Jack’s Family Restaurants LPv.Wait List Incorporated

Trademark Trial and Appeal Board

Jul 26, 2018

No. 91222221 (T.T.A.B. Jul. 26, 2018)

Hearing: June 12, 2018 Mailed: July 26, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Jack’s Family Restaurants LP
v.
Wait List Incorporated
_____

Opposition No. 91222221
_____

Douglas A. Rettew and Laura K. Johnson of Finnegan, Henderson, Farabow,
Garrett & Dunner, L.L.P.,
for Jack’s Family Restaurants LP.

Stephen L. Davis of the Law Offices of Stephen L. Davis,
for Wait List Incorporated.
_____

Before Ritchie, Wolfson, and Shaw,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
On July 22, 2014, Wait List Incorporated (“Applicant”) applied to register JACKS
URBAN EATS (in standard characters, “EATS” disclaimed) for “restaurant
services.”1 Jack’s Family Restaurants LP (“Opposer”) filed an opposition to the

1 Serial No. 86344572.
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91222221
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registration of Applicant’s mark on the ground that Applicant’s mark is likely to cause
confusion with Opposer’s previously registered marks under Trademark Act Section
2(d), 15 U.S.C. § 1052(d), as follows:
1. JACK’S (typed form2) for “restaurant services-namely, drive-in restaurants
specializing in the serving of sandwiches, seafood, and nonalcoholic beverages”
in International Class 423 and
2. for “restaurant services featuring specially prepared sandwiches” in
International Class 42.4
The Notice of Opposition alleges a likelihood of confusion with Opposer’s marks
based on ownership of its pleaded registrations and prior common law use of “the
JACK’S name and mark.”5 Applicant denied the salient allegations of the notice of
opposition.6

2 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
3 Reg. No. 793082 issued July 20, 1965; renewed. After the date of this registration,
restaurant services were reclassified as Class 43 services due to the restructuring of Class 42
that was implemented on January 1, 2002. See TRADEMARK MANUAL OF EXAMINING
PROCEDURE (TMEP) § 1401.11 (Oct. 2017).
4 Reg. No. 1002373 issued January 21, 1975; renewed.
5 1 TTABVUE 5.
6 4 TTABVUE 3. Applicant also alleged, as an affirmative defense, that Opposer’s claim is
barred by the equitable doctrine of laches. However, laches does not apply where, as here, an
opposition has been timely filed. Nat’l Cable Television Ass’n Inc. v. Am. Cinema Editors Inc.,
937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991) (“[L]aches begins to run from the time
action could be taken against the acquisition by another of a set of rights to which objection
is later made.”).
Opposition No. 91222221
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Both parties filed briefs, and Opposer filed a reply brief. An oral hearing was held
on June 12, 2018. We sustain the opposition.
I. The Record
The record consists of the pleadings and, by operation of Trademark Rule
2.122(b), the application file for Applicant’s mark JACKS URBAN EATS.
Opposer submitted the following evidence and testimony:
A. Copies from the TESS and TSDR databases of its pleaded
registrations, attached to the notice of opposition;7

B. Confidential and redacted versions of the parties’ agreed-upon
Stipulated Facts for Jack’s Family Restaurant LP (“Opposer’s
Stipulation”), and accompanying exhibits.8

C. Notice of Reliance on pages from Applicant’s website.9

Applicant submitted the following evidence and testimony:
A. Notice of Reliance on six third-party registrations and copies of
TSDR printouts of the registration certificates.10

B. The parties’ agreed-upon Stipulated Facts for Jack’s Urban Eats
(“Applicant’s Stipulation,” not confidential), and accompanying
exhibits.11

