Lester’s Diner of Ft. Lauderdale, Inc.

Trademark Trial and Appeal Board

Jan 12, 2018

No. 86877066 (T.T.A.B. Jan. 12, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 12, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lester’s Diner of Ft. Lauderdale, Inc.
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Serial No. 86877066
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Barry L. Hailey of Malin Haley DiMaggio & Bowen, P.A.,
for Lester’s Diner of Ft. Lauderdale, Inc.
Erin M. Falk, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Taylor, Bergsman and Gorowitz,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Lester’s Diner of Ft. Lauderdale, Inc. (“Applicant”) seeks registration on the
Principal Register of the mark LESTER’S DINER (in standard characters) for
“restaurant services,” in Class 43.1 Applicant disclaimed the exclusive right to use
the word “Diner.”

1 Application Serial No. 86877066 was filed on January 15, 2016, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1052(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as June 1, 1967.
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The Trademark Examining Attorney 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 so resembles the registered mark LESTER’S (in standard
characters) for “restaurant and bar services,” in Class 43, as to be likely to cause
confusion.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis
Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each du Pont factor that is relevant or for which there is evidence of record.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242
(TTAB 2015) (“While we have considered each factor for which we have evidence, we
focus our analysis on those factors we find to be relevant.”). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods or services. See In re Chatam Int’l Inc.,
380 F.2d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v.

2 Registration No. 3370911, registered January 15, 2008; renewed.
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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 and differences in the marks.”); see also
In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 303 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
I. The similarity or dissimilarity and nature of the services.
As noted above, Applicant is seeking to register its mark for “restaurant services”
and the Registrant’s mark is registered for “restaurant and bar services.” Because
the application and registration both include restaurant services, the descriptions of
services are in part identical.
Applicant argues to the contrary that the services are not in part identical because
the “culinary expectations of targeted consumers” are different.3 According to
Applicant, the services are different because “Registrant’s traditional restaurant and
bar services would seem to be directed to those going out to dinner for an evening of
above average gourmet food and entertainment whereas Applicant’s DINER services
appeal to customers looking for an inexpensive restaurant that does not have alcohol
for reasonably priced meal of traditional home style foods.”4 However, we must

3 Applicant’s Brief, p. 7 (6 TTABVUE 8).
4 Id. at 7-8 (6 TTABVUE 8-9).
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consider the services as they are described in the application and registration. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d
1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs. 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 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.”). See also
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 goods.”). We also do not read
limitations into the identification of services. Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific limitation and nothing in
the inherent nature of Squirtco's mark or goods that restricts the usage of SQUIRT
for balloons to promotion of soft drinks. The Board, thus, improperly read limitations
into the registration.”). Thus, we must presume that both Applicant’s and
Registrant’s restaurant services include all types of restaurant services.
Without the appropriate restrictions or limitations in the description of services,
we may not consider evidence or argument that Registrant renders traditional
restaurant and bar services directed to consumers going out to dinner for an evening
of above average gourmet food and entertainment as compared to Applicant’s diner
services rendered to customers looking for an inexpensive restaurant that does not
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have alcohol for reasonably priced meal of traditional home style foods. See In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that relevant
goods are expensive wines sold to discriminating purchasers must be disregarded
given the absence of any such restrictions in the application or registration).
II. Established, likely-to-continue channels of trade.
Because the restaurant services described in the application and the “restaurant
and bar services” in the cited registration are in part identical, we must presume that
the channels of trade and classes of purchasers are the same. See In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are
presumed to travel in same channels of trade to same class of purchasers); In re
Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there
are legally identical goods, the channels of trade and classes of purchasers are
considered to be the same); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039,
1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc. v. Child Health
Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
III. The similarity or dissimilarity of the marks.
We now turn to 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. du Pont, 177 USPQ at 567. “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). In comparing the marks, we are mindful that
where, as here, the services are in part identical, the degree of similarity necessary
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to find likelihood of confusion need not be as great as where there is a recognizable
disparity between the services. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v.
Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen
Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough
HealthCare Prod. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
“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, 101 USPQ2d at
1721 (quoting Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901,
1905 (TTAB 2007)); see also San Fernando Elec. Mfg. Co. v. JFD Elec. Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The
proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem.
Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon,
102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). As indicated above, because the description of services in the
application and registration at issue have no restrictions or limitations as to the
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nature of the restaurant services rendered by Applicant or Registrant, we must
presume that the average customer is an ordinary consumer.
Applicant’s mark LESTER’S DINER is similar to Registrant’s mark LESTER’S
because they share the name “Lester’s” and, to that extent, they are identical in
appearance, sound, meaning and commercial impression.
In analyzing the marks, we find that the name “Lester’s” in Applicant’s mark is
the dominant part of the mark because the word “Diner” is merely descriptive when
used in connection with restaurant services.5 It is well-settled that disclaimed,
descriptive matter may have less significance in likelihood of confusion
determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight in reaching a conclusion
on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 105 F.3d 1405, 1407,
41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). There is nothing improper in stating that,
for rational reasons, more or less weight has been given to a particular feature of a
mark, such as a common dominant element, provided the ultimate conclusion rests

