Landmar Group, LLC

Trademark Trial and Appeal Board

Sep 10, 2009

No. 76668396 (T.T.A.B. Sep. 10, 2009)

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.