Carmine’s Broadway Feast Inc.

Trademark Trial and Appeal Board

Feb 25, 2010

No. 78934642 (T.T.A.B. Feb. 25, 2010)

Mailed:
February 25, 2010
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Carmine's Broadway Feast Inc.
________

Serial No. 78934642
_______

Arlana S. Cohen and Sujata Chaudhri of Cowan, Liebowitz &
Latman, P.C. for Carmine's Broadway Feast Inc.

Benji Paradewelai, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Walsh, Cataldo and Taylor, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Carmine's Broadway Feast Inc. (applicant) has applied
to register the mark shown here on the Principal Register
for services identified as “restaurant and bar services,
banquet services, catering services and restaurant take-out
services” in International Class 43.

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78934642
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Applicant filed the application on July 21, 2006 and
based the application on its statement that it first used
the mark anywhere and first used the mark in commerce in
1992. The application also includes the following
statements:
Color is not claimed as a feature of the mark.

and

The name(s), portrait(s), and/or signature(s)
shown in the mark does (sic) not identify a
particular living individual.

The Examining Attorney has issued a final refusal
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on
the grounds that applicant’s mark is likely to be confused
with the marks in the following two registrations on the
Principal Register owned by different parties:
1. Registration No. 1444609 for the mark shown
here for services identified as “restaurant
services” in International Class 42.

Serial No. 78934642
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The registration issued on June 23, 1987 and it
has been renewed.

2. Registration No. 2864349 for the mark shown
here for services identified as “restaurant
services” in International Class 43, with
“restaurant” disclaimed.

The registration issued on July 20, 2004.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods [or
Serial No. 78934642
4
services] of the applicant, to cause confusion….” 15
U.S.C. § 1052(d). The opinion in In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977)
sets forth the factors to consider in determining
likelihood of confusion. Here, as is often the case, the
crucial factors are the similarity of the marks and the
similarity of the services in the application and the cited
registrations. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 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.”).
As to the services, the services in the application
and the cited registrations need not be identical to find a
likelihood of confusion under Section 2(d). They need only
be related in such a way that the circumstances surrounding
their marketing would result in relevant customers
mistakenly believing that the services originate from the
same source. In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978).
Furthermore, in comparing the services and the
channels of trade for those services we must consider the
services as identified in the application and cited
Serial No. 78934642
5
registrations. 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 [or
services] set forth in the application regardless of what
the record may reveal as to the particular nature of an
applicant’s goods [or services], the particular channels of
trade or the class of purchasers to which the sales of
goods [or services] are directed.”).
In this appeal applicant does not argue that the
services differ. Obviously, the services are identical, in
part, and otherwise closely related. This is an important
fact which applicant, by its silence as to the services,
tends to discount. In this connection we note that, “… the
degree of similarity [between the marks] necessary to
support the conclusion of likely confusion declines” when
the services are identical. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1992).
We now turn to the comparison of the marks. In our
comparison, we must consider the appearance, sound,
connotation and commercial impression of the marks at
issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Serial No. 78934642
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Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005).
The Board has stated, “… it is well established that
the test to be applied in determining likelihood of
confusion is not whether marks are distinguishable on the
basis of a side-by-side comparison but rather whether they
so resemble one another as to be likely to cause confusion,
and this necessarily requires us to consider the
fallibility of memory over a period of time. That is to
say, the emphasis must be 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)
(internal citations omitted).
Furthermore, 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).
More specifically, if a mark includes both a word and
a design, then the word is normally accorded greater weight
Serial No. 78934642
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because it would be used by purchasers to request the goods
or services. In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987).
In this case applicant argues:
Applicant’s mark presents a highly stylized
form of the possessive form of the given name
“Carmine” in a unique font. The Cited Marks also
present the possessive form of the given name
“Carmine”, albeit in very different stylizations
that do not resemble the stylization of
Applicant’s Mark. Since given names are entitled
to a narrow scope of protection, the difference
in the stylizations of Applicant’s Mark, on the
one hand, and the Cited Marks, on the other, are
sufficient to obviate any likelihood of confusion
in this case because consumers are used to
distinguishing between these different
stylizations.

