Chief’s Chill-Out, LLC

Trademark Trial and Appeal Board

Jul 18, 2019

87573924 (T.T.A.B. Jul. 18, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 18, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Chief’s Chill-Out, LLC
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Serial No. 87573924
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Robert Varkonyi of Zagrebelsky Law PA,
for Chief's Chill-Out, LLC.
Bernice Middleton, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_____

Before Taylor, Goodman and Larkin,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Chief’s Chill-Out, LLC (“Applicant”) seeks registration on the Principal Register
of the mark CHIEF’S CHILL-OUT (in standard characters) for
Providing of food and beverages, namely, frozen
confections, shaved ice, snow cones, Hawaiian ice, soft
serve ice cream, ice cream cones, sundaes, shakes, floats,
candy, soft drinks, and water, via a mobile truck, in
International Class 43.1

1 Application Serial No. 87573924 was filed August 18, 2017, under Section 1(a) of the
Trademark Act, 15 U.S.C. §1051(a), claiming first use anywhere and first use in commerce
since at least as early as August 6, 2016. Page references to the application record refer to
Serial No. 87573924
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
Applicant’s mark so resembles the registered mark CHILL OUT (in standard
characters)2 for “Fast-food restaurant services,” in International Class 43, as to be
likely to cause confusion or mistake, or to deceive. When the refusal was made final,
Applicant appealed and requested reconsideration. After the Examining Attorney
denied the request for reconsideration, the appeal was resumed. We affirm the refusal
to register.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative 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, 567
(CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities between the goods or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). These factors, and the other relevant DuPont factors now
before us, are discussed below. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127
USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342,

the online database of the USPTO's Trademark Status & Document Retrieval (TSDR)
system. References to the briefs on appeal refer to the Board’s TTABVUE docket system.

2 Registration No. 4473964, issued January 28, 2014.
Serial No. 87573924
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94 USPQ2d 1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont factors are relevant
to every case, and only factors of significance to the particular mark need be
considered.”)); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242
(TTAB 2015) (“While we have considered each factor for which we have evidence, we
focus our analysis on those factors we find to be relevant.”).
A. Similarity or Dissimilarity of the Respective Services
We turn first to the DuPont factor regarding the similarities or dissimilarities
between the respective services as identified in the application and the cited
registration. See Octocom Sys., Inc. v. Houston Computers Servs. 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.”). See also Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective descriptions of goods.”).
Applicant’s services are “Providing of food and beverages, namely, frozen
confections, shaved ice, snow cones, Hawaiian ice, soft serve ice cream, ice cream
cones, sundaes, shakes, floats, candy, soft drinks, and water, via a mobile truck,”
while Registrant’s services are “Fast-food restaurant services.” Applicant has not
disputed the relatedness of the services.
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The Examining Attorney submitted evidence that “most food trucks emphasize
affordable casual dining,” that a mobile dining industry trend is “super-fast menu
offerings,” and that food trucks “proved that fast food need not be junk.”3 The
Examining Attorney’s evidence also indicates that among the franchise and
restaurant chains “jumping into the food-truck niche” are Dunkin Donuts, Starbucks,
White Castle, In-N-Out Burger, Taco Bell and McDonalds.4 The Examining Attorney
provided one example of a fast food restaurant offering frozen desserts, shakes and
frosties.5
We find this evidence establishes that the providing of food and beverages by a
mobile truck and fast food restaurant services are related. This DuPont factor weighs
in favor of a finding of likelihood of confusion.
B. Strength or Weakness of the Registered Mark
The sixth DuPont factor requires us to consider the number and nature of similar
marks in use on similar goods or services. DuPont, 177 USPQ at 567.
For this factor, third-party registrations can show ‘“that some segment of the
composite marks which both contesting parties use has a normally understood and
well recognized descriptive or suggestive meaning, leading to the conclusion that that

