Dig Inn Restaurant Group LLCv.Murray

Trademark Trial and Appeal Board

Jul 10, 2017

No. 91223145 (T.T.A.B. Jul. 10, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: July 10, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Dig Inn Restaurant Group LLC
v.
Murray
_____

Opposition No. 91223145
_____

Yuval H. Marcus and Michelle J. Levin of Leason Ellis LLP
for Dig Inn Restaurant Group LLC.

William H. Hollimon
for Monique Roussel Murray.
_____

Before Quinn, Mermelstein, and Hightower,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Monique Roussel Murray (“Applicant”) filed an application to register on the
Principal Register the mark shown below

Opposition No. 91223145

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(GULF disclaimed) for “café and restaurant services” in International Class 43.1 The
application includes the following description of the mark: “The mark consists of
background sea foam blue shovel spoon image capitalized sea foam green “DIG” gray
filled in square with white capitalized “DIG IN GULF.” The color(s) grey, white, sea
foam green, sea foam blue is/are claimed as a feature of the mark.”
Dig Inn Restaurant Group LLC (“Opposer”) opposed registration 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 Applicant’s services, so resembles Opposer’s previously
used and registered mark DIG INN (in standard characters)2 and the mark shown
below,3

both for “restaurant services” in International Class 43, as to be likely to cause
confusion.4

1 Application Serial No. 86416321, filed October 6, 2014 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intention to use the mark in commerce.

2 Registration No. 4094666, issued January 31, 2012; Sections 8 and 15 combined declaration
accepted and acknowledged.

3 Registration No. 4509941, issued April 8, 2014. The registration includes the following
description of the mark: “The mark consists of the design of a fork and a shovel crossed to
form an ‘x.’”

4 Opposer also introduced Registration No. 4230719 (issued October 23, 2012, that is, almost
3 years prior to the filing of the notice of opposition) for the mark DIG INN SEASONAL
MARKET and the fork/shovel design shown in its Registration No. 4509941. 13 TTABVUE
11-13. However, Opposer did not plead this registration in the notice of opposition, and a
plaintiff may not rely on an unpleaded claim. Moreover, the Board does not take judicial
Opposition No. 91223145

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Applicant, in her answer, denied the salient allegations regarding a likelihood of
confusion.
The Record
The record consists of the pleadings; the file of the involved application; trial
testimony, with related exhibits, taken by Opposer; and copies of Opposer’s pleaded
registrations, a dictionary definition, Applicant’s responses to certain of Opposer’s
discovery requests, articles retrieved from the Internet, and official records, all
introduced by way of Opposer’s notice of reliance; and a dictionary definition, and
excerpts of third-party websites made of record in Applicant’s notice of reliance. Only
Opposer filed a brief on the case.
The Parties
Adam Eskin, Opposer’s founder and chief executive officer, testified that Opposer
owns and operates a chain of twelve “fast casual” restaurants focusing on healthy,
organic, locally-sourced meals. 16 TTABVUE 22. Opposer’s restaurants are located
in New York City and Boston, and it has plans to expand to future locations along the
East Coast. 16 TTABVUE 34-36. Opposer advertises its services through its website,
social media and local in-store promotions. 16 TTABVUE 21. Opposer’s sales revenue
and advertising expenditures were designated as “confidential,” but suffice it to say
that Opposer has enjoyed a degree of success with its restaurants, and that Opposer’s
promotional efforts are commensurate with its sales. 17 TTABVUE 30. Opposer also
has been the recipient of unsolicited media coverage in national publications (e.g.,

notice of registrations issued by the Office. Accordingly, we have not considered this
registration in making our decision. See generally TBMP §§ 314; 704.03 (June 2017).
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New York Times and Forbes). 13 TTABVUE 82-84; 93-95; 97-101; 104-107; 109-111;
114-119; 121-123; 126-128; 131-133; 136.
Applicant owns and operates a single café/restaurant in Miramar Beach, Florida
“that is a family-friendly, café style eatery, offering breakfast, lunch, dinner and
prepared meals”; Applicant also provides cooking lessons. 13 TTABVUE 74.
Applicant has promoted her restaurant through social media and business cards. 13
TTABVUE 75-76.
Standing
Opposer established its standing to oppose registration of the applied-for mark by
virtue of its registration of the mark DIG INN for the recited services. Thus, Opposer
has shown that it is not a mere intermeddler. See Empresa Cubana Del Tabaco v.
Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied,
135 S. Ct. 1401 (2015); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26
(Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Priority
As a result of Opposer’s ownership of a valid and subsisting registration on the
Principal Register for its DIG INN mark, priority is not at issue with respect to the
services recited in Opposer’s pleaded registration vis-à-vis Applicant’s services
recited in the present application. King Candy, Co. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974).

