Carl’s Jr. Restaurants LLCv.AKM Food Svcs. LLC

Trademark Trial and Appeal Board

Mar 2, 2017

No. 91204459 (T.T.A.B. Mar. 2, 2017)

Mailed: March 2, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Carl’s Jr. Restaurants LLC
v.
AKM Food Svcs. LLC
_____

Opposition No. 91204459
_____

Steven J. Nataupsky of Knobbe Martens Olson Bear LLP for Carl’s Jr. Restaurants
LLC.

Andrew H. Ralston Jr. of Gross McGinley LLP for AKM Food Svcs. LLC.
______

Before Cataldo, Mermelstein and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Opposer, Carl’s Jr. Restaurants LLC, has filed a notice of opposition to
registration of application Serial No. 854372361 owned by Applicant, AKM Food
Svcs. LLC, for the mark THE GREEN PEPPER, in standard characters, for
“restaurant services” in International Class 43.2

1 Filed on October 1, 2011, seeking registration on the Principal Register based upon
Applicant’s allegation of its bona fide intent to use the mark in commerce in connection
with the identified services.
2 1 TTABVUE 1-10.
This Opinion is not a
Precedent of the TTAB
Opposition No. 91204459

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Opposer asserts a claim of likelihood of confusion with four pleaded registrations
issued on the Principal Register for GREEN BURRITO marks, namely,
Registration No. 30154543 for the mark GREEN BURRITO (“BURRITO”
disclaimed) in standard characters for “restaurant services” in International Class
43;
Registration No. 29241014 for the mark (“BURRITO”
disclaimed) for “restaurant services” in International Class 43;
Registration no. 16894545 for the mark for “restaurant
services” in International Class 43; and
Registration No. 35262336 for the mark GREEN BURRITO in standard
characters for
Food items for consumption on or off the premises, namely, chile
relleno, chile verde, grilled fish, grilled shrimp, tortilla soup, menudo,
shredded beef known as carne asada, shredded pork known as
carnitas, and grilled chicken in International Class 29 and

3 Issued on November 15, 2005. Section 8 affidavit accepted; Section 15 affidavit
acknowledged. First renewal.
4 Issued on February 1, 2005. Section 8 affidavit accepted; Section 15 affidavit
acknowledged. First renewal. “Color is not claimed as a feature of the mark.”
5 Issued on May 26, 1992. Section 8 affidavit accepted; Section 15 affidavit acknowledged.
Second renewal. “The drawing is lined for the colors red, green and yellow.”
6 Issued on November 4, 2008 with a claim of acquired distinctiveness under Trademark
Act Section 2(f). Section 8 affidavit accepted; Section 15 affidavit acknowledged.
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Food items for consumption on or off the premises, namely, burritos,
tacos, tostadas, quesadillas, tamales, chimichangas, enchiladas, fajitas,
Mexican style meat pies known as tortas, nachos, taquitos, flautas,
rice, corn chips, flour-based chips, taco chips, hard taco shells, tortilla
chips, gorditas, churros, flan, corn cakes, salsa, cheese sauces, tomato-
based sauces and seasonings in International Class 30.7

Opposer also claims that registration of Applicant’s mark will dilute the distinctive
quality of its marks. Applicant, in its answer, denied the salient allegations in the
notice of opposition and asserted as an “affirmative defense” matters that serve to
amplify its denials of Opposer’s likelihood of confusion claim.8
The Record
The record includes the pleadings and, pursuant to Trademark Rule 2.122(b)(1),
the file of Applicant’s involved application.
Opposer introduced the following testimony and evidence:
1. June 7, 2016 Testimony Deposition of Opposer’s Senior Vice President
and Secretary, Charles A. Seigel, III and Exhibits 1-27;9
2. Opposer’s June 14, 2016 First Notice of Reliance with Exhibits 1-29.
Exhibits 1-4 of Opposer’s First Notice of Reliance are copies of
Opposer’s pleaded U.S. Trademark Registrations and printouts showing
the current status and title of the registrations printed from the
USPTO’s Trademark Electronic Search System (TESS) and