3 January 31, 2019 Denial of Request for Reconsideration at TSDR 10-11, 16.
4 Id. at TSDR 11.
5 Id. at TSDR 2-9. The website printouts are for Star’s Drive-in showing the offering of shakes,
frosties, tropical freezes and ice cream. The signficance of the printout and the connection to
Registrant Stars Restaurant has not been explained by the Examining Attorney in denying
reconsideration, but in her brief, she mentions this evidence in connection with the first
DuPont factor stating “Registrant also promotes frozen sweets.” 9 TTABVUE 3.
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segment is relatively weak.’” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (quoting 2 J. THOMAS MCCARTHY,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION (“MCCARTHY”)
§ 11:90). Third-party use evidence can show “that customers have become so
conditioned by a plethora of such similar marks that customers ‘have been educated
to distinguish between different [such] marks on the bases of minute distinctions.”’
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (citing MCCARTHY § 11:88).
Applicant argues that “the term ‘CHILL OUT’ is a suggestive or descriptive term
in a crowded area, commonly used by restaurants or in the names of restaurants.” 7
TTABVUE 23. Applicant submits that the “number and type” of third-party evidence
“show[s] a pattern and practice of recognition of differences by the Patent and
Trademark Office and the community of trademark holders” of this term. Id. at 17.
Applicant contends that CHILL OUT is “suggestive of products and services provided
by restaurants.” Id. Applicant submitted both third-party registration and use
evidence to support its arguments. The third-party registration evidence consisted of
Trademark Electronic Search System (TESS) copies of registrations, including
cancelled registrations, containing the term “chill out,” as well as TESS printouts of
third party applications, some abandoned.6

6 Applicant incorporated a copy of Registrant’s specimen (from Star’s Drive-in) in its appeal
brief to show that CHILL OUT relates to “slushies and drinks, i.e. cold liquids” and describes
a quality or characteristic of the goods offered in connection with Registrant’s fast food
services. 7 TTABVUE 10. This evidence was not submitted during prosecution. The record in
the application should be complete before a notice of appeal is filed. Trademark Rule 2.142(d),
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We note, however, that TESS printouts of applications filed in the Office are not
evidence of anything except that the applications were filed on a certain date, In re
Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016), and that TESS printouts of
cancelled registrations have no probative value other than to show that the
registrations once issued.7 In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264
(TTAB 2011). We also note that many of the third-party registrations submitted by
Applicant during prosecution are unrelated to the food service industry (i.e., food
products or restaurant services) and are of limited probative value as to the question
of weakness. In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed.
Cir. 2017) (disregarding third-party registrations for other types of goods where the
proffering party had neither proven nor explained that they were related to the goods
in the cited registration). Although Applicant has highlighted in its brief third-party
registrations for wine, dietary supplements, thermal insulated bags, beverage
containers, and double walled cups and tumblers, Applicant has not explained how
these goods are related to the services at issue here, and we do not find these
registrations particularly probative.8 Cf. Omaha Steaks Int’l, Inc. v. Greater Omaha
Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1694 (Fed. Cir. 2018) (no evidence in

37 C.F.R. § 2.142(d). The Examining Attorney did object, but she also did not address the
evidence in her brief, and thus, we do not consider it.
7 Applicant also included a Section 66 registration which contains the term “chill out.”
However, this registration possesses little, if any, probative value because it did not require
proof of use in commerce to be issued and therefore it is not evidence that the registered mark
has ever been encountered by consumers in the marketplace. In re Mucky Duck Mustard Co.,
6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988).
8 Two CHILL OUT registrations listed by Applicant in the brief at 7 TTABVUE 17 are owned
by the Registrant, (one is the cited mark), and are not listed in the table below.
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the record to show relatedness of goods, “meat,” to services for oriental foods, alcoholic
beverages, café food, or grocery delivery services).
The most relevant third-party registrations for food related goods and services are
as follows:
Registration No. Mark Goods or Services
Reg. No. 5397158

shaved ice confections
Reg. No. 4864552

non-alcoholic drink
mixes” non-alcoholic
cocktail bases; non-
alcoholic cocktails, non-
alcoholic cocktails,
namely mocktails

