Cinema Ride, Inc.

Trademark Trial and Appeal Board

Aug 3, 2004

No. 76398622 (T.T.A.B. Aug. 3, 2004)

Mailed: August 3, 2004
Paper No. 9
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cinema Ride, Inc.
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Serial No. 76398622
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Howard N. Flaxman of Welch & Flaxman, LLC for Cinema Ride, Inc.
Marc Leipziz, Trademark Examining Attorney, Law Office 115 (Tomas
V. Vlcek, Managing Attorney).
_______
Before Simms, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Cinema Ride, Inc. has filed an application to register
the mark "DINNERS2NITE" for the services of "arranging dinner
reservations for others."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its services, so resembles the
mark "DININGTONIGHT.COM," which is registered for the services of
"making on-line restaurant reservations for others and providing
information about restaurants on-line by means of a global
1 Ser. No. 76398622, filed on April 19, 2002, which is based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76398622
2
computer network,"2 as to be likely to cause confusion, or to
cause mistake, or to deceive.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods or services at issue and the
similarity or dissimilarity of the respective marks in their
entireties.3 Nevertheless, inasmuch as applicant concedes in its
brief that the respective marks "are used on similar services
that will likely be provided in the same channels of trade," and
since it is plain that the services at issue are identical in
part in that registrant's "making on-line restaurant reservations
for others" includes applicant's "arranging dinner reservations
for others," the principal focus of our inquiry is on the
similarity or dissimilarity of the marks at issue.
2 Reg. No. 2,377,278, issued on August 15, 2000, which sets forth a
date of first use anywhere and in commerce of March 10, 1999.
3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [or services] and differences
in the marks."
Ser. No. 76398622
3
Turning, therefore, to the similarity or dissimilarity
of the respective marks, applicant argues in its brief that
registrant's "DININGTONIGHT.COM" mark "differs substantially in
sound, appearance and meaning" in relation to applicant's
"DINNERS2NITE" mark. Applicant contends, in particular, that
"the words 'dining' and 'dinners' are spelled differently, sound
differently and look very different when presented in written
form," including the "double 'n' and 'ers'" in the term "dinners"
which "is not found in [the word] 'dining'." Applicant also
insists that its mark "utilizes the distinctive combination of
the number '2' in conjunction with the term 'nite' so as to form
the sound '2nite'." While such sound and the word "tonight" in
registrant's mark "may sound alike," applicant insists that "they
do not provide the same appearance when written or viewed in
written form."
Moreover, when the respective marks are considered in
their entireties, applicant asserts that "a consumer would not be
confused" because the "spoken forms of the marks present very
different sounds and impressions." Applicant, in this regard,
specifically points out that:
Again, "dinners" and "dining" sound very
different. One is plural, while the other is
singular. One employs a short "i" sound,
while the other employs a long "i" sound.
One is a noun, while the other is a verb.
One refers to a meal itself, while the other
refers to the act of eating a meal. All in
all, consumers will readily appreciate the
distinction between "dinners" and "dining"
when the terms are spoken in conjunction with
the marks at issue. As to "dot com",
Applicant's mark includes no such terms and
the addition of these terms further
Ser. No. 76398622
4
distinguishes the present mark from the mark
of the '278 registration.
As to the appearance of the respective marks, applicant urges
that "the distinction is even more pronounced," reiterating that
'dinners' and 'dining' look different, and are in fact very
different words as discussed above," while "'2nite' and 'tonight'
... also appear very different in written form as discussed above
in detail." Applicant concludes, therefore, that "when studied
carefully, the marks at issue are very different in appearance,
sound and meaning."
In addition, applicant asserts that "the conditions
under which, and the purchasers to whom, the sales will be made
... indicate [that] the marks at issue will not be confused."
According to applicant, "consumers are generally sophisticated
when spending discretionary income on dining and will certainly
appreciate the distinction between a 'dot com' service provider
and the reservation services provided in accordance with
Applicant's mark." Neither applicant's nor registrant's
services, applicant contends, "are intended to be utilized in an
impulsive manner," inasmuch as for most consumers, "making
reservations is more often than not a time consuming and highly
thought out process." Thus, applicant insists, because consumers
"taking advantage of either Applicant's or Registrant's services
would carefully consider the source of the services to optimize
their restaurant going experience," no likelihood of confusion
exists.
