Gumbo Bar Franchising LLC

Trademark Trial and Appeal Board

Mar 14, 2013

No. 85204197 (T.T.A.B. Mar. 14, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 14, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Gumbo Bar Franchising LLC
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Serial No. 85204197
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Raman Dewan of Jackson Walker L.L.P. for Gumbo Bar Franchising LLC.

Evin L. Kozak, Trademark Examining Attorney, Law Office 116 (Michael W. Baird,
Managing Attorney).
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Before Holtzman, Kuczma, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Gumbo Bar Franchising LLC filed an application to register on the Principal
Register the mark LITTLE DADDY’S GUMBO BAR, in standard character form, for
“Bar and restaurant services,” in International Class 43.1 The application contains
a disclaimer of the exclusive right to use GUMBO BAR as to Class 43; however,

1 Application Serial No. 85204197, filed under Trademark Act § 1(b), 15 U.S.C. § 1051(b), on
December 22, 2010. The application also includes goods in Classes 18 and 25 which are not
at issue in this appeal.
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according to applicant’s brief, “Applicant does not concede that the ‘GUMBO BAR’
wording is descriptive.”2
The trademark examining attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, as used in
connection with applicant’s services, so resembles the registered mark shown below,
as to be likely to cause confusion, or to cause mistake, or to deceive.3

The cited mark is registered on the Principal Register for “Restaurant services” in
International Class 42.4 When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
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). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between

2 Applicant’s brief at 6, fn. 2.
3 The examining attorney did not refuse registration as to the goods in Classes 18 and 25.
4 Reg. No. 2329699, issued on March 14, 2000; renewed.
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the goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, the applicant and
the examining attorney have also submitted evidence and arguments regarding
trade channels, conditions under which and customers to whom sales are made, and
absence of actual confusion.
Addressing first the services of applicant and registrant, we find that they
are legally identical. “Restaurant services” are identified in both the application
and the cited registration. In the context of an analysis under Section 2(d), it is
sufficient if likelihood of confusion is found with respect to use of the mark on any
service that comes within the description of services in the application or
registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d
1393, 1398 (TTAB 2007). Moreover, we find that the remainder of applicant’s
services, which are “bar” services, are closely related to the “restaurant services”
identified in the registration. It is common knowledge that one function of a
restaurant is to provide beverages to diners, and that such beverages sometimes
include alcoholic beverages that may be served in a section of the restaurant
referred to as a “bar.” In any event, the examining attorney has submitted
sufficient evidence to demonstrate that restaurant and bar services are often
provided under the same mark and in the same establishment. See, for example,
advertisement for Bugsy’s Pizza Restaurant and Sports Bar; advertisement for Old
Ebbitt Grill, which offers dinners, wine, “beer dinners,” and bar services;
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advertisement for Chadwick’s, which offers “casual dining” and a “Happy Hour”
featuring special prices for “domestic bottles,” wine, rail drinks, and margaritas.5
See also advertisements for “Redwood restaurant and bar”; Union Street, which
offers lunch and banquets and refers to itself as a “Tap and Grill”; Blue Restaurant
& Bar, and others.6
Applicant argues that it offers “Cajun/Louisiana-style foods,” while the
registrant offers “Mediterranean-style foods.”7 We cannot consider these purported
limitations on the scope of the services of applicant and registrant because no such
limitations are reflected in the application or the registration at issue. The scope of
the registration applicant seeks is defined by the identification of services in its
application and not by its actual use. Octocom Syst. Inc. v. Houston Computers
Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Similarly, in
considering the scope of the cited registration, we look to the registration itself and
not to extrinsic evidence about the registrant’s services. In re Elbaum, 211 USPQ
639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139
(CCPA 1958).8 Applicant argues that In re United Oil Mfg. Co., 508 F.2d 1341
(CCPA 1975) supports the consideration of extraneous evidence regarding the scope
of goods and services set forth in an application or registration. In that case, the

