Ming Lau

Trademark Trial and Appeal Board

Jun 15, 2001

No. 75619998 (T.T.A.B. Jun. 15, 2001)

06/15/01
Paper No. 10
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ming Lau
________
Serial No. 75/619,998
_______
Lawrence A. Maxham of Baker & Maxham for Ming Lau.
Won T. Oh, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
_______
Before Hairston, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Ming Lau has filed an application to register the mark
GW GREAT WALL EXPRESS as shown below,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/619,998
2
for “restaurant services.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used in connection with
restaurant services, so resembles each of the following
marks, which are registered to the same entity, as to be
likely to cause confusion, mistake or deception:
GREATWALL for “canned goods-namely, meat, fish
poultry, fruits, vegetables and jams”;2
GREATWALL BRAND and design as shown below,
for “canned goods-namely, meat, fish, poultry,
fruits, vegetables and jams”;3 and
1 Serial No. 75/619,998, filed January 12, 1999, alleging dates
of first use of March 18, 1994.
2 Registration No. 1,100,901 issued August 29, 1978; renewed.
3 Registration No. 1,100,902 issued August 29, 1978; renewed.
The Chinese characters are translated into English as “Great Wall
Brand.”
Ser No. 75/619,998
3
GREATWALL and design as shown below,
for “beer”.4
In addition, the Trademark Examining Attorney has made
final a requirement that applicant disclaim EXPRESS apart
from the mark as shown.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
We turn first to the requirement for a disclaimer of
the word EXPRESS. It is the Examining Attorney’s position
that the word EXPRESS describes a feature or characteristic
4 Registration No. 1,249,970 issued June 7, 1983; Section 8
affidavit filed. As in the previous registration, the Chinese
characters are translated into English as “Great Wall Brand.”
Ser No. 75/619,998
4
of applicant’s restaurant services, namely that food is
provided to customers quickly. While the Examining
Attorney acknowledges that applicant’s services are not
specifically identified as fast-food or “express”
restaurant services, the Examining Attorney maintains that
applicant’s recitation of services is broad enough to
encompass fast-food or “express” restaurant services. In
support of the disclaimer requirement, the Examining
Attorney submitted copies of twenty-four third-party
registrations for marks which include EXPRESS for
restaurant services wherein such word is disclaimed.
Applicant, on the other hand, contends that according
to definitions taken from Webster’s Ninth New Collegiate
Dictionary, the word “express” means exigency, something
explicit or a mode of transportation, and thus, “[express]
is not inexorably relevant to restaurant services.”
(Brief, p. 3).
In this case, we agree with the Examining Attorney
that EXPRESS is descriptive of a feature or characteristic
of applicant’s services and must be disclaimed. We
judicially notice The American Heritage Dictionary of the
English Language (4th ed. 2000) wherein the word “express”
is defined as, inter alia, “sent out with or moving at high
Ser No. 75/619,998
5
speed.”5 When we consider this definition of “express” in
connection with applicant’s services, it is readily
apparent that “express” describes the fact that the food is
sent out or provided to customers quickly. That the Office
has considered this term descriptive of a feature or
characteristic of restaurant services is borne out by the
third-party registrations wherein the term is disclaimed.
Moreover, as pointed out by the Examining Attorney, because
applicant’s services are broadly identified as restaurant
services, they are broad enough to encompass restaurant
services which are fast-food or “express” in nature. In
view of the foregoing, the requirement for a disclaimer of
EXPRESS is appropriate.
We turn next to the refusal to register under Section
2(d) of the Trademark Act. Our determination under Section
2(d) of the Trademark Act is based on an analysis of all of
the probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. In
re E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In any likelihood of confusion analysis,
two key considerations are the similarities between the
5 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Ser No. 75/619,998
6
marks and the similarities between the goods and/or
services.
We note at the outset, that there is no per se rule
which requires a finding that confusion is likely whenever
food items and restaurant services are offered under
similar marks. See, e.g., Jacobs v. International
Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA 1982)
[no likelihood of confusion between BOSTON TEA PARTY for
tea and BOSTON SEA PARTY for restaurant services; “a party
must show something more than that similar or even
identical marks are used for food products and for
restaurant services”]; and In re Central Soya Company,
Inc., 220 USPQ 914 (TTAB 1984) [no likelihood of confusion
between POSADA (stylized) for Mexican style prepared frozen
enchiladas and LA POSADA for lodging and restaurant
services].
We should point out that although the Examining
Attorney listed in the introductory section of his brief
Registration No. 1,249,970 for the mark GREATWALL and
design for beer as a basis for refusing registration under
Section 2(d), there is no discussion or argument with
respect to this registration in his brief. Inasmuch as it
appears that the Examining Attorney is not pressing the
refusal on the basis of this registration, we deem such
Ser No. 75/619,998
7
refusal to have been withdrawn and we have given it no
consideration. For purposes of our decision then, we have
considered only Registrations Nos. 1,100,901 and 1,100,902
for the marks GREATWALL and GREATWALL BRAND and design,
respectively.
We compare first applicant’s mark GW GREAT WALL
EXPRESS and the marks GREATWALL and GREATWALL BRAND and
design. Although there are similarities between
applicant’s mark and registrant’s marks due to the shared
presence of the term GREAT WALL, we find that there are
specific differences between applicant’s mark and these two
cited marks. In particular, the inclusion in applicant’s
mark of the joined letters “G” and “W” displayed in a
prominent manner results in a mark that, when considered in
its entirety, is different in appearance from GREATWALL and
GREATWALL BRAND and design.
More importantly, as to the respective goods and
services, we are not persuaded, on this record, that
restaurant services, on the one hand, and canned meat,
fish, poultry, fruits, vegetables and jams, on the other
hand, are related. In support of his contention that such
goods and services are related, the Examining Attorney
submitted thirteen registrations which cover restaurant
services on the one hand, and various food items, on the
Ser No. 75/619,998
8
other hand. However, there are several problems with the
registrations. None of the thirteen registrations covers
canned food items of any kind. Rather, they cover prepared
foods or fresh and/or frozen food items. Moreover, seven
of the registrations issued under Section 44(e) of the
Trademark Act, rather than on the basis of use in commerce,
and two of the registrations are clearly house marks and
cover a variety of food items and other unrelated products
and services. In short, these registrations do not satisfy
the “something more” evidence requirement set forth by the
Court in Jacobs v. International Multifoods Corp., supra,
at 212 USPQ 643. While the Examining Attorney has relied
on In re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209
(TTAB 1999), in support of his contention that restaurant
services and the canned foods identified in the cited
registrations are related, we believe that case is
distinguishable from the facts herein. In that case, the
Board found a likelihood of confusion between the
applicant’s restaurant services rendered under the mark
AZTECA MEXICAN RESTAURANT and the registrant’s Mexican food
products sold under the mark AZTECA. Not only were the
marks in In re Azteca substantially similar, but the record
therein consisted of ten use-based third-party
registrations of marks which were registered for restaurant
Ser No. 75/619,998
9
services, on the one hand, and food items, on the other
hand. In addition, five of the registrations covered both
restaurant services and Mexican food items.
In sum, when we consider the specific differences in
applicant’s mark and the cited marks along with the fact
that the record lacks the “something more” necessary to
establish that restaurant services and canned foods are
related, it is our view that applicant’s use of the mark GW
GREAT WALL EXPRESS is not likely to cause confusion with
the marks GREATWALL and GREATWALL BRAND and design.
Decision: The refusal to register under Section 2(d)
of the Act in view of Registration Nos. 1,100,901 and
1,100,902 is reversed.
The requirement for a disclaimer of the word EXPRESS
is affirmed. Nonetheless, this decision will be set aside
and applicant’s mark published for opposition if applicant,
no later than thirty days from the mailing date hereof,
submits an appropriate disclaimer of EXPRESS.