Finally, applicant maintains that another "highly
relevant" du Pont factor is the number and nature of similar
Ser. No. 76398622
5
marks in use on similar goods and services. Applicant asserts
that, as shown by the copies of six third-party registrations
attached for the first time to its brief,4 "the terms 'dining' or
'dinner' and 'tonight'" are "present in an exceptional number of
registered marks (two of which appear twice), namely: "DINE OUT
TONIGHT CLUB"; "DINNER TONIGHT"; "DRESS UP DINNER TONIGHT"; and
"DINNER TONIGHT" and design. "The fact that various marks use a
similar combination of terms," applicant argues, "is evidence as
to how dilute the terms are in the area of food related goods and
services" and that the cited mark "DININGTONIGHT.COM" is entitled
to only a narrow scope of protection which should not include a
denial of registration to applicant's "DINNERS2NITE" mark.
The Examining Attorney, on the other hand, while
acknowledging that the marks at issue are not identical and that
the differences referred to by applicant are apparent on the
basis of a side-by-side comparison, correctly points out in his
brief that the proper test for determining likelihood of
confusion is not whether the respective marks are distinguishable
on such a basis, but whether they create basically the same
overall commercial impression. The reason therefor is that a
side-by-side comparison is ordinarily not the way that customers
will be exposed to the marks. Instead, it is the similarity of
the general overall commercial impression engendered by the marks
4 While such evidence is untimely under Trademark Rule 2.142(d), the
Examining Attorney has not only offered no objection thereto on such
ground, but has discussed the registrations in his brief.
Accordingly, we have treated the third-party registrations as being of
record herein. See In re Nuclear Research Corp., 16 USPQ2d 1316, 1317
n. 2 (TTAB 1990).
Ser. No. 76398622
6
which must determine, due to the fallibility of memory and the
concomitant lack of perfect recall, whether confusion as to
source or sponsorship is likely. The proper emphasis is thus on
the recollection of the average purchaser, who normally retains
only a general rather than a specific impression of marks. See,
e.g., Grandpa Pidgeon's of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573, 574 (CCPA 1973); Envirotech Corp. v.
Solaron Corp., 211 USPQ 724, 733 (TTAB 1981); and Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). In
addition, the Examining Attorney also correctly notes that when
marks would appear in connection with virtually identical goods
or services, the degree of similarity between the marks necessary
to support a conclusion of a likelihood of confusion declines.
See, e.g., 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 (1994).
With the foregoing principles in mind, we agree with
the Examining Attorney that, when considered in their entireties,
the marks "DINNERS2NITE" and "DININGTONIGHT.COM" are so
substantially similar in sound, appearance and commercial
impression that, when used in connection with the same or closely
related services, confusion as to source or sponsorship would be
likely to occur. Plainly, the component terms "2NITE" in
applicant's mark and "TONIGHT" in registrant's mark are phonetic
equivalents and share the same meaning or connotation. While the
initial terms "DINING" and "DINNERS" are not the same, they are
sufficiently similar in sound and appearance, such that the
Ser. No. 76398622
7
differences therein are not likely to be fully recognized by
consumers looking to quickly secure a service to arrange or make
dinner reservations. Moreover, as the Examining Attorney
observes, the record discloses that such terms are quite similar
in connotation, since The American Heritage Dictionary of the
English Language (3rd ed. 1992) defines "dining" as "[t]o have
dinner." In view thereof, we agree with the Examining Attorney
that when terms as similar in sound, appearance and meaning as
"DINNERS" and "DINING" are respectively combined with the
basically identical terms "2NITE" and "TONIGHT" to create the
expressions "DINNERS2NITE" and "DININGTONIGHT," the "overall
commercial impression of the respective marks is highly similar,"
notwithstanding that registrant's mark also includes the ".COM"
suffix.
Specifically, as to applicant's contention that the
inclusion of the ".COM" suffix in registrant's
"DININGTONIGHT.COM" mark serves to adequately distinguish it from
applicant's "DINNERS2NITE" mark, the Examining Attorney correctly
points out in his brief that:5
It is well settled that top-level domains
(TLDs), such as ".com", are generic locators
for Internet website addresses and have no
meaningful source identifying significance.
5 We note, in addition, that our principal reviewing court has
indicated 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 [that] the ultimate
conclusion rests on consideration of the marks in their entireties."
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). For instance, according to the court, "[t]hat a particular
feature is descriptive or generic with respect to the involved goods
or services is one commonly accepted rationale for giving less weight
to a portion of a mark ...." Id.
Ser. No. 76398622
8
See CCBM.com Inc. v. c-call.com Inc., 73
F.Supp.2d 106, 53 USPQ2d 1132, 1136 (D. Mass.
