J.C. Burke, Inc.

Trademark Trial and Appeal Board

Jun 18, 2020

88238947 (T.T.A.B. Jun. 18, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: June 18, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re J.C. Burke, Inc.
_____

Serial No. 88238947
_____

R. Lee Bennett and Jennifer E. Vanover of GrayRobinson, PA
for J.C. Burke, Inc.
Lyal Fox, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Adlin, Heasley, and Dunn,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Applicant, J.C. Burke, Inc., seeks registration on the Principal Register of the
standard character mark BRIARPATCH for “restaurant services” in International
Class 43.1
The Trademark Examining Attorney has refused registration of Applicant’s mark

1 Application Serial No. 88238947 was filed on Dec. 21, 2018, based on 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).

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system.
Serial No. 88238947
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under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with two registered marks owned by the same Registrant:
(“BED AND BREAKFAST” disclaimed) for “Bed and
breakfast inn services; Providing banquet and social function facilities for special
occasions; Providing conference rooms; Providing social meeting, banquet and social
function facilities; Provision of conference facilities; Provision of conference,
exhibition and meeting facilities; Rental of rooms for social functions” in
International Class 43;2 and
for “Providing banquet and social function facilities
for special occasions; Providing social meeting, banquet and social function facilities;
Provision of conference, exhibition and meeting facilities; Provision of facilities for
conventions” in International Class 43.3

2 Registration No. 3904092, issued on the Principal Register on Jan. 11, 2011. The description
of the mark reads: “The mark consists of the words ‘Briar Patch Bed & Breakfast’ together
with a rabbit and floral design.” Color is not claimed as a feature of the mark.
3 Registration No. 4034729 issued on the Principal Register on Oct. 4, 2011. The description
of the mark reads: “The mark consists of the stylized lettering for the words ‘the fox den at
briar patch’ with the image of a fox in a lying down position appears above ‘Fox Den’ and a
small floral like design appears in the left lower corner of the image.” Color is not claimed as
a feature of the mark.
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When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed. We affirm the refusal to register.
I. Likelihood of Confusion
We base our determination of likelihood of confusion under Section 2(d) on an
analysis of all of the probative facts of record. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). In making our
determination, we have considered each DuPont factor for which there is evidence
and argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62
(Fed. Cir. 2019). See Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d
1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont factors are relevant to every case,
and only factors of significance to the particular mark need be considered.”)).
Varying weights may be assigned to each DuPont factor depending on the evidence
presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more or less
weighty roles in any particular determination”). “In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods and services.” In re Chatam Int’l Inc., 380 F.3d 1340,
71 USPQ2d 1944, 1945 (Fed. Cir. 2004), cited in Ricardo Media Inc. v. Inventive
Software, LLC, 2019 USPQ2d 311355, *5 (TTAB 2019). In making this comparison,
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we focus primarily on the mark, as that is the most similar
to Applicant’s BRIARPATCH mark. See In re Max Capital Group Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010); In re I-Coat Company, LLC, 126 USPQ2d 1730, 1734 (TTAB
2018).
A. Similarity of the Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). “The marks
‘must be considered … in light of the fallibility of memory’ and ‘not on the basis of
side-by-side comparison.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082,
1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977)). The proper focus is on the
recollection of the average consumer, who retains a general rather than specific
impression of the marks. In re FabFitFun, Inc., 127 USPQ2d 1670, 1675 (TTAB 2018).
Serial No. 88238947
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Applicant argues that the marks are dissimilar in sight, sound, and commercial
impression. Applicant’s BRIARPATCH mark operates as a single word, it argues,
while the cited mark has additional words and designs:

The marks are also pronounced differently, Applicant contends. “[A] listener
would [hear] ‘BRIAR PATCH BED & BREAKFAST’ whereas they only hear
‘BRIARPATCH’ for Applicant’s mark, a far shorter word than the phrase included in
the Bed & Breakfast Mark.”4
The marks also engender differing commercial impressions, Applicant urges:
When a consumer sees the Bed & Breakfast Mark, due to the inclusion of
the rabbit face and floral design, it is very likely that they will think of the
Bre’r rabbit and the story of when he got stuck in the briar patch, and leave
an image of the a mischievous rabbit in your mind.
Additionally, when one sees the term BED & BREAKFAST, quite often
they will immediately imagine a quaint or rustic home, that offers lodging
accommodations. Whereas when you see Applicant’s Mark, BRIARPATCH,
a consumer will likely conjure up the image of a thicket of thorny plants.5