5 The word “Diner” is defined, inter alia, as “a small restaurant that sells simple inexpensive
food.” MacMillan Dictionary (macmillandictionary.com) attached to the May 2, 2016 Office
Action (TSDR 8); see also The Free Dictionary (thefreedictionary.com) based on the
American Heritage Dictionary of the English Language (5th ed. 2016) attached to the
November 2, 2016 Response to an Office Action (TSDR 7) (“a small, usually inexpensive
restaurant with a long counter and booths often housed in a building designed to resemble a
dining car.”).
Citations to the TSDR database are in the .pdf format.
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on a consideration of the marks in their entireties. In re Nat’l Data Corp., 224 USPQ
at 751.
The importance of the name “Lester’s” as the dominant element of Applicant’s
mark is further reinforced by its location as the first part of the mark. See Palm Bay
Imps. Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “veuve” is the first word in the mark and the first word to appear
on the label); Century 21 Real Estate Corp. v. Century Life of Am., 23 USPQ2d at 1700
(Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the
identical lead word); Presto Prod. Inc. v. Nice-Pak Prod., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”).
Moreover, consumers are likely to shorten Applicant’s mark LESTER’S DINER to
LESTER’S. “[U]sers of language have a universal habit of shortening full names –
from haste or laziness or just economy of words. Examples are: automobile to auto;
telephone to phone; necktie to tie; gasoline service station to gas station.” In re Abcor
Dev. Corp., 588 F.2d 511, 200 USPQ 215, 219 (CCPA 1978) (J. Rich, concurring).
[C]ompanies are frequently called by shortened names,
such as Penney’s for J.C. Penney’s, Sears for Sears and
Roebuck (even before it officially changed its name to Sears
alone), Ward’s for Montgomery Ward’s, and Bloomies for
Bloomingdales.
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992).
See also Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
395 (Fed. Cir. 1983) (“Although the record does not indicate that applicant’s business
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is commonly referred to as “Giant”, it does indicate that people have called it by that
name, omitting the word “Hamburgers”. Thus, in a conversation between two
consumers in opposer’s area about a place of business called “Giant”, there likely
would be confusion about which “Giant” they were talking about.”).
In this case, because the dominant portion of both marks is the same, the marks
are similar notwithstanding their peripheral differences. See In re Denisi, 225 USPQ
624, 624 (TTAB 1985) (PERRY’S PIZZA for restaurant services is likely to cause
confusion with PERRY’S for restaurant and bar services). Exceptions to this general
rule are either where the common portion is not likely to be perceived by purchasers
as distinguishing source due to its mere descriptiveness or the commonness of its use
(e.g., King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974) (MISS KING held not confusingly similar to KING’S, based largely on
the holding that the term “King” was non-distinctive)), or where the marks in their
entireties convey significantly different commercial impressions (e.g., Long John
Distilleries, Ltd. v. Sazerac Co., 426 F.2d 1406, 166 USPQ 30 (CCPA 1970) (FRIAR
JOHN held not confusingly similar to LONG JOHN in view of the obvious differences
in their commercial impressions)). Neither exception is applicable in this appeal
because the name “Lester’s” is inherently distinctive when used in connection with
restaurant services and because the marks LESTER’S and LESTER’S DINER convey
the same commercial impression (i.e., a restaurant owned or operated by Lester).
Applicant argues that the facts in this appeal are similar to third-party
registrations “where one party has registered [a] name alone [and] another party has
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registered the same name plus additional terms such as diner/pizza/café and the like
for identical and related restaurant services.”6 Applicant has made the marks in the
third-party registrations listed in the table below of record:7
Mark Reg. No. Goods or Services
STEVE’S FAMOUS
DINER
3476226 Restaurant services
STEVE’S 4084176 Restaurant services featuring ice cream and
frozen confections; ice cream shop services; ice
cream
STEVE’S PIZZA 4640663 Restaurant, café, and cocktail lounge services,
bar services, carry-our restaurant services,
take out restaurant, catering services and
restaurants featuring home delivery
BLUE STAR
BREWING
COMPANY
3155838 Restaurant and prepared take-out food
services
BLUE STAR 4932439 Donut shops in the nature of a restaurant
BLUE STAR DINER 5003355 Restaurant services
BENTLEY’S
CAMPGROUND &
MOTEL and design
4796078 Providing campground facilities, motels and
restaurants
BENTLEY’S FALLS
CHURCH DINER
and design
5011115 Restaurant
BELLE HAVANA 4224161 Restaurant, bar and catering services
BELLE’S DINER
and design
4981607 Restaurant services
RUBY’S DINER and
design
4817382 Restaurant, café, and cocktail lounge services
LITTLE RUBY’S 4965855 Restaurant services
TOM’S DINER 4346404 Restaurant services
TOM’S JR. and
design
4907656 Restaurant services

6 Applicant’s Brief, p. 7 (6 TTABVUE 8).
7 November 2, 2016 Response to an Office Action (TSDR 8-34).
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These prior registrations do not conclusively rebut our finding that the marks are
similar in the context of this appeal. As discussed above, based on the record before
us, Applicant’s mark LESTER’S DINER is similar to Registrant’s mark LESTER’S.
The Board must decide each case on its own merits. In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (citing In re Owens-Corning Fiberglas
Corp., 774 F.2d 1116, 227 USPQ 417, 424 (Fed. Cir. 1985)). Even if some prior
registrations have characteristics similar to the application and registration at issue
in this appeal, the allowance of such prior registrations by the USPTO does not bind
the Board. Nett Designs, 57 USPQ2d at 1566; see also In re Loew’s Theatres, Inc., 769
F.2d 764, 226 USPQ 865, 869 (Fed. Cir. 1985) (“each application for registration of a
mark for particular goods must be separately evaluated.”).
In view of the foregoing, we find that Applicant’s mark LESTER’S DINER is
similar to the registered mark LESTER’S in its entirety in terms of appearance,
sound, connotation and commercial impression.
IV. Analyzing the factors.
Because the marks are similar and because the services are in part identical and,
therefore, we must presume that the services are offered in the same channels of
trade to the same classes of consumers, we find that Applicant’s mark LESTER’S
DINER for “restaurant services” is likely to cause confusion with the registered mark
LESTER’S for “restaurant and bar services.”

Decision: The refusal to register Applicant’s mark LESTER’S DINER is affirmed.