Applicant’s Brief at 9-10.
On the other hand, the Examining Attorney argues that
CARMINE’S is the dominant element in applicant’s mark and
in both of the cited marks, and further that the
differences in the displays and designs are not sufficient
to distinguish applicant’s mark from the cited marks.
We conclude that applicant’s mark is highly similar to
both cited marks. We concur with the Examining Attorney in
finding that CARMINE’S is the dominant element in each of
the marks. Furthermore, we reject applicant’s unsupported
assertion that consumers are conditioned to distinguish
between the marks based on the differing displays and
Serial No. 78934642
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designs. Although we acknowledge, as applicant argues,
that word elements are not always dominant over designs, we
find no rational reason to depart from that principle of
construction here.
Applicant’s mark sounds exactly like both cited marks.
The presence of the generic term “restaurant” in the second
cited mark is not significant, nor does applicant contend
that it is. Applicant’s mark projects the same connotation
and commercial impression as both cited marks, that of a
given name, because each of the marks has CARMINE’S as the
only distinctive word element. The displays and designs do
nothing to alter that connotation or impression. The
design of the chef in the second cited mark merely
reinforces the connection to restaurant services which also
applies to applicant’s mark. Finally, the presence of
CARMINE’S as the sole distinctive word element in the
respective marks also renders the marks similar in
appearance.
Consequently, when we compare applicant’s mark to each
of the cited marks in appearance, sound, connotation and
commercial impression, we conclude that applicant’s mark is
highly similar to both cited marks.
Applicant presents a number of additional arguments
related to the marks to support its contention that there
Serial No. 78934642
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is no likelihood of confusion in spite of the obvious
similarity in the word elements of the marks. Either
directly or indirectly, those arguments address the general
treatment of given names as marks, the strength of the
registered marks and the absence of actual confusion.
Applicant also argues that actions taken by examining
attorneys on earlier applications for marks including
CARMINE or CARMINE’S dictate reversal here.
Applicant first argues that, because CARMINE’S is a
given name, it is entitled to a narrow scope of protection.
The Trademark Act provides that a mark which is “primarily
merely a surname” is not registrable on the Principal
Register without a showing of acquired distinctiveness.1
Trademark Act Section 2(e)(4), 15 U.S.C. § 1052(e)(4).
Contrary to the implication in applicant’s argument, this
provision does not apply to given names, such as Carmine.
Nor is there any other provision in the Trademark Act which
dictates the treatment of given names differently than
other marks. Accordingly, we reject applicant’s argument

