Let’s Eat, LLCv.Extra Virgin of Shirlington, L.L.C.

Trademark Trial and Appeal Board

Jan 8, 2008

No. 91167907 (T.T.A.B. Jan. 8, 2008)

Mailed:
8 January 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Let’s Eat, LLC
v.
Extra Virgin of Shirlington, L.L.C.
_____

Opposition No. 91167907
to application Serial No. 76628150

_____

Michael A. Cornman of Schweitzer Cornman Gross & Bondell LLP
for Let’s Eat, LLC.

Joseph S. Presta of Nixon & Vanderhye, P.C. for Extra Virgin
of Shirlington, L.L.C.
______

Before Quinn, Hairston, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

Applicant, Extra Virgin of Shirlington, L.L.C.,
applied to register the mark EXTRA VIRGIN in standard
character form for “restaurant services” in Class 43 on
January 19, 2005. The application (Serial No. 76628150) was
based on applicant’s allegation of a bona fide intent to use
the mark in commerce.
On December 5, 2005, opposer, Let’s Eat, LLC, filed an
opposition to the registration of applicant’s mark. In its
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91167907
2
notice of opposition at 1 (bold omitted), opposer alleges
that:
Opposer started its famous EXTRA VIRGIN restaurant in
April 2004 and has expended large sums of money to
promote and publicize the opening and ongoing business
of its restaurant. In the brief time, [sic] the
restaurant has been in business, the EXTRA VIRGIN
restaurant has received magnificent and glorious
reviews from consumers and people in the business…

Applicant seeks to register the service mark EXTRA
VIRGIN for use in connection [with] restaurant
services. Moreover, because the services for which
Applicant seeks to register the EXTRA VIRGIN mark are
identical to Opposer’s EXTRA VIRGIN mark, consumers
will be led to the mistaken belief that Applicant’s
services and Opposer’s services originate from the same
source….1

Applicant denied the salient allegations of the notice of
opposition.
The Record
The record includes the file of the involved
application and the testimony deposition of one of opposer’s
partners and its president, Michele Gaton, with accompanying
exhibits.
Opposer has filed an opening brief, but applicant has
not submitted a responsive brief.
Priority
In view of the fact that applicant’s and opposer’s
marks are the same, EXTRA VIRGIN, and both parties use or
intend to use their marks on restaurant services, the

1 Opposer also alleges that it is the owner of Serial No.
78649683 for the mark EXTRA VIRGIN for restaurant services.
Opposition No. 91167907
3
critical issue in this case is which party has priority.
Applicant filed its application on January 19, 2005. It did
not submit any evidence of an earlier date of use so the
filing date of this application is applicant’s constructive
use date. Zirco Corp. v. American Telephone and Telegraph
Co., 21 USPQ2d 1542, 1544 (TTAB 1991) (“[T]here can be no
doubt but that the right to rely upon the constructive use
date comes into existence with the filing of the intent-to-
use application and that an intent-to-use applicant can rely
upon this date in an opposition brought by a third party
asserting common law rights”).
Next, we must determine whether opposer used its mark
for its services prior to applicant’s January 19, 2005,
priority date. In a case involving common law rights, “the
decision as to priority is made in accordance with the
preponderance of the evidence.” Hydro-Dynamics Inc. v.
George Putnam & Company Inc., 811 F.2d 1470, 1 USPQ2d 1772,
1773 (Fed. Cir. 1987). We find that the evidence that
opposer submitted amply supports its earlier priority date.
First, opposer’s witness testified unequivocally as
follows:
A. I found the restaurant space early 2004 and we
closed, I would say, the end of February and then we
opened Extra Virgin Restaurant on April 12th of 2004.

Q. And you are certain that the date is April 12th
2004?

A. Yes.
Opposition No. 91167907
4

Q. How is that?

A. Because my birthday is on April 15th and we
celebrated there.

Q. Three days after?

A. Three days after, yes.

Gaton dep. at 8.