7 Opposer further asserts that it has established common law rights in its GREEN
BURRITO mark. However, as discussed infra, it is not necessary for us to consider these
asserted rights in our determination herein.
8 4 TTABVUE 1-5.
9 64-67 TTABVUE. Opposer also filed the confidential testimony of Charles A. Seigel, III at
68 TTABVUE. In this decision, we will endeavor to discuss truly confidential information
only as needed in very general terms.
Opposition No. 91204459

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Assignment database. Exhibits 5-8 of Opposer’s First Notice of
Reliance are copies of the file histories for Opposer’s p leaded U.S.
Trademark Registrations. Exhibits 9-12 are Applicant’s Responses to
Opposer’s Interrogatories and Requests for Admissions. Exhibits 13-29
are printouts from Opposer’s website and social media pages
featuring the GREEN BURRITO marks and printouts from
Applicant’s website and social media pages showing use of its THE
GREEN PEPPER mark;10 and
3. Opposer’s June 14, 2016 Second Notice of Reliance with Exhibits 30-
40. Exhibits 30-40 are copies of Opposer’s filings with the United
States Securities and Exchange Commission.11
Applicant did not submit any testimony or evidence during its assigned
testimony period. Only Opposer filed a brief.
Standing and Priority.
Standing is a threshold issue that must be proven in every inter partes case. See
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,
1062 (Fed. Cir. 2014); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185, 189 (CCPA 1982) (“The facts regarding standing . . . must be
affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely
because of the allegations in its [pleading].”). To establish standing in an opposition,
an opposer must show both “a real interest in the proceedings as well as a

10 61-2 TTABUVE.
11 63 TTABUVE.
Opposition No. 91204459

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‘reasonable’ basis for his belief of damage.” See Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
In this case, Opposer made of record by notice of reliance copies of its pleaded
registrations showing their current status and title to Opposer.12 In view thereof,
Opposer has established its standing. In addition, priority is not in issue with
respect to the marks and the goods and services set out in its pleaded
registrations.13 See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000); King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion.
Our determination under Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on likelihood of confusion. In re E.I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Opposer
must establish that there is a likelihood of confusion by a preponderance of the
evidence. In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the relatedness of the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). Varying weights may be assigned to each du Pont factor depending on
the evidence presented. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). These evidentiary factors “may play

12 61 TTABVUE 13-400.
13 Our findings herein are consistent with our May 2, 2016 determination of Opposer’s
motion for summary judgment. 60 TTABVUE 4-5.
Opposition No. 91204459

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more or less weighty roles in any particular determination.” In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687-88 (Fed. Cir. 1993). The relevant du Pont factors in the
proceeding now before us are discussed below.
We focus our likelihood of confusion analysis on only one of Opposer’s marks
inasmuch as this mark is the most similar to Applicant’s mark: Registration No.
3015454 for the mark GREEN BURRITO in standard characters for “restaurant
services” in International Class 43. If we find that there is a likelihood of confusion
with this mark, there is no need for us to consider the likelihood of confusion with
Opposer’s GREEN BURRITO mark for food items or other marks including the
wording GREEN BURRITO with a design and/or additional wording. Conversely, if
we find there is no likelihood of confusion with this GREEN BURRITO mark, we
would find no likelihood of confusion with Opposer’s GREEN BURRITO mark
identifying food items or the other marks as they incorporate GREEN BURRITO as
part thereof. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
The similarity or dissimilarity of the services, trade channels and
classes of consumers.

We first consider the du Pont factors regarding the similarity or dissimilarity of
the parties’ respective services, their channels of trade and classes of consumers. In
making our determination, we must look to the services as identified in the involved
application and Opposer’s registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting
Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d
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1783, 1787 (Fed. Cir. 1990)); In re Giovanni Food Co., 97 USPQ2d 1990, 1991
(TTAB 2011).
As indicated above, Applicant’s services are “restaurant services” without
restriction as to type, cuisine or price. These services are identical to Opposer’s
similarly unrestricted “restaurant services.”14 Given the identity of the services, we
presume that the services are available through all usual channels of trade and are
offered to all normal potential purchasers. See In re Yawata Iron & Steel Co., 403
F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods,
the channels of trade and classes of purchasers are considered to be the same);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith & Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994). See also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion).
The identity of the services, trade channels and purchasers are du Pont factors
that weigh heavily in favor of a finding of a likelihood of confusion.
Fame of Opposer’s GREEN BURRITO Mark and Number and Nature
of Similar Marks in Use on Similar Goods or Services.

