Forty-Niner Truck Plaza

Trademark Trial and Appeal Board

Jun 6, 2019

87773292 (T.T.A.B. Jun. 6, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: June 6, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Forty-Niner Truck Plaza
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Serial No. 87773292
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Michael E. Chase of Boutin Jones Inc.
for Forty-Niner Truck Plaza, dba Sacramento 49er Travel Plaza.
Kimberly Boulware Perry, Trademark Examining Attorney, Law Office 112,
Renee Servance, Managing Attorney.
_____

Before Taylor, Goodman and Dunn,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Forty-Niner Truck Plaza, dba Sacramento 49er Travel Plaza (“Applicant”) seeks
registration on the Principal Register of the mark RUSTY’S ROADHOUSE (in
standard characters, “Roadhouse” disclaimed) for “Restaurant services, bar services
and catering services” in International Class 43.1

1 Application Serial No. 87773292 was filed on January 27, 2018, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).

Serial No. 87773292
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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 so resembles the registered mark RUSTY’S (typed drawing form)2
for “restaurant services featuring eat-in and take-out food and home delivery” in
International Class 423 as to be likely to cause confusion, mistake or to deceive. After
the Trademark Examining Attorney made the refusal final, Applicant appealed to
this Board. We affirm the refusal to register.
I. Likelihood of Confusion
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 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., 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. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). These factors, and the other relevant du Pont factors now

In this decision, page numbers in the application record are referred to as they appear in the
Office’s online Trademark Status and Document Retrieval (TSDR) database. Citations to the
briefs on appeal refer to the Board’s TTABVUE docket system.

2 Effective November 2, 2003, the term “standard character” drawing replaced the term
“typed” drawing. TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 807.03(i)
(Oct. 2018).
3 Registration No. 1689461, issued May 26, 1992; second renewal. Effective January 1, 2002
restaurant services were reclassified from International Class 42 to International Class 43,
under the Nice Agreement.
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before us, are discussed below. To the extent that any other du Pont factors for which
no argument or evidence was presented may nonetheless be applicable, we treat them
as neutral.
A. Similarity or Dissimilarity of the Services and Channels of Trade
We turn first to the du Pont factors regarding the similarity or dissimilarity of the
respective services, channels of trade and classes of purchasers. Applicant argues
that the “services here are a pizza parlor and a truck stop restaurant, which are not
closely related” and that “there is no reason to believe that consumers would associate
a Rusty’s Roadhouse restaurant with a Rusty’s Pizza Parlor restaurant.”4 However,
the issue of likelihood of confusion must be determined on the basis of the services as
set forth in the application and the cited registration, and not on extrinsic evidence
of actual use. 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. Hous.
Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Applicant’s services are “Restaurant services, bar services and catering services”
and Registrant’s services are “restaurant services featuring eat-in and take-out food
and home delivery.” Applicant’s broadly worded “restaurant services,” encompass
Registrant’s more specifically identified “restaurant services featuring eat-in and
take-out food and home delivery.” Because the description of services in both the
application and the cited registration include “restaurant services,” the services are

4 4 TTABVUE 13-14.
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in part legally identical. See e.g., 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.’”); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007)
(petitioner’s “restaurant services” encompass respondent’s “restaurant services
featuring bagels as a main entrée”).
Although Applicant argues that Registrant’s registration does not include catering
or bar services, we need not assess the relatedness of these services within this class.
This is so because if likelihood of confusion exists with respect to any of Applicant’s
identified services in a particular class, the refusal of registration must be affirmed
as to all services in that class. Here, our finding that Applicant’s restaurant services
are legally identical to Registrant’s services is sufficient to support a finding that
there is a likelihood of confusion. Tuxedo Monopoly, Inc. v. General Mills Fun Group,
Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must
be found if there is likely to be confusion with respect to any items that come within
the identification of goods in a particular class in the application). Accord Hewlett-
Packard Development Co. v. Vudu Inc., 92 USPQ2d 1630, 1632 n.4 (TTAB 2009).
Because the restaurant services identified in the application and the cited
registration are legally identical in part, we must presume that the channels of trade
and classes of purchasers for these services are the same. In re Yawata Iron & Steel
Co., 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);
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American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011) (for legally identical services,
marketing channels of trade and targeted classes of consumers are the same); Jansen
Enterprises v. Rind, 85 USPQ2d at 1108 (applying presumption that legally identical
restaurant services are rendered to the same classes of purchasers).
We find that the second and third du Pont factors weigh heavily in favor of finding
a likelihood of confusion.
B. Similarity or Dissimilarity of the Marks
We must compare the marks in their entireties as to appearance, sound,
connotation and commercial impression to determine the similarity or dissimilarity
between them. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1690 (Fed. Cir. 2005), (quoting In re E. I. du
Pont de Nemours & Co., 177 USPQ at 567). The test, under the first du Pont factor,
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 that confusion as to the source of the services offered
under the respective marks is likely to result. Coach Servs. Inc. v. Triumph Learning,
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading
Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)).
In comparing the marks, we are mindful that where, as here, the services are legally
identical in part, the degree of similarity necessary to find likelihood of confusion
need not be as great as where there is a recognizable disparity between the services.
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Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992).
In an attempt to distinguish the marks, Applicant’s relies upon Registrant’s actual
use of the mark in conjunction with the words “Pizza Parlor” or “Pizza.” Applicant
argues that Registrant “has not relied on the single word “Rusty’s” as a source
identifier” and that the “actual mark used” is “Rusty’s Pizza Parlor.”5 However, we
compare the marks as depicted in the application and the cited registration, not as
actually used. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018).
Here, neither the words “pizza parlor” nor “pizza” are a part of Registrant’s mark.
Accordingly, Applicant’s arguments are unavailing. In re Jump Designs, LLC 80
USPQ2d 1370, 1376 (TTAB 2006).
Registrant’s mark as shown in the registration is RUSTY’S, and Applicant’s mark
as shown in the application is RUSTY’S ROADHOUSE. The prominent feature and
dominant portion of Applicant’s mark is RUSTY’S given its location as the first part
of the mark as well as the first word to be articulated when pronouncing the mark.
See Palm Bay Imps. 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in the mark). The word
ROADHOUSE in Applicant’s mark is less significant because it is descriptive or
generic of Applicant’s restaurant services and has been disclaimed.6 In re Dixie Rests.,