Reg. No. 4900293

non-alcoholic cocktail
mixes
Reg. No. 4819392

frozen yogurt shop
services in the nature of a
restaurant; ice cream
shop services in the
nature of a restaurant
Reg. No. 4331928 CHILL OUT MAN HAVE
A BEER
for goods and services that
include beer, bar services,
and restaurant services
Reg. No. 5119198 CHILL OUT. EAT
VODKA
alcoholic cocktails in the
form of frozen pops;
Liquor in ice cream form

Although these marks share the term “Chill Out,” the majority of them also have
additional terms and/or designs which create different connotations and commercial
Serial No. 87573924
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impressions from those conveyed by Applicant’s and Registrant’s marks. As to the C°
and design CHILL OUT mark for shaved ice confections, which involves standalone
use of the term CHILL OUT, this sole third-party registration does not establish the
conceptual weakness of CHILL OUT. See e.g., Jack Wolfskin Ausrustung Fur
Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015) (third-party registration and use evidence was
“voluminous”); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018)
(four third-party registrations of varying probative value (two for non-identical
services and the other two for non-identical terms) and no third-party uses considered
to be “a far cry from the large quantum of evidence of third-party use and third-party
registrations that was held to be significant” in Jack Wolfskin and Juice Generation).
As to the third-party uses, Applicant, in its brief, referenced the submitted
evidence of eighteen uses of “chill out,” or “chill,” with most showing use of the term
as part of the name of the food establishment:9

9 April 30, 2018 Response to Office Action at TSDR 37 and 45; December 19, 2018 Request
for Reconsideration at TSDR 7, 9, 24, 30, 42, 46, 50 58, 62, 72, 77, 81, 83, 102. Some of the
evidence provided was in the form of truncated Google search results, rather than copies of
webpages cited in the search results. However, the Examining Attorney did not object to
them, so we have considered the search results for whatever probative value they may have.
The reference to the “Chill Out Hut” from a Google search result shows a location in Montego
Bay, Jamaica, with limited context to clearly indicate that there is also a location in the
United States. December 19, 2018 Request for Reconsideration at TSDR 76. Tropic Chill and
Deli was not listed by Applicant in its brief but was listed among the Google search results.
Id. at TSDR 81. The location in the record for Megabite Chillout Lounge was not identified
on appeal or during prosecution. The references to “M[&]S Shaved Ice”
and “Gil’s Beach Club” relate to services provided (happy hour) or the goods offered (shaved
ice), not the food establishments’ names. The reference to “chill out” in connection with Dairy
Queen is the title of an article in restaurantnews.com describing Dairy Queen’s Candy Cane
Chill blizzard product. Id. at 39-40. Chill Out in San Antonio, TX is listed as a “closed”
Serial No. 87573924
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However, based on these uses, we are not convinced that Registrant’s mark is in
a crowded field of similar marks, or that Registrant’s mark is weak in the vast