We turn next to the fifth du Pont factor, which requires us to consider evidence of
the fame of Opposer’s GREEN BURRITO mark and to give great weight to such

14 It is therefore unnecessary for us to consider evidence of record establishing that both
Applicant and Opposer provide quick-service Mexican restaurant services.
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evidence if it exists. See Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 F.2d 1894
(Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350,
22 USPQ2d 1453 (Fed. Cir. 1992).
Fame of an opposer’s mark or marks, if it exists, plays a “dominant
role in the process of balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1456, and “[f]amous marks thus enjoy a wide
latitude of legal protection.” Id. This is true as famous marks are
more likely to be remembered and associated in the public mind
than a weaker mark, and are thus more attractive as targets for
would-be copyists. Id. Indeed, “[a] strong mark … casts a long
shadow which competitors must avoid.” Kenner Parker Toys, 963
F.2d at 353, 22 USPQ2d at 1456. A famous mark is one “with
extensive public recognition and renown.” Id.

Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1305.
Upon careful review of the record in this case, we are not persuaded that
Opposer’s GREEN BURRITO mark is famous. It is the duty of a plaintiff asserting
that its mark is famous to clearly prove it. Leading Jewelers Guild Inc. v. LJOW
Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
Opposer argues that it has used the GREEN BURRITO mark for over 30 years,
and has enjoyed substantial “sales from GREEN BURRITO menu items”15 during
this time. Opposer also argues that its “Carl’s Jr. restaurants are the 22nd largest
quick service restaurant chain in the United States, and about half of those Carl’s
Jr. restaurants are dual-branded with the GREEN BURRITO mark.”16 Opposer

15 68 TTABVUE 51-53 (confidential); 66 TTABUVE 86-229.
16 69 TTABVUE 9. 68 TTABVUE 25, 55 (confidential); 66 TTABUVE 86-435; 67 TTABVUE
2-70.

Opposition No. 91204459

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further argues that its GREEN BURRITO mark appears in connection with over
600 restaurants in the United States that are owned or franchised by Opposer;17
that its GREEN BURRITO marks appear in extensive print, radio and television
advertisements and on Opposer’s Internet webpage;18 that its Facebook page has
over 1.2 million “likes” and its Twitter site has over 77,000 followers, both
prominently featuring the GREEN BURRITO mark.19
We note that Opposer has not placed its sales and social media figures in a
context that would prove fame. See Bose Corp. v. QSC Audio Products, 63 USPQ2d
at 1309. Nonetheless, even these raw numbers of product sales social media
exposure, along with Opposer’s additional testimony and evidence, demonstrates
that Opposer has enjoyed substantial sales at its restaurants branded under the
GREEN BURRITO mark, and has received social media recognition from its
customers. However, such evidence falls short of demonstrating the extent to which
such sales and social media following translate into widespread recognition of the
GREEN BURRITO mark among the general public. In addition, Opposer’s annual
sales figures are not comparable to annual advertising or sales figures for other
marks we have found to be famous. See, e.g., Motion Picture Assn. of America, Inc. v.
Respect Sportswear Inc., 83 USPQ2d 1555, 1560 (TTAB 2007) (opposer’s member
annually spent 4 billion dollars on advertisements and promotion). On the other
hand, there is no evidence of use or registration by third parties of marks similar to

17 68 TTABVUE 25 (confidential).
18 Id. at 55.
19 67 TTABVUE 80-122.
Opposition No. 91204459

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GREEN BURRITO or other evidence that GREEN BURRITO is a weak mark
entitled to only a narrow scope of protection.
Accordingly, we find on this record that the evidence is insufficient to establish
that Opposer’s GREEN BURRITO mark is famous for purposes of our likelihood of
confusion determination. Nevertheless, we find that the evidence is sufficient to
show that Opposer’s GREEN BURRITO mark has achieved at least some degree of
recognition and strength in the restaurant market and that the mark is therefore
entitled to a broader scope of protection than might be accorded a mark with less
recognition.20 This du Pont factor weighs in favor of a finding of likelihood of
confusion.
The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.