1 In re Martin's Famous Pastry Shoppe, Inc., 221 USPQ 364, 367
n.6 (TTAB 1984) (“… surnames have not been regarded as weak marks
once statutory surname issues have been resolved. It is a
recognized principle of trademark law that when one uses a family
surname as part of a trademark, registrability is subject to the
same considerations, including the public interest in avoiding
source confusion, as apply to other types of marks. See Ford
Motor Co. v. Ford, 174 USPQ 456 (CCPA 1972); Lyon Metal Products,
Inc. v. Lyon, Inc., 134 USPQ 31 (TTAB 1962).”).
Serial No. 78934642
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that the cited registrations provide protection which is
narrow in scope merely because the word elements in the
registered marks are a given name. Jansen Enterprises Inc.
v. Rind, 85 USPQ2d 1104 (TTAB 2007) (IZZY’S BROOKLYN BAGELS
– KOSHER and Design for restaurant services featuring
bagels as a main entrée held likely to be confused with
IZZY’s for restaurant services). Rather, we will proceed
on the basis that both cited registered marks are entitled
to all presumptions, including the presumption of validity,
accorded registered marks under Trademark Act Section 7(b),
15 U.S.C. § 1057(b).
Applicant also argues that the coexistence of the two
cited registrations dictates reversal. In particular,
applicant notes that the Examining Attorney who acted on
the application which led to the issuance of the second
registration cited here, refused registration based on the
first registration cited here, and that the Examining
Attorney ultimately withdrew that refusal. Applicant thus
argues that we should reverse the refusal here, consistent
with that earlier action. We reject this argument. In
rejecting similar arguments based on actions taken in
earlier applications, the Court of Appeals for the Federal
Circuit stated, “… the Board (and this court in its limited
review) must assess each mark on the record of public
Serial No. 78934642
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perception submitted with the application. Accordingly,
this court finds little persuasive value in the
registrations that Nett Designs submitted to the examiner
or in the list of registered marks Nett Designs attempted
to submit to the Board.” In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Thus, we are
not bound by the actions that examining attorneys have
taken with regard to applications which are not before us,
but rather, we must decide this, and every other case, on
the record and the particulars of the case before us.
Applicant argues further that CARMINE or CARMINE’S is
a weak mark in the restaurant field as a result of use by
several third parties, in addition to applicant and the
owner’s of the cited registrations. To support this
argument applicant has provided copies of menus from
fourteen establishments which use CARMINE or CARMINE’S as
the entire mark or as the principal element in the mark:
CARMINE’S ITALIAN RESTAURANT AND BAR (South Pasadena, CA);
CARMINE’S (Chicago); CARMINE’S STEAK HOUSE (St. Louis);
CARMINE’S RESTAURANT AND BAR (Los Angeles); CARMINE’S
(Asbury Park, NJ); IL TERRAZZO CARMINE (Seattle); CARMINE’S
ITALIANO (Williamsville, NY); CARMINE’S GOURMET RESTAURANT
AND LA TRATTORIA RESTAURANT (Palm Beach Gardens, FL);
CARMINE’S ITALIAN-AMERICAN RESTAURANT (Port Jervis, NY);
Serial No. 78934642
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CARMINE’S CREOLE CAFÉ (Bryn Mawr, PA); CARMINE’S EXPRESS
(Rochester, NY); CARMINE’S ON PENN (Denver); CARMINE’S
ITALIAN GRILL (Bristol, CT); and CARMINE’S PIZZERIA
(Brooklyn, NY).
We do not find this argument, nor this evidence,
persuasive. This is unlike cases where the Board has found
a term to be weak because it is highly suggestive or
descriptive, as applied to the relevant goods or services,
based on evidence of third-party use in the relevant field.
Cf. Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d
1313, 1315 (TTAB 2005). Rather, the record, limited as it
is, suggests that numerous parties use these marks in
distinct geographical areas. There is no basis for us to
conclude that the customers of restaurants would view
CARMINE as highly suggestive or descriptive of restaurant
services. Quite the contrary -- in each example CARMINE or
CARMINE’S appears to be the most distinctive element of the
mark.
For the record, the case before us is readily
distinguishable from the Board’s decision in Steve's Ice
Cream v. Steve's Famous Hot Dogs, 3 USPQ2d 1477 (TTAB
1987), which applicant cites, on several grounds, among
them, the fact that the goods and services were not
identical in that case.
Serial No. 78934642
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The Board has encountered similar circumstances in the
restaurant field in many concurrent use proceedings. See,
e.g., Pinocchio's Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227
(TTAB 1989); Meijer, Inc. v. Purple Cow Pancake House, 226
USPQ 280 (TTAB 1985); Arman's Systems, Inc. v. Armand's
Subway, Inc., 215 USPQ 1048 (TTAB 1982).
In fact, during the prosecution of this application
applicant argued that its restaurant services were targeted
to consumers in different geographical locations than the
restaurant services of the owners of the cited
registrations. Applicant’s Response of June 28, 2007, at
7. Applicant does not raise this argument directly on
appeal. Of course, this argument is not appropriate here
because applicant seeks an unrestricted registration. More
importantly, both of the two cited registrations are
unrestricted. As such, here again, we must accord both
cited registrations all presumptions, including the
presumption of nationwide rights, dictated by Trademark Act
Section 7(b). In fact, in its argument applicant
acknowledges that it began use of its CARMINE’S mark well
after the issuance of the first cited registration.
Accordingly, we reject applicant’s arguments to the
effect that the registered marks are weak because other
similar marks are allegedly in use.
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Applicant also argues that we should find no
likelihood of confusion because applicant and the owners of
the cited registrations have coexisted peacefully for a
substantial period, that is, because there has been no
actual confusion between applicant and the owners of both
cited registrations. We also reject this argument. The
focus of our inquiry must be the likelihood of confusion,
not actual confusion. Kangol Ltd. v. KangaROOS U.S.A.
Inc., 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed. Cir. 1992).
Also, applicant’s assertion that applicant and the owners
of the cited registrations operate in different
geographical areas belies this argument. Based on this
assertion, we have no reason to believe that there has been
an opportunity for confusion. More importantly, self-
serving arguments of no actual confusion have little or no
probative value in an ex parte proceeding. In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed.
Cir. 2003). Accordingly, we reject the arguments based on
the absence of evidence of actual confusion.
Finally, after considering all evidence and arguments
bearing on the du Pont factors, we conclude that there is a
likelihood of confusion between applicant’s CARMINE’S mark
in stylized form when used in connection with “restaurant
and bar services, banquet services, catering services and
Serial No. 78934642
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restaurant take-out services” and both cited CARMINE’S and
Design marks for “restaurant services.”
Decision: We affirm the refusal under Trademark Act
Section 2(d) as to both cited registrations.