Jason’s Toridasu Inc.

Trademark Trial and Appeal Board

Aug 17, 2018

No. 87348344 (T.T.A.B. Aug. 17, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 17, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Jason’s Toridasu Inc.
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Serial No. 87348344
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Joseph Raymond Heffern of Rogers Castor for Jason’s Toridasu Inc.

Brent M. Radcliff, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
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Before Cataldo, Kuczma and Heasley, Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Jason’s Toridasu Inc., seeks registration on the Principal Register of
the standard character mark JASON’S TORIDASU, identifying the following
services: “Restaurant services, including sit-down service of food and take-out
restaurant services,” in International Class 43.1

1 Application Serial No. 87348344, filed on February 24, 2017, based upon Applicant’s
allegation of June 27, 2015 as a date of first use of the mark anywhere and in commerce
under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Applicant submitted the
following translation statement: “The English translation of Toridasu in the mark is
Japanese for ‘to take out, to produce, to pick out.’”
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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, when used in connection with the identified services, so resembles
the marks in eight registrations, all issued to the same entity on the Principal
Register, including Registration No. 1352239 for the mark JASON’S (in typed or
standard characters)2, identifying “restaurant and delicatessen services,” in
International Class 42,3 as to be likely to cause confusion, mistake or deception.4 In
addition, the Examining Attorney made final a requirement that Applicant disclaim
TORIDASU apart from the mark as shown.
When the refusal was made final, Applicant appealed. The Examining Attorney
and Applicant filed briefs.
I. Disclaimer of TORIDASU
The Director of the U.S. Patent and Trademark Office “may require the applicant
to disclaim an unregistrable component of a mark otherwise registrable.” Trademark
Act Section 6(a), 15 U.S.C. §1056(a). A mark or component is unregistrable if, “when
used on or in connection with the goods [or services] of the applicant,” it is “merely
descriptive … of them.” Trademark Act § 2(e)(1), 15 U.S.C. §1052(e)(1). The Patent
and Trademark Office may require a disclaimer as a condition of registration if the

2 Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52, was amended to replace
the term “typed” drawing with “standard character” drawing. A mark depicted as a typed
drawing is the legal equivalent of a standard character mark.
3 Registration No. 1352239 issued on July 30, 1985. Section 8 affidavit accepted; Section 15
affidavit acknowledged. Second renewal.
4 A ninth cited registration issued to the same entity, Reg. No. 3896734, subsequently was
cancelled under Trademark Act Section 8 on August 4, 2017.
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term at issue is merely descriptive of any of the identified goods or services. In re
Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). A term is
merely descriptive of goods or services within the meaning of Section 2(e)(1) if it
forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature,
function, purpose or use of the goods or services. In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Whether a mark or a component of a mark is merely descriptive is determined in
relation to the goods or services for which registration is sought and the context in
which the term is used, not in the abstract or on the basis of guesswork. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle,
66 USPQ2d 1222, 1224 (TTAB 2002). A term need not immediately convey an idea of
each and every specific feature of the goods or services in order to be considered
merely descriptive; it is enough if it describes one significant attribute, function or
property of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ
358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Moreover, the
term need not describe all of the identified goods or services. Rather, a finding of mere
descriptiveness is proper with respect to all of the identified goods or services in an
International Class if the mark is merely descriptive of any of the goods or services
in that class. In re Chamber of Commerce, 102 USPQ2d at 1219; In re Stereotaxis Inc.,
77 USPQ2d at 108. It is the Examining Attorney’s burden to prove that a term is
merely descriptive of an Applicant’s goods or services. In re Accelerate s.a.l., 101
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USPQ2d 2047, 2052 (TTAB 2012). The determination that a term is merely
descriptive is a finding of fact and must be based upon substantial evidence. In re
Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007).
The Examining Attorney contends that the term TORIDASU is merely descriptive
of the identified services (emphasis in original):
Applicant applied for “restaurant services, including sit-down service of
food and take-out restaurant services” in International Class 043. Being
that the Applicant has applied for take-out restaurant services, the
Applicant’s intent on including the wording TORIDASU in the mark is
to further describe these services as the applicant could have merely
applied for “restaurant services” which would have also been found to be
definite in International Class 043. Furthermore, Applicant advertises
“express” items available in its restaurants under its JASON’S
TORIDASU EXPRESS website which was previously attached,
(http://www.jasonstoridasu.com/jasons-toridasu-express) and also
advertises other goods offered by the Applicant by only referring to the
restaurant as “JASON’S” further showing that the wording TORIDASU
is descriptive and separable from JASON’S and that the dominant
wording in Applicant’s mark, JASON’S, can and is being used in
commerce absent the descriptive wording, TORIDASU.5

We turn then to the evidence of record. The first page of Applicant’s specimen of
use, consisting of four pages from its internet website, is reproduced below.

5 6 TTABVUE 17-18.
Citations to the briefs refer to the Board’s TTABVUE docket system. Citations to the
application record refer to the downloadable .pdf version of the USPTO’s Trademark Status
& Document Retrieval (TSDR) system.
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There is no indication on this page, or any of the three subsequent pages, of
Applicant’s website that were submitted as a specimen of use that the term
TORIDASU has any particular meaning in relation to the recited services.
With its September 11, 2017 response to the Examining Attorney’s first Office
Action, Applicant introduced into the record the following dictionary definition of
TORIDASU: transitive verb 1. “to take out, to produce, to pick out;” 2. to fetch, to
retrieve.6 In addition, the Examining Attorney submitted with his October 11, 2017
final Office Action an additional 2 pages from Applicant’s website, including the
following.7

6 At .pdf 19-22.
7 At .pdf 7-8.
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Again, there is no indication in these pages that TORIDASU has a meaning in
relation to the identified services.
Based on the record before us, we find that relevant purchasers will not perceive
the wording TORIDASU in Applicant’s mark as merely describing Applicant’s
“Restaurant services, including sit-down service of food and take-out restaurant
services.” The dictionary evidence of record clearly indicates that TORIDASU may be
translated, inter alia, as “to take out.” However, there is no indication that “to take
out” embraces the colloquial meaning of “take-out” in the context of “take-out
restaurant services.” Notably, there is nothing in the record to support a finding that
the term TORIDASU is used to describe Japanese take-out restaurants or Japanese
take-out food or, for that matter Japanese food that may be ordered and picked up.
Based upon the definitions, there is insufficient evidence that the term TORIDASU
merely describes a function, feature or characteristic of the recited services, namely,
that they include take-out restaurant services. So the definitions themselves do not
suffice to support the requirement.
Turning to Applicant’s specimens and informational pages from its internet
website, we similarly find insufficient support for the Examining Attorney’s
contention that TORIDASU merely describes Applicant’s services. The evidence
clearly displays the mark and indicates that Applicant provides restaurant services,
including “express” or quick preparation of food. Nonetheless, the evidence does not
indicate that TORIDASU merely describes this or another feature of Applicant’s
restaurant services. The entirety of the evidence relied upon by the Examining
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Attorney, including any evidence not specifically discussed herein, does not appear to
support his position that TORIDASU describes a function, feature or characteristic
of the recited services.
In summary, the record before us falls short of supporting the Examining
Attorney’s requirement of a disclaimer of the term TORIDASU on the ground that
this term is merely descriptive of the Applicant’s services. Accordingly, we reverse
the Examining Attorney’s refusal of registration under Trademark Act Section 6(a).
II. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in 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 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the relatedness of the
goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976).
A. Focus on Cited Registration No. 1352239
We determine this appeal based on Applicant’s involved mark and identified
services and the JASON’S mark that is the subject of cited Registration No. 1352239,
identifying the services listed above. If likelihood of confusion is found as to the mark
and services in this registration, it is unnecessary to consider the other cited
registrations. See Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).

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B. Relatedness of the Services/Channels of Trade/Consumers
With regard to the services, channels of trade and classes of consumers, we must
make our determinations under these factors based on the services as they are
identified in the application and cited registration. See In re Dixie Rests. Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming
public may perceive [the respective goods or services of the parties] as related enough
to cause confusion about the source or origin of the goods and services.’” In re St.
Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting
Hewlett-Packard, 62 USPQ2d at 1004).
In this case, the broadly identified services in the cited registration, namely,
“restaurant and delicatessen services,” must be presumed to include Applicant’s more
specifically identified “Restaurant services, including sit-down service of food and
take-out restaurant services.” In other words, Applicant’s sit-down and take-out
restaurant services are subsumed under the more generally identified restaurant
services in the cited registration. We note Applicant’s assertion that its restaurant
services specialize in Japanese cuisine.8 Specifically, Applicant argues that:

8 4 TTABVUE 6.

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the goods produced by the Applicant and Registrant are vastly different.
Registrant’s marks attach to restaurants that serve ubiquitous,
Americanized deli foods, such as: sandwiches, wraps, soups, salads, kid’s
meals, and desserts. In contrast, the Applicant’s mark attaches to a
Japanese sushi restaurant, serving Maki, Nigiri/Sashimi, Udon, and
other Japanese dishes that are unfamiliar to the average American deli
consumer.9

Applicant’s arguments are unpersuasive. As noted above, we determine the
relatedness of the services, as we must, based upon their respective identifications in
the cited registration and involved application. See, e.g., Stone Lion Capital Partners,
LP v. Lion Capital LLP, 110 USPQ2d at 1161. Neither Applicant nor Registrant recite
any restrictions in their identified restaurant services and, as discussed above, they
are presumed to be legally identical. Applicant may not seek to restrict the scope of
the services covered in the pleaded registration or, for that matter, its own application
by argument or extrinsic evidence. See, e.g., In re Bercut-Vandervoort & Co., 229
USPQ 763, 764 (TTAB 1986). For these same reasons, Applicant’s arguments directed
toward the “goods” produced by the restaurants are irrelevant. Simply put, there are
no goods at issue herein. Similarly, Applicant’s reliance upon case law requiring an
additional evidentiary showing to establish relatedness of restaurant services and
food items is inapposite in this instance involving legally identical restaurant
services. See In re St. Helena Hosp., 113 USPQ2d at 1087.
Because the services identified in the application and the cited registration are,
in part, legally identical, we must presume that the channels of trade and classes of
purchasers for these services are the same. See In re Viterra Inc., 671 F.3d 1358, 101

9 Id. at 18.
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USPQ2d 1905, 1908 (Fed. Cir. 2012); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’
goods, and the lack of any restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade”); In re Smith & Mehaffey,
31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade, and be sold to the same
class of purchasers”). See also Octocom Sys., Inc., 16 USPQ2d at 1787 (“The authority
is legion that the question of registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the application regardless of what
the record may reveal as to the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to which the sales of goods are
directed.”).
We find that the du Pont factors of the in-part legal identity of the services,
channels of trade and consumers weigh heavily in favor of likelihood of confusion.
C. Conditions of Sale/Sophistication of Purchasers
Applicant urges us to find that “consumers are unlikely to be confused by
Applicant’s mark, because consumers of raw fish tend to be more sophisticated and
careful than the average person visiting a deli.”10 Again, because both the involved
application and cited registration identify restaurant services without any
limitations as to cuisine or price point, we must presume the restaurants are legally

10 Id. at 17.
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identical, and may serve modestly priced meals that are subject to casual, impulse
purchase. Further, as stated by the Federal Circuit, “[t]hat the relevant class of
buyers may exercise care does not necessarily impose on that class the responsibility
of distinguishing between similar trademarks for identical goods. ‘Human memories
even of discriminating purchasers ... are not infallible.’” In re Research and Trading
Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (quoting Carlisle Chemical
Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA
1970)). As is frequently stated, even if consumers are knowledgeable in a particular
field, that does not necessarily mean that they are immune from source confusion. In
re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988).
As a result, this du Pont factor also favors a finding of likelihood of confusion.
D. Similarity/Dissimilarity of the Marks
We consider Applicant’s mark JASON’S TORIDASU and the registered mark
JASON’S and compare them “in their entireties as to appearance, sound, connotation
and commercial impression.” Stone Lion Capital Partners, LP v. Lion Capital LLP,
110 USPQ2d at 1160; Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du
Pont, 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) (internal quotation
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marks omitted). See also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464,
1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016).
Consumers may not necessarily encounter the marks in close proximity and must
rely upon their recollections thereof over time. In re Mucky Duck Mustard, 6 USPQ2d
1467, 1468 (TTAB 1988).
Applicant’s mark JASON’S TORIDASU in standard characters consists of the
entirety of the registered mark JASON’S, also in typed or standard characters, and
merely adds the wording “TORIDASU” to modify “JASON’S”. 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 the entire cited mark is
incorporated in Applicant’s mark increases the similarity 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) (finding applicant’s CAREER IMAGE
marks similar to registered mark CREST CAREER IMAGES). Thus, the marks are
similar in appearance and sound to the extent that Applicant’s JASON’S TORIDASU
mark fully encompasses the registered JASON’S mark.
The registered mark connotes a restaurant owned or operated by an individual
named Jason. As discussed above, Applicant submitted the following definition of
“toridasu” with its September 11, 2017 response to the Examining Attorney’s first
Office Action: “to take out, to produce, to pick out; to fetch, to retrieve.” It is not clear
on this record to what extent those conversant in the Japanese language will perceive
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the applied-for mark as suggesting a restaurant owned or operated by an individual
named Jason where one may take out or pick up food. As a result, JASON’S and
JASON’S TORIDASU are similar in connotation or meaning to the extent that both
suggest a restaurant operated by Jason, i.e., Jason’s restaurant. Consumers are
known to use shortened forms of names, and it is possible that Applicant and its
services are referred to as “Jason’s.” Cf. In re Abcor Dev. Corp., 200 USPQ at 219
(Rich, J., concurring: “the users of language have a universal habit of shortening full
names – from haste or laziness or just economy of words”).
Furthermore, we note that JASON’S, the word that the marks share in common,
and the only word comprising the registered mark, is also the first word in the mark
in the involved application. Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“…[it is] a matter of some importance since it is often the
first part of a mark which is most likely to be impressed upon the mind of a purchaser
and remembered.”). See also Palm Bay Imps., 73 USPQ2d at 1692 (“The presence of
this strong distinctive term as the first word in both parties’ marks renders the marks
similar, especially in light of the largely laudatory (and hence non-source identifying)
significance of ROYALE.”).
We acknowledge that the presence of “TORIDASU” as the following term in
Applicant’s mark partially differentiates it visually and aurally from the registered
mark. This point of distinction, however, does not significantly diminish the strong
similarities in connotation and overall commercial impression engendered by these
two marks. Based upon the above analysis, we find that JASON’S TORIDASU is more
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similar than dissimilar to JASON’S in terms of appearance, sound, connotation and
commercial impression. As a result, consumers encountering JASON’S TORIDASU
could mistakenly believe that it represents a variation on the registered mark used
to identify a Japanese-themed restaurant emanating from a common source. This is
particularly the case because, “[w]hen marks would appear on virtually identical ...
services, the degree of similarity [of the marks] necessary to support a conclusion of
likely confusion declines.” See Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). See also ECI Division
of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443, 449 (TTAB
1980).
In view thereof, the du Pont factor of the similarity of the marks favors a finding
of likelihood of confusion.
E. Actual Confusion
Finally, Applicant argues that because the Examining Attorney failed to introduce
any evidence of actual confusion since Applicant commenced use of its mark in 2015,
the “denial of registration of Applicant’s mark is premised on a mere speculative
possibility of confusion.”11 We do not accord significant weight to Applicant’s
contention, unsupported by any evidence, that there have been no instances of actual
confusion despite contemporaneous use of the respective marks. Contrary to
Applicant’s contentions, the Federal Circuit, has addressed the question of the weight

11 Id. at 19.
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to be given to an assertion of no actual confusion by an applicant in an ex parte
proceeding:
With regard to the seventh DuPont factor, we agree with
the Board that Majestic’s uncorroborated statements of no
known instances of actual confusion are of little
evidentiary value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that
self-serving testimony of appellant’s corporate president’s
unawareness of instances of actual confusion was not
conclusive that actual confusion did not exist or that there
was no likelihood of confusion). A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The opposite
is not true, however. The lack of evidence of actual
confusion carries little weight, [citation omitted], especially
in an ex parte context.

Majestic Distilling, 65 USPQ2d at 1205.
Accordingly, while examples of actual confusion may point toward a finding of a
likelihood of confusion, an absence of such evidence is not compelling in support of a
finding of no likelihood of confusion, particularly in these circumstances where there
has only been contemporaneous use of the marks for three years. Thus, we cannot
conclude from the lack of instances of actual confusion that confusion is not likely to
occur. This du Pont factor is neutral.
F. Likelihood of Confusion Summary
Considering all the evidence of record, including any evidence not specifically
discussed herein, we find that the marks in their entireties are more similar than
dissimilar and that the identified services are in-part legally identical and will be
encountered in common channels of trade at all price points by the same classes of
consumers, whose care and sophistication is unlikely to mitigate the likelihood of
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confusion engendered by the aforementioned factors. We find therefore that
Applicant’s mark is likely to cause confusion with the mark in the cited registration
when used in association with the identified service.
III. Conclusion
Decision: The refusal to register based upon Section 6(a) of the Trademark Act is
reversed.
The refusal to register based on likelihood of confusion under Section 2(d) of the
Trademark Act is affirmed.