7 1 TTABVUE 9-19.
8 Opposer’s Stipulation is at 27 TTABVUE (confidential version at 22 TTABVUE). The
Exhibits are at 23 and 28 TTABVUE. (confidential versions at 24-26 TTABVUE.)
9 29 TTABVUE.
10 32 TTABVUE 4-14.
11 Applicant’s Stipulation is at 30 TTABVUE.
Opposition No. 91222221
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II. Stipulated Facts
The Board commends the parties for reaching agreement and reducing to
writing their stipulations to the undisputed facts relevant to the issues in this
case. See, e.g., Oxy Metal Indus. Corp. v. Transene Co., 196 USPQ 845, 847 n.20
(TTAB 1977) (litigation expenses can be saved where parties agree to introduce
all uncontroverted facts by affidavit or stipulated facts and provide balance
through deposition testimony). By virtue of their stipulations, the following facts
are not in dispute:
1. Opposer opened its first restaurant on November 21,
1960, in Homewood, Alabama. By 1969, Opposer had 57
stores in the states of Alabama, Florida, Georgia,
Mississippi, and Tennessee. Opposer continues to use its
marks in Alabama, Georgia, Mississippi, and Tennessee.12
2. Applicant opened its first restaurant in 1998 with a
restaurant in Sacramento, California. Applicant presently
operates twelve restaurants in California.13
3. Opposer markets its services to ordinary consumers, i.e.
the “general public,” directly through its various
restaurants and on its website.14 Applicant’s services are
promoted, offered, or sold to consumers directly through its
various restaurants and on its website.15
4. Applicant’s restaurants are usually located in large
shopping centers or shopping malls in metropolitan areas,
and offer food in an “urban cafeteria” setting intended to
provide a “hip and laidback atmosphere.”16

12 Opposer’s Stipulation, ¶¶ 3-5, 12-13.
13 Applicant’s Stipulation, ¶¶ 2-3, 5.
14 Opposer’s Stipulation, ¶ 37.
15 Applicant’s Stipulation, ¶ 28.
16 Id. ¶ 31.
Opposition No. 91222221
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5. The typical price range for food at Applicant’s
restaurants is from $1 to $14.17 The typical price range for
food at Opposer’s restaurants is from $1.29 to $17.99.18
4. Opposer advertises through “a wide variety of media,
including, but not limited to, the Internet, social media
websites, television, radio, print, billboard advertising, and
local events.”19
5. Opposer has enforced its rights in its JACK’S mark
against third parties over the years. Copies of a cease-and
desist letter, settlement agreements, and official USPTO
documents establish actions taken by Opposer from 2000
to 2015.20
III. Standing and Priority
To have standing, a plaintiff must have a real interest, i.e., a personal stake in the
outcome of the proceeding and a reasonable basis for its belief that it will be damaged.
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, 1025-28 (Fed. Cir. 1999).
As a result of Opposer’s submission of TSDR and TESS copies of its registrations,
Opposer has established its standing. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Likewise, because Applicant has not
counterclaimed to cancel these registrations, priority is not at issue with respect to
the marks and the services set out in the registrations. King Candy Co. v. Eunice

17 Id. ¶ 33.
18 Opposer’s Stipulation, ¶ 42.
19 Id. ¶ 19.
20 Id. ¶¶ 44-80.
Opposition No. 91222221
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King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Moreover, Applicant
“does not contest that Opposer has standing and priority of use and registration.”21
IV. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
relevant, probative evidence in the record related to a likelihood of confusion. In re E.
I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 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 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, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods [or
services] and differences in the marks.”). We discuss the du Pont factors for which
there is relevant argument and evidence.
For purposes of our likelihood of confusion analysis, we focus on the most relevant
pleaded registration, Registration No. 793082 (JACKS). If we find a likelihood of
confusion as to this pleaded registration, we need not find it as to the JACKS and
design registration or as to Opposer’s common law use. On the other hand, if we do
not find likelihood of confusion with the typeset mark JACKS, we would not find it