We next consider the marks, comparing them for similarities and dissimilarities
in appearance, sound, connotation and commercial impression. See Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). Similarity in any one of these elements is sufficient to
support a determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca-
Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the
similarity in either form, spelling or sound alone is likely to cause confusion”); In re
White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (“In appropriate cases, a

20 While we have discussed the evidence of fame relating to Opposer’s GREEN BURRITO
mark, we also point out that the evidence regarding Opposer’s other marks is insufficient to
show that they are famous. Similarly, we are not persuaded by Opposer’s reliance on
previous determinations by this tribunal that its Carl’s Jr. marks are famous inasmuch as
the Carl’s Jr. marks are not at issue herein, and any determination of fame must be made
on the record adduced in this case, not in another case on a different record.
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finding of similarity as to any one factor (sight, sound or meaning) alone ‘may be
sufficient to support a holding that the marks are … similar.’”) (citations omitted)).
Because the services, as discussed above, are virtually identical, the degree of
similarity between the marks necessary to find likelihood of confusion declines.
Bridgestone Americas Tire Operations LLC v. Federal Corp., 673 F.3d 1330, 102
USPQ2d 1061, 1064 (Fed. Cir. 2012); Coach Servs., Inc. v. Triumph Learning LLC,
101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992), cert. denied,
506 U.S. 1034 (1992).
In this case, Opposer’s mark is GREEN BURRITO. Applicant’s mark is THE
GREEN PEPPER. The parties’ marks are similar to the extent that both Opposer’s
mark and Applicant’s mark begin with the identical term GREEN. The marks differ
to the extent that in Opposer’s mark, the wording GREEN modifies BURRITO and
in Applicant’s mark, the wording GREEN modifies PEPPER. The definite article
“THE” in Applicant’s mark possesses little source-identifying significance. See Jay-
Zee, Inc. v. Hartfield-Zodys, Inc., 207 USPQ 269, 271-2 (TTAB 1980) (“Since the
psychological and marketing impact of petitioner’s mark in its earlier version
clearly was derived from the word ‘IMAGE,’ the omission of the word ‘THE’ (the
definite article serving merely to emphasize ‘IMAGE’) from the later version did not
interrupt the continuity of use”); United States National Bank of Oregon v. Midwest
Savings and Loan Assn., 194 USPQ 232, 236 (TTAB 1977) (“The definite article
‘THE’ likewise adds little distinguishing matter because the definite article most
Opposition No. 91204459

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generally serves as a means to refer to a particular business entity or activity or
division thereof, and it would be a natural tendency of customers in referring to
opposer’s services under the mark in question to utilize the article ‘THE’ in front of
‘U-BANK’ in view of their uncertain memory or recollection of the many marks that
they encounter in their everyday excursion into the marketplace”).
We find that the wording GREEN in the parties’ marks is the dominant feature
thereof. This is because a burrito is a common menu item in Mexican restaurants,
served by Opposer and Applicant.21 As such, the term BURRITO is, at best, highly
suggestive of Opposer’s services. In addition, the term GREEN modifies the term
that follows and denotes a green pepper, an ingredient in many types of foods
including Mexican food. It is a well-established principle that, in articulating
reasons for reaching a conclusion on the issue 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 of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In addition, the significance of GREEN
in the parties’ marks is reinforced by its location as the first portion thereof. Presto
Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897) TTAB 1988) (“It is
often the first part of a mark which is most likely to be impressed in the mind of a
purchaser and remembered.”). See also Century 21 Real Estate Corp. v. Century Life