1999) ("[the] '.com' ... suffix is not a
relevant part of the mark, because '.com' is
a generic locator for domain names of web
sites dedicated to commercial use"); [and]
Brookfield Communications Inc. v. West Coast
Entertain. Corp., 174 F.3d 1036, 50 USPQ2d
1545[, 1559] (9th Cir. 1999) (MOVIEBUFF.COM
found to be essentially identical to
MOVIEBUFF) .... Thus the TLD appearing in
registrant's mark would be less significant
in creating a commercial impression in the
minds of consumers, and should be given
little, if any, weight in comparing the
respective marks.
As the identification of registrant's services makes clear, its
"making on-line restaurant reservations for others and providing
information about restaurants on-line" are rendered "by means of
a global computer network." The ".COM" suffix in registrant's
mark plainly is descriptive of such services, and accordingly is
entitled to essentially no weight, since it immediately conveys
the use of a global computer network in connection with
registrant's services. See, e.g., In re Oppedahl & Larson LLP,
71 USPQ2d 1370, 1374 (Fed. Cir. 2004). In view thereof, the
sound, appearance, connotation and commercial impression of
registrant's "DININGTONIGHT.COM" mark is basically unchanged by
the inclusion therein of the top level domain name ".COM,"
inasmuch as such a name does not have service mark significance
or source indicating capability. See, e.g., 555-1212.com Inc. v.
Communication House International Inc., 157 F. Supp. 2d 1084, 59
USPQ2d 1453, 1457-59 (N.D. Cal. 2001); In re CyberFinancial.Net
Inc., 65 USPQ2d 1789, 1792 (TTAB 2002); In re Martin Container
Inc., 65 USPQ2d 1058, 1060 (TTAB 2002); and 1 J. McCarthy,
McCarthy on Trademarks & Unfair Competition §7:17.1 (4th ed.
Ser. No. 76398622
9
2002) at 7-28.1 ["a top level domain ['(TLD)'] indicator [such as
'.com'] has no source indicating significance and cannot serve
any trademark [or service mark] purpose"; that is, "the TLD
'.com' functions in the world of cyberspace much like the generic
indicators 'Inc.,' "Co.,' or 'Ltd.' placed after the name of a
company"].
However, notwithstanding that the overall commercial
impression engendered by applicant's "DINNERS2NITE" mark is
substantially similar to that projected by registrant's
"DININGTONIGHT.COM" mark, applicant maintains, as noted
previously, that the wording of the respective marks is weak, and
thus unlikely to cause confusion, as assertedly shown by the six
third-party registrations which it has submitted in support of
such proposition. We concur with the Examining Attorney that, as
stated in his brief, "the registrations submitted by applicant do
not even establish the relative weakness of the terms DINING and
TONIGHT in connection with [dinner or restaurant] reservation
services. As the Examining Attorney accurately points out:
[F]our of the six registrations submitted by
applicant are owned by the same registrant
(Raley's Corporation). In addition, these
four registrations are for goods or services
unrelated to applicant's (and [the cited]
registrant's) dinner reservation services.
Further, applicant's reliance on [another
registration for] the "DINE OUT TONIGHT CLUB"
mark is misplaced given that the registration
involves the distribution of discount coupons
of a variety of entertainment events rather
than securing dinner reservations. Finally,
applicant has attached a registration for
completely unrelated goods, namely, stuffing
mix, for the unitary expression DRESS UP
DINNER TONIGHT. Clearly, the inclusion of
these third-party registrations is
unpersuasive evidence that the combination of
Ser. No. 76398622
10
the terms DINNER and TONIGHT is at all weak
in relation to the arranging of dinner
reservations for others. ....
Lastly, and contrary to applicant's assertion that
confusion is unlikely because "consumers are generally
sophisticated when spending discretionary income on dining" and
would exercise a high degree of care in selecting dinner or
restaurant reservation services inasmuch as "making reservations
is more often than not a time consuming and highly thought out
process," we agree with the Examining Attorney that the costs of
making dining "reservations must be considered relatively small
financial expenditures." Nothing in the record, moreover,
suggests otherwise. Consequently, and while not necessarily an
impulsive decision, it is still the case that selecting a dinner
or restaurant reservation service would not involve such a high
degree of cost and/or sophistication as to require more care or
deliberation than would the ordinary act of simply contacting a
dining establishment directly to make dinner reservations.
We accordingly conclude that consumers who are familiar
or acquainted with registrant's "DININGTONIGHT.COM" mark for its
services of "making on-line restaurant reservations for others
and providing information about restaurants by means of a global
computer network" would be likely to believe, upon encountering
applicant's substantially similar "DINNERS2NITE" mark for its
services of "arranging dinner reservations for others," that such
identical in part and otherwise similar services emanate from, or
are sponsored by or affiliated with, the same source.
Decision: The refusal under Section 2(d) is affirmed.