Applicant thus likens this case to cases such as In re White Rock Distilleries, 92
USPQ2d 1282 (TTAB 2009) and In re Covalinski, 113 USPQ2d 1166 (TTAB 2014),
where designs have distinguished applied-for marks from cited registered marks.6

4 Applicant’s brief, 9 TTABVUE 12.
5 Applicant’s brief, 9 TTABVUE 13-14.
6 Applicant’s brief, 9 TTABVUE 10, 15-16.
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We agree with the Examining Attorney, however, that the marks are more similar
than dissimilar. BRIARPATCH forms the entirety of Applicant’s mark and the first
two words of the registered mark, BRIAR PATCH. Those two words, BRIAR PATCH,
form the dominant feature of the cited registered mark. They are the words that
appear first in the mark, attracting consumers’ attention. See In re Detroit Athletic
Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (“The identity of the
marks’ initial two words is particularly significant because consumers typically notice
those words first.”). They are prominently displayed in bold stylized letters. See In re
I-Coat Company, 126 USPQ2d at 1736. And they are arbitrary with respect to the
services—a fact that renders them more significant as a source indicator. See Bost
Bakery, Inc. v. Roland Indus, Inc., 216 USPQ 799, 801 (TTAB 1991) (“the principle
that similarity between marks in meaning or commercial significance alone may be
sufficient to create a likelihood of confusion is applicable primarily to situations
where marks are coined or arbitrary rather than highly suggestive in cast.”).
The disclaimed wording “BED & BREAKFAST” is less significant, as it is
descriptive of or generic for Registrant’s services. See, e.g., In re Dixie Rests., Inc., 41
USPQ2d at 1533-34 (affirming Board finding that “DELTA,” not the disclaimed
generic term “CAFE,” is the dominant portion of the mark THE DELTA CAFE); In re
Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (finding that “BINION’S,” not the
disclaimed descriptive wording “ROADHOUSE,” is the dominant portion of the mark
BINION’S ROADHOUSE). The disclaimed wording is also visually subordinate to the
term BRIAR PATCH displayed above it. It is settled that “one feature of a mark may
make a greater impression on the public’s awareness than another portion, and thus
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for rational reasons, we may consider that dominant portion to be more significant
than another.” TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1116 (TTAB
2019) (citing In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985)).
The applied-for mark, BRIARPATCH, conveys the same connotation as BRIAR
PATCH: a small plot or thicket formed by thorny, prickly plants.7 Omitting the space
in BRIARPATCH is essentially irrelevant. See In re Best W. Family Steak House, Inc.,
222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks
[BEEFMASTER and BEEF MASTER] are practically identical”). The registered
mark’s bold stylization of BRIAR PATCH does not differentiate the marks, either, as
the applied-for mark is in standard characters, which could be displayed in similarly
stylized letters. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed.
Cir. 2012); Trademark Rule 2.52(a), 37 C.F.R. §2.52(a).
The design—a rabbit and flowers—“reinforces, rather than attenuates, the
similarity of connotation between the marks….” In re Aquitaine Wine USA, LLC, 126
USPQ2d 1181, 1185 (TTAB 2018). If, as Applicant suggests, the design calls to mind
Br’er Rabbit of the Uncle Remus folktales, that merely reinforces the reference to a
briar patch, where the rabbit was born and bred, according to the well-known story
popularized by Joel Chandler Harris. See, e.g., Herbko Int’l Inc. v. Kappa Books Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. (2002) (“This design connotes a
crossword puzzle, which reinforces the connotation created by the words of the

7 See AHDictionary.com 11/14/2019; en.Wikipedia.org 11/14/2019. Nov. 14, 2019 Office Action
at 35-39. En.OxfordDictionaries.com 5/24/2019, May 24, 2019 Office Action at 120.
Serial No. 88238947
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mark.”). For this reason, Applicant’s reliance on White Rock Distilleries, 92 USPQ2d
1282 (TTAB 2009), and Covalinski, 113 USPQ2d 1166 (TTAB 2014) is misplaced, as
those cases involved design elements that attenuated, rather than reinforced, the
similarity between the applied-for and cited registered marks.
For these reasons, the marks, taken in their entireties, are more similar than
dissimilar in sight, sound, connotation, and commercial impression, and the first
DuPont factor weighs in favor of finding a likelihood of confusion.
B. Relatedness of the Services and Channels of Trade

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration…,” and the third
DuPont factor concerns the “similarity or dissimilarity of established, likely-to-
continue trade channels.” DuPont, 177 USPQ at 567; Stone Lion Capital v. Lion
Capital, 110 USPQ2d at 1161. A proper comparison of the services “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., 113 USPQ2d at 1086 (quoting Hewlett-Packard Co.
v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)) quoted
in In re FabFitFun, Inc., 127 USPQ2d at 1672.
Applicant argues that “Registrant offers lodging and banquet facilities, whereas
Applicant offers restaurant services. The two service offerings do not generally
compete with one another.”8 It elaborates:

8 Applicant’s brief, 9 TTABVUE 20.
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The services of a restaurant are distinct from bed and breakfast inn
services, banquet and social function facilities, and conference and meeting
rooms. Providing a restaurant service whereby customers who are feeling
hungry, can walk into the restaurant, sit down at a table, and order a meal
from a menu with waitress service is far different than the provision of
meeting spaces, lodging accommodations and banquet space. Generally a
consumer cannot simply walk into bed and breakfast that offers banquet
space and order a meal from a menu. Typically, you make reservations in
advance, or eat whatever is being served at a wedding or meeting
conference that is being hosted that you are attending.9

Applicant concludes, “Because of the difference in these services, a consumer is
unlikely to confuse the two. The similar argument could apply to the provision of food
by a grocery store. If a grocery store [were] to be named the ‘BRIAR PATCH,’ it is
unlikely that a consumer would walk in, expecting to be served by a waitress, or be
looking to book a room.”10 (Citing Kimpton Hotel & Rest. Grp., LLC v. Monaco Inn,
Inc., 2008 WL 11363254, at *2 (D. Colo. 2008) (“Such fundamental differences in the
nature of the services provided precludes any finding that these [hotel versus
restaurant and bar services] are the same or substantially identical.”)).
However, “[t]he issue, of course, is not whether purchasers would confuse the
services, but rather whether there is a likelihood of confusion as to the source of the
services.” In re Binion, 93 USPQ2d at 1535. “In determining whether the services are
related, it is not necessary that the Applicant’s services and Registrant’s services be
similar or competitive in character to support a holding of likelihood of confusion; it
is sufficient for such purposes if the services are related in some manner or if the
circumstances surrounding marketing of these services are such that they could give

9 Applicant’s brief, 9 TTABVUE 17-18.
10 Applicant’s brief, 9 TTABVUE 19.

Serial No. 88238947
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rise to the mistaken belief that they originate from or are in some way associated
with the same source.” In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d
1790, 1795 (TTAB 2017) (citing Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)).
That distinguishes this case from Kimpton Hotel & Rest. Grp., v. Monaco Inn, on
which Applicant relies, as the issue in that case was whether hotel and restaurant
services were the same or substantially identical for purposes of applying the
Morehouse doctrine. Morehouse Manufacturing Corp.v. J. Strickland & Co., 407 F.2d
881, 160 USPQ 715 (CCPA 1969). Consumers may perceive services as related, even
if they are not the same or substantially identical. They may even perceive similarly
branded grocery stores and restaurants as related, to take Applicant’s example:
“While we recognize that the average consumer makes a distinction between fast-food
restaurants and supermarkets, we are satisfied that, if the marks themselves are
confusingly similar, customers of the fast-food restaurant would be likely to believe
that opposer owned, sponsored, or supplied that business.” Giant Food, Inc. v.
Nation’s Foodserv., Inc., 710 F.2d 1565, 218 USPQ 390, 394 (Fed. Cir. 1983) quoted
in In re Detroit Athletic, 128 USPQ2d at 1052.
Evidence of relatedness may include advertisements showing that the relevant
services are offered by the same business, or copies of use-based registrations of the
same mark for both Applicant’s and Registrant’s identified services. See In re Country
Oven, Inc., 2019 USPQ2d 443903, * 4-5 (TTAB 2019).
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The Examining Attorney provides precisely this sort of evidence to show that the
services are related. The Examining Attorney adduces 25 third-party use-based
registrations identifying both kinds of services under the same mark, including:
Registration
No.
Mark Pertinent Services
4782061 HADSTEN HOUSE Bed and breakfast inn services
hotel, bar and restaurant services; hotel, restaurant
and bar services11
5074053 THE HIKING INN &
Design
Providing temporary accommodation; bed and
breakfast services;
Restaurant services
5633420 FOR AIRHEADS ONLY Hostels; bed and breakfast inn services; tourist
inns;
restaurant, catering, bar and cocktail lounge
services
5491334 GATORTOWN INN Hotel and restaurant services; hotel, restaurant and
bar services;
bed and breakfast inn services; tourist inns
5585737 THE BIVVI Bed and breakfast inn services; hostels
Hotel, restaurant and bar services
4814052 THE LADYSMITH Bed and breakfast inn services
Restaurant services
4936632 WINKS-N-DRINKS Bar and restaurant services12
Bed and breakfast inn services
Third-party registrations of this sort serve to suggest that Applicant and
Registrant’s services are of a type that may emanate from a single source. In re Mucky
Duck Mustard Co., 6 USPQ2d at 1467 n.6; In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993); DeVivo v. Ortiz, 2020 USPQ2d 10153, *13 (TTAB 2020).
Applicant responds that “just because Applicant and Registrant provide services
that commonly are rendered from a single source, this does not mean that there will
be a likelihood of confusion as to the source of origin in this case, particularly where
the Cited Marks are provided by a bed and breakfast and banquet facility, where you

11 March 25, 2019 Office Action at 15-48.
12 May 24, 2019 Office Action at 75-119.
Serial No. 88238947
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cannot simply order food like you can at a restaurant, and where the Applicant is
providing only restaurant services.”13
The Examining Attorney, however, introduced printouts from ten websites
showing the same entity furnishing bed and breakfast inn services as well as
restaurant services available to the general public under the same mark. For
example:
• The Cameron Estate Inn and Restaurant – “Historic Lancaster PA Bed
& Breakfast” “One of the unique B&Bs with a restaurant where the park-
like setting and local flavors will be the star attraction of your romantic
dinner for any season.” “[O]ur restaurant reservations go early to both
house guests and the general public….”14

13 Applicant’s brief, 9 TTABVUE 23.
14 CameronEstateInn.com, March 25, 2019 Office Action at 49-67.
Serial No. 88238947
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• Woodside Lodge at Spring Mountain—“Woodside Lodge is a Restaurant
and Bed and Breakfast….” “[E]njoy having a unique and comfortable place to
eat or stay.” “Every Wednesday is ½ price burger night!”15
• The English Inn—“Premier Lansing Area B&B, Restaurant, Pub & Event
Venue near Eaton Rapids, Michigan” “The English Inn is also a fine dining
restaurant, complete with an authentic English Pub on the garden level.”16

• The Settlers Inn—“This historic Pocono Mountains Hotel has all of the
comforts of a Bed and Breakfast with the added convenience of a full service
farm-to-table restaurant and tavern” “Our Pocono restaurant is a destination
for vacationers and locals alike – a dining tradition for a romantic dinner or
celebrating a special occasion”17

15 WoodsideLodge.us May 24, 2019 Office Action at 32-34.
16 EnglishInn.com May 24, 2019 Office Action at 35-36.
17 TheSettlersInn.com May 24, 2019 Office Action at 59-74.
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• L’Auberge Provencale Bed and Breakfast — “Savor our modern regional
cuisine with a French flair at our nationally acclaimed Virginia restaurant, La
Table Provencale, open to the public….”18

This evidence, showing how the same entity commonly provides both kinds of
services under the same mark, supports the Examining Attorney’s position that
Applicant’s and Registrant’s services are related for likelihood of confusion purposes.
As the Court of Appeals for the Federal Circuit has declared, evidence that “a single
company sells the goods and services of both parties, if presented, is relevant to a
relatedness analysis.” Hewlett-Packard Co. v. Packard Press, 62 USPQ2d at 1004. See
also In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re
Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Because there are no limitations as to channels of trade or classes of consumers
in Applicant’s or Registrant’s description of services, we presume that their services
move in all channels of trade normal for such services and are available to all

18 LaubergeProvencale.com Nov. 14, 2019 Office Action at 25-30.
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potential classes of ordinary consumers. See Citigroup v. Capital City Bank Grp., 98
USPQ2d at 1261; In re Integrated Embedded, 120 USPQ2d 1504, 1515 (TTAB 2016).
Citing Applicant’s and Registrant’s respective websites, Applicant argues that:
Applicant advertises as a restaurant, as a place to stop in for a bite to eat
or something to drink. Whereas Registrant advertises as a place to stay the
night and as a place to host a special event or function. Different marketing
channels must be used, because Applicant and Registrant are targeting
customers seeking vastly different services. Unlike Registrant, Applicant
would never advertise their restaurant on hotels.com, booking.com or
bnbfinder.com.19

