G2D Management, LLC

Trademark Trial and Appeal Board

Jun 22, 2015

No. 85703129 (T.T.A.B. Jun. 22, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: June 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re G2D Management, LLC
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Serial No. 85703129
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Michael A. Cornman of Ladas & Parry LLP,
for G2D Management, LLC.
Tracy Cross, Trademark Examining Attorney, Law Office 109,
Dan Vavonese, Managing Attorney.
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Before Bucher, Ritchie and Wolfson,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
G2D Management, LLC (“Applicant”) seeks registration on the Principal
Register of the mark depicted below:

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for “restaurant and bar services” in International Class 43.1
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), contending that
Applicant’s use of its mark for its identified services is likely to cause confusion with
the mark BACARO (in standard characters), registered for “restaurant and bar
services” in International Class 43.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of the probative
facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry

1 Application Serial No. 85703129 was filed on August 14, 2012, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. The description of the mark reads: “The mark consists of the numbers ‘041’
in white on a red field, with ‘BACARO’ in white on a black field directly below.” The colors
red, white and black are claimed as features of the mark. The term “Bacaro” has been
disclaimed.
2 Reg. No. 3443592, registered June 10, 2008; Sections 8 and 15 combined declaration
accepted and acknowledged.
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mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. The Services, Trade Channels and Relevant Consumers
The services as they are identified in Applicant’s application are identical to
those identified in the cited registration, namely, “restaurant and bar services.”
Because the services are identical, we must presume that the channels of trade and
classes of purchasers are the same. 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); 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); American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). Accordingly, the du Pont
factors relating to the relatedness of the goods, channels of trade and classes of
consumers strongly favor a finding of likelihood of confusion.
B. The Marks
Turning to the marks, we consider them in their entireties as to appearance,
sound, connotation and commercial impression, to determine the similarity or
dissimilarity between them. Viterra, 101 USPQ2d at 1908 (quoting du Pont); Palm
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Bay, 73 USPQ2d at 1692. 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 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). Because the
similarity or dissimilarity of the marks is determined based on the marks in their
entireties, the 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 National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985). On the other hand, 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.
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. See Inter IKEA Sys. B.V. v. Akea, LLC,
110 USPQ2d 1734, 1740 (TTAB 2014).
Applicant’s primary argument in favor of registration is that BACARO will be
perceived by relevant consumers as meaning a “Venetian bar,” and therefore the
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term is unregistrable as merely descriptive, or generic, for restaurants or bars that
emulate those types of establishments in Venice, Italy. However, this argument is
unavailable to Applicant because Applicant has not sought to cancel the cited
registration. Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), provides that a
certificate of registration on the Principal Register shall be prima facie evidence of
the validity of the registration, of the registrant’s ownership of the mark and of the
registrant’s exclusive right to use the mark in connection with the goods or services
identified in the certificate. Because of the presumption of validity, an applicant will
not be heard on matters that constitute a collateral attack on the cited registration
during ex parte prosecution, including an ex parte appeal. To properly challenge the
validity of a registration cited by an examining attorney, a petition to cancel must
be brought. See, e.g., In re Dixie Rests., 41 USPQ2d at 1531 (“It is true that a prima
facie presumption of validity may be rebutted. However, the present ex parte
proceeding is not the proper forum for such a challenge.”) (internal citations
omitted); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992) (“Applicant’s
suggestion that registrant’s mark is descriptive may not be considered inasmuch as
that allegation comprises an attack on the validity of registrant’s registration which
is not permitted in an ex parte appeal proceeding.”). Cf. 37 C.F.R. § 2.106(b)(2) (“An
attack on the validity of a registration pleaded by an opposer will not be heard
unless a counterclaim or separate petition is filed to seek the cancellation of such
registration.”).
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Applicant further argues that the cited mark is weak, in that consumers have
become so accustomed to marks containing the term BACARO that they look to
other components in such marks to distinguish among them. In support of this
argument, Applicant submits the results of two Google searches (for the term
“bacaro” and the phrase “bacaro meaning”) and copies of pages that appear to be
from a tour company’s website, offering tours of Venice “bacari.”3
The Google search results have little probative value as evidence, as they are
merely truncated listings and not full search results. They do not show the context
in which the term “bacaro” is used or provide a clear definition of the term. While
many of the listings appear to be for a restaurant, given the paucity of information
identifying each establishment, they could easily all refer to a single restaurant or a
group of commonly owned restaurants; in this regard we note the majority of the
listings identify New York City as such establishment’s location. Some references
are ambiguous or irrelevant: one listing appears to refer to an apartment complex,
one to a tour of Venice, one to a Groupon offering. One entry refers to Applicant,
and a few are for establishments outside the United States. Accordingly, the
references do not demonstrate such widespread use of the term “bacaro” for
restaurants or bars that consumers would be accustomed to distinguishing marks
using the term on the basis of other components in the marks. See In re Bayer AG,
488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (deeming list of Google search