5 Evidence submitted with the examining attorney’s final Office action of October 27, 2011.
6 Evidence submitted with the examining attorney’s Office action of March 23, 2011.
7 Applicant’s brief at 7.
8 In any event, there is no extraneous evidence regarding limitations on the services of
registrant, other than the “Greco-Roman” design elements in the registered mark. These
features affect the impression created by the mark; but they do not effectively limit the
scope of registrant’s services.
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goods at issue were not identical, and the court made it clear that the extraneous
evidence “merely defines what is encompassed by the terms [set forth in the
registration’s identification of goods], and does not attempt to alter or limit the
identification of goods….” Id. at 1344. In the case before us, the terms “restaurant
services” and “bar services” need no explanation as to their meaning, and applicant
is indeed seeking to “alter or limit” the scope of the identified services by limiting
registrant’s services to the field of Mediterranean foods and limiting applicant’s own
services to Cajun/Louisiana-style foods. In conclusion, the du Pont factor of the
similarity or dissimilarity of the services favors a finding of likelihood of confusion.
To the extent that applicant’s services are identical to those of registrant, we
must presume that those services move in the same channels of trade and are
available to the same classes of customers for those services. In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022,
1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
These two du Pont factors favor a finding of likelihood of confusion.
We now turn to the similarity or dissimilarity of the marks at issue.
Applicant rightly points out that in our analysis under Section 2(d) we must
compare the marks at issue in their entireties. However, 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
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consideration of the marks in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant and the examining attorney differ pointedly as to what is the
dominant portion of the registered mark. The examining attorney contends that the
wording LITTLE DADDY’S is the dominant portion. Applicant argues that it is the
mark’s “detailed Greco-Roman design, the size of which takes up at least 80% or
more of the entire mark, and is the first thing that consumers viewing the Cited
Registration will be struck by. It is not the ‘LITTLE DADDY’S’ wording, as shown
by the highly stylized way in which the wording is used to compliment the Cited
Registration’s design, namely, a Greco-Roman font, and by its appearance below the
design.”9
It is true that words do not always dominate over design features. However,
we are not persuaded by applicant’s argument for the dominance of the design over
the words in registrant’s mark. In the case of marks consisting of words and a
design, the words are normally given greater weight because they would be used by
consumers to request the products or services. In re Dakin’s Miniatures, Inc., 59
USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553,
1554 (TTAB 1987). See also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d
1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food
Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Also, the wording
LITTLE DADDY’S, without design, would most likely be used in textual materials

9 Applicant’s brief at 5.
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in order to identify registrant’s services. See In re Viterra, 101 USPQ2d at 1911; In
re Dakin’s Miniatures, Inc., 59 USPQ2d at 1596; CBS Inc. v. Morrow, 708 F.2d
1579, 1582, 218 USPQ 198, 200 (Fed. Cir. 1983). The present case is not similar to
In re Electrolyte Laboratories Inc., 929 F.2d 645, 16 USPQ2d 1239 (Fed. Cir. 1990),
where designs were found to dominate over the literal portions of the marks because
the literal portions were descriptive or generic, having little source-indicating
power. In the case before us, the literal element LITTLE DADDY’S is a strong and
distinctive element of the registered mark. We also find that LITTLE DADDY’S is
the dominant portion of applicant’s mark, in which GUMBO BAR will be
understood by customers as an indicator of the nature of services offered by
applicant. The sharing of the term LITTLE DADDY’S renders the two marks
substantially similar in sound and meaning.
In comparing the marks, applicant urges us not to ignore the highly stylized
lettering of registrant’s wording LITTLE DADDY’S and the words GUMBO BAR
appearing in applicant’s mark. Applicant argues that the “Greco-Roman” lettering
in the registered mark “invokes an overarching Greco-Roman theme” that is also
present in the design portion of the mark, all of which contrasts strongly with the
“overarching Cajun/Louisiana theme” of applicant’s mark, which arises from the
wording GUMBO BAR. Applicant appears to argue that the different “themes”
suggested by the two marks are so mutually exclusive that customers would not be
likely to perceive any relationship between the marks.10 We disagree. First, as we