21 36 TTABVUE 10.
Opposition No. 91222221
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as to the design mark in Opposer’s other pleaded registration or as to Opposer’s
common law use. See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
A. The Services; Trade Channels; Classes of Consumers
Addressing first the services of Applicant and Opposer as identified in the
application and pleaded Registration No. 793082, we find that they are legally
identical. Applicant’s application is for “restaurant services,” which encompass
within its scope the “drive-in restaurants” identified in Opposer’s registration for the
JACK’S mark. Although Applicant agrees that “both marks are used in connection
with ‘restaurant services,’”22 it argues that confusion is unlikely because the parties’
“cuisine and style are distinct”23 and has provided evidence showing its décor,
cafeteria style serving, and other indicia of its “fast casual” restaurant experience.24
However, an applicant may not restrict the scope of the goods or services covered in
its application by argument or extrinsic evidence. In re Midwest Gaming & Entm’t
LLC, 106 USPQ2d 1163, 1165 (TTAB 2013); In re La Peregrina Ltd., 86 USPQ2d
1645, 1647 (TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ2d 763, 764

22 36 TTABVUE 6.
23 Id.
24 See, e.g., Applicant’s website, 31 TTABVUE 38-55 (including photographs of the interior of
Applicant’s restaurants, food, wait-staff and customers, and touting the artisan appeal of the
design of the restaurant and creation of its food: “Jacks is an urban cafeteria, serving award
winning, farm fresh affordable meals in a hip and laidback atmosphere. The friendly and
talented staff has been hand crafting salads, sandwiches, and plates since 1998 and is
proudly recognized as an innovator of California’s farm-to-table movement. … An eclectic mix
of original artwork, cool flea market finds, and upbeat music all comes together to create a
laidback dining vibe.”).
Opposition No. 91222221
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(TTAB 1986). Thus, any specific differences between the actual nature of the services
are irrelevant in our analysis. We make our determination regarding the similarity
of the services, channels of trade and classes of purchasers based on the services as
they are identified in the applications and registrations, respectively. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014); Octocom Sys. Inc. v. Houston Computs. Servs., Inc., 918 F.2d 937, 16
USPQ2d 17893, 1787 (Fed. Cir. 1990); Paula Payne Prods. v. Johnson Publ’g Co., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the respective descriptions of
[services]”).
Where, as here, the respective identifications of services are legally identical and
without restrictions as to channels of trade or classes of purchasers, the identified
services are presumed to travel in the same channels of trade to the same class of
purchasers. In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1005 (Fed. Cir. 2002) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed.
Cir. 1983) (“[A]bsent restrictions in the application and registration, goods and
services are presumed to travel in the same channels of trade to the same class of
purchasers.”)). Thus, we presume the trade channels and classes of purchasers are
the same for both Opposer’s and Applicant’s restaurant services.
The second and third du Pont factors heavily favor finding a likelihood of
confusion.
Opposition No. 91222221
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B. Strength of Opposer’s Mark
Before considering the similarities and dissimilarities in Opposer’s and
Applicant’s marks, we assess the relative strength of Opposer’s mark under the fifth
du Pont factor to decide the scope of protection to which it should be accorded. In
determining the strength of a mark, we consider both its inherent strength based on
the nature of the mark itself, and its commercial strength, based on the marketplace
recognition value of the mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 96
USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its
conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”) Top Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-
72 (TTAB 2011); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899
(TTAB 2006); MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83 (4th ed.
2013) (“The first enquiry focuses on the inherent potential of the term at the time of
its first use. The second evaluates the actual customer recognition value of the mark
at the time registration is sought or at the time the mark is asserted in litigation to
prevent another’s use.”).
1. Inherent Strength
Opposer argues that its mark is inherently strong, as it has “no obvious meaning
or significance relative to restaurant services.”25 There is no evidence to the contrary,
and we proceed on the basis that Opposer’s mark is entitled to all presumptions,

25 35 TTABVUE 24.
Opposition No. 91222221
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including the presumption of validity, accorded registered marks under Trademark
Act Section 7(b), 15 U.S.C. § 1057(b).
2. Commercial Strength
In addition to its inherent strength, Opposer argues that
[T]he JACK’S Mark has achieved significant marketplace
strength and recognition resulting from its continuous and
substantial use for more than 55 years, massive sales of
over $1 billion in last five years alone, substantial
advertising and promotion across all types of media (with
over $30 million spent in the last five years on print,
television, and billboard advertisements as well as
significant public exposure through social media, and
stemming from its participation in and sponsorship of
charitable and community events), and unsolicited media
attention.26
As stipulated, these facts are not in dispute: Opposer has used its mark
continuously since 1960;27 in the last five years (prior to execution of Opposer’s
Stipulation in 2017) Opposer’s sales totaled approximately $1 billion and advertising
expenses approximately $30 million;28 Opposer enforced its rights in the JACK’S
mark between 2000-2015, filling opposition and cancellation actions against
approximately 17 entities claiming rights to JACK-formative marks;29 Opposer
displays its mark at its restaurants through packaging, exterior and in-store signage,

26 35 TTABVUE 25.
27 Opposer’s Stipulation ¶¶ 3, 12-13.
28 Exact figures were filed under seal but the approximate figures were disclosed in Opposer’s
brief, 35 TTABVUE 25.
29 Opposer’s Stipulation ¶¶ 44-80.
Opposition No. 91222221
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menus, and uniforms;30 and Opposer promotes its services through the Internet,
social media websites, television, radio, print, billboard advertising, and local events
such as programs that benefit Children’s of Alabama hospital, “Boo at the Zoo” events,
music festivals, and various high school and college sporting events.31 Opposer has
received unsolicited media attention and has been recognized within its industry; for
example, having received the “Retailer of the Year – Bronze” in 2011 from the
Alabama Retail Association.32
3. Summary on Strength of Opposer’s Mark under the fifth du Pont factor
We find that Opposer has established its renown in the restaurant business for
the area in which it operates, namely, within the Southeastern area of the United
States. The evidence does not support a finding that Opposer’s mark is well-known
outside this geographic region. In view thereof, the fifth du Pont factor weighs slightly
in favor of a likelihood of confusion. See Carl Karcher Enters. Inc. v. Stars Rests. Corp.,
35 USPQ2d 1125, 1130 (TTAB 1995) (Although not finding that opposer’s marks were
of “national fame,” finding that “opposer has established local notoriety in its trading
area” weighed in favor of finding a likelihood of confusion).
C. Third-Party Marks
The sixth du Pont factor examines the number and nature of any similar marks
in use on similar goods or services to determine the scope of protection to which the

30 Id. ¶ 15.
31 Id. ¶¶ 23-26.
32 Id. ¶ 32.
Opposition No. 91222221
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plaintiff’s mark is entitled. Applicant contends that Opposer’s mark is entitled to a
narrow scope of protection because the parties’ marks “have coexisted in commerce
for nearly 20 years without confusion, along with numerous other registered
trademarks that incorporate the word JACK in one way or another and are used in
connection with ‘restaurant services’ in Class 43.”33
These include JACK IN THE BOX (design), Reg. No.
3,701,423 (first use claimed 2008); Jack’s New Yorker Deli
(design), Reg. No. 4,119,981 (first used claimed 2009);
JACK’S SANDWICHES & SWEETS, Reg. No. 4,133,884
(first used claimed 2010); UNCLE JACK’S, Reg. No.
4,291,784, Reg. No. 4,291,784 (first used claimed 1996);
JACK BROWN’S BEER & BURGER JOINT (design), Reg.
No. 4,746,562; and JACK THE HORSE TAVERN, Reg. No.
4,880,884 (first used claimed 2006).34
The “existence of [third party] registrations is not evidence of what happens in the
market place or that customers are familiar with them,” AMF Inc. v. Am. Leisure
Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). Nonetheless, in
determining the degree of weakness, if any, in the shared term JACKS or JACK’S [or
just JACK], “extensive evidence of third-party use and registrations is ‘powerful on
its face,’ even where the specific extent and impact of the usage has not been
established.” 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)
(citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,
1674 (Fed. Cir. 2015)).

33 36 TTABVUE 5.
34 Id. at 10.
Opposition No. 91222221
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Here, Applicant has not presented evidence of use in connection with the third-
party registrations and its evidence of six third-party registrations falls far short of
the “voluminous” and “extensive” evidence” presented in Jack Wolfskin, 116 USPQ2d
at 1136; or of that in Juice Generation, 115 USPQ2d at 1673 n.1 (at least twenty-six
relevant third-party uses or registrations of record). Consequently, we accord this
evidence minimal weight. In addition, the marks in the registrations submitted by
Applicant contain additional words or design elements that distinguish them from
the cited mark, undercutting their probative value. Three contain unique design
features (Reg. No. 3701423 for the mark , Reg. No. 4119981 for the mark
, and Reg. No. 4746562 for the mark ); two contain
additional arbitrary words (Reg. No. 4291784 for the mark UNCLE JACK’S and Reg.
No. 4880884 for the mark JACK THE HORSE TAVERN); and in the one instance
where the additional words are merely descriptive or generic (Reg. No. 4133884 for
the mark JACKS SANDWICHES & SWEETS), the services are restricted to
“restaurant services in a casino.” Therefore, the existence of these six third-party
registrations for marks comprising the term JACK or JACK’S for restaurant services
does not demonstrate, under the sixth du Pont factor, that Opposer’s mark is weak
or entitled to a narrow scope of protection.
Opposition No. 91222221
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D. The Marks
We next address the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps., 73 USPQ2d at 1691
(quoting du Pont, 177 USPQ at 567). In comparing the marks, we are mindful that
where, as here, the marks would appear on legally identical services, the degree of
similarity between the marks that is necessary to support a finding of likely confusion
declines. Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102
USPQ2d 1061, 1064 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of
Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (“When marks would
appear on virtually identical goods or services, the degree of similarity [of the marks]
necessary to support a conclusion of likely confusion declines”); In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Jansen Enters. Inc. v. Rind,
85 USPQ2d 1104, 1108 (TTAB 2007).
Applicant’s mark is JACKS URBAN EATS in standard characters. Opposer’s
mark is JACK’S in standard characters. Under actual marketing conditions,
consumers do not necessarily have the luxury of making side-by-side comparisons
between marks, and must rely upon their imperfect recollections. Dassler KG v. Roller
Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). Because there is no difference
in pronunciation between the plural form of JACK, i.e., JACKS, and the possessive
form, i.e., JACK’S, the marks bear a strong similarity in appearance and sound. It is
unlikely that the absence of an apostrophe in Applicant’s mark would be noticed by
Opposition No. 91222221
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consumers familiar with Opposer’s mark, or that consumers who did perceive the
difference would find it to be significant. See, e.g., Lipton Indus., Inc. v. Ralston
Purina Co., 213 USPQ 185, 186 n.3 (CCPA 1982) (“The sole difference between the
respective marks of the parties is that appellant’s registration shows FANCY
FIXIN’S with an apostrophe. No apostrophe is in appellee’s mark. This difference is
de minimis, and we will refer to the marks and goods [or services] of the parties as
identical.”); In re Giovanni Food Co. , 97 USPQ2d 1990, 1991 (TTAB 2011) (JUMPIN’
JACKS and JUMPIN JACK’S considered identical “but for the placement of the
apostrophe”); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (“The absence of the
possessive form in applicant’s mark BINION has little, if any, significance for
consumers in distinguishing it from the cited mark [BINION’S ROADHOUSE].”).
Our focus is on the recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. In re Assoc. of the U.S. Army,
85 USPQ2d 1264 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975). While “it is well-established that it is improper to dissect a mark, and
that marks must be viewed in their entireties,” Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012), “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.” Id. (citing Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82
USPQ2d 1901, 1905 (TTAB 2007); see also In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985) (“[T]here is nothing improper in stating that, for
Opposition No. 91222221
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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.”). As the first term in Applicant’s mark, “JACKS” is more likely to be
impressed upon the mind of a purchaser and remembered. “[I]t is often the first part
of a mark which is most likely to be impressed upon the mind of a purchaser and
remembered.” Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988); see also Palm Bay Imps. 73 USPQ2d at 1692 (“Veuve” is the most
prominent part of the mark VEUVE CLICQUOT because it is the first word in the
mark and the first word to appear on the label); Pfizer Inc. v. Cody John Cosmetics,
Inc., 211 USPQ 64, 69 (TTAB 1981) (“We agree with opposer’s third point that
“CODY” is the dominant part of applicant’s mark [CODY JOHN]. This is primarily
because of the order of the two elements.”).
This dominant portion of Applicant’s mark is Registrant’s entire mark. While
there is no rule that likelihood of confusion automatically applies where one mark
encompasses another, in this case, as in many others, the fact that Registrant’s entire
mark is contained in Applicant’s mark increases the likelihood of confusion between
the two. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed.
Cir. 2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES); In
re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (applicant’s CAREER IMAGE
marks similar to registered mark CREST CAREER IMAGES); In re Corning Glass
Works, 229 USPQ 65, 66 (TTAB 1985) (CONFIRM and CONFIRMCELLS confusingly
Opposition No. 91222221
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similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (MILTRON
and MILLTRONICS confusingly similar).
Applicant argues that the marks are dissimilar in connotation due to the addition
of the wording URBAN EATS in Applicant’s mark and because “the Mark JACKS
URBAN EATS has come to be associated with the restaurant’s distinctive feel,
cuisine, and appearance.”35 According to Applicant, this distinctive “feel, cuisine, and
appearance” is expressed by the phrases “urban cafeteria,” and “fast casual,” wherein
“the service is modified to eliminate the food server to speed up the dining
experience.”36 In discussing the meaning of URBAN EATS, Applicant explains:
Although the word “EATS” is a colloquial synonym for
“food”, it’s a somewhat unusual and distinctive synonym,
giving off a casual connotation. The term “Urban”, is not,
strictly speaking, descriptive, because it does not describe
the food itself and it does not describe with any particularly
[sic] exactly where the restaurants are located. One of the
restaurants is located at the airport. On the contrary, as
[Applicant’s] promotional materials indicate, the term is
supposed to suggest a kind of vibe or impression for the
restaurant. The use of the term and [Applicant’s]
promotional materials reinforce the distinctive commercial
impression that the mark JACKS URBAN EATS, taken
together, gives.37
The difficulty with Applicant’s argument is that the record does not support its
assertion that the phrase “urban eats” could not be applied to a drive-in restaurant
specializing in the serving of sandwiches, seafood, and nonalcoholic beverages. Such

35 36 TTABVUE 14.
36 Id. at 8.
37 Id. at 12-13.
Opposition No. 91222221
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restaurant may project a similar “kind of vibe or impression.” Applicant further
argues that JACKS URBAN EATS, “when considered in connection with the
advertising and promotional materials for the mark over time, gives a different
impression from JACK’S standing alone.”38 We may look to the manner of use of the
marks in advertising to determine the likely commercial impression a mark may
make on prospective consumers. Specialty Brands, Inc. v. Coffee Bean Distribs., Inc.,
748 F.2d 669, 674, 223 USPQ 1281, 1284 (Fed. Cir. 1984) (“[T]rade dress may provide
evidence of whether the word mark projects a confusingly similar commercial
impression”). As the court in Specialty Brands explained:
Ordinarily, for a word mark we do not look to the trade
dress, which can be changed at any time. Vornado, Inc. v.
Breuer Electric Mfg. Co., 390 F.2d 724, 156 USPQ 340, 342
(CCPA 1968). But the trade dress may nevertheless
provide evidence of whether the word mark projects a
confusingly similar commercial impression. Applicant’s
labels support rather than negate that of which opposer
complains: that SPICE VALLEY inherently creates a
commercial impression which is confusingly similar to that
of SPICE ISLANDS.
Here, Applicant’s use of its JACKS URBAN EATS mark “supports rather than
negates” that of which Opposer complains. Applicant has used its mark in ways that
prominently feature the JACKS portion of the mark, while minimizing the URBAN
EATS portion.39 This usage supports a likely commercial impression which is
confusingly similar to that of Opposer’s mark.

38 Id. at 14.
39 For example, Applicant’s menu, cups, and t-shirts display JACKS in larger font and on a
separate line apart from the words URBAN EATS; the exterior of its restaurants emphasize
the term JACKS; and in advertising the term JACKS often dominates the overall impression
Opposition No. 91222221
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Overall, we find in analyzing the marks as a whole that any differences in sight
and sound are outweighed by the similarities in commercial impression and
connotation brought about by the presence of the identical word JACKS [or JACK’S]
in both parties’ marks, particularly in view of the fact that the services here are
legally identical.
The first du Pont factor favors finding a likelihood of confusion.
E. Lack of Actual Confusion
Applicant argues that despite over 20 years of concurrent use, there is no
evidence of any instances of actual confusion between the parties’ respective marks
and services, and that the seventh du Pont factor therefore weighs in its favor.
However, the absence of any showing of actual confusion is of very little, if any,
probative value, where, as here, there has been no meaningful opportunity for such
confusion to have occurred. See, e.g., Tao Licensing, LLC v. Bender Consulting Ltd.,
125 USPQ2d 1043, 1063 (TTAB 2017) (absence of actual confusion deemed “of little
probative value” where no significant opportunity for such confusion to occur); Bd. of
Regents, Univ. of Tex. Sys. v. S. Ill. Miners, LLC, 110 USPQ2d 1182 (TTAB 2014)
(where there is little opportunity for confusion to have occurred, witness’ failure to
identify actual confusion not probative); Productos Lacteos Tocumbo S.A. de C.V. v.
Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1935 (TTAB 2011) (“However, the
absence of any reported instances of confusion is meaningful only if the record

of the mark. See, e.g., 31 TTABVUE 6-12 (promotional items), 14-17 (advertising), 28-31
(menus).
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indicates appreciable and continuous use by respondent of its mark for a significant
period of time in the same markets as those served by petitioner under its marks.”).
Applicant’s restaurants are located in California,40 while Opposer’s restaurants
are located in Alabama, Georgia, Mississippi, and Tennessee (and formerly in
Florida).41 Applicant acknowledges that “[t]here is no geographic overlap between the
restaurants, and there is no evidence of a likely geographic overlap between them,”42
and that it “has no plans to expand into the Southern States where [Opposer] is
located.”43 We find that the absence of evidence of actual confusion has no real
probative value in this case because there has not been a meaningful opportunity for
actual confusion to have occurred. In any event, the appropriate question is whether
there is a likelihood of confusion, not whether confusion has actually occurred. While
evidence of actual confusion would strongly support Opposer’s case, it does not
necessarily follow that the lack of such evidence supports Applicant’s case. See Weiss
Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842 (Fed.
Cir. 1990) (“Before this court, the test is likelihood of confusion not actual
confusion.”).
We find the seventh and eighth du Pont factors to be neutral.

40 30 TTABVUE 2.
41 27 TTABVUE 2.
42 36 TTABVUE 6.
43 30 TTABVUE 7.
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V. Conclusion
After considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, we find that Opposer has established that its mark is
well-known to restaurant customers in the Southeastern United States; that
Applicant’s mark, when considered as a whole, is similar in appearance,
pronunciation, connotation and overall commercial impression to Opposer’s mark;
and that the marks are used in association with legally identical services that we
presume would travel through the same channels of trade to some of the same general
consumers. Accordingly, we find a likelihood of confusion between Applicant’s mark
JACKS URBAN EATS for restaurant services and Opposer’s mark JACK’S in
Registration No. 793082, also for restaurant services.
Decision: The opposition is sustained on the ground of likelihood of confusion.