5 4 TTABVUE 9. May 25, 2018 Response to Office Action at 5-15.
6 Roadhouse is defined as “an inn or tavern usually outside city limits providing liquor and
usually meals, dancing, and often gambling.” MERRIAM-WEBSTER dictionary, merriam-
webster.com, March 27, 2018 Office Action at 3.
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Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (disclaimed matter
that is descriptive of or generic for a party’s goods or services is typically less
significant or less dominant when comparing marks). It is well settled that one
feature of a mark may be more significant than another, and it is not improper to give
more weight to the dominant feature in determining the commercial impression
created by the mark as long as the mark is considered in its entirety. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
We acknowledge that the additional disclaimed term ROADHOUSE in Applicant’s
mark creates some differences, both visually and aurally, from the registered mark.
Nonetheless, the marks are similar in appearance and sound to the extent that both
marks contain the term RUSTY’S. The marks also have a shared connotation and
commercial impression as to the term RUSTY’S which calls to mind the name of a
person. Barbara’s Bakery, Inc. v. Landesman, 82 USPQ2d 1283 (TTAB 2007) (in
terms in terms of connotation and overall commercial impression, BARB’s BUNS
BAKERY and BARBARA’S, BARBARA’S BAKERY, and BARBARA’S BAKERY &
design connote and create the impression of a bakery owned or operated by a person
named BARB or BARBARA; the dominant feature for each of the marks is BARB’s or
BARBARA’s).
Applicant argues that the addition of the term ROADHOUSE to its mark conveys
a significantly different commercial impression than simply RUSTY’S as it connotes
“a place where people who are ‘on the road’ or travelling a long distance can stop to
Serial No. 87773292
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seek refreshments, nourishment and rest.”7 As noted above, when Applicant’s mark
is considered in its entirety, the disclaimed term ROADHOUSE does not create any
significant differences in the meaning or commercial impression of the marks. “The
identity of the dominant portion of [applicant’s] mark and the registered mark is
especially important in the restaurant industry ‘because restaurants are often
recommended by word of mouth and referred to orally.’” In re Dixie Rests., 41 USPQ2d
at 1534 (quoting Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218
USPQ 390, 395 (Fed. Cir. 1983)). Moreover, Applicant’s mark incorporates the cited
mark in its entirety. Likelihood of confusion is often found where the entirety of one
mark is incorporated within another. See In re Integrated Embedded, 120 USPQ2d
1504, 1513 (TTAB 2016) (BARR GROUP confusingly similar to BARR); In re Denisi,
225 USPQ 624, 626 (TTAB 1985) (PERRY’S PIZZA for restaurant services
specializing in pizza confusingly similar to PERRY’S for restaurant and bar services).
When viewed in their entireties, the marks are more similar than dissimilar. The
descriptive or generic term ROADHOUSE in Applicant’s mark adds little to the
overall commercial impression and virtually nothing to its source-identifying function
as it merely identifies the type of restaurant services provided under the mark. It
does not serve to distinguish the marks to avoid confusion. We find that the marks
on the whole engender similar overall commercial impressions. The du Pont factor
regarding the similarity or dissimilarity of the marks weighs in favor of finding a
likelihood of confusion.