21 61 TTABVUE 534-542; 67 TTABVUE 77.
Opposition No. 91204459

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of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon
encountering the marks, consumers must first notice the identical lead word).
Based upon the above analysis, we find that Opposer’s GREEN BURRITO mark is
relatively similar to THE GREEN PEPPER in appearance and, to a lesser extent, in
sound. Recognizing the obvious differences between the terms in the marks, we find
that the similarities, particularly in appearance, outweigh the differences, and that
the marks convey similar commercial impressions. Put another way, we find that
consumers viewing Applicant’s THE GREEN PEPPER mark would believe that
Opposer established this mark to denote another restaurant, but nonetheless
pointing to the same source as its GREEN BURRITO mark.
Similarity in any one of the elements of sound, appearance, meaning, or
commercial impression is sufficient to support a determination of likelihood of
confusion. See Krim-Ko Corp. v. The Coca-Cola Co., 156 USPQ at 526 (“It is
sufficient if the similarity in either form, spelling or sound alone is likely to cause
confusion”); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (“In
appropriate cases, a finding of similarity as to any one factor (sight, sound or
meaning) alone ‘may be sufficient to support a holding that the marks are
confusingly similar.’”) (citations omitted)).
In view of the foregoing, we find that Applicant’s THE GREEN PEPPER mark is
overall more similar to Opposer’s registered GREEN BURRITO mark than
dissimilar. This du Pont factor weighs in favor of a finding of likelihood of confusion.

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Actual confusion.
Neither party has alleged any instances of actual confusion by consumers as to
the source of the services. Opposer argues that “because Applicant’s use of its THE
GREEN PEPPER mark has been so geographically limited, there has been little
opportunity for actual confusion.”22 Nonetheless, Opposer is correct that proof of
actual confusion is not necessary to show a likelihood of confusion, and its absence
is not dispositive. See Herbko, Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64
USPQ2d 1375, 1380 (Fed. Cir. 2002) (“a showing of actual confusion is not
necessary to establish a likelihood of confusion.”); Weiss Assocs. Inc. v. HRL Assocs.
Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1843 (Fed. Cir. 1990); Giant Food Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). See
also Motion Picture Ass’n of Am., Inc. v. Respect Sportswear, Inc., 83 USPQ2d 1555,
1564 (TTAB 2007) (actual confusion factor was “neutral” where “applicant ha[d] not
introduced any evidence to the extent of its use of the applied-for mark.”) This du
Pont factor is neutral.
Applicant’s intent.
Next, Opposer argues that “the striking similarity between Applicant’s THE
GREEN PEPPER mark and Opposer’s GREEN BURRITO Marks and the identical
nature of the parties’ services suggests intentional copying.”23 To the extent
Opposer is arguing that Applicant adopted its mark in bad faith, there is
insufficient evidence to show or imply Applicant’s motive. And while we find the

22 69 TTABVUE 28.
23 Id.
Opposition No. 91204459

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marks to be similar, they are not so highly similar as to suggest intentional copying.
Mere knowledge of the existence of Opposer’s mark does not, in and of itself,
constitute bad faith. See Action Temporary Services Inc. v. Labor Force Inc., 870
F.2d 1563, 10 USPQ2d 1307, 1310 (Fed. Cir. 1989); Ava Enterprises, Inc. v. Audio
Boss USA, Inc., 77 USPQ2d 1783, 1787 (TTAB 2006). The record in this case simply
does not show that Applicant intentionally sought to trade on Opposer’s good will.
Balancing the factors.
After considering all of the applicable du Pont factors, we find that Applicant’s
mark, THE GREEN PEPPER, for restaurant services is likely to cause confusion
with Opposer’s GREEN BURRITO mark, for virtually identical services that are
available through the same channels of trade to the same classes of ordinary
consumers.
Dilution.
Given our determination above that Opposer has failed to prove the fame of its
marks for purposes of its likelihood of confusion claim, Opposer cannot show that its
marks are famous for dilution purposes and thus cannot meet its burden of proving
dilution. See Palm Bay Imports Inc., 73 USPQ2d at 1694; Coach Services Inc. v.
Triumph Learning LLC, 96 USPQ2d 1600, 1610 (TTAB 2010) (“Fame for likelihood
of confusion and dilution is not the same. Fame for dilution requires a more
stringent showing.”).
DECISION: The opposition is sustained on the ground of likelihood of confusion.
The Opposition is dismissed with prejudice on the ground of dilution.