleaded registrations. Trademark
Rule 2.122(d)(2).
During her testimony, opposer’s witness, Ms. Burkemper, identified plain
copies of the pleaded registrations which are essentially identical to the copies
submitted with opposer’s notice of reliance, and testified that they are all owned by
Carl Karcher Enterprises Inc.8 Burkemper Tr. at 13-14. Ms. Burkemper also
testified regarding the dates on which the registrations issued, the goods and
services identified therein and the dates of first use of the pleaded marks. Yet she
did not specifically describe the current status of the pleaded registrations in the
same detailed manner, instead merely agreeing that they “are all held by Carl
Karcher Enterprises, Inc.” Id. (emphasis supplied). This could be read to imply

8 Moreover, opposer’s motion to substitute indicates that opposer is the current owner
of the registrations. See footnote 1. Nonetheless, neither opposer’s motion nor the evidence
submitted with it may take the place of trial testimony.
Opposition No. 91188150

6

that the pleaded registrations were valid and subsisting on the date of her
testimony, because it would be curious to say that opposer’s affiliate holds (present
tense) a registration which is no longer valid. We find it appropriate in this case to
“infer a claim” that opposer’s pleaded registrations were valid on the date of Ms.
Burkemper’s testimony on this basis. See Citigroup Inc. v. Capital City Bank Group
Inc., 94 USPQ2d 1645, 1653 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253
(Fed. Cir. 2011) (citations omitted) (inferring “a claim that opposer is the owner of
the registrations because of the nature of the testimony”). That is, when we
consider the nature and content of Ms. Burkemper’s testimony regarding the
registrations, including their status, and weigh it against applicant’s failure to
object to opposer’s ownership or the validity of opposer’s pleaded registrations in
any manner, we infer from the entirety of Ms. Burkemper’s testimony that the
registrations were valid on the date of her testimony. See id. They are therefore
properly of record.9
Opposer’s pleaded registrations and its allegations of a likelihood of confusion
and dilution establish its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943,
945, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). And because the pleaded registrations
are of record, and applicant has not counterclaimed for cancellation of any of the

9 A better, more efficient, simpler and less expensive practice would have been for
opposer to take advantage of Trademark Rule 2.122(d)(1). That Rule allows a plaintiff to
introduce a pleaded registration into evidence by attaching to its initial pleading “a current
printout of information from the electronic database records of the USPTO showing the
current status and title of the registration.”
Opposition No. 91188150

7

registrations, priority is not at issue in this proceeding. King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Even if we were to find that opposer failed to prove the status of its pleaded
registrations, the evidence of opposer’s common law use would nevertheless
establish opposer’s standing and priority. In fact, opposer has continuously used
CARL’S and variations thereof for restaurant services since 1945. Burkemper Tr.
29-31, 44-45 and Exs. 17, 18, 35. This establishes opposer’s standing. Giersch v.
Scripps Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (“Petitioner has
established his common-law rights in the mark DESIGNED2SELL, and has thereby
established his standing to bring this proceeding.”); Syngenta Crop Prot. Inc. v. Bio-
Chek LLC, 90 USPQ2d 1112, 1118 (TTAB 2009) (testimony that opposer uses its
mark “is sufficient to support opposer’s allegations of a reasonable belief that it
would be damaged …” where opposer alleged likelihood of confusion).
As for priority, because applicant failed to properly introduce any evidence,
the earliest priority date upon which it may rely is the filing date of its involved
application, February 21, 2008. Cent. Garden & Pet Co. v. Doskocil Mfg. Co., __
USPQ2d ___, 2013 WL 4635990 at *5 (TTAB Aug. 16, 2013) (“for when an
application or registration is of record, the party may rely on the filing date of the
application for registration, i.e., its constructive use date”); Syngenta, 90 USPQ2d at
1119 (“applicant may rely without further proof upon the filing date of its
application as a ‘constructive use’ date for purposes of priority”). Because opposer’s
use predates applicant’s filing date, opposer has priority of use. Standard Knitting
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9

