Mutt’s IP, LLC

Trademark Trial and Appeal Board

Sep 28, 2018

No. 86237177 (T.T.A.B. Sep. 28, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: September 28, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Mutt’s IP, LLC
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Serial Nos. 86237177 and 86237195
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Elisabeth A. Evert of Hitchcock Evert LLP,
for Mutt’s IP, LLC.
April A. Hesik, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.
_____

Before Taylor, Kuczma and Gorowitz,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Mutt’s IP, LLC (“Applicant”) seeks registration on the Principal Register of the
marks MUTTS in (in standard characters) and (MUTTS and
Design) for:
Restaurant and bar services in International Class 43.1

1 Application Serial Nos. 86237177 and 86237195 were filed on March 31, 2014, based upon
Applicant’s claim of first use anywhere and use in commerce since at least as early as June
Serial Nos. 86237177 and 86237195
2

The mark in Application Serial No. 86237195 “consists of the word ‘MUTTS’ above
icons representing a soda cup, a beer bottle, a tree, a dog and a telephone.”
The Trademark Examining Attorney refused registration of Applicant’s marks
under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of
confusion with the mark MUTT’S BBQ in Registration No. 3350611 registered for
“restaurant and catering services, ”owned by Log Cabin Enterprises, Inc.2
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the requests for
reconsideration, the appeals were resumed.
We have considered the evidence and arguments presented by Applicant and the
Examining Attorney. Inasmuch as the two appeals involve similar marks, were
refused registration under § 2(d) based on the same cited Registration, and have
essentially identical records and legal arguments, they are consolidated and
addressed in this single opinion. In re Anderson, 101 USPQ2d 1912, 1915 (TTAB
2012) (Board sua sponte consolidated two appeals); TRADEMARK TRIAL AND APPEAL
BOARD MANUAL OF PROCEDURE (“TBMP”) § 1214 (2018).
For the reasons set forth below, the refusals to register Applicant’s marks for the
services in Class 43 are affirmed.

19, 2013. The applications also include “Recreational dog park” services in Class 41 which
are not involved in this consolidated appeal.

2 Issued on December 11, 2007; renewed. Registration No. 3350611 also covers goods in
International Class 25 which were not cited in the refusals of registration.
Serial Nos. 86237177 and 86237195
3

Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all 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) 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., Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods, Inc. v. 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.”). We address these factors
and any others for which Applicant and the Examining Attorney have presented
evidence or arguments. The other factors we treat as neutral.
A. Similarity of the Services, Channels of Trade and Customers
We first consider the du Pont factor involving the similarity or dissimilarity of the
services and compare Applicant’s “restaurant and bar services” to the “restaurant
and catering services” in the cited Registration.
Applicant contends that “[t]he Mutts Canine Cantina outdoor patio, beer garden
and dog park conveys a canine-centric impression,” that consumers are invited to
“bring [their] favorite canine companion,” and that “[d]ogs are quite literally treated
as guests at the Mutts Canine Cantina restaurant,” submitting evidence supporting
Serial Nos. 86237177 and 86237195
4

the dog-friendly nature of its business.3 Applicant goes on to argue that the services
are readily distinguishable because its services “feature a most unique combination
of equal billing for dog park services and delicious food” while “the services claimed
in the cited registration make absolutely no reference to pets of any kind.” Applicant’s
argument is not relevant to our determination since the relationship of the services
is based on the description of the services stated in the applications and registration
at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, 110
USPQ2d at 1162 (quoting Octocom Sys. v. Houston Comp. Servs., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Dixie Rests. Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997); In re La Peregrina Ltd., 86 USPQ2d 1645, 1646
(TTAB 2008). Thus, the services as identified are identical-in-part, as they both cover
restaurant services.
Because the services are identical-in-part, and have no restrictions or limitations
as to nature, type, channels of trade, or classes of purchasers, they are presumed to
travel in the same channels of trade, and to be rendered to the same class of
purchasers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (absent restrictions in the application and registration, identical goods are
presumed to travel in the same channels of trade to the same class of purchasers; the
Board was entitled to rely on this legal presumption in determining likelihood of
confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA

3 Applicant’s Briefs for Serial No. 86237177, p. 4 (9 TTABVUE 5); and Serial No. 86237195,
p. 5 (10 TTABVUE 6).
Serial Nos. 86237177 and 86237195
5

1968) (where there are legally identical goods, the channels of trade and classes of
purchasers are considered to be the same); In re Hughes Furniture Indus., Inc., 114
USPQ2d 1134, 1137 (TTAB 2015); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994). By presumption, these services would be in the same trade channels
and sold to the same class of purchaser. Thus, the channels of trade and classes of
purchasers, at a minimum, overlap.
Based on the identical-in-part nature of the services set forth in the applications
and cited Registration, and the overlapping trade channels and customers, the du
Pont factors of the similarity of the services, trade channels and customers favor a
finding of likelihood of confusion.
B. Similarity of the Marks
Marks are compared for similarity or dissimilarity in their entireties as to
appearance, sound, meaning and commercial impression. See Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005); du Pont, 177 USPQ at 567. “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, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012) (citation omitted).
Applicant owns applications for the marks MUTTS and MUTTS and Design. We
start our analysis of the similarity of the marks with Applicant’s mark MUTTS and
Serial Nos. 86237177 and 86237195
6

Design. The additional elements in the MUTTS and Design mark add an element to
the evaluation. Thus, if there will be confusion between this mark and the cited
MUTT’S BBQ mark, then there will be confusion between both of Applicant’s marks
and the cited mark.
When evaluating similarities of marks, if one of the marks comprises both a word
and a design, such as in Applicant’s mark MUTTS and Design, the word is normally
accorded greater weight in determining whether the marks are similar because it
would be more likely to be impressed upon a customer’s memory and used by
customers to request the services. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198,
200 (Fed. Cir. 1983); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1267-68 (TTAB
2011); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). This
principle is especially important in cases involving restaurant services due to the
propensity of persons to try restaurants based on word-of-mouth recommendations.
Dixie Rests., 41 USPQ2d at 1534 (“[B]ecause restaurants are often recommended by
word of mouth and referred to orally, it is the word portion of applicant’s mark which
is more likely to be impressed on the consumer’s memory.”) quoting Giant Food, Inc.
v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed.Cir. 1983)); In
re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987).
A customer seeing Applicant’s MUTTS and Design mark would likely assume that
the design generally relates to Applicant’s restaurant services and does not convey
any distinct impression from the word portion of the mark. See Herbko Int’l Inc. v.
Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (“[T]he
Serial Nos. 86237177 and 86237195
7

puzzle design [ ] does not convey any distinct or separate impression
apart from the word portion of the mark. Rather, it serves only to strengthen the
impact of the word portion in creating an association with crossword puzzles.”); In re
Swatch Grp. Mgmt. Servs. AG, 110 USPQ2d 1751, 1762 (TTAB 2014) (“the
combination of the design with the word TOURBILLON [ ] reinforces
the singular impression conveyed by the mark as a whole, which is nothing more than
the significance of ‘tourbillon’ ”). While Applicant’s MUTTS and Design mark includes
an outline of a dog, together with other images, it is a very small part of the overall
mark which at most suggests that dogs may be welcome at Applicant’s restaurant.
However, the design element of Applicant’s MUTTS and Design mark is entitled to
less weight in our analysis because customers will use the distinctive wording of
“MUTTS” to identify and call for Applicant’s restaurant services. Thus, as presented,
the word “Mutts” is the dominant portion of Applicant’s mark MUTTS and Design.
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGaA v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015) (“the verbal
portion of the mark is the one most likely to indicate the origin of the goods to which
it is affixed.”) citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed.
Cir. 1983); Viterra, 101 USPQ2d at 1908, 1911 (“In the case of a composite mark
containing both words and a design, the verbal portion of the mark is the one most
likely to indicate the origin of the goods to which it is affixed” (internal quotation
marks omitted)); Dakin’s Miniatures, 59 USPQ2d at 1596 (“In the case of marks
Serial Nos. 86237177 and 86237195
8