10 Applicant’s brief at 6.
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discussed above in our consideration of the services at issue, we have no reason to
believe that registrant’s restaurants offer “Mediterranean” food or are in any way
limited to that cuisine. There is also no evidence to show that “gumbo” is a dish
that would be offered only in a restaurant limited to Cajun/Louisiana cuisine. In
the U.S. marketplace, restaurants are known to offer “fusion” cuisine, combining
cooking styles of diverse cultures. See, for example, advertisement for Blue
Restaurant & Bar, stating, “Blue Restaurant is designed to tempt all of your senses,
whether you desire Italian food, French food, Mediterranean food, Moroccan food,
Spanish food, or American fine dining.”11 See also advertisement for Elephant Bar,
which states, “BRINGING TOGETHER EUROPEAN, ASIAN & AMERICAN
COOKING to Create a Unique Blending of Global Fusion Flavors!”12 We also note
that applicant’s Facebook page lists, alongside gumbo offerings, “Cioppino Italian
seafood stew” and “Italian Cream Cake”; and a menu from Gumbo Bar, which may
be related to applicant, offers Greek Salad, Cioppino, and Italian Cream Cake.13 In
sum, we do not find the cultural indicators that are purportedly present in the two
marks to be sufficient to dispel a likelihood of confusion caused by the marks’
shared term LITTLE DADDY’S.
We note also that applicant seeks registration of its mark in standard
character form, such that the protections of registration would not be limited to any
particular font, size, style or color. In re Mighty Leaf Tea, 601 F.3d 1342, 94

11 Office action of March 23, 2011.
12 Id.
13 Id.
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USPQ2d 1257 (Fed. Cir. 2010). Accordingly, we bear in mind that applicant’s mark
might be displayed in the same stylized format as registrant’s mark, which would
increase the resemblance between applicant’s mark and registrant’s mark.
Overall, we find that the du Pont factor of the similarity or dissimilarity of
the marks favors a finding of likelihood of confusion.
Applicant next argues that “purchasers typically give more thought and
consideration, and act less on impulse, to the style of food they want to eat when
planning their next meal. The record shows that different styles of restaurant
services and foods are offered under the Marks.”14 This point is predicated on the
assumption that the services of applicant and registrant are different in nature; but
we have found that they are legally identical. Accordingly, we find the factor of the
customers’ degree of care to be neutral.
Applicant argues also that the lack of proof of any actual confusion should be
given weight in our consideration. As examining attorneys are not in a position to
ferret out instances of actual confusion, it is clear that a lack of proof does not prove
a lack of confusion. Applicant’s uncorroborated statement of no known instances of
confusion is entitled to little weight, especially in an ex parte context in which we
have no input from registrant. See In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1205 (Fed. Cir. 2003). We have before us no evidence relating to
the extent of actual use of applicant’s and registrant’s marks or showing whether
there have been meaningful opportunities for instances of actual confusion to have

14 Applicant’s brief at 10.
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occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992). Moreover, the fact that applicant filed its
application on the basis of its intention to use the mark and has still filed no
statement of use suggests that there has been little opportunity for confusion, if
any. Accordingly, the du Pont factor of the length of time during and conditions
under which there has been contemporaneous use without evidence of actual
confusion is considered neutral.
Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find that applicant’s mark, as
applied to applicant’s services, so closely resembles the cited registered mark as to
be likely to cause confusion, mistake or deception as to the source of applicant’s
services.
Decision: The refusal to register applicant’s mark for the services in
International Class 43 is affirmed. After this appeal is terminated, the application
will be forwarded for publication with respect to the goods in Classes 18 and 25.