as here, “an applicant seeks to prove a date [of first use] earlier than the date
alleged in its application,” in this case January 17, 2006, the applicant must prove
the “earlier date by clear and convincing evidence.” Hydro-Dynamics Inc. v. George
Putnam & Co. Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773-74 (Fed. Cir. 1987). Here,
the brief declaration of applicant’s attorney about events which took place almost 70
years ago, including vague reference to a “successive chain of ownership” about
which there is no other or supporting evidence of record, is insufficient to meet this
higher burden of proof, especially because applicant’s attorney’s “testimony” was
not subject to cross-examination.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in 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
(Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). Opposer bears the burden of establishing that there is a

is at least double hearsay, and does not meet the requirements for testimony submitted
during trial of an inter partes proceeding. Testimony must be taken by deposition during a
party’s assigned trial period, and other parties are afforded the right to cross-examine the
witness. Trademark Rule 2.123. “Evidence not obtained and filed in compliance with [Rule
2.123] will not be considered,” Trademark Rule 2.123(l), and in fact, the Board routinely
strikes out-of-court testimonial statements such as applicant’s counsel’s declaration unless
the parties stipulate to allow testimony by declaration, which they have not done here. See
e.g., Trademark Rule 2.123(b); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953,
1956 (TTAB 2008).
Opposition No. 91188150

10

likelihood of confusion by a preponderance of the evidence. Cunningham, 222 F.3d
at 943, 55 USPQ2d at 1848.
Similarity of the Marks
We must consider the similarities and dissimilarities of the parties’ marks in
appearance, sound, meaning, and commercial impression. Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). 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 their entireties that confusion as to the source of the services
offered under the respective marks is likely to result. The focus is 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). Here, we focus on opposer’s primary mark, CARL’S JR., and
compare it to applicant’s mark CARL’S BAR.
The parties’ marks are quite similar, in that they share and begin with
CARL’S.11 Consumers are likely to focus on the first part of the parties’ marks. See
Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“[I]t is often the first part of a mark which is most likely to be impressed upon the

11 Opposer argues in its brief that it owns “a family of marks using the prominent word
‘CARL’S’ in connection with restaurant services ….” Opposer’s Brief at 2. However,
opposer failed to plead or prove any of the elements necessary to establish that it owns a
family of marks, and therefore we consider opposer’s pleaded marks individually. See,
Citigroup, 94 USPQ2d at 1657 (“opposer has not established that it had a family of marks
prior to applicant’s first use of its mark. Therefore, the likelihood of confusion analysis will
be based solely on the use of the individual marks in opposer’s registrations”); Marion
Laboratories Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215, 1218 (TTAB 1988)
(quoting Land-O-Nod Co. v. Paulison, 220 USPQ 61, 65-66 (TTAB 1983)).
Opposition No. 91188150

11

mind of a purchaser and remembered”); see also Palm Bay Imports, 396 F.3d at
1369, 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “veuve” is the first word in the mark and the first word to
appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks,
consumers will first notice the identical lead word).
This is especially true in this case, because, as opposer points out, “both
Applicant’s CARL’S BAR mark and Opposer’s CARL’S Marks feature the
‘possessive’ form,” Opposer’s Trial Brief at 12, and may convey to some consumers
that the same CARL owns both applicant’s bar and opposer’s restaurants.
Furthermore, applicant uses CARL’S followed by BAR, which is at least highly
descriptive of applicant’s “bar services” (applicant has disclaimed the word BAR)
and therefore has little significance in our likelihood of confusion determination.
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, 224 USPQ at 752); In re Dixie
Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion,
93 USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not disclaimed word
ROADHOUSE, is dominant element of BINION’S ROADHOUSE); In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often
“less significant in creating the mark’s commercial impression”). Similarly, while
Opposition No. 91188150