Channels of trade, however, include “the same type of distribution channel” and
are not limited to “identical stores or agents.” Century 21 Real Estate v. Century Life,
23 USPQ2d at 1701. As the third-party evidence demonstrates, restaurant and bed
and breakfast services are often promoted together by the same sources through the
same channels of trade, despite Applicant’s unsupported assertions to the contrary.
See In re Bercut-Vandervoot & Co., 229 USPQ 763, 764 (TTAB 1986) (extrinsic
evidence and argument suggesting trade-channel restrictions not specified in
application rejected).
For these reasons, the second and third DuPont factors weigh in favor of finding
a likelihood of confusion.
C. Remaining DuPont Factors

We briefly address Applicant’s remaining assertions under the fifth, seventh and
eighth DuPont factors. The fifth factor concerns “[t]he fame of the prior mark (sales,
advertising, length of use.)” DuPont, 177 USPQ at 567. Applicant asserts that the

19 Applicant’s brief, 9 TTABVUE 25.

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cited registered marks are not famous because they do not meet the standard of being
“widely recognized by the general consuming public of the United States as a
designation of source of the goods or services of the mark’s owner.”20 15 U.S.C.
§ 1125(c)(2). This confuses the dilution standard, which is binary (a mark either is
famous or it is not), with the likelihood of confusion standard, which is measured on
a sliding scale. See Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857
F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (stating that likelihood of
confusion fame varies along a spectrum from very strong to very weak). And as the
Examining Attorney correctly states, the fame of cited registered marks is normally
treated as neutral in ex parte proceedings:
Because of the nature of the evidence required to establish the fame of a
registered mark, the Board does not expect Trademark Examining
Attorneys to submit evidence as to the fame of the cited mark in an ex parte
proceeding, and they do not usually do so. See In re Thomas, 79 USPQ2d
1021, 1027 n.11 (TTAB 2006). Rather, in an ex parte appeal the “fame of
the mark” factor is normally treated as neutral because the record
generally includes no evidence as to fame. See id.; see also In re Davey
Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009) (noting that the
absence of evidence as to the fame of the registered mark “is not
particularly significant in the context of an ex parte proceeding”).

In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1086 (TTAB 2016). There is no reason to
accord the cited registered mark less than the standard level of protection accorded
inherently distinctive cited marks.
Under the seventh and eighth DuPont factor, we consider “[t]he nature and extent
of any actual confusion” and “[t]he length of time during and conditions under which

20 Applicant’s brief, 9 TTABVUE 25-26.
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there has been concurrent use without evidence of actual confusion.” DuPont, 177
USPQ at 567. Applicant argues:
Applicant is not aware of any instances of actual confusion. According to
Registrant’s website, the property where the bed and breakfast now sits
was first renamed as The Briar Patch in 1965 (See, C of the Request for
Reconsideration). According to TESS, Registrant began to use the Bed &
Breakfast Mark in 2002 and Fox Den Mark in 2007. Applicant has been
using the name Briarpatch for their restaurant since 1980. Depending on
which dates you measure from, that is as many as 39 years, or as few as
12 years, with concurrent use and no known instances of actual
confusion.21

We do not accord significant weight to Applicant’s assertion, unsupported by any
evidence, that there have been no instances of actual confusion despite
contemporaneous use of the respective marks. The Federal Circuit has addressed the
question of the weight 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, J.C. Hall Co. v. Hallmark
Cards, Inc., 52 C.C.P.A. 981 , 340 F.2d 960, 964 , 144 USPQ 435, 438 (CCPA
1965),, especially in an ex parte context.

In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1205, 1205 (Fed. Cir.
2003).

21 Applicant’s brief, 9 TTABVUE 26.
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Once again, Applicant’s assertions consist of nothing more than attorney
argument. “Statements in a brief cannot take the place of evidence.” In re Simulations
Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975); Galen Med. Assocs.,
Inc. v. United States, 369 F.3d 1324, 1339 (Fed. Cir. 2004) (“Statements of counsel ...
are not evidence.”).
Accordingly, we treat these remaining factors as neutral.

II. Conclusion

For these reasons, we find that there is a likelihood of confusion between
Applicant’s applied-for mark and the cited registered mark under Section 2(d).
Decision: The refusal to register Applicant’s applied-for mark is affirmed.