This Opinion is Not a
Precedent of the TTAB
Mailed: January 29, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re DDMB Inc.
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Serial No. 86312296
_____
Matthew R. Grothouse of Saper Law Offices, LLC,
for DDMB Inc.
Shaunia Carlyle, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____
Before Kuhlke, Taylor and Wolfson,
Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
DDMB Inc. (“Applicant”) seeks registration on the Principal Register of the mark
EMPORIUM ARCADE BAR and Design (as depicted below):
Serial No. 86312296
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for “providing video and amusement arcade services” in International Class 41 and
“bar services; bar services featuring snacks” in International Class 43.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark, when used in connection with Applicant’s services, so
resembles the previously registered mark depicted below:
for “bar services; restaurant services” in International Class 43 as to be likely to
cause confusion.2 The Examining Attorney also refused registration on the ground
that the terms “EMPORIUM” and “ARCADE BAR” in Applicant’s mark are merely
descriptive and must be disclaimed. Trademark Act Section 6, 15 U.S.C. Section
1056. Applicant has agreed to disclaim “ARCADE BAR” but not “EMPORIUM.”
After the Examining Attorney made the refusals final, Applicant appealed to
this Board. We affirm the refusal to register the mark absent an additional
disclaimer of the word “Emporium,” but reverse the refusal under Section 2(d).
1 Application Serial No. 86312296 was filed on June 17, 2014, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as June 15, 2012.
2 Reg. No. 4452032; registered December 17, 2013. The wording “EMPORIUM MUSIC BAR
BOWLING EATERY” has been disclaimed.
Serial No. 86312296
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I. Disclaimer Requirement
We turn first to the requirement that Applicant disclaim the term “Emporium.”
We note that the disclaimer requirement made in the first Office Action required
separate disclaimers of “Emporium” and “Arcade Bar.” This format was repeated in
the second Office Action. In response to the second Office Action, Applicant entered
a disclaimer to “Arcade Bar” but maintained its objection to entering a disclaimer of
“Emporium.” In the final Office Action, the Examining Attorney reiterated the
requirement for a disclaimer of “Emporium,” but for the first time required that the
term be combined with “Arcade Bar” as: “EMPORIUM ARCADE BAR.” Arguably,
this raised a new requirement (particularly in the face of Applicant’s amendment
disclaiming “Arcade Bar”), and should not have been the subject of a final Office
Action. However, in the briefs, both Applicant and the Examining Attorney treat
the disclaimer of “Emporium” as a separate requirement from the disclaimer of the
wording “Arcade Bar.” Accordingly, and because the terms “Emporium” and “Arcade
Bar” do not form a “grammatically or otherwise unitary expression” as
contemplated by TMEP § 1213.08(a)(i), we treat the requirement as one for a
statement that “No claim is made to the exclusive right to use EMPORIUM and
ARCADE BAR apart from the mark as shown.” See In re Grass, 79 USPQ2d 1600,
1603 (TTAB 2006) (disclaimer of “SNAP ON 3000” reversed; disclaimer of “SNAP
ON and 3000” accepted).
With this caveat in mind, we examine the term EMPORIUM as it relates to
video and amusement arcade services and bar services.
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Several dictionary definitions of EMPORIUM are in the record. One definition
provided by Applicant is “a large retail store, especially one selling a great variety of
articles.”3 The Examining Attorney provided similar definitions: “a large store with
a wide variety of things for sale”4 and “a place of commerce; trading center;
marketplace.”5 Applicant also provided synonyms for the term: “market,
marketplace, bazaar.”6 The connotation of “emporium” thus includes attributes of
size, variety of merchandise, and trading activity. Arcades and bars contain
elements of these attributes.
An “arcade” is “an amusement center having coin-operated games.”7 It is more
fully defined as a “commercial establishment featuring an array of large mechanical
or electronic games, such as pinball machines or video games, that charge players
money before each game.”8 An arcade is an emporium in the sense that it provides
the visitor with multiple opportunities to play a variety of different video games.
3 At http://dictionary.reference.com/browse/emporium; attached to October 28, 2014
response to Office Action.
4 At http://www.yourdictionary.com; attached to Final Office Action.
5 Id.
6 At http://dictionary.reference.com/browse/emporium; attached to October 28, 2014
response to Office Action.
7 At http://www.merriam-webster.com; attached to Applicant’s Brief. 4 TTABVUE 62.
Although submitted for the first time with Applicant’s brief, we may take judicial notice of
dictionary definitions, including definitions or entries from references that are the
electronic equivalent of a print reference work. See University of Notre Dame du Lac v. J.
C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 n.1 (TTAB
2009).
8 At https://www.ahdictionary.com, The American Heritage Dictionary of the English
Language; attached to denial of Applicant’s request for reconsideration.
Serial No. 86312296
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The term EMPORIUM is therefore descriptive of Applicant’s video and amusement
arcade services.
In addition, the term describes bar services. A bar is “a place where you go to
buy and drink alcoholic drinks”9 where different varieties of wine, beer, and spirits
are offered for sale. A bar is an emporium in the sense that it is a retail outlet
serving a variety of different alcoholic beverages. Applicant argues that even though
it “operates an arcade bar”10 where drinks are sold, it does not provide retail store
services because its beverages are consumed on-premises, whereas retail stores sell
merchandise “usually related to a certain theme and consumed or used off the
premises.”11 In support, Applicant submitted Internet evidence consisting of several
third-party vendors using the term EMPORIUM that offer products for use off-
premises. There are two shoe stores: REGAL SHOE EMPORIUM12 and BECK’S
SHOE EMPORIUM,13 and three golf stores: LARGO GOLF EMPORIUM,14 which
advertises itself as a “specialty shop” selling “golfing supplies,” and two stores which
each call themselves THE GOLF EMPORIUM (one located in Michigan15 and the
9 At http://www.macmillandictionary.com; attached to denial of Applicant’s request for
reconsideration.
10 Reply Brief, 7 TTABVUE 4.
11 Applicant’s Brief, 4 TTABVUE 10.
12 At http://www.regalshoeemporium.com; attached to Applicant’s response to October 23,
2014 Office Action.
13 Id., at http://www.yelp.com/biz/becks-shoe-emporium-sacramento.
14 Id., at http://www.visitstpeteclearwater.com/listings/1218/10.
15 Id., at http://www.thegolfemporium.com.
Serial No. 86312296
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other in Florida16) that sell sporting goods and athletic wear. There are also several
wine or beer establishments that use EMPORIUM in their name: WINE & BEER
EMPORIUM17 of Pennsylvania advertises kits for making homebrewed beer and
wine; the AHTESH EMPORIUM18 in Maine advertises “fine wines, spirits and
unique gift ideas” as well as “homemade infused olive oils” and “antiques”; and the
HOMEBREW EMPORIUM19 advertises the sale of supplies for making beer, wine,
and cheese.
This evidence does not show that an establishment that sells goods for use or
consumption on-premises may not be considered a retail outlet, or that the term
“emporium” may not apply to such an establishment. The store in Michigan
advertises that it provides a 40-acre practice facility, golf lessons and a golf “factory”
(alterations, club fitting and repairs).20 These take place “on-premises.” The
Merriam-Webster dictionary definition provided by the Examining Attorney gives
the following examples of “emporium” in connection with retail outlets: “a retail
outlet
”21 -- a pizza emporium can
serve pizza for consumption on-premises. Two third-party registrations including
disclaimers to the word “EMPORIUM” submitted by the Examining Attorney
support the finding that “emporium” is descriptive for retail establishments that
16 Id., at http://www.shopwellingtogreen.com.
17 Id., at http://www.winebeeremporium.com.
18 Id., at http://www.ahteshemporium.com.
19 Id., at https://beerbrew.com.
20 Id., at http://www.thegolfemporium.com.
21 At http://www.merriam-webster.com; attached to Office Action dated September 25, 2014.
Serial No. 86312296
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serve food or beverages for consumption regardless of whether the drinks are to be
consumed on or off-premises.22 The distinction between sales of goods for use or
consumption on- or off-premises is not a meaningful distinction.
Applicant argues that it is not using the term EMPORIUM to describe a
commercial establishment because it uses “bar” or “arcade bar” for that purpose,
which creates an “incongruous redundancy.”23 Applicant’s argument fails because
“emporium” does not overlap with “bar”; the two words are not synonyms. To call
Applicant’s establishment an emporium arcade bar would not create an incongruous
impression on potential consumers, but would still be descriptive of a bar that
features a variety of video arcade games. Applicant further contends that
“emporium” is arbitrary because it is used “as an adjective to modify the noun
‘bar.’”24 Essentially, Applicant argues that because “bar” is generic for its services,
“emporium” must be arbitrary. Applicant asserts: “In this context, the word
“Emporium” is understood by consumers to mean something entirely arbitrary: the
EMPORIUM brand of arcade bars.”25 Clearly, the mere fact that a term precedes a
generic term does not make it arbitrary. Moreover, the terms “emporium” and
“arcade bar” do not form a unitary phrase as used in the mark but create separate
22 See Reg. No. 4394077 for the mark ALL ABOUT MAC A MACARONI AND CHEESE
EMPORIUM for “restaurant services, namely, providing of food and beverages for
consumption on and off the premises;” registered August 27, 2013 with a disclaimer of
“MAC” and “MACARONI AND CHEESE EMPORIUM,” and Reg. No. 4461578 for the mark
AN EPICUREAN EMPORIUM DEVOTED TO TASTE for the same recitation of services;
registered January 7, 2014 with a disclaimer of “EPICUREAN EMPORIUM.” Submitted
with the April 13, 2015 denial of Applicant’s request for reconsideration.
23 Reply brief, 7 TTABVUE 6.
24 Reply brief, 7 TTABUVE 7.
25 Applicant’s Brief, 4 TTABVUE 13.
Serial No. 86312296
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and distinct commercial impressions. The term “emporium” is not arbitrary in this
context.
Our finding that EMPORIUM is descriptive of Applicant’s services is supported
by evidence of third-party registrations for marks including the term for restaurant,
catering, and bar services, wherein EMPORIUM has been disclaimed.26 The
purpose of a disclaimer is to permit the registration of a mark that is registrable as
a whole but contains matter that would not be registrable standing alone, such as
matter that is merely descriptive of the goods or services. We recognize that
submission of such registrations does not establish a prevailing and binding USPTO
practice; however, these registrations may be, and have been, given some weight to
show the meaning of the term “emporium” in the same manner that a dictionary
definition would be so used. See Inst. Nat’l des Appellations D’Origine v. Vintners
Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (disclaimer of
“Chablis” as the common name for a type of wine); Tektronix, Inc. v. Daktronics,
Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976) (third-party registrations
“may be given some weight to show the meaning of a mark in the same way that
dictionaries are used”); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB
2006) (“Solutions” merely descriptive for computer hardware as shown by its
disclaimer in numerous registrations). The following registrations are illustrative:
1. Reg. No. 2216510 for the mark THE FLYING SAUCER
DRAUGHT EMPORIUM, registered with a disclaimer of
26 Registrations submitted by the Examining Attorney as attachments to October 23, 2014
Office Action.
Serial No. 86312296
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DRAUGHT EMPORIUM for “restaurant and bar
services”;27
2. Reg. No. 3304948 for the mark MCDADE’S
EMPORIUM, registered on the Supplemental Register
with a disclaimer of EMPORIUM for “restaurant and bar
services”;28
3. Reg. No. 3355802 for the mark , registered
with a disclaimer of “TRADEMARK” and “EMPORIUM &
ICE CREAM SALOON” for “restaurant and bar
services”;29
4. Reg. No. 2741163 for the mark THE FOOD
EMPORIUM, registered under Section 2(f) with a claim of
acquired distinctiveness and with a disclaimer of
EMPORIUM for “retail grocery store and delicatessen
services” and “catering and take-out delicatessen
services”;30
5. Reg. No. 2352358 for the mark GARDEN EMPORIUM,
registered with a disclaimer of EMPORIUM for “catering
services and restaurant services”;31
6. Reg. No. 1803950 for the mark STAMPEDE
MESQUITE GRILL & DANCE EMPORIUM, registered
with a disclaimer of MESQUITE GRILL & DANCE
EMPORIUM for “restaurant and nite club entertainment
services”;32 and
27 Registered January 5, 1999; renewed.
28 Registered Oct. 02, 2007; Section 8 declaration accepted.
29 Registered December 18, 2007; Sections 8 and 15 combined declaration accepted and
acknowledged.
30 Registered July 29, 2003, renewed.
31 Registered May 23, 2000; renewed.
32 Registered Nov. 09, 1993; renewed.
Serial No. 86312296
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7. Reg. No. 4465705 for the mark , registered
with a disclaimer of SANDWICH EMPORIUM for
“catering services; restaurant services; take-out
restaurant services.”33
Based on the above, we conclude that the term EMPORIUM is merely
descriptive of Applicant’s video and amusement arcade services as well as its bar
services and bar services featuring snacks, and a disclaimer of that term is
necessary.
II. Likelihood of Confusion
A. Applicable Law
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 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 Co., 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. See 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.”).
33 Registered January 14, 2014.
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B. Analysis
The first du Pont likelihood of confusion factor focuses 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. Cir. 2005)
(quoting du Pont, 177 USPQ at 567). Because a comparison 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 (Fed. Cir. 1985); see also Franklin Mint
Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981). The
“touchstone of this factor is consideration of the marks in total.” Jack Wolfskin
Ausrustung Fur Draussen GmbH KGAA v. New Millenium Sports, S.L.U., 707 F.3d
1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015). Nonetheless, one feature of a mark
may be more significant than another, and it is not improper to give more weight to
this dominant feature in determining the commercial impression created by the
mark. In re National Data, 224 USPQ at 751 (“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 consideration of the marks in
their entireties. Indeed, this type of analysis appears to be unavoidable.”). The focus
is on the recollection of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. Joel Gott Wines LLC v. Rehoboth
Serial No. 86312296
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Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013); L’Oreal S.A. v. Marcon, 102
USPQ2d 1434, 1438 (TTAB 2012). Disclaimed matter is often “less significant in
creating the mark’s commercial impression.” In re Code Consultants, Inc., 60
USPQ2d 1699, 1702 (TTAB 2001).
The Examining Attorney argues that the dominant portion of both Applicant’s
and Registrant’s marks is the word EMPORIUM; that it is the “main name of the
establishment with the various descriptive features of the location listed
underneath;”34 and that without any geographic (or presumably any other) wording
within the mark to help distinguish the marks (the “THE” being insignificant and
the other wording being descriptive of the services), the marks have very similar
commercial impressions. The Examining Attorney also argues that the design
features are subservient to the word portions of the marks and “even though all of
the wording in the registrant’s mark has been disclaimed it is still entitled to
protection from the applicant’s use of a very similar mark for closely related
services.”35
Applicant argues that the visual and aural differences in the marks are striking,
and that the dominant portion of the cited mark is the letter “E.” Applicant further
argues that the term “emporium” in each mark is used differently: in the cited mark
it is arguably the generic term for the establishment; in Applicant’s mark it is used
as an adjective to modify Applicant’s arcade bar.36 Finally, Applicant argues that
34 Examiner’s Statement, 6 TTABVUE 7.
35 6 TTABVUE 8.
36 Reply brief, 7 TTABVUE 14.
Serial No. 86312296
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given the disclaimer of all wording in the cited mark, it should be considered weak
and entitled to a narrow scope of protection.
We agree with the Examining Attorney that the dominant literal portion of both
the cited mark and Applicant’s mark is the term EMPORIUM. The remaining
wording is generic for the services. The word “THE” in the cited mark is
insignificant. However, the very prominent design of a shield with stylized wings
surrounding a central letter E in Registrant’s mark immediately catches the eye
and stands out as a significant feature of the mark.37 Likewise, Applicant’s mark
employs a bold background design composed of black-and-white contrasting
rectangles, solid circles, and unfilled-black circles that create a prominent
impression.38 The unique design features of the marks create very different
commercial impressions. Coupled with the weakness of the wording in both marks,
including the disclaimed term EMPORIUM, we find that the design features
sufficiently distinguish the marks in their appearances and overall commercial
impressions, despite the similarities in pronunciation and connotation of the literal
portions of the marks, as to avoid a likelihood of confusion. See, e.g., In re White
Rock Distilleries, Inc., 92 USPQ2d 1282, 1284 (TTAB 2009) (no confusion between
37 The description of the mark reads: “The mark consists of a shield with stylized wings. In
the center of the shield is a stylized letter ‘E’ and just below the shield is the stylized text
‘The’. Below ‘The’ is the stylized text ‘Emporium’ with a horizontal line below it. Below the
line is the stylized text ‘Music Bar Bowling Eatery’ with a star between each word, totaling
three stars.”