business on the submitted Yelp pages. Id. at 24-29. The nature of “Chill Out Inc.’s” business
is unclear as the Linked In listing only shows “Food & Beverages.” Id. at 50.
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restaurant industry. See Juice Generation, 115 USPQ2d at 1673 n.1 and 1674 (26
relevant uses or registrations were provided as examples by the court, and the court
stated that a “substantial number” of the third-party marks in the record were for
restaurant services and food products); In re Broadway Chicken Inc., 38 USPQ2d
1559, 1565-66 (TTAB 1996) (“Broadway” is weak for restaurant services based on
evidence that hundreds of restaurants and eating establishments use Broadway as a
trademark or trade name); Steve’s Ice Cream Inc. v. Steve’s Famous Hot Dogs, 3
USPQ2d 1477 (TTAB 1987) (based on a record that showed 226 businesses, 137
restaurants and 89 food stores using the term STEVE’s, consumers could distinguish
marks incorporating STEVE’s based on small distinctions); cf. Primrose Ret. Cmtys.,
LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1033-37 (TTAB 2016)
(at least 85 uses of rose-formative marks for senior living communities and related
services and eight registrations in the record). We note that of the third-party uses,
very few of the marks identified are as similar to the involved marks as CHIEF’S
CHILL OUT and CHILL OUT are to each other. We find that consumers are not so
accustomed to seeing CHILL OUT in restaurant names that they have been
conditioned to look to other elements of the marks as a means of distinguishing the
source of the respective food establishments. Accordingly, this DuPont factor is
considered neutral.
C. Similarity or Dissimilarity of the Marks
We now consider the similarities or dissimilarities of the marks. We must compare
the marks in their entireties as to appearance, sound, connotation and commercial
Serial No. 87573924
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impression to determine the similarity or dissimilarity between them. Palm Bay
Imps., 73 USPQ2d at 1690 (quoting DuPont, 177 USPQ at 567). 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,
668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted).
Applicant’s mark is CHIEF’S CHILL-OUT and Registrant’s mark is CHILL OUT.
The marks differ in sound and appearance to the extent that Applicant’s mark
includes the term CHIEF’S but are similar in sound and appearance to the extent
that both marks contain the term CHILL-OUT/CHILL OUT. The addition of the
hyphen in Applicant’s mark is not significant. Mag Instrument Inc. v. Brinkmann
Corp., 96 USPQ2d 1701, 1712 (TTAB 2010) (hyphen did not distinguish MAGNUM
from MAG-NUM); Goodyear Tire & Rubber Co. v. Dayco Corp., 201 USPQ 485, 489
n.4 (TTAB 1978) (FAST-FINDER with hyphen is in legal contemplation substantially
identical to FASTFINDER without hyphen).
As to connotation of the term CHILL-OUT/CHILL OUT, Applicant states that “the
phrase ‘chill out’ has been defined as ‘relax,’ ‘calm down,’ ‘to take it easy,’ ‘to relax,’
‘to have a good time,’” is “commonly shortened to chill,’” and also means “cool” or
“cold.” 7 TTABVUE 11, 23. In support, Applicant references the dictionary definitions
for “chill out” and “chill” submitted during examination. “Chill out” is a unitary term
Serial No. 87573924
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that means “: to calm down : go easy : relax.”10 “Chill” may be a shortened form for
“chill out.”11 A synonym for “chill out” is “cool” or “cool off.”12 Applicant also submitted
definitions of the term “chill,” with the most relevant definitions, “coldness,” “to affect
with cold” “make chilly,” or “to make cool.”13
Applicant contends that “chill out” is “commonly used in restaurant and lounges”
and describes “a quality or characteristic of a successful restaurant, providing a good,
relaxing environment with pleasant service that calms the consumer.”14 7 TTABVUE
10-11. Applicant also states that because the phrase “chill out” is “another phrase for
cool or cold,” it is suggestive of a quality of frozen products offered by the restaurants,
or describes a quality of the restaurant services or the products sold, i.e., products
that are cold or chilled.15 Id. Applicant submitted a few website printouts during

10 April 30, 2018 Response to Office Action at TSDR 7, 8, 10, MERRIAM-WEBSTER
DICTIONARY, merriam-webster.com; AMERICAN HERITAGE IDIOMS DICTIONARY
(2002, 2001, 1995), dictionary.com; New Dictionary of Cultural Literacy (3d ed. 2005),
dictionary.com.
11 April 30, 2018 Response to Office Action at TSDR 7, 8, New Dictionary of Cultural Literacy
(3d ed. 2005), dictionary.com; AMERICAN HERITAGE IDIOMS DICTIONARY (2002, 2001,
1995), dictionary.com.
12 April 30, 2018 Response to Office Action at TSDR 6, COLLINS ENGLISH DICTIONARY
(2012), dictionary.com. The Board may take judicial notice of words listed in a thesaurus. In
re Wells Fargo & Company, 231 USPQ 116, 117 (TTAB 1986), WEBSTER’S NEW WORLD
ROGET’S A-Z THESAURUS (1999), (thesaurus.yourdictionary.com, accessed July 15, 2019).
13 April 30, 2018 Response to Office Action at TSDR 2-3.
14 See e.g., December 19, 2018 Request for Reconsideration at TSDR 75, 77, 79, 81. Google
search results excerpts, see n.9, include: (“Chill out with some drinks and snacks,” “160 best
chill out spots,” “Chili-E-Dogs a place to fuel up and chill out,” “Chill out at this laid back
margarita bar,” “Chill out at Grove while we concoct a cocktail for your pleasure,” “Food
Destinations – Best Place to Chill Out,” “The Lemon Bar is a great place to chill out after you
hang 10,” “Perk up or chill out at Re:fuel, the 24/7 one-stop shop for snacks and quick bites
at Aloft.”).
15 Id. at TSDR 9 (webpage) 39 (webpage), (“Chill out with delicious shaved ice”; “Chill Out
with the Dairy Queen System this Holiday Season”). Applicant also submitted some Google
Serial No. 87573924
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examination to show that “Chill out” has been used in connection with chilled
products i.e., frozen desserts.16
While the Examining Attorney agrees with Applicant that the connotation for
“chill out” is “a spin on an idea or outcome of relaxation,” that is, to relax or take it
easy, she disagrees that “chill out” is descriptive of frozen dessert related services.
Instead, the Examining Attorney submits that “chill out” is suggestive in connection
with Applicant’s and Registrant’s services, has a “double meaning,” is “a twist for an
already suggestive term,” and is a clever way to “highlight the menu offerings of
various frozen confectionery.” 9 TTABVUE 4. We find that, as to the term CHILL-
OUT/CHILL OUT, the marks also have a shared connotation and commercial
impression.
As stated, we must consider the marks in their entireties. We think this case is
most similar to those cases involving the addition of a house mark or trade name to
a term that is common to the involved marks.
“It has long been held that the addition of a trade name or house mark to a
registered mark does not generally avoid confusion.” In re Fiesta Palms LLC, 85
USPQ2d 1360, 1364 (TTAB 2007) (citing Menendez v. Holt, 128 U.S. 514, 521 (1888)).
“Where the marks are otherwise virtually the same, the addition of a house mark ...

search results, see n.9, that reference “chill out” in connection with frozen or cold products.
Id. at TSDR 44 and 79 (“Chill Out this Summer at the Best Ice Cream Shops in Tampa,”
“Chill out with Tulsa’s best milkshakes”; “Chill out this week with free ice cream from 7-
Eleven”).
16 April 30, 2018 Response to Office Action at TSDR 23, 27, 34 (“9 Cold Desserts to Chill Out
with this Summer” (webpage); “Frozen Desserts: Chill Out Take the heat off with easy frozen
desserts” (webpage)).
Serial No. 87573924
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is more likely to add to the likelihood of confusion than to aid to distinguish the
marks.” Key West Fragrance & Cosmetic Factory, Inc. v. The Mennen Co. 216 USPQ
168, 170 (TTAB 1982). On the other hand, “where there are some recognizable
differences in the asserted conflicting product marks or the product marks in question
are highly suggestive or merely descriptive or play upon commonly used or registered
terms, the addition of a housemark and/or other material to the asserted conflicting
product mark has been determined sufficient to render the marks as a whole
sufficiently distinguishable.” In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB
1985) (citations omitted) (applicant’s mark LE CACHET DE DIOR similar to the
registered mark CACHET). See Rockwood Chocolate Co. v. Hoffman Candy Co., 372
F.2d 552, 152 USPQ 599, 602 (CCPA 1967) (ROCKWOOD BAG-O-GOLD for candy
not confusingly similar to CUP-O-GOLD for candy).
As stated, both marks contain the identical term CHILL-OUT/CHILL OUT. The
other term in Applicant’s mark, “chief,” is defined as “the head or leader of an
organized body of people; the person highest in authority.”17 The addition of the term
CHIEF’S to Applicant’s mark appears in a manner to suggest proprietorship in an
individual with the nickname or title of Chief. The possessive CHIEF’S in Applicant’s
mark would be viewed as providing additional information as to the source of the
services, i.e., that they come from an individual with the nickname or title, similar to

17 We take judicial notice of this definition. THE RANDOM HOUSE UNABRIDGED
DICTIONARY (2019) (dictionary.com, accessed July 1, 2019). The Board may take judicial
notice of dictionary definitions, including online dictionaries that exist in printed format. In
re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118
USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d
1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
Serial No. 87573924
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a house mark or trade name. Applicant agrees that CHIEF’s is a reference to the
owner of the service. 7 TTABVUE 23.
As to connotation and overall commercial impression, Applicant argues that the
most prominent portion of CHIEF’S CHILL OUT is CHIEF’s, and suggests a focus on
“a person–CHIEF–who owns a relaxing service” or alternatively, CHIEF, an owner
that relaxes. As to Registrant’s CHILL OUT mark, Applicant submits that the
“prominence is on the suggestive phrase, ‘chill[ing] out,’ that suggests a focus on
relaxation” because the mark “lacks any identification of a person or owner,” and also,
CHILL OUT is “suggestive of the quality of a product provided, frozen
confectionaries.” Id. at 23-24.
In this case, when we consider that Applicant’s identified services are closely
related to Registrant’s services and that the respective marks contain the identical
term CHILL-OUT/CHILL OUT, the addition of CHIEF’S in Applicant’s mark does
not eliminate the likelihood of confusion. Consumers familiar with Registrant’s
CHILL OUT mark for fast food restaurant services are likely to believe, upon
encountering Applicant’s mark CHIEF’S CHILL-OUT for providing food and
beverages via a mobile truck, that these similar services emanate from or are
associated with the Registrant, and that the Registrant has chosen to further identify
its services by the title or nickname CHIEF’S. That is, CHIEF’S simply identifies
what was formerly an anonymous source. Cf. In re Fiesta Palms LLC, 85 USPQ2d at
1364 (“When, as in this case, the common part of the marks is identical, purchasers
familiar with the registrant's mark are likely to assume that the house mark simply
Serial No. 87573924
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identifies what had previously been an anonymous source.”); In re Hill-Behan Lumber
Company, 201 USPQ 246, 249 (TTAB 1978) (purchasers familiar with registrant’s
LUMBERJACK mark are likely to assume that the house mark HILL-BEHAN’S
combined with LUMBERJACK simply identifies what had previously been an
anonymous source.). See also In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944,
1946 (Fed. Cir. 2004) (JOSE GASPAR GOLD and GASPAR’S ALE were determined
to be similar; “[w]ith respect to JOSE, the Board correctly observed that the term
simply reinforces the impression that GASPAR is an individual’s name. Thus, in
accord with considerable case law, the JOSE term does not alter the commercial
impression of the mark.”); In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984) (LITTLE
GOLIATH for stapler kits confusingly similar to GOLIATH for large diameter
woodcased pencils.).
Accordingly, we find that when the two marks are considered as a whole, the
overall commercial impression of both marks is very similar, and that the inclusion
of CHIEF’S in Applicant’s mark merely provides additional information as to the
source of the services. The first DuPont factor of the similarity of the marks favors a
finding of likelihood of confusion.
II. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant DuPont factors. When we balance
the DuPont factors, we conclude that confusion is likely to occur between Applicant’s
mark and Registrant’s mark.
Serial No. 87573924
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Decision: The refusal to register Applicant’s mark CHIEF’S CHILL-OUT is
affirmed.