Nawwaf Said

Trademark Trial and Appeal Board

Dec 1, 2017

No. 86605502 (T.T.A.B. Dec. 1, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: December 1, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Said
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Serial No. 86605502
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Nawwaf Said, in pro per.

Caroline E. Wood, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
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Before Bergsman, Ritchie, and Coggins,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Nawwaf Said (“Applicant”) seeks registration on the Principal Register of the
mark JASMIN MEDITERRANEAN, and design,1 shown below, for “catering services;
restaurant services,” in International Class 43:

1 Application Serial No. 86605502 was filed on April 22, 2015, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), asserting dates of first use and first use in commerce on
January 1, 2007. The application contains the following description of the mark: “The mark
consists of the 2 words ‘Jasmin Mediterranean’ accompanied with an olive branch with two
stems on the branch along with leaves. Mediterranean is written under Jasmin, just a little
smaller.” Color is not claimed as a feature of the mark.

Serial No. 86605502
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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 when
applied to the identified goods, it so resembles the previously registered mark
JASMINE, in standard character form,2 for, “restaurant, bar and cocktail lounge
services,” in International Class 43, as to be likely to cause confusion, mistake, or to
deceive. The Examining Attorney also issued a disclaimer requirement for the term
“MEDITERRANEAN.”
When the refusals were made final, Applicant filed this appeal, which is fully
briefed. For the reasons discussed below, we affirm both refusals to register.
Disclaimer Requirement
We first discuss the requirement to disclaim the term “MEDITERRANEAN.” A
term must be disclaimed apart from the mark as shown if it is deemed to be merely
descriptive of the subject goods or services. Trademark Manual of Examination
Procedure §1213.08(b) (October 2017) (TMEP); See In re Grass GmbH, 79 USPQ2d
1600, 1603 (TTAB 2006). Under Trademark Act Section 6(a), 15 U.S.C. § 1056(a),
“[t]he Director may require the applicant to disclaim an unregistrable component of

2 Registration No. 3041458 issued January 10, 2006. Sections 8 and 15 affidavits accepted
and acknowledged. Renewed.
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a mark otherwise registrable,” such as a component which is merely descriptive under
Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1).
A term is deemed to be merely descriptive of goods or services, within the meaning
of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the goods or services. See In re
Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)); see also
In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015); In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). Whether a term is
merely descriptive is determined not in the abstract, but in relation to the goods or
services for which registration is sought, the context in which it is being used on or
in connection with those goods or services, and the possible significance that the term
would have to the average purchaser of the goods or services because of the manner
of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). That a term may
have other meanings in different contexts is not controlling. Id. Moreover, it is settled
that “[t]he question is not whether someone presented with only the mark could guess
what the goods or services are. Rather, the question is whether someone who knows
what the goods or services are will understand the mark to convey information about
them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re
Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home
Builders Ass’n of Greenville, 18 USPQ2d 1313 (TTAB 1990); In re American Greetings
Corp., 226 USPQ 365 (TTAB 1985). On the other hand, if a mark requires
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imagination, thought and perception to ascertain the nature of the goods or services,
then the mark is suggestive. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd,
695 F.3d 1247, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (citing In re Abcor Dev. Corp.,
200 USPQ at 218).
The Examining Attorney posits that the term “MEDITERRANEAN” describes a
feature or characteristic of Applicant’s services, namely that consumers may expect
to find Mediterranean cuisine provided by Applicant’s restaurant and catering
services. In this regard, the Examining Attorney submitted the following definition,
in relevant part:
Mediterranean: Of, relating to, situated or dwelling on or near the
Mediterranean Sea.3

The Examining Attorney also points to statements made by Applicant in its brief,
including the following, which refer to Applicant’s cuisine as “Mediterranean cuisine”:
In the instant case, Applicant’s trademark JASMIN
MEDITERRANEAN creates a commercial impression of fast,
mediterranean [sic] cuisine at a low cost. In the alternative, the
registered trademark JASMINE creates a commercial impression of
high end Chinese cuisine.4

Applicant did not specifically address the disclaimer requirement during
prosecution or on brief.5 Considering the evidence and arguments, we have no doubt
that the relevant public will immediately understand the term “MEDITERRANEAN”

3 Collinsdictionary.com. Attached to August 6, 2015 Office Action, at 4.
4 4 TTABVUE 10.
5 See Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 1203.02(g) (June
2017) (“If an applicant, in its appeal brief, does not assert an argument made during
prosecution, it may be deemed waived by the Board.”)
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to convey information about Applicant’s identified restaurant and catering services,
and it is merely descriptive thereof. The requirement to disclaim the term
“MEDITERRANEAN” is affirmed.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence that are relevant to the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We consider the du Pont factors for which arguments or evidence were presented. The
other factors, we consider to be neutral.
Goods/Channels of Trade
Both the application and the cited registration identify restaurant services. Thus
the services overlap and are identical-in-part. Regarding the other services identified
in the application, “catering services,” the Examining Attorney included evidence
that these are offered by third parties alongside restaurant services (as identified in
the cited registration) and are both identified together in use-based third-party
registrations, including the following:
• MILLHOUSE (Registration No. 4698606)
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• FABRICA WOODFIRED PIZZA (Registration No. 4899152)
• SIMPLE 6 (Registration No. 4852422)
• SUBWAY TO GO!, and design (Registration No. 4760297)
• WEXLER’S DELI (Registration No. 4899637)
• PIZZARAP, and design (Registration No. 4906178)
• THE ORIGINAL ARCADE BAR (Registration No. 4903100)
• SOUPREMACY, and design (Registration No. 4899041)
• AMERICA’S BEST SALADS (Registration No. 4904395)
• THE OFFICIAL CHICKEN OF SPORTS FANZ (Registration No. 4650547)
These third-party registrations serve to suggest that the services are of a type
which may emanate from a single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993). Applicant notes that it “must concede the similarity of
the goods or services as recited,”6 and instead argues that other du Pont factors
establish no likelihood of confusion.
Because the services are overlapping and identical-in-part, we must presume that
the channels of trade and classes of purchasers are also the same. See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was
no evidence regarding channels of trade and classes of consumers, the Board was
entitled to rely on this legal presumption in determining likelihood of confusion). We
find that these du Pont factors weigh heavily in favor of finding a likelihood of
consumer confusion.