38 The description of the mark reads: “The mark consists of a standard rectangle with a
white-colored upper half housing six equally-sized unfilled-black circles, each containing a
different black letter spelling out ‘EMPORIUM,’ as well as a black-colored lower half
rectangle that includes the white-lettered words ‘Arcade’ and ‘Bar’ and three sets of three
white dots, one set before the word ‘Arcade,’ one set after the word ‘Arcade,’ and one set
after the word ‘Bar.’”
Serial No. 86312296
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VOLTA for caffeine-infused vodka and TERZA VOLTA and design for wines);
Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1315 (TTAB 2005)
(NORTON MCNAUGHTON ESSENTIALS not likely to cause confusion with
opposer’s highly suggestive mark ESSENTIALS); Steve’s Ice Cream v. Steve’s
Famous Hot Dogs, 3 USPQ2d 1477, 1478-79 (TTAB 1987) (no confusion between
mark STEVE’S and design of dancing hot dogs for restaurant services and STEVE’S
in block letter form for selling ice cream).
Indeed, Applicant’s mark is so different from the cited registered mark that
confusion is unlikely, even though Applicant’s and Registrant’s services are in-part
identical in that both recite “bar services.” “No mechanical rule determines
likelihood of confusion, and each case requires weighing of the facts and
circumstances of the particular mark.” In Re Covalinski, 113 USPQ2d 1166 (TTAB
2014) (citing Mighty Leaf, 94 USPQ2d at 1259.) In this case, we find the first du
Pont factor, the differences between the marks, to outweigh the factor of similarity
of services, and the presumption that the channels of trade and classes of
purchasers are the same.39 See Champagne Louis Roederer S.A. v. Delicato
39 Because the services are legally identical in part, and neither the cited registration nor
Applicant’s application contain any limitations on the channels of trade or classes of
purchasers, we must presume that the channels of trade and classes of purchasers are the
same. See Stone Lion Capital Partners, 110 USPQ2d at 1161; In re Yawata Iron & Steel Co.,
403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical [services],
the channels of trade and classes of purchasers are considered to be the same); American
Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d
1022, 1028 (TTAB 2011). See also 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).
Serial No. 86312296
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Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460-61 (Fed. Cir. 1998) (affirming
Board finding of no likelihood of confusion between mark CRYSTAL CREEK for
wine and marks CRISTAL for wine and CRISTAL CHAMPAGNE for champagne,
where Board relied solely on dissimilarity of marks); Kellogg Co. v. Pack’em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (confusion
unlikely between applicant’s mark FROOTEE ICE and Elephant Design for
flavored ice bars, and opposer’s FROOT LOOPS for breakfast cereal and other
products; Court of Appeals for the Federal Circuit finding no legal error in Board’s
holding single du Pont factor dispositive in likelihood of confusion analysis).
Decision: The refusal to register based on Applicant’s failure to disclaim
EMPORIUM is affirmed; however, if Applicant submits the required disclaimer of
EMPORIUM to the Board within thirty days, this refusal will be set aside.40 The
refusal to register Applicant’s mark under Section 2(d) is
reversed. If the disclaimer is timely entered, then the application shall proceed to
publication. See Trademark Rule 2.142(g), 37 C.F.R. §2.142(g).
40 The proper form for the disclaimer, accounting for the fact that ARCADE BAR is already
disclaimed, is: “No claim is made to the exclusive right to use EMPORIUM and ARCADE
BAR apart from the mark as shown.”