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Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on likelihood of confusion. In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Opposer
must establish that there is a likelihood of confusion by a preponderance of the
evidence.
We focus our likelihood of confusion analysis between Applicant’s mark and the
standard character mark shown in Registration No. 4094666. We do this because out
of Opposer’s two pleaded registrations, this one is most likely to support a finding of
likelihood of confusion. That is, if confusion is likely between those marks, there is no
need for us to consider the likelihood of confusion with Opposer’s design mark, while
if there is no likelihood of confusion between Applicant's mark and Opposer’s mark
in standard character form, then there would be no likelihood of confusion with the
design mark. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
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). Varying
weights may be assigned to each du Pont factor depending on the evidence presented.
Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261
(Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687-88 (Fed. Cir.
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1993). The relevant du Pont factors in the proceeding now before us are discussed
below.
Similarity of the Services, Trade Channels and Consumers; Conditions of
Sale
With respect to the du Pont factors regarding the similarity of the services, we
must look to the services as identified in the application and Opposer’s registration.
See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Houston Computers Servs.,
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); Canadian Imperial Bank
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Where, as here,
there are no limitations in the recitation of services in either the application or
Opposer’s registration, we must presume that the identified services encompass all
services of the nature and type described therein. See, e.g., Levi Strauss & Co. v.
Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir.
2013); Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1471 (TTAB
2016); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). See also Tuxedo Monopoly,
Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)
(likelihood of confusion must be found as to the entire class if there is likely to be
confusion with respect to any service that comes within the recitation of services in
that class). In the present case, Opposer’s services are recited as “restaurant
services,” and Applicant’s services are identified as “café and restaurant services.”
Thus, both parties offer “restaurant services” and, therefore, the services are
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identical. See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB
2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily
encompasses Registrant’s narrowly identified ‘residential and commercial
furniture.’”).
Given the identity of the services, and the lack of restrictions on trade channels
and classes of consumers in the recitations of services, we presume that these services
travel through the same channels of trade, namely all types of restaurants, to the
same classes of customers, namely ordinary consumers who are dining out. Citigroup
Inc., 98 USPQ2d at 1261 (citing Hewlett Packard Co. v. Packard Press, Inc., 281 F.2d
1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)); In re Yawata Iron & Steel Co., Ltd.,
403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical
goods, 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); In re Smith & Mehaffey, 31 USPQ2d
1531, 1532 (TTAB 1994). 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).
Further, it would appear, based on the broadly worded recitations of services and
the evidence of record, that the parties’ restaurants are relatively inexpensive, and
are likely the subject of impulse visits to dine. “When products are relatively low-
priced and subject to impulse buying, the risk of likelihood of confusion is increased
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because purchasers of such products are held to a lesser standard of purchasing care.”
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000);
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281,
1282 (Fed. Cir. 1984); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB
2007).
The identity of the services, trade channels and classes of consumers, as well as
the conditions of sale, weigh heavily in Opposer’s favor.
Similarity of the Marks
We must compare Opposer’s mark DIG INN (in standard characters) to
Applicant’s mark as to appearance, sound, connotation and
commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 73 USPQ2d at 1691 (Fed. Cir. 2005) (quoting In re E. I. du Pont de
Nemours & Co., 177 USPQ at 567). “The proper test is not a side-by-side comparison
of the marks, but instead ‘whether the marks are sufficiently similar in terms of their
commercial impression’ such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The
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 focus is on the recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks. See Inter IKEA Sys. B.V.
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v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106 (TTAB 1975).
Because the services are identical, the degree of similarity between the marks
necessary to find likelihood of confusion declines. 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).
Although marks must be considered in their entireties, it is settled that 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 mark’s commercial
impression. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985) (“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.”).
In general, when wording and a design comprise the mark, as in the case of
Applicant’s mark, then the wording is normally accorded greater weight because the
wording is likely to make an impression upon purchasers, would be remembered by
them, and would be used by them to request the goods and/or services. CBS, Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in a composite mark
comprising a design and words, the verbal portion of the mark is the one most likely
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to indicate the origin of the goods to which it is affixed”); Joel Gott Wines LLC v.
Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430-31 (TTAB 2013); In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). See also Giant Food, Inc. v.
Nation’s Food Serv., Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). In
Applicant’s mark, the literal portion DIG DIG IN GULF dominates over the
spoon/shovel design in colors.5 This literal portion is quite similar to the entirety of
Opposer’s mark DIG INN. More specifically, both marks begin with the identical word
DIG, and include an IN and INN portion, respectively. These similarities result in
marks that are similar in sound and appearance.6
As to meaning, the record includes a dictionary listing for “dig in,” which is
defined, in relevant part, as “(informal) to start eating food with a lot of enthusiasm.”
(macmillandictionary.com; 13 TTABVUE 138-39). Mr. Eskin testified as to the
meaning of Opposer’s mark:
[The mark] really came as a result of a double or triple
entendre if you will in terms of the mechanics of the actual
name. Dig, the word Dig representing both the act of eating
and colloquially speaking the words digging in, the food.
Dig also representing you know the concept of digging with
a shovel into the soil where the food is from, where the food
is harvested and grown. And the last of the third piece the
Inn the additional Inn is indicative of a place where we are

5 The literal portion, in turn, is dominated by DIG, with the disclaimed word GULF playing
a subordinate role in the mark. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,” is the
dominant portion of the mark THE DELTA CAFE).