6 4 TTABVUE 12.
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The Similarity/Dissimilarity of the Marks
We consider and compare the appearance, sound, connotation and commercial
impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). In comparing the marks, we are mindful that the test is not whether they 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 services offered under the respective marks is likely
to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff'd mem., No. 92-1086 (Fed. Cir. June 5, 1992).
When, as here, the services are overlapping, the degree of similarity between the
marks necessary to support a finding of likelihood of confusion is less than if the
services were not identical. In re Viterra Inc., 101 USPQ2d at 1912.
The mark in the cited registration is JASMINE. Applicant’s mark is
. JASMIN is the first and visually largest portion of Applicant’s
composite mark. Further, as discussed above, the term “MEDITERRANEAN,” is
descriptive of Applicant’s services. 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
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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); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702
(TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s
commercial impression”). We find, therefore, that the term JASMIN, which appears
to be a derivative of the given name JASMINE,7 is the dominant portion of Applicant’s
mark.
Applicant contends in its February 5, 2016 Response to Office Action that its mark
“creates a commercial impression of the beautiful Mediterranean.” The term JASMIN
is, however, effectively the same as JASMINE, with the mere absence of an “e”; and,
in addition to visual similarity, it would be likely to be pronounced the same.
Regarding the pronunciation, to the extent the words are not the same, our case law
dictates that there is no correct pronunciation of a trademark. StonCor Grp., Inc. v.
Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1651 (Fed. Cir. 2014)
(“There is no correct pronunciation of a trademark that is not a recognized word.”)
(citing In re Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227 (CCPA 1969)); In re
Allegiance Staffing, 115 USPQ2d 1319, 1325 (TTAB 2015) (no correct pronunciation
of mark that is coined term).

7 See Dictionary.com based on the Random House Dictionary (2017). 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, 596, (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

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As for the design element, while we do not discount it, it is not so prominent or
unusual as to distinguish the mark from the standard-character mark in the cited
registration. Rather, the olive branch would seem to emphasize the descriptive
“MEDITERRANEAN” wording of Applicant’s mark. Furthermore, it is well-
established that it is the wording in the mark by which consumers would likely call
for or refer to the goods or services. See In re Viterra Inc., 101 USPQ2d at 1911 (citing
CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983)).
Applicant argues that the commercial impressions of the marks are different,
citing cases that find that even where marks are identical, the commercial impression
of the marks can be different as to different goods or services. See In re Sears, Roebuck
& Co., 2 USPQ2d 1312, 1314 (TTAB 1987); In re British Bulldog, Ltd., 224 USPQ
854, 856 (TTAB 1984); In re Sydel Lingerie Co., 197 USPQ 629, 630 (TTAB 1977);
see also Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1721 (Fed. Cir. 2012) (finding COACH for educational materials creates
different commercial impression from, and not likely to cause confusion with, COACH
for leather handbags and accessories). These cases are inapposite, however, since
Applicant and Registrant here identify identical restaurant services. Thus the
meaning of the term “JASMINE” or its derivative “JASMIN” would be the same as to
the identical restaurant services.
We thus find that in addition to sight and sound, the marks, when considered in
their entireties, are highly similar in meaning and commercial impression, and this
du Pont factor, too, favors finding a likelihood of confusion.
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Consumer Sophistication and Degree of Purchaser Care
Applicant urges us to consider consumers’ sophistication and degree of purchasing
care, arguing “[t]raditionally, consumers of these goods are sophisticated insofar as
they are knowledgeable of the difference in Mediterranean and Chinese cuisine.”8 In
this regard, Applicant has argued that Registrant’s “restaurant services” (as
compared with Applicant’s “restaurant services”), would be perceived to consist of
“high end Chinese cuisine.”9 Neither party has restricted its identification as to a type
of restaurant service, however, and either may offer such services at varying qualities
and prices (and styles). Stone Lion Capital Partners, LP v. Lion Capital LLP, 110
USPQ2d 1157, 1163 (Fed. Cir. 2014) (affirming that TTAB properly considered all
potential investors for recited services, including not only sophisticated investors, but
also “the least sophisticated potential purchasers”); see also 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 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.”) (citations omitted). We find this factor to be neutral.

8 4 TTABVUE 13.
9 4 TTABVUE 10.
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Actual Confusion
Finally, Applicant urges us to consider the lack of actual confusion considering the
length of co-existence of the marks. Although the presence of actual confusion can be
useful to an analysis of likelihood of confusion, the lack of evidence of actual confusion
carries little weight, however, especially in an ex parte analysis. See In re Majestic
Distilling Co., Inc., 65 USPQ2d at 1205. Accordingly, this factor is neutral.
Conclusion on Likelihