Landmar Group, LLCDownload PDFTrademark Trial and Appeal BoardSep 10, 2009No. 76668396 (T.T.A.B. Sep. 10, 2009) Copy Citation Mailed: 10 September 2009 AD UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Landmar Group, LLC ________ Serial Nos. 76668396 and 76668397 _______ Neil F. Markva, Esq. for Landmar Group, LLC. Caryn Glasser, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney). _______ Before Drost, Kuhlke, and Cataldo, Administrative Trademark Judges. Opinion by Drost, Administrative Trademark Judge: On October 30, 2006, applicant Landmar Group, LLC filed two applications to register the marks SHIPYARDS (in standard character form)1 and SHIPYARDS and design2 on the Principal Register for “restaurant services featuring yacht club dining facilities” in Class 1 Serial No. 76668397. 2 Serial No. 76668396. Color is not claimed as a feature of the mark. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser Nos. 76668396 and 76668397 2 43. Both applications are based on an allegation of a bona fide intention to use the marks in commerce.3 The examining attorney ultimately refused to register applicant’s marks under Section 2(d) of the Trademark Act (15 U.S.C. § 1052(d)) because of two registrations owned by Shipyard Brewing Company. The first registration is for the mark “THE SHIPYARD BREWPORT” for “restaurant serving fine food and quality ales”4 and SHIPYARD BREW HAUS for “restaurant and bar services.”5 The marks are depicted in typed or standard character drawings. When the refusals were made final, applicant filed requests for reconsideration and these appeals.6 Inasmuch as the issues and records are similar, we have chosen to 3 Both applications were originally multi-class applications for additional services in Classes 35, 36, 37, 39, and 41. Applicant filed requests to divide these applications, which were subsequently approved. 4 Registration No. 1893448 issued May 9, 1995, renewed. 5 Registration No. 3250867 issued June 12, 2007. The term “Brew Haus” has been disclaimed and the word “Haus” is translated as “House.” The registration includes a claim of ownership of Registration Nos. 1893448; 2189606; 2406516; and others. 6 The examining attorney also objects to new evidence that applicant has attached to its brief, specifically Exhibits C, D, and E. We agree with the examining attorney’s objection and we will not consider this evidence for the first time on appeal. 37 CFR § 2.142(d). See also In re N.V. Organon, 79 USPQ2d 1639, 1640 n.2 (TTAB 2006) (“Additional evidence filed after appeal normally will not be considered”); Int’l Ass’n of Lions Clubs v. Mars, Inc., 221 USPQ 187, 189 n.8 (TTAB 1984) (“The Board does not take judicial notice of records residing in the Office”). We will consider Exhibit A, which is a TESS copy of the ‘396 application, and Exhibit B, which is a dictionary definition of “shipyard” as “a yard, place, or enclosure where ships are built or repaired.” Ser Nos. 76668396 and 76668397 3 issue a single opinion covering both applications. Unless otherwise indicated, our references to the record will be to the ‘396 application. We affirm. In a case involving a refusal under Section 2(d), 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, 1203 (Fed. Cir. 2003); and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the evidence of record on these factors, we must keep in mind that “[t]he fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). The first factor that we will consider is whether the services of applicant and registrant are related. Applicant’s services are “restaurant services featuring yacht club dining facilities,” while registrant’s services are “restaurant and bar services” and “restaurant serving fine food and quality ales.” The examining attorney argues that “the services are the same, this being, restaurant Ser Nos. 76668396 and 76668397 4 services. The fact that registrant, in addition to food, serves and features fine ales does not diminish the similarity of the services.” Brief at unnumbered p. 13. On the other hand, applicant argues that the “intended appeal of its restaurant is to yacht owners who will subscribe to its intended marina operation services that include Applicant’s intended operation of yacht club facilities.” Brief at 10. We must agree with the examining attorney that the services are at least overlapping. A basic principle that we must apply in our likelihood of confusion analysis is that we must consider the goods or services as they are described in the identification of goods or services in the applications and registrations. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“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 [or services] set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods [or services], the particular channels of trade or the class of purchasers to which the sales of goods [or services] are directed”). See also Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ Ser Nos. 76668396 and 76668397 5 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods”). Here, registrant’s restaurant and bar services in the ‘867 registration clearly would include restaurants that feature yacht club dining facilities. Similarly, restaurants serving fine food and quality ales would include those that feature yacht club dining facilities. Therefore, the services are overlapping. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) (Applicant’s restaurant services identified as “restaurant services specializing in Southern-style cuisine” legally identical to registrant’s restaurant services identified as “hotel, motel, and restaurant services”). Any differences between how the services are actually provided are legally irrelevant. Id. at 1534 (“[T]he second DuPont factor expressly mandates consideration of the similarity or dissimilarity of the services as described in the application or registration”) (quotation marks omitted). We also add that registrant is not limited to its current marketing methods because “[p]resent sales and methods of distribution are not conclusive and do not, in our judgment, form a proper basis for finding lack of likelihood of confusion or mistake when Ser Nos. 76668396 and 76668397 6 the identical trademarks are used on the respective goods of the parties.” J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). See also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 2 (CCPA 1977) (“Opposer’s rights are not to be tied to its current business practices, which may change at any time. Its rights are as broad as its registration for ‘capacitors’”). Also, inasmuch as registrant’s restaurant and bar services and restaurant serving fine food and quality ales are broadly identified, the channels of trade and purchasers would overlap with applicant’s restaurant services featuring yacht club dining facilities. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)(“[W]here the goods in a cited registration are broadly described and there are no limitations in the identification of goods as to their nature, type, channels of trade or classes of purchasers, it is presumed that the scope of the registration encompasses all goods of the nature and type described, that the identified goods move in all channels of trade that would be normal for such goods, and that the goods would be purchased by all potential customers”). Furthermore, we cannot find that the patrons of applicant’s restaurant services are necessarily sophisticated. In re Ser Nos. 76668396 and 76668397 7 Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001) (“There is no evidence in the record from which we might conclude that wine and restaurant services, in general, are necessarily expensive, or that purchasers thereof are necessarily sophisticated and careful in making their purchasing decisions”). Next, we turn to the similarity of the marks. This “DuPont factor requires examination of ‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.’” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)). When we are considering the similarities of the marks, it is clear that when “marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Applicant’s marks are SHIPYARDS and , while registrant’s marks are “SHIPYARD BREW HAUS and “THE Ser Nos. 76668396 and 76668397 8 SHIPYARD BREWPORT.” When we compare these marks, we must keep in mind that: The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods or services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 (TTAB 2004). See also Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973). Both marks include the word SHIPYARD. Applicant argues that its “SHIPYARDS mark is plural and links Applicant’s land development project to the location of former shipyards where ships were built and/or repaired.” Brief at 13. Then, applicant points out that registrant’s mark “SHIPYARD is singular and never links a location where ships were formerly built and/or repaired to a piece of real estate as in Applicant’s SHIPYARDS mark.” Brief at 14. The fact that applicant uses the plural and registrant uses the singular is not significant. Wilson v. Delauney, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (“It is evident that there is no material difference, in a trademark sense, between the singular and plural forms of the word ‘Zombie’ Ser Nos. 76668396 and 76668397 9 and they will therefore be regarded here as the same mark”). We also do not consider the design in the ‘396 particularly significant. The Federal Circuit has noted that “the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.” CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983). While there are, of course, exceptions to this statement, in this case, it would be particularly applicable in these appeals because the design in the ‘396 is rather simple and not very distinctive.7 In the ‘867 registration, the mark adds the disclaimed term “Brew Haus,” with “Haus” translated as “house.” Disclaimed matter is often “less significant in creating the mark’s commercial impression.” In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). Here, the term would describe a restaurant that also brews beer.8 Descriptive terms are often less significant in distinguishing marks. In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 7 Even if some purchasers may recognize applicant’s design as “an impression of a sailing yacht’s mast with sails and a flag flying from it” (Brief at 10), it would not serve to distinguish the marks inasmuch as it would emphasize the common term “shipyard” where sailing ships were built and repaired. 