Christopher Roth

Trademark Trial and Appeal Board

Jul 20, 2018

No. 86128405 (T.T.A.B. Jul. 20, 2018)

This Opinion is Not a
Precedent of the TTAB

Hearing: July 10, 2018 Mailed: July 20, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Christopher Roth
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Serial No. 86128405
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Erik Pelton and Julie S. Shursky of Erik M. Pelton & Associates PLLC,
for Christopher Roth.

Xheneta Ademi,1 Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.
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Before Cataldo, Wellington and Lynch, Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Applicant, Christopher Roth, seeks registration on the Principal Register of the
standard character mark BUFFALO PHILLY’S for services described as “Restaurant
services featuring eat in, take-out and delivery restaurant services” in International
Class 43.2

1 Ms. Ademi replaced Kim Saito, who replaced Ms. Emily Chuo, as the Office’s assigned
examining attorney for the application. Ms. Saito filed an appeal brief and Ms. Ademi argued
at the oral hearing for this appeal.
2 Application Serial No. 86128405 was filed on November 25, 2013, based upon Applicant’s
allegation of first use of the mark anywhere and in commerce in 2000, under Section 1(a) of
the Trademark Act, 15 U.S.C. § 1051(a).
Serial No. 86128405
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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, when used in connection with the identified services, so resembles
the following registered mark:

(with a disclaimer of BUFFALO) for “restaurant services.”3

Applicant has appealed the refusal of registration. Applicant and the Examining
Attorney have briefed the appeal and an oral hearing was held on July 10, 2018. We
affirm the refusal to register.
A. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in 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 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the relatedness of the
goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976). “Not all of the [du Pont] factors are relevant to every case,
and only factors of significance to the particular mark need be considered.” Coach

3 Registration No. 1817227 issued on January 18, 1994 and has been renewed.
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Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed.
Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir 2010)).
1. Identity of the Services/ Channels of Trade/ Consumers
The services, as described in the application and cited registration, are identical
– restaurant services. Applicant does not argue otherwise. Because the services in
the application and the cited registration are identical, we presume that the channels
of trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods or services are
presumed to travel in same channels of trade to same class of purchasers); In
re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where
there are legally identical goods or services, the channels of trade and classes of
purchasers are considered to be the same); United Glob. Media Grp., Inc. v. Tseng,
112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc.
v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
2. Similarity/Dissimilarity of the Marks
We now consider Applicant’s mark BUFFALO PHILLY’S and the registered mark
and compare them “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). The marks must be considered “in light of
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the fallibility of memory.” San Fernando Elec. Mfg. Co. v. JFD Elecs. Components
Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection
of the average consumer, who retains a general rather than specific impression of the
marks. Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB
1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Because Applicant’s and Registrant’s services are identical, the degree of
similarity between the marks necessary to find likelihood of confusion
declines. See 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 at 1722; 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).
Here, we find the two marks to be overall very similar to one another. Applicant’s
mark BUFFALO PHILLY’S sounds nearly identical to BUFFALO PHIL’S, the only
wording in the registered mark. As the Examining Attorney points out, the first four
syllables of the marks are the same. The marks may also be close in appearance due
to this similar wording, as Applicant’s standard character mark can be presented in
a font or style identical to that used in the registered mark. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000) (“Registrations with
typed drawings are not limited to any particular rendition of the mark and, in
particular, are not limited to the mark as it is used in commerce”); In re Cox Enters.
Inc., 82 USPQ2d 1040, 1044 (TTAB 2007) (“We must also consider that applicant’s
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mark, presented in typed or standard character form, is not limited to any special
form or style as displayed on its goods”). This is not to say we have ignored the design
element in the registered mark, which constitutes a difference between the marks.
Nevertheless, the word portion in a composite mark is more likely to indicate the
origin of the services because the literal portion is what consumers use when referring
to or requesting the goods and/or services. Bond v. Taylor, 119 USPQ2d 1049, 1055
(TTAB 2016) (citing In re Viterra Inc., 101 USPQ2d at 1908, 1911). Also, we find the
design element less prominent than the wording.
In terms of commercial impression and connotation, Applicant argues that the
design element in the cited mark, in conjunction with the term BUFFALO, is
suggestive of the menu item “buffalo wings” offered in Registrant’s restaurant and
that PHIL’S “is clearly a name of a person [and] could also be a play on the well-
known ‘Buffalo Bill’ character and program.”4 Applicant goes on to conclude that “the
clear commercial impression of the [registered mark] is that Phil is the proprietor or
owner, and that it serves buffalo wings.”5 With respect to his own mark, Applicant
asserts that it “creates an incongruous geographic and stylistic impression” because
PHILLY is “a well-known nickname for Philadelphia … known for cheesesteaks.”6
Thus, Applicant states that his mark “creates an unusual juxtaposition because