which consist of words and a design, the words are normally accorded greater weight
because they would be used by purchasers to request the goods”).
Looking at Registrant’s mark MUTT’S BBQ, the dominant portion of that mark is
also the word “Mutt’s.” The addition of the term “BBQ” to Registrant’s mark does not
alter the connotation. The term “BBQ” in Registrant’s mark is descriptive of a type of
cuisine and has been disclaimed and, therefore, is less significant in creating a
commercial impression. See Viterra, 101 USPQ2d at 1908; Citigroup Inc. v. Capital
City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1257 (Fed. Cir. 2011) (when
a mark consists of two or more words, some of which are disclaimed, the word not
disclaimed is generally regarded as the dominant or critical term); Dixie Rests., 41
USPQ2d at 1534 (finding “delta” the dominant part of the mark “THE DELTA CAFÉ
because CAFÉ was disclaimed”); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985) (“[T]here is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark, provided
the ultimate conclusion rests on consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.”). Because the apostrophe in
Registrant’s mark is not distinctive and adds no source-indicating significance to the
mark as a whole, the inclusion of an apostrophe in Registrant’s mark does not
generally affect or otherwise diminish the overall similarity between the marks.
Businesses frequently use a possessive form of their names or marks without an
apostrophe. In re Luis Caballero, S.A., 223 USPQ 355, 357 (TTAB 1984); In re
Directional Marketing Corp., 204 USPQ 675, 677 (TTAB 1979) (“we cannot shut our
Serial Nos. 86237177 and 86237195
9

eyes to the facts that stores frequently use a possessive letter ‘S’ on the end of their
names or marks without an apostrophe”).
Customers in general also are inclined to focus on the first word or portion in a
trademark, especially where the first portion is followed by a highly descriptive or
generic term (as is the case of “BBQ” in Registrant’s mark). Presto Products, Inc. v.
Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part
of a mark which is likely to be impressed upon the mind of a purchaser and
remembered”); see also Palm Bay, 73 USPQ2d at 1692. Thus, the word
“MUTTS/MUTT’S” contained in Applicant’s and Registrant’s marks is central to the
marks and results in marks that, when compared in their entireties, are more similar
than dissimilar. Additionally, although the issue of likelihood of confusion must be
judged on the basis of the facts and context of each case presented to the Board,
adding or deleting matter from a registered mark generally does not obviate the
similarly between the marks. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d
1944 (Fed. Cir. 2004).
Applicant admits that its marks and Registrant’s mark both contain the term
“Mutt(s).” However, it contends that the marks have different connotations and
commercial impressions based on its establishment which has an “outdoor patio, beer
garden and dog park [that] conveys a canine-centric impression”4 while Registrant’s
business focuses on Southern barbecue offerings referring to Registrant’s use of a
large, pink pig in its signage. Applicant also argues that Registrant’s MUTT’S BBQ