8 Applicant cannot attack the registration in this proceeding on the ground that it is deceptively misdescriptive. Brief at 12. Dixie, 41 USPQ2d at 1534 (“It is true that a prima facie presumption of validity may be rebutted… However, the present ex parte proceeding is not the proper forum for such a challenge”). Ser Nos. 76668396 and 76668397 10 1944, 1946 (Fed. Cir. 2004) (citations omitted) (“With respect to GOLD, the Board determined that the term denotes a premium quality, a descriptive term offering little to alter the commercial impression of the mark. Indeed, GOLD, in the context of tequila, describes either a characteristic of the good - its color - or a quality of the good commensurate with great value or merit. In sum, the Board had good reason to discount ALE, JOSE, and GOLD as significant differences between the marks”). See also M2 Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir. 2006) (“When comparing the similarity of marks, a disclaimed term, here ‘COMMUNICATIONS,’ may be given little weight, but it may not be ignored”) and Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000). We also add the quotation marks and the definite article “The” in the ‘448 registration are not particularly distinctive. See CBS, 218 USPQ at 200 (“[M]inor design features do not necessarily obviate likelihood of confusion arising from consideration of the marks in their entireties”) and In re Narwood Productions, Inc., 223 USPQ 1034, 1034 (TTAB 1984) (“There is no doubt that the word portion of appellant’s mark and the mark subject of the cited registration are virtually identical since both consist Ser Nos. 76668396 and 76668397 11 primarily of the term ‘music makers.’ The fact that the presentation in the mark of the cited registration is as a single word rather than two words is obviously insignificant in determining the likelihood of confusion. So also is the fact that appellant’s mark, as it is sought to be registered, includes the definite article ‘the’”). Accord In re The Place Inc., 76 USPQ2d 1467, 1468 (TTAB 2005) (“[W]e find that the definite article THE and the generic term BAR are not distinctive terms, and they add no source-indicating significance to the mark as a whole”) and In re Ervin, 1 USPQ2d 1665, 1666 (TTAB 1986)(“As to applicant’s contentions that its slanting script with quotation marks bounding ORIGINAL in THE “ORIGINAL” transforms the laudatory/descriptive connotations of the mark into a distinctive designation, it is difficult to see how this would alter the clear meaning of the mark’s dominating word matter in the absence of a disclaimer of such word matter”). Having considered these individual terms, we note that “there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of the mark, provided [that] the ultimate conclusion rests on consideration of the marks in their entireties.” In re National Data Corp., 753 F.2d 1056, 224 Ser Nos. 76668396 and 76668397 12 USPQ 749, 751 (Fed. Cir. 1985). When we compare the marks SHIPYARDS and SHIPYARDS and design with SHIPYARD BREW HAUS, we find that the marks are dominated by the word “Shipyard(s).” It is the only term in applicant’s marks and it is the only distinctive term in registrant’s mark. The simple design in applicant’s ‘396 is not very memorable or distinctive. The disclaimed, descriptive term in the registered mark would be most significant in describing the restaurant rather than distinguishing the restaurants. We also cannot conclude that the word portion of applicant’s marks “links Applicant’s land development project9 to the location of former shipyards where ships were built.” The common noun “Shipyards” in the context of applicant’s marks would not link the term to a specific land development project to many, if not most, prospective purchasers. Indeed, the common word “Shipyard(s)” would, for most purchasers have the same meaning as a place where ships are built and/or repaired. Inasmuch as the marks are dominated by the virtually identical term “Shipyard(s),” and the other matter in the marks is subordinate matter, we conclude that applicant’s marks are similar to the ‘867 9 Applicant submitted evidence to show that Shipyards, Jacksonville, Florida “is an urban master-planned community … [that] will feature a contemporary design that flows with the contours of the St. Johns River.” Response dated April 11, 2007, Ex. E. Ser Nos. 76668396 and 76668397 13 mark in sound, appearance, meaning, and commercial impression. We reach the same conclusion with regard to the ‘448 registration. In addition to the relatively insignificant features of quotation marks and the indefinite article, the registration adds the term “Brewport.” That term in the mark “THE SHIPYARD BREWPORT” for restaurant services featuring fine food and quality ales would not be more significant than the term “Shipyard.” While not descriptive, the “brew” part of the term would lead many consumers to associate the term with the “quality ales” identified in the services and the “port” would likely emphasize the nautical theme begun by the use of the “Shipyard” portion of the mark. Ultimately, we conclude that the SHIPYARDS and SHIPYARDS and design marks and “THE SHIPYARD BREWPORT” are similar in sound, appearance, meaning, and commercial impression. Wella Corp. v. California Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and design held likely to be confused with CONCEPT for hair care products). When we consider that the marks SHIPYARDS and SHIPYARDS and design are similar to the marks SHIPYARD BREW HAUS and “THE SHIPYARD BREWPORT” and that the services, Ser Nos. 76668396 and 76668397 14 purchasers and channels of trade overlap, we conclude that there is a likelihood of confusion. Decision: The examining attorney’s refusals to register applicant’s marks SHIPYARDS and SHIPYARDS and design for restaurant services featuring yacht club dining facilities on the ground that they are likely to cause confusion with the marks in the cited registrations under Section 2(d) of the Trademark Act are affirmed. Copy with citationCopy as parenthetical citation