4 4 TTABVUE 10. Applicant submitted evidence showing that William Cody, also known as
“Buffalo Bill,” was “one of the most colorful figures of the American Old West.” Printouts from
Wikipedia website (www.wikipedia.org) attached to Applicant’s response dated May 1, 2017,
at pp. 8-15.
5 Id.
6 Id.
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wings from Buffalo and cheesesteak subs from Philly are different and distinct and
not generally paired with each other.”7
The Examining Attorney, on the other hand, argues that the marks create similar
commercial impressions because they consist of the term BUFFALO followed by a
possessive form for a nickname for “Phillip.” In support, the Examining Attorney
relies on evidence made of record indicating that both “Phil” and “Philly” are
recognized nicknames for the full given name, Phillip.8 Thus, the Examining Attorney
argues, “both Applicant and registrant’s marks convey the impression of a person.”9
We agree with the Examining Attorney that both marks convey overall similar
meanings and are likely to be understood by restaurant consumers as indicating the
name of the owner or an individual associated with the restaurant. Applicant’s use of
the possessive in PHILLY’S makes that term more likely to be perceived as a personal
name, like PHIL’S, rather than a geographic location or type of food. As to Applicant’s
argument that the term BUFFALO is suggestive of a style of chicken wings being
served, such an interpretation could apply to either mark. Similarly, with respect to
Applicant’s argument that the registered mark conjures the “well-known Buffalo Bill
character,” we find that Applicant’s mark may also perceived as a nod to the same
character.

7 Id.
8 The evidence include printouts from the website “Best Nicknames” (“Phillip … best
nicknames Flip, Phil, Philly, Pip,”) and from the Wikipedia website (www.wikipedia.org)
(“Phillip is a given name … and also has many diminutive[s] including Phil, Flip, Feli, Philly,
…”). Attached to Office Action issued on November 2, 2016, at pp. 6-12.
9 6 TTABVUE 6.
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In sum, Applicant’s mark is overall more similar than not to the registered mark,
as we have found similarities in sound, appearance, connotation and commercial
impression. Accordingly, the du Pont factor of the similarity of the marks favors a
finding of likelihood of confusion.
3. Alleged Weakness of the Mark
Applicant has asserted that the differences in the marks should suffice to
distinguish them because “[t]he field of restaurants, on its face, is very crowded with
marks on the USPTO register of trademarks.”10 However, and to the extent that
Applicant is arguing that either mark is weak, we point out that the record is devoid
of any evidence of third-party registration, let alone use, of the same or similar marks
in connection with restaurant services. Attorney argument is no substitute for
evidence. Enzo Biochem v. Gen-Probe, Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1624
(Fed. Cir. 2005). In other words, we cannot conclude that consumers are so
conditioned to the use of these terms in connection with restaurants that they would
be inclined to overlook the overall similarity of the involved marks and distinguish
them based on otherwise less significant differences.
4. Applicant’s Prior Registrations and Coexistence Without Confusion
Applicant mentions that its mark was “the subject of two prior registrations, Reg.
Nos. 2816839 & 2898789, both registered in 2004 for the same restaurant services
and eventually cancelled due to a failure to file declarations under Section 8.”11

10 4 TTABVUE 7.
11 4 TTABVUE 8.
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Applicant states that “the cited registration existed at the time of the prior
registrations and did not block approval by the USPTO nor was the subject of any
opposition or cancellation proceedings.”12 Applicant “acknowledges that the prior
registrations do not have a binding effect on the Examining Attorney here,” but
contends that “these registrations and their coexistence are strong evidence that
there is no likelihood that the marks will cause confusion.”13
As an initial matter, the cancelled status of these registrations forecloses
Applicant’s ability to rely on them. See Anderson, Clayton & Co. v. Krier, 478 F.2d
1246, 178 USPQ 46, 47 (CCPA 1973) (expired registration not entitled to § 7(b)
presumptions); In re Hunter Publishing Co., 204 USPQ 957, 963 (TTAB 1979)
(cancellation “destroys the … presumptions and makes the question of registrability
‘a new ball game’ which must be predicated on current thought.”). The fact that
Applicant once owned registrations for the same or similar mark does not compel a
different result herein because, as Applicant readily acknowledges, “it is well settled
that neither the Board nor our primary reviewing court is bound by prior
determinations by the Office and each case must be decided on its own merits.” In re
Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1791-92 (TTAB 2013) (citing In
re Nett Designs Inc., 236 F.3d 139, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)). As to the
argument that the prior coexistence of the registrations is indicative that there is no
likelihood of confusion, we point out that there is little to no evidence showing that

12 Id.
13 Id.
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there has been any real opportunity for actual confusion to occurred during their
coexistence; relevant information is not in the record and regardless, circumstances
may have changed since that time. In any event, the absence of evidence of such
confusion in an ex parte appeal is rarely found helpful for purposes of showing no
likelihood of confusion. See In re Majestic Distilling Co., Inc., 65 USPQ2d at 1205
(“The lack of evidence of actual confusion carries little weight ... especially in an ex
parte context”).
Accordingly, the now-cancelled registrations do not weigh against a finding of
likelihood of confusion. This factor is neutral.
B. Conclusion
We find that Applicant’s mark BUFFALO PHILLY’S is similar to the registered
BUFFALO PHIL’S (with a design) mark, such that when both are used in connection
restaurant services and found in the same trade channels offered to the same class of
consumers, confusion is likely.
Decision: The refusal to register based on likelihood of confusion under Section
2(d) of the Trademark Act is affirmed.