12

opposer most commonly uses CARL’S with JR., the abbreviation for the word
“junior,” that element of opposer’s mark may be “[u]sed to distinguish a son from his
father when they have the same given name,” or can mean “[l]ower in rank or
shorter in length of tenure.”12 The term “jr.” therefore merely modifies, and draws
attention to, the word CARL’S. And while CARL is a personal name, and we may
assume that it is used in a variety of service marks and trade names, there is no
evidence that it is used by any third parties or is otherwise weak for restaurant, bar
or related services. In short, considering the parties’ marks in their entireties, we
find that the similarities in sound, appearance, and meaning greatly outweigh the
dissimilarities. This factor therefore weighs heavily in favor of a finding of
likelihood of confusion.
Services and Channels of Trade
Turning to the parties’ services and channels of trade, we must consider the
services as identified in applicant’s involved application and opposer’s pleaded
registrations, or in connection with which opposer’s marks are in use. See Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.
2002); Octocom Systems, Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). Here, applicant’s mark and most of opposer’s marks are used for “restaurant
services.” The services are therefore identical in part, which also weighs heavily in

12 http://www.thefreedictionary.com/junior. The Board may take judicial notice of
dictionary definitions. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

Opposition No. 91188150

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favor of a likelihood of confusion. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion
must be found with respect to a class of goods or services in an application if there is
likely to be confusion with respect to any item that comes within the identification
of the goods or services in that class).
As noted, applicant filed a motion to amend its application to identify only
“bar services.” Even if the amendment were allowed, the parties’ services would
still be at least related. We do not require evidence to determine that many
restaurants serve alcoholic drinks, though there is evidence that at least some of
opposer’s restaurants do so. Burkemper Tr. at 25-26 and Exs. 14, 15. Furthermore,
many restaurants have bars, and some restaurants serve food at their bars.
Similarly, many establishments which are primarily bars serve food. In addition,
food and alcoholic and other beverages are often consumed together. In short, even
if we were to grant applicant’s motion to amend, this factor would still weigh in
favor of a finding of likelihood of confusion.
As for channels of trade, none of the services identified in the involved
application or opposer’s pleaded registrations is limited with respect to channels of
trade. Therefore we must presume that applicant’s services are sold in the same
channels of trade as opposer’s restaurant services and bought by the same classes of
purchasers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012). See also Hewlett-Packard Co. v. Packard Press Inc., 62 USPQ2d 1001;
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815
Opposition No. 91188150

14

(Fed. Cir. 1987); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003). These
factors also weigh heavily in favor of finding a likelihood of confusion.
Fame/Strength of Opposer’s Marks
Where fame of an opposer’s mark exists, it “plays a ‘dominant role in the
process of balancing the DuPont factors,’ … and ‘[f]amous marks thus enjoy a wide
latitude of legal protection.’” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d
1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (quoting Recot, Inc. v. Benton, 214
F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)). In fact, it is settled that a
strong mark “casts a long shadow which competitors must avoid.” Kenner Parker
Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
Cir. 1992).
While consumer surveys may provide direct evidence of fame, “fame of a
mark may be measured indirectly, among other things, by the volume of sales and
advertising expenditures of the goods traveling under the mark, and by the length
of time those indicia of commercial awareness have been evident.” Bose, 293 F.3d at
1367, 63 USPQ2d at 1305. Other relevant factors include “length of use of the
mark, market share, brand awareness, licensing activities, and variety of goods
bearing the mark.” Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1720 (Fed. Cir. 2012).
Here, opposer has established that it has continuously used CARL’S JR. for
more than 50 years, and that its use has expanded consistently and significantly
during that time. Opposer is ranked the 22nd largest “quick-service” restaurant
Opposition No. 91188150

15

chain in the United States and the 8th largest hamburger chain in the United
States. Burkemper Tr. at 45-46 and Exs. 36 and 37. Its sales and advertising
expenses are significant and impressive by any measure: in 2010, for example, sales
at CARL’S JR. restaurants exceeded $800 million and opposer spent over $36
million on advertising CARL’S JR. restaurants. Burkemper Tr. at 32-33 and Ex. 19;
see also, id. at 33-44 and Exs. 20-34 (setting forth sales and advertising
expenditures from 1995-2009). This evidence establishes that CARL’S JR. is at
least well-known in opposer’s trading area.
We note that opposer’s evidence of continuous, widespread and expanding
use, and sales success, is in part identical and in other ways similar to the evidence
opposer presented in Carl Karcher Enterprises Inc. v. Stars Restaurants, 35
USPQ2d 1125, 1130 (TTAB 1995). In this case, opposer introduced evidence of its
sales and advertising expenses in the years between 1996 and 2010, and these
figures are at least comparable to what they were in 1995, when we found that
opposer’s “star” marks -- some of which appear in the design elements of marks
which opposer pleads in this case – “are well known in [opposer’s] specific area of
operation, namely California, Arizona, Oregon and Nevada.” Id., 35 USPQ2d at
1130. In short, based on the evidence opposer introduced in this case, 18 years after
Carl Karcher Enterprises, while it remains true that opposer is not a national
enterprise, at the very least we find here as we found in 1995 based on similar but
less extensive evidence that “opposer has established local notoriety in its trading
area.” Id. Its evidence is therefore at the very least sufficient to establish that the
Opposition No. 91188150

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CARL’S JR. mark is quite strong and entitled to a broad scope of protection. This
factor also weighs in favor of a finding of likelihood of confusion.
Lack of Actual Confusion
While applicant argues that the lack of any evidence of actual confusion
establishes that there is no likelihood of confusion, Applicant’s Brief at 2-3, we
disagree. It is settled that “[t]he test is likelihood of confusion not actual
confusion…. It is unnecessary to show actual confusion in establishing likelihood of
confusion.” Weiss Associates, 902 F.2d 1546, 14 USPQ2d 1840, 1842-43 (Fed. Cir.
1990); see also, Apple Computer v. TVNET.net, Inc., 90 USPQ2d 1393, 1397 (TTAB
2007) (“applicant’s arguments regarding the lack of actual confusion and its good
faith adoption of its VTUNES.NET mark do not raise genuine issues of material
fact that preclude entry of summary judgment”). In fact, this factor is neutral,
because there is no evidence regarding the extent of applicant’s use of its mark.
The probative value of the absence of actual confusion depends upon there being a
significant opportunity for actual confusion to have occurred. Barbara's Bakery Inc.
v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007). Here, applicant has not
demonstrated that consumers have been exposed to the marks in the same
marketplace for such time and under conditions such that confusion, if likely, would
have occurred. In fact, there is no evidence that opposer operates in Kansas, where
applicant’s bar is located, so the lack of actual confusion in this record is not
indicative of whether confusion would be likely if the parties were to operate in the
same market. We accordingly treat this factor as neutral.
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Other Factors
In the absence of any evidence bearing on the remaining du Pont factors, we
find that those factors are all neutral.
Conclusion
Opposer has established its claim of priority and likelihood of confusion by a
preponderance of the evidence. In fact, the parties’ marks are quite similar, their
services are in-part identical and in-part related, there are no limitations with
respect to the parties’ channels of trade and opposer’s CARL’S JR. mark is at the
very least quite strong. The parties’ marks are therefore confusingly similar, even if
we were to grant applicant’s motion to limit its identification to “bar services,”
notwithstanding the lack of any evidence of actual confusion. Accordingly, after a
careful review of all evidence of record, and based on a preponderance of the
evidence, applicant’s motion to amend its identification of services is denied as
moot,13 and we conclude that there is a likelihood of confusion between the parties’
marks.
Decision: The opposition is sustained and registration of applicant’s mark
is refused under Section 2(d) of the Trademark Act.14

13 However, contrary to opposer’s arguments in its brief, there was nothing improper or
inappropriate in applicant moving to amend its identification of services without opposer’s
consent. Trademark Rule 2.133.
14 Because the opposition is sustained, there is no need to reach opposer’s dilution
claim.