3 The Google searches are attached to Applicant’s request for reconsideration; the
description of the tour facilities is attached to Applicant’s response to the Office Action
dated October 5, 2012.
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result summaries to be “of little value in assessing the consumer public perception
of the ASPIRINA mark” because they provide “very little context of the use of
ASPIRINA”); In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011)
(“search summary of results from the Google search engine” given no consideration);
In re Tea and Sympathy, Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB 2008) (finding
truncated Google search results entitled to little probative weight). Accordingly,
while we have considered the evidence, it is of little value in assessing consumer
public perception of BACARO as applied to restaurant or bar services.
As for the tour guide webpages, described by Applicant as a “description of a tour
of such facilities in Venice including a definition of ‘bacaro’ and a list of the bacari
on the tour,” the evidence is problematic because all of the eateries named in the
article are located in Venice, Italy. Thus, although the article is in English, U.S.
consumers are likely to view the use of “bacaro” in the article as simply providing
general information about restaurants or bars located in Venice, Italy, and that the
term refers only to these overseas establishments. Moreover, while we presume the
website is available to U.S. customers, the record does not show the extent of U.S.
consumer exposure to the website or that the term “bacaro” applies to bars in the
United States. See In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1265 n.9 (TTAB
2011) (no basis to conclude U.S. consumers exposed to website for Australian
brewery; those webpages not considered); cf. In re King Koil Licensing Co., 79
USPQ2d 1048, 1050 (TTAB 2006) (while consumers may visit foreign websites for
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informational purposes, they are more likely to focus on local Internet retailers;
impact of foreign websites discounted).
The Examining Attorney has also submitted copies of pages from both
Applicant’s and registrant’s websites, showing that both Applicant and registrant
recognize the Italian origins of the term “bacaro.” However, this does not persuade
us that consumers would perceive registrant’s mark to be weak, but merely
underscores the foreign regional nature of the term “bacaro.” Applicant’s voluntary
disclaimer of the term does not alter this finding. A mark is not rendered
registrable with a voluntary disclaimer of an allegedly merely descriptive
component, and our comparison of Applicant’s and registrant’s marks is not affected
thereby. See In re National Data, 224 USPQ at 751 (finding the “technicality of a
disclaimer in [an application to register a trademark] has no legal effect on the
issue of likelihood of confusion”); In re MCI Communications Corp., 21 USPQ2d
1534 (Comm’r Pats. 1991) (no express prohibition against allowing an applicant to
voluntarily disclaim otherwise registrable matter).
Turning now to a comparison of the marks in terms of their sight, sound,
meaning and commercial impressions, we first note that Applicant has incorporated
registrant’s entire mark as a significant feature of its own mark. Likelihood of
confusion has frequently been found where one mark incorporates the entirety of
another mark, even where one mark includes a design feature. See Wella Corp. v.
Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (CCPA 1977) (finding
CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar);
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Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ
105, 106 (CCPA 1975) (finding BENGAL for gin and BENGAL LANCER and design
confusingly similar); In re Riddle, 225 USPQ 630 (TTAB 1985) (RICHARD PETTY’S
ACCU TUNE and design for automotive service stations held likely to be confused
with ACCUTUNE for automotive testing equipment). Applicant argues that the
“041” feature and the color combination serve to distinguish the marks. Despite the
larger size of the numbers in the mark, however, the term BACARO is a salient
feature of the mark and as such is equally prominent to “041.” Moreover, consumers
are more likely to remember a pronounceable term such as “bacaro” rather than an
arbitrary string of numbers. The additional design elements and colors in the mark
are background to the literal portions and as such are of lesser significance.
Further, while these give Applicant’s mark a different appearance from the cited
mark as it appears on the registration certificate, because the cited mark is depicted
in standard characters, registrant could also display its mark in the same font style
as Applicant’s mark. The rights due the registered mark reside in the wording or
other literal elements and not in any particular display or rendition thereof. See
Viterra, 101 USPQ2d at 1909; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257, 1260 (Fed. Cir. 2010). Regarding the meaning of the marks, to the extent
“bacaro” connotes or suggests an Italian-style bar or restaurant, the marks also
share the same meaning. Applicant apparently selected the numbers because 041
serves as the telephone area code for Venice, Italy;4 thus underscoring the

4 From Applicant’s website at http://www.041barcaro.com, attached to Applicant’s response
to Final Office Action.
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connection that BACARO makes to an Italian-style bar or restaurant. The marks
are similar in sight, sound, meaning and commercial impression.
II. Conclusion
Considering Applicant’s mark in its entirety, and that the entirety of the
registered mark, having no demonstrated weakness, has been incorporated into
Applicant’s mark, we find the overall commercial impressions of the marks are more
similar than dissimilar and not so different as to avoid a likelihood of confusion. We
also bear in mind that the marks will be used on identical services, which reduces
the degree of similarity between the marks necessary to find a likelihood of
confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 94 USPQ2d at
1260; In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). The legal
identity of the services also gives rise to the presumption that Applicant’s and
registrant’s services are likely to be offered to the same classes of consumers
through similar trade channels. For these reasons, we find that Applicant’s mark is
likely to cause confusion with the registered mark.
Decision: The refusal to register Applicant’s mark is affirmed.