6 Mr. Eskin also testified that Opposer’s restaurants “frequently” are referred to as “DIG”: “I
think it’s a short form name, it’s something that’s easy for people to sort of remember . . . it’s
become a word by customers and people who we work with, they refer to us so much so we
have been developing some new signage and components to our brand package that show Dig
as a word by itself.” 16 TTABVUE 40.
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serving food inside of a restaurant and these are places you
go to visit to enjoy the food that came from that farm or
land.
16 TTABVUE 19-20

Applicant described the genesis of her mark as follows:
We live at the beach and love and appreciate the beach
culture. We love food and digging in the sand ― and hence
the idea of a “spovel,” which is a combination of a beach
shovel and a spoon. We wanted a short action verb for our
name, and we wanted the action verb to also be an acronym
― and DIG fit. DIG is an acronym for DIG IN GULF.
13 TTABVUE 75

Opposer’s mark, through the use of a figurative idiom, conveys the idea of
beginning to eat a meal, as in “let’s dig in.” We recognize, of course, that Opposer’s
mark also conveys the double meaning of eating or “digging in” at an inn (an
establishment that provides food and drink). Although Applicant’s mark includes the
wording DIG IN, the idiom seems to lose its meaning as used in the context of DIG
IN GULF, thereby giving Applicant’s mark a somewhat different meaning. Further,
the DIG portion of Applicant’s mark does not appear to have any meaning when used
for a restaurant other than, as is the case with Applicant’s mark, as an acronym for
DIG IN GULF.
We find that the marks, when considered in their entireties, are similar in
appearance and sound, and that these similarities engender overall commercial
impressions that are similar. These similarities outweigh any difference in
connotation. Stone Lion Capital Partners, 110 USPQ2d at 1161. In view thereof, the
du Pont factor of the similarity of the marks also favors a finding of likelihood of
confusion.
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Third-Party Uses
The sixth du Pont factor requires us to consider evidence pertaining to the
number and nature of similar marks in use on similar services. Citigroup Inc., 98
USPQ2d at 1261. “The purpose of a defendant introducing third-party uses is to show
that customers have become so conditioned by a plethora of such similar marks that
customers ‘have been educated to distinguish between different such marks on the
bases of minute distinctions.’” Palm Bay Imps., 73 USPQ2d at 1691.
Applicant submitted portions of five third-party websites showing uses of “dig”
(and variations thereof) and one website showing use of “dig in” in connection with
restaurant services: D.I.G. Bistro; DIG DANIEL ISLAND GRILL; DIG & DIVE;
DIGS; “Dig In & Have Some Fun!”; and THE DIG. 15 TTABVUE.7
Although Applicant’s evidence tells us nothing about the specific extent to which
the third-party marks may have been used or the amount of exposure relevant
customers may have had to them, the Federal Circuit has held that “even where the
specific extent and impact of the usage has not been established,” such evidence of
third-party use “can show that customers have been educated to distinguish between
different marks on the basis of minute distinctions.” Jack Wolfskin Ausrustung Fur
Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015) (quoting Juice Generation, Inc. v. GS Enters. LLC, 794
F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)). Indeed, in the words of the

7 Of the eight third-party websites submitted by Applicant, we note that Exhibits 2 and 9 are
websites from the same entity showing the same mark; and Exhibit 5 does not show use of
DIG, DIG IN or any variation thereof.
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Federal Circuit, evidence of extensive use of a term by others as a mark can be
“powerful on its face, even where the specific extent and impact of the usage has not
been established.” Jack Wolfskin, 116 USPQ2d at 1136 (internal quotes omitted).
“The weaker an opposer’s mark, the closer an applicant’s mark can come without
causing a likelihood of confusion and thereby invading what amounts to its
comparatively narrower range of protection.” Juice Generation, 115 USPQ2d at 1674.
We are not convinced, based on a mere six third-party uses of DIG or DIG IN in
the vast restaurant industry, that Opposer’s mark is in a crowded field of similar
marks or that Opposer’s mark is weak. Cf. Primrose Ret. Cmtys., LLC v. Edward Rose
Senior Living, LLC, 122 USPQ2d 1030, 1033-37 (TTAB 2016); In re Broadway
Chicken Inc., 38 USPQ2d 1559, 1565-66 (TTAB 1996). We find that consumers are
not so accustomed to seeing DIG or DIG IN restaurant names that they have been
conditioned to look to other elements of the marks as a means of distinguishing the
source of the restaurant services.
Accordingly, this factor is considered neutral.
Conclusion
We have considered all of the evidence made of record pertaining to the likelihood
of confusion issue, as well as all of the arguments related thereto, including any
evidence or arguments not specifically discussed in this opinion. Because the marks
are similar, the services, channels of trade and consumers are identical, and the
services are subject to impulse purchase, we find, after balancing the relevant du
Pont factors, that confusion is likely between the marks.
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We conclude that consumers familiar with Opposer’s restaurant services
rendered under the mark DIG INN are likely to mistakenly believe, upon
encountering Applicant’s mark DIG DIG IN GULF and design for café and restaurant
services, that the services originate from or are associated with or sponsored by the
same entity.
Decision: The opposition is sustained, and registration to Applicant is refused.