7 4 TTABVUE 12.
Serial No. 87773292
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C. The Effect of Third-Party Registrations on the Degree of Strength or
Weakness of the Registered Mark
The sixth du Pont factor requires us to consider the number and nature of similar
marks in use on similar services. du Pont, 177 USPQ at 567. In this regard, the
Federal Circuit has stated that evidence of the extensive registration and use of a
term by others can be “powerful” evidence of weakness. Jack Wolfskin Ausrustung
Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363,
116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC,
794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).
Applicant argues that “the matter common to the marks (the word ‘Rusty’s’) is not
likely to be perceived by purchasers as distinguishing source due to substantial
dilution.”8 In support of its argument that Registrant’s mark is entitled to a narrow
scope of protection, Applicant submitted eight plain copies of third-party
registrations.9 Seven “live” registrations incorporate the term RUSTY’S.10

8 7 TTABVUE 8.
9 May 25, 2018 response to Office Action at 40-48. Because Applicant made of record copies
of registration certificates rather than printouts from the Office’s TSDR database, we cannot
determine from the record whether the registrations are valid and subsisting, and we do not
take judicial notice of the status of third-party registrations. Trademark Board Manual of
Procedure (TBMP) Section 1208.04 (2018). However, we consider the status of the
registrations to have been stipulated to by the Applicant and the Examining Attorney as both
agree that there are seven “live” or subsisting registrations and the remaining registration
for “Rusty’s,” has expired. Although acknowledging that previous decisions by the Office are
not binding, Applicant argues that the expired registration is persuasive evidence that the
Office has found no likelihood of confusion for an identical mark for restaurant services.
However, we note that the expired registration has no probative value other than to show
that it once issued. In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264 (TTAB 2011).
10 Applicant also submitted a portion of file histories of abandoned application Serial Nos.
78381452 (from 2004) and 78645232 (from 2005) both for RUSTY’S FROZEN CUSTARD, as
evidence that the Office did not cite Registrant’s mark against another food service entity.
May 25, 2018 Response to Office Action at 49-54. However, these application records are not
Serial No. 87773292
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Of the seven subsisting third-party registrations, the most relevant are two
registrations, owned by the same registrant, RUSTY’S HAWAIAAN for coffee
products and RUSTY’S HAWAIAAN 100% Ka’u Coffee and design for coffee products
and tea.11 See Juice Generation, 115 USPQ2d at 1671 (third-party registrations “in
the food service industry” which included food products and restaurant services are
relevant to the question of weakness of a mark for restaurant services). But see
Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d
1686, 1694 (Fed. Cir. 2018) (no evidence in the record to show relatedness of goods,
“meat,” to services for oriental foods, alcoholic beverages, café food, or grocery delivery
services). The remaining five registrations are for unrelated goods and services and
are not probative. Omaha Steaks, 128 USPQ2d at 1693 (the Board improperly
broadened its analysis of the sixth du Pont factor to encompass third-party marks on
clearly dissimilar goods); In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,
1751 (Fed. Cir. 2017) (disregarding third-party registrations for other types of goods
where the proffering party had neither proven nor explained that they were related
to the goods in the cited registration).

evidence of anything except that they were filed on a certain date. See In re Mr. Recipe, LLC,
118 USPQ2d 1084, 1089 (TTAB 2016).

11 May 25, 2018 response to Office Action at 41-42, 48.
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The relevant third-party registrations are too few in number to establish the
conceptual weakness of RUSTY’S. Cf. Jack Wolfskin, 116 USPQ2d at 1136 (court
stated the third-party evidence was “voluminous”).12
Applicant also submitted evidence of thirteen websites showing third-party uses
of marks incorporating RUSTY’S in connection with restaurant services.13 The
purpose of “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 (citing MCCARTHY ON TRADEMARKS, at § 11:88).

12 The Court in Jack Wolfskin did not provide the exact number of third-party registrations
or uses that were considered, although it did identify fourteen “notable examples.” 116
USPQ2d at 1670.
13 May 25, 2018 Response to Office Action at 16-39. Applicant argues in its reply brief that it
has provided fifteen examples of restaurants using the term RUSTY’S, but we count fourteen
examples, if Registrant’s actual use is included.
Serial No. 87773292
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Serial No. 87773292
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Although Applicant’s evidence of third-party use 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,” a
considerable number of third-party uses are evidence that consumers are conditioned
to look for differences between the marks and additional indicia of origin to determine
the source of a given product or service. Jack Wolfskin, 116 USPQ2d at 1136. The
weaker a 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.
The evidence of thirteen uses of marks incorporating the term RUSTY’S is not of
a caliber similar to the record in In re Broadway Chicken, 38 USPQ2d 1559, 1565-66
(TTAB 1996) where Applicant provided evidence of hundreds of restaurants and
eating establishments offering services using a trademark or a trade name containing
the term BROADWAY. Thus, we are not convinced that Registrant’s mark is in a
crowded field of similar marks or that Registrant’s mark is weak. See Juice
Generation, 115 USPQ2d at 1673 n.1 and 1674 (26 relevant uses or registrations were
provided as examples by the court, and the court also stated that there were a
Serial No. 87773292
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“substantial number” of third-party marks for restaurant services and food products);
cf. Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030,
1033-37 (TTAB 2016) (at least 85 uses of rose-formative marks for senior living
communities and related services and eight third-party registrations incorporating
the term rose were in the record). The record does not establish that consumers are
so accustomed to seeing RUSTY’S 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 du Pont factor is considered
neutral.
II. Conclusion
We have considered all of the arguments and evidence of record, and all relevant
du Pont factors. When we balance the du Pont factors, we conclude that confusion is
likely to occur between Applicant’s mark and Registrant’s mark.
Decision: The refusal to register Applicant’s mark RUSTY’S ROADHOUSE is
affirmed.