Copeland’s of New Orleans, LLCDownload PDFTrademark Trial and Appeal BoardApr 15, 2019EX (T.T.A.B. Apr. 15, 2019) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: April 15, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Copeland’s of New Orleans, LLC _____ Serial No. 87341465 _____ Len R. Brignac of King & Jurgens PLLC, for Copeland’s of New Orleans, LLC. Verna B. Ririe, Trademark Examining Attorney, Law Office 104, Zachary Cromer, Managing Attorney. _____ Before Kuhlke, Shaw and Lynch, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Copeland’s of New Orleans, LLC (“Applicant”) seeks registration on the Principal Register for the mark COPELAND’S MKT MARKET KITCHEN TABLE, in standard characters with MKT MARKET disclaimed, for services ultimately identified as “Restaurant services, including sit-down service of food and takeout restaurant services” in International Class 43.1 1 Application Serial No. 87341465 was filed on February 19, 2017, based on an allegation of an intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b). Serial No. 87341465 - 2 - 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 marks owned by the same Registrant as to be likely to cause confusion, mistake or deception: KITCHEN TABLE in standard characters registered on the Principal Register for “Restaurant and bar services,” in Class 43;2 and registered on the Principal Register for “Restaurant and bar services,” in Class 43.3 When the Section 2(d) refusal was made final, Applicant appealed and briefs have been filed. We affirm the refusal to register. I. 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 similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 2 Registration No. 3806808, issued on June 22, 2010, Sections 8 and 15 declaration accepted and acknowledged. 3 Registration No. 3806810, issued on June 22, 2010, Sections 8 and 15 declaration accepted and acknowledged. Serial No. 87341465 - 3 - 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within the du Pont list of factors, only factors that are “relevant and of record” need be considered). A. Similarity of the Services/Channels of Trade/Consumers With regard to the services, channels of trade and classes of consumers, we must make our determinations under these factors based on the services as they are identified in the application and cited registrations. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s “Restaurant services, including sit-down service of food and takeout restaurant services” are encompassed by and, as such, legally identical in part to Registrant’s “Restaurant and bar services.” Moreover, because the services are legally identical and there are no limitations as to channels of trade or classes of purchasers, we presume that Applicant’s and Registrant’s services will be offered via the same channels of trade to the same classes of consumers. 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). Applicant presents no argument on these du Pont factors and does not dispute “that the relevant services Serial No. 87341465 - 4 - are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.” 4 TTABVUE 5. In view thereof, these du Pont factors favor a finding of likelihood of confusion. B. Similarity/Dissimilarity of the Marks We consider Applicant’s mark COPELAND’S MKT MARKET KITCHEN TABLE and Registrant’s marks KITCHEN TABLE and KITCHEN TABLE (and design) and compare them “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. 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). When comparing marks, the test is not whether the marks can be distinguished in 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. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)). Further, marks “‘must be considered … in light of the fallibility of memory ….’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting 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 customer, who retains a general rather than specific impression of the marks. Serial No. 87341465 - 5 - 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). Finally, we keep in mind that “when marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). See also Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); Bridgestone Americas Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012). Applicant’s mark incorporates the entirety of Registrant’s mark in Registration No. 3806808 and the dominant portion of Registrant’s mark in Registration No. 3806810. See In re Viterra Inc., 101 USPQ2d at 1908 (the verbal portion of a composite mark containing both words and a design is more likely to indicate the origin of the goods or services because it is the portion of the mark that consumers would use to refer to or request the goods or services). In addition, because Applicant’s and one of Registrant’s marks are in standard characters they are not limited to any particular depiction. The rights associated with a mark in standard characters reside in the wording and not in any particular display. In re RSI Sys., LLC, 88 USPQ2d 1445 (TTAB 2008); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); TMEP § 1207.01(c)(iii) (Oct. 2018). We must consider Applicant’s and one of Registrant’s marks “regardless of font style, size, or color,” Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011), including iterations that emphasize the common element KITCHEN TABLE Serial No. 87341465 - 6 - and deemphasize the words COPELAND’S MKT MARKET such as Copeland’s Mkt Market KITCHEN TABLE. Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted. See, e.g., Citigroup v. Capital City Bank Group, 98 USPQ2d at 1261 (affirming TTAB’s holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for banking and financial services, and opposer’s CITIBANK marks for banking and financial services, is not likely to cause confusion, based, in part, on findings that the phrase “City Bank” is frequently used in the banking industry and that “CAPITAL” is the dominant element of applicant’s marks, which gives the marks a geographic connotation as well as a look and sound distinct from opposer’s marks); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression). Applicant argues both that the commercial impressions of the marks are different and the common element KITCHEN TABLE is highly suggestive such that confusion is not likely. As to commercial impression, Applicant contends that COPELAND’S is the dominant element in its mark because it is the first word in the mark and it is its Serial No. 87341465 - 7 - well-known mark used for many years alone and with other matter. The assertion that it is a well-known mark is not supported by a declaration. In re U.S. Tsubaki, Inc., 109 USPQ2d 2002 (TTAB 2002) (disregarding outside counsel’s conclusory unverified statements regarding marketing of goods). The list of Applicant’s other registrations in its response to the Office Action and repeated in its brief is not sufficient to make these registrations of record; however, because the Examining Attorney has not objected to them, we consider the list for whatever probative value it may have. In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1594 n.40 (TTAB 2014). The list of nine registrations only includes the marks, the registration numbers and the assertion that they are all for restaurant services. While this is not sufficient to establish that the COPELAND’S mark is well-known, or has been used in multiple variations for restaurants for many years, we acknowledge that COPELAND’S is registered in multiple variations for restaurant services. In general, the addition of a house mark or well-known mark to inherently distinctive matter does not obviate likely confusion, and in some instances, may increase likely confusion. See In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558, 559 (CCPA 1972) (stating that addition of a trade name will make consumers think that products have a common origin or that the companies merged); Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1201-02 (TTAB 2007) (applying principle that “the addition of a trade name or housemark or other such matter to one of two otherwise similar marks will not serve to avoid a likelihood of confusion.”). However, “there is no rule of law that if two product marks are confusingly similar, Serial No. 87341465 - 8 - likelihood of confusion is not removed by use of a company or house mark in association with the product mark. Rather, each case requires a consideration of the effect of the entire mark including any term in addition to that which closely resembles the opposing mark.” New England Fish Company v. The Hervin Company, 511 F.2d 562, 184 USPQ 817, 819 (CCPA 1975) (citing Rockwood Chocolate Co. v. Hoffman Candy Co., 372 F.2d 552, 152 USPQ 599 (CCPA 1967)). This case does not present an exception where the marks in their entireties convey significantly different commercial impressions, or the common matter is merely descriptive or diluted. The Examining Attorney submitted a search from the USPTO’s database showing that the cited registrations are the only registrations that incorporate the wording KITCHEN TABLE in International Classes 42 and 43, the classes that contain restaurant services, tending to show that the mark KITCHEN TABLE is not weak. Although KITCHEN TABLE may be somewhat suggestive of restaurant services as the phrase relates to a place where food is served and consumed, we cannot say based on this record that the phrase is so highly suggestive that the addition of the Applicant’s COPELAND’S mark would obviate confusion. But see Knight Textiles Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) (no likelihood of confusion between applicant’s NORTON MCNAUGHTON ESSENTIALS mark and registrant’s ESSENTIALS mark both used on clothing where evidence of record included 23 third-party registrations owned by 21 different owners of marks with the word ESSENTIALS for clothing items and a judicially noticed dictionary definition Serial No. 87341465 - 9 - of the word ESSENTIALS.). Therefore, we find that the record does not show that KITCHEN TABLE is so highly suggestive to fall into that category of exception discussed in the Citigroup case. Applicant also contends the element MARKET KITCHEN TABLE in its mark creates a different commercial impression from Registrant’s mark KITCHEN TABLE: Specifically, KITCHEN TABLE is indicative of an object, i.e., a table in the kitchen. Such a generic object, a kitchen table, is always a place to eat and would be expected to be found in a restaurant. In contrast “MARKET KITCHEN TABLE” does not connote or convey an impression of a common singular object. Instead, MARKET KITCHEN TABLE evokes a process in which food products move from the “market” to the “kitchen” to the “table” for consumption. This wording is in a way comparable to the saying, “farm to table”. Further, applicant’s mark also includes, MKT, which is the abbreviation of Market, Kitchen and Table and puts the emphasis on Market, a term not found in registrant’s mark. Applicant’s combination of COPELAND’S and MKT with MARKET KITCHEN TABLE, clearly distinguishes and differentiates the restaurant services of KITCHEN TABLE. 4 TTABVUE 7-8. We do not think the addition of the terms MKT or MARKET serve to change the commercial impression in a way that obviates likely confusion. The terms MKT MARKET are disclaimed as merely descriptive and such matter is typically less significant in distinguishing marks. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018). Moreover, even accepting Applicant’s contention that some consumers may see MARKET KITCHEN TABLE as evoking going from Serial No. 87341465 - 10 - the market to the kitchen to the table, because MKT and MARKET are weak terms and Applicant’s mark is in standard characters, we cannot discount the many consumers that would perceive KITCHEN TABLE as connoting the same meaning as Registrant’s marks KITCHEN TABLE. Thus, even assuming Applicant’s COPELAND’S mark is well-known, this does not help to distinguish the marks because purchasers familiar with Registrant’s KITCHEN TABLE restaurants upon encountering Applicant’s COPELAND’S MKT MARKET KITCHEN TABLE restaurants are likely to believe that Applicant is the source of Registrant’s KITCHEN TABLE restaurants. See In re Christian Dior, S.A., 225 USPQ 533, 535 (TTAB 1985) (addition of house mark DIOR to applicant’s LE CACHET DE DIOR for shirts does not obviate likely confusion with CACHET for dresses and toiletries). See also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (“The term ‘reverse confusion’ has been used to describe the situation where a significantly larger or prominent newcomer ‘saturates the market’ with a trademark that is confusingly similar to that of a smaller, senior registrant for related goods or services.” [citations omitted]). We find that, viewed as a whole, the similarities between the marks in appearance, sound, connotation and commercial impression, due to the identical words KITCHEN TABLE, outweigh the dissimilarities. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 110 USPQ2d at 1161. In view thereof, the du Pont factor of the similarity of the marks favors a finding of likelihood of confusion. Serial No. 87341465 - 11 - II. Conclusion Overall, we find that in view of the legally identical services, trade channels and classes of customers and the similarity of the marks, confusion is likely between Applicant’s mark COPELAND’S MKT MARKET KITCHEN TABLE and Registrant’s marks KITCHEN TABLE and KITCHEN TABLE (and design). Decision: The refusal to register Applicant’s mark is affirmed. Copy with citationCopy as parenthetical citation