Second, opposer’s witness identified a wine list and
“menus that we used [when] we first opened the restaurant.”
Gaton dep. at 10, Exhibits 1-3. These items all have the
mark EXTRA VIRGIN prominently displayed on them.
Third, opposer’s witness identified several newspaper
and other articles that reviewed or mentioned opposer’s
restaurant prior to applicant’s priority date. Gaton dep.
at 12-17 and Ex. 4 (New York Magazine, April 19, 2004 – “At
the West Village restaurant Extra Virgin…”); Ex. 5 (Time Out
New York Magazine, April 15 – 22, 2004 – “Almost everything
at Extra Virgin, in the former Titou space, is drizzled with
it”); Ex. 6 (New York Times Dining Out Guide September 8,
2004 – Extra Virgin restaurant review); Ex. 7 (New York
Times Dining Out Guide April 21, 2004 – “With Michelle
Gaton, who was the manager of Coffee Shop, he has opened
EXTRA VIRGIN, 259 West Fourth Street”); and Ex. 11 (New York
Daily News, September 2004 – Extra Virgin restaurant
review).
Opposition No. 91167907
5
The exhibits and testimony support a conclusion that
opposer has standing and that it began using its EXTRA
VIRGIN mark for restaurant services on April 12, 2004, and
at a minimum, prior to applicant’s constructive date of use,
January 19, 2005. We add that an opposer in an opposition
proceeding does not have to demonstrate that it has used its
mark in interstate commerce. Bourns, Inc. v. International
Resistance Co., 341 F.2d 146, 144 USPQ 424, 425 (CCPA 1965)
(“It is not necessary under 15 U.S.C. 1063 for an opposer to
aver and prove use of the mark in interstate commerce”).
See also National Cable Television Ass’n v. American Cinema
Editors, Inc. 937 F.2d 1572, 19 USPQ2d 1424, 1429 n.4 (Fed.
Cir. 1991) (“Were failure to show ‘use in commerce’ a bar to
petitioning for cancellation of a registration, a party
could never cancel a mark based solely on intrastate use.
This is not the law. Section 14 requires only prior use;
‘in commerce’ is noticeably absent”). Therefore, we do not
reach this issue.2

2 Also, based on the limited evidence of record, we conclude that
applicant’s mark is not merely descriptive and, therefore,
opposer does not have to establish the date its mark acquired
distinctiveness. In re The Registry Hotel Corporation, 216 USPQ
1104, 1105 (TTAB 1983) (LA CHAMPAGNE “is not merely descriptive
of restaurant services”); Spoons Restaurants Inc. v. Morrison
Inc., 23 USPQ2d 1735, 1740 (TTAB 1991), aff'd unpub'd (Fed. Cir.,
June 5, 1992) (footnote omitted) (“While applicant contends that
opposer's marks have a far different connotation in that the word
‘SPOONS’ refers, in its singular form, to an eating utensil and
also has surname significance, we believe that as applied to
restaurant services, the only plausible meaning thereof is a type
of implement for eating or cooking and thus the term is
suggestive of opposer's services”).
Opposition No. 91167907
6
Likelihood of Confusion
The last question we must address is whether there is a
likelihood of confusion. In likelihood of confusion cases,
we look 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).
The Court of Custom and Patent Appeals has noted that
“[t]he fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods [or services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this
case, the marks are for the identical words EXTRA VIRGIN.
Applicant’s mark is depicted in standard character form so
there can be no difference in the marks based on the
stylization of the marks. Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 939 (Fed. Cir. 1983):
[T]he argument concerning a difference in type style is
not viable where one party asserts rights in no
particular display. By presenting its mark merely in a
typed drawing, a difference cannot legally be asserted
by that party. Tomy asserts rights in SQUIRT SQUAD
regardless of type styles, proportions, or other
possible variations. Thus, apart from the background
design, the displays must be considered the same.

Opposition No. 91167907
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See also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1847 (Fed. Cir. 2000) (“Registrations
with typed drawings are not limited to any particular
rendition of the mark and, in particular, are not limited to
the mark as it is used in commerce”). Therefore,
applicant’s and registrant’s marks are identical.
Regarding the services, applicant identifies its
services as “restaurant services” without any limitations.
Therefore, we must consider applicant’s restaurant services
to include opposer’s restaurant services. In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed.
Cir. 1997) (Applicant’s “restaurant services specializing in
Southern-style cuisine” included within registrant’s
exclusive right to use its mark for restaurant services).
See also Paula Payne Products v. Johnson Publishing 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” or services). Inasmuch as applicant’s broadly
identified restaurant services include opposer’s restaurant
services, the channels of trade and purchasers would also at
least overlap.
We conclude that the evidence demonstrates that there
is a likelihood of confusion if applicant were to use its
mark EXTRA VIRGIN for restaurant services in view of
Opposition No. 91167907
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opposer’s prior use of its EXTRA VIRGIN mark on its
restaurant services.

Decision: The opposition is sustained, and
registration to applicant is refused.