4 Applicant’s Brief Serial No. 86237195 p. 5 (10 TTABVUE 6).
Serial Nos. 86237177 and 86237195
10

mark connotes a man named Mutt offering barbecue, relying on evidence it submitted
to show that “Mutt” is a common nickname for men and language on Registrant’s
website referring to Mutt, the son of its founder.5
Such evidence of marketplace use has little or no merit as our task is to compare
the marks as presented in the applications and cited Registration. In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017) (“The
correct inquiry requires comparison of the applied-for mark, which only includes the
words ‘I AM,’ to the registrants’ marks.”); In re Aquitaine Wine USA, LLC, 126
USPQ2d 1181, 1186 (TTAB 2018) (“[W]e do not consider how applicant and registrant
actually use their marks in the marketplace, but rather how they appear in the
registration and the application.”); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d
1500, 1508 (TTAB 2007) (must compare applicant’s mark with the cited mark as
shown in the registration certificate). The dictionary definitions of “mutt” submitted
by the Examining Attorney show that “mutt” is defined as “a mongrel dog” or “a
stupid person; dolt.”6 Nothing in either Applicant’s marks or Registrant’s mark,
dictates one meaning over the other or indicates that the marks have different
meanings. Therefore, there is nothing that suggests that the marks differ in
connotation or commercial impression.

5 Applicant’s Brief for Serial No. 86237177 p. 4-5 (9 TTABVUE 5-6); Brief for Serial No.
86237195 p. 6-7 (10 TTABVUE 7-8).
6 Serial Nos. 8623177 and 86237195 April 5, 2018 Denials of Request for Reconsideration,
TSDR 5; The American Heritage Dictionary 04/02/2018.
Serial Nos. 86237177 and 86237195
11

Simply put, we are not persuaded by Applicant’s argument that its MUTTS and
MUTTS and Design marks convey different commercial impressions than the cited
mark MUTT’S BBQ. Applicant’s use of the dominant portion of Registrant’s mark
results in the same connotation and commercial impression as Registrant’s mark.
Thus, the differences in Registrant’s and Applicant’s marks are not sufficient to
distinguish the marks. Overall, when viewed in their entireties, the marks are similar
in appearance, sound, meaning and commercial impression.
C. Sophistication of Customers
Applicant further argues that consumers encountering Applicant’s services make
sophisticated, careful purchasing decisions such that they would not readily confuse
Registrant’s Southern barbecue restaurant with Applicant’s establishment,7
concluding that the services are readily distinguishable. Even if there was evidence
supporting the sophistication of Applicant’s customers, there is no evidence that
Registrant’s customers or potential customers are sophisticated. Moreover, even
sophisticated purchasers are not immune from source confusion, especially in cases
such as the present one involving highly similar marks and identical services. See In
re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing
Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ
110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers … are

7 Applicant’s Briefs for Serial No. 86237177, p. 6 (9 TTABVUE 7); and Serial No. 86237195,
p. 8 (10 TTABVUE 9).
Serial Nos. 86237177 and 86237195
12

not infallible.”)). See also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690-
91 (Fed. Cir. 1993); In re Integrated Embedded, 120 USPQ2d 1504, 1516 (TTAB 2016).
D. Lack of Actual Confusion
Lastly, Applicant argues that there has been use of both Applicant’s and
Registrant’s marks for more than four years with no evidence of confusion. The fact
that an applicant in an ex parte case is unaware of any instances of actual confusion
is generally entitled to little probative weight in the likelihood of confusion analysis,
inasmuch as the Board in such cases generally has no way of knowing whether the
registrant likewise is unaware of any instances of actual confusion, nor is it usually
possible to determine that there has been any significant opportunity for actual
confusion to have occurred. See, e.g., In re Opus One Inc., 60 USPQ2d 1812, 1817
(TTAB 2001); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
Accordingly, the du Pont factor of the length of time during and conditions under
which there has been contemporaneous use without evidence of actual confusion is
considered neutral.
E. Conclusion
When considering the marks in their entireties, they are similar in appearance,
pronunciation and connotation, and have a similar overall commercial impression.
Given the close similarity of Registrant’s mark MUTT’S BBQ and Applicant’s marks
MUTTS and MUTTS and Design, which are used on services that are identical-in-
part, we find a likelihood of confusion.
Serial Nos. 86237177 and 86237195
13

Decision: The refusals to register Applicant’s marks MUTTS and
, for the services identified in Class 43 in Application Serial Nos.
86237177 and 86237195, under § 2(d) of the Trademark Act are affirmed. Those
applications shall proceed to registration only for “Recreational dog park” services in
Class 41.