CRK II, LLC

Trademark Trial and Appeal Board

Dec 9, 2013

No. 85521074 (T.T.A.B. Dec. 9, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: December 9, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re CRK II, LLC
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Serial No. 85521074
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David M. Carter of The Van Winkle Law Firm for CRK II, LLC.

Amy E. Hella, Trademark Examining Attorney, Law Office 110 (Chris A.F.
Pedersen, Managing Attorney).
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Before Bucher, Wolfson, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On January 20, 2012, applicant CRK II, LLC applied to register the mark
FOOD MATTERS MARKET, in standard characters, for “cafe services” in
International Class 43.1 “Food” and “market” are disclaimed. Registration has been
refused on the ground of likelihood of confusion with the following composite mark:

1 Application Serial No. 85521074, filed pursuant to Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b) (intent to use).
Serial No. 85521074
2

registered for “contract food services” in International Class 43.2 The appeal is fully
briefed.
Record
The record on appeal includes the following evidence submitted by the
examining attorney:
• Printouts from the websites of six third parties offering café and
contract food services under the same marks;3
• A printout from Google Finance stating that the publicly traded
company Luby’s, Inc. operates in the restaurant industry and the
contract food services industry, with primary brands including Luby’s
Cafeteria and Luby’s Culinary Contract Services;4 and
• Copies of five use-based third-party registrations covering both café
and contract food services.5
The examining attorney also submitted a definition of “market” with her appeal
brief.6
Applicant attached two exhibits to its appeal brief, comprising printouts of
lists of applications and registrations obtained via applicant’s searches of the
Trademark Electronic Search System (TESS) database and a copy of a registration
owned by applicant.7 The examining attorney objects to the exhibits. In its reply

2 Registration No. 3450532, issued June 17, 2008.
3 May 2, 2012 Office action at 2-6, 14-15; Nov. 21, 2012 final Office action at 2-6, 14-17.
4 May 2, 2012 Office action, at 11-13. Applicant argues that Luby’s, Inc. uses another of its
brands, FUDDRUCKERS, for café services. Reply Brief at 3, 7 TTABVUE 4. This
argument is not supported by the record evidence. Rather, the conclusion we draw from the
brief printout of record is that LUBY’S CAFETERIA is one of the marks Luby’s, Inc. uses in
association with its restaurant services, and FUDDRUCKERS is another.
5 Id. at 19-32.
6 6 TTABVUE 15-17, Random House Webster’s Unabridged Dictionary 1177 (2d ed. 2001).
7 Appeal Brief, Exhibits A and B, 4 TTABVUE 18-26.
Serial No. 85521074
3

brief, applicant asks that we consider this new evidence, comparing it to the
dictionary definition submitted by the examining attorney with her brief.8
The record in an application should be complete prior to the filing of an
appeal. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); In re Fitch IBCA Inc., 64
USPQ2d 1058, 1059 n.2 (TTAB 2002); In re Trans Cont’l Records Inc., 62 USPQ2d
1541, 1541 n.2 (TTAB 2002); Trademark Trial and Appeal Board Manual of
Procedure (TBMP) §§ 1203.02(e), 1207.01 (3d ed. rev. 2 June 2013).
It is well-established that the Board may take judicial notice of dictionary
definitions. See, e.g., In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006)
(“The Board has a long history of taking judicial notice of definitions excerpted from
print dictionaries and submitted after appeal.”); Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imps. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); TBMP § 1208.04. The Board does not, however, take
judicial notice of registrations that reside in the Patent and Trademark Office. See,
e.g., Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012); In re
Thomas Nelson Inc., 97 USPQ2d 1712, 1717 n.18 (TTAB 2011); In re Duofold Inc.,
184 USPQ 638, 640 (TTAB 1974); TBMP § 1208.02. Even were we to consider the
lists of TESS results submitted by applicant, they would have virtually no probative
value because there is no evidence concerning the underlying registrations, such as
their present status or the goods or services involved. See In re Carolina Apparel,
48 USPQ2d 1542, 1543 n.2 (TTAB 1998) (“The Board does not take judicial notice of

8 Reply Brief at 1-2, 7 TTABVUE 2-3.
Serial No. 85521074
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third-party registrations, and the mere listing of them is insufficient to make them
of record.”). Cf. TBMP § 704.12(a) n.1 (stating that “the Board does not take judicial
notice of either third-party registrations or a party’s own registration[s]”).9
We also note that applicant could have requested remand to make additional
evidence of record, but did not. See In re Max Capital Group Ltd., 93 USPQ2d 1243,
1244 n.4 (TTAB 2010). For these reasons, we take judicial notice of the definition of
“market,” but have given no consideration to applicant’s evidence, which was not
timely submitted during prosecution.
Analysis
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of 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 Company, Inc., 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. In re SL&E Training Stable Inc., 88 USPQ2d 1216,
1217 (TTAB 2008). See also Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by
§ 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.”). We consider each of the du Pont factors
as to which applicant or the examining attorney submitted evidence.

9 The third-party applications are evidence only of the fact that they have been filed.
Interpayment Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003).
Serial No. 85521074
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A. Similarity of the Services, Channels of Trade, and Conditions of Sale
We turn first to the similarity of the services, their channels of trade, and
conditions of sale, the second through fourth du Pont factors. The services need not
be identical or even competitive in order to support a finding of a likelihood of
confusion. Rather, it is enough that the services are related in some manner or that
the circumstances surrounding their marketing are such that they could be
encountered by the same persons under conditions that could, because of the
similarities of the marks, give rise to the mistaken belief that they originate from or
are in some way associated with the same provider. Edwards Lifesciences Corp. v.
VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991).
The examining attorney made of record seven examples of third parties
offering restaurant or café and contract food services under the same mark, as well
as five use-based, third-party registrations covering both café and contract food
services. The Internet evidence shows that the types of services offered by applicant
and registrant travel through the same trade channels. The third-party
registrations are not evidence that the marks shown therein are in use or that the
public is familiar with them, but they nonetheless have probative value to the
extent that they serve to suggest that the identified services are of a kind that may
emanate from a single source under a single mark. See In re Davey Prods. Pty. Ltd.,
92 USPQ2d 1198, 1203 (TTAB 2009); Venture Out Props. LLC v. Wynn Resorts
Holdings LLC, 81 USPQ2d 1887, 1893 (TTAB 2007). Although the quantity of this
Serial No. 85521074
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evidence is not great, applicant provided no countervailing evidence, and we find it
sufficient to satisfy the examining attorney’s burden.
With respect to the conditions of sale, there is no evidence supporting
applicant’s assertion that purchasers of its or registrant’s services are
sophisticated.10 Moreover, because neither the identification in the application nor
in the cited registration contains any limitations, we must assume that the services
move in all normal channels of trade and are available to all classes of purchasers.
See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d
1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374
(TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Based on the evidence discussed herein, we find that applicant’s identified
services move in the same channels of trade and are sufficiently related to those in
the prior registration that source confusion is likely. In our likelihood of confusion
analysis, these findings under the second and third du Pont factors support a
conclusion that confusion is likely. Because there is no record evidence regarding
the fourth du Pont factor, we find it to be neutral.
B. Similarity of the Marks
We next consider the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of “the marks 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.

10 Reply Brief at 8, 4 TTABVUE 13.
Serial No. 85521074
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Cir. 2005) (quoting du Pont, 177 USPQ at 567). In a particular case, any one of
these means of comparison may be critical. See Eveready Battery Co. v. Green
Planet, Inc., 91 USPQ2d 1511, 1519 (TTAB 2009); In re White Swan Ltd., 8 USPQ2d
1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987).
In comparing the marks, we are mindful that 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 so
that confusion as to the source of the services offered under the respective marks is
likely to result. San Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff’d, No. 92-1086 (Fed. Cir. June 5, 1992).
Because the similarity or dissimilarity of the marks is determined based on
the marks in their entireties, our analysis cannot be predicated on dissecting the
marks into their various components; that is, the decision must be based on the
entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co.,
667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark
should not be dissected and considered piecemeal; rather, it must be considered as a
whole in determining likelihood of confusion.”). On the other hand, 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 Nat’l Data, 224 USPQ at 751.
Serial No. 85521074
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The cited registered mark is the composite
shown at right. Applicant’s mark is the standard
character mark FOOD MATTERS MARKET, with both words “food” and “market”
disclaimed. Disclaimed terms are typically accorded less weight, or are less
significant, because they may be descriptive or generic. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In re
Nat’l Data, 224 USPQ at 752).
We find that the dominant portion of both marks is the phrase
FOOD MATTERS. Notwithstanding the fact that “food” is disclaimed in applicant’s
mark, we accord it more weight here due to its place of prominence as the first word
in the mark. See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (on encountering the marks, consumers
will first notice the identical lead word); Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is
most likely to be impressed upon the mind of a purchaser and remembered.”). We
also perceive a natural break in the mark FOOD MATTERS MARKET between
FOOD MATTERS and MARKET, and find that despite the disclaimer of the word
“food,” because of its placement and the natural break between the words “food
matters” and “market,” FOOD MATTERS would be considered the dominant
portion of applicant’s mark. We note once again that “market” is disclaimed and
may be descriptive in association with applicant’s services, and also is less
prominent due to its placement as the final word in applicant’s mark.
Serial No. 85521074
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Because we consider the marks in their entireties, we also recognize that the
cited mark contains the additional phrase HEALTHY EATING FOR HEALTHY
LIVING. Given its placement in much smaller letters below a line, we find this
wording to contribute far less to the cited mark’s overall commercial impression
than the phrase above it, FOOD MATTERS. The cited mark also incorporates
images of vegetables in place of some letters.11 These depictions of food draw
attention to and reinforce the significance of the phrase FOOD MATTERS.
Furthermore, because applicant’s mark is in standard characters, it is “not limited
to the mark depicted in any special form.” Phillips Petroleum Co. v. C.J. Webb, Inc.,
442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). Accordingly, we must consider all
manners in which applicant’s mark could be depicted, including using the font of
the cited registration. See Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011).
Therefore, although there are differences between the marks in appearance
and sound, we find that applicant’s mark is similar to the cited composite mark in
connotation and overall commercial impression. The first du Pont factor supports a
conclusion that confusion is likely.
C. Other du Pont Factors
Applicant makes arguments concerning several other du Pont factors. We
have carefully considered them, even those not specifically discussed herein, but do
not find them persuasive. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d

11 The description of the mark states that “the first ‘O’ is a red pepper, the second ‘O’ is an
egg plant [sic], the first ‘T’ is a cucumber and the second ‘T’ is a carrot.”
Serial No. 85521074
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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.”).
We note only that there is no record evidence that the term MATTERS – the only
word in applicant’s mark not disclaimed – is “weak because it is laudatory.”12
Balancing the Factors
In view of our findings that the marks are similar and that the services are
related and move in the same or similar channels of trade, we find that applicant’s
mark FOOD MATTERS MARKET for café services is likely to cause confusion with
the registered mark for contract food services. To the
extent there are any doubts, we resolve them, as we must, against applicant as the
newcomer and in favor of the registrant. Nike Inc. v. WNBA Enters. LLC, 85
USPQ2d 1187, 1202 (TTAB 2007); Hard Rock Café Int’l (USA) Inc. v. Elsea, 56
USPQ2d 1504, 1514 (TTAB 2000).
Conclusion
Decision: The examining attorney’s refusal to register applicant’s mark
under Section 2(d) of the Trademark Act is affirmed.

12 Appeal Brief at 11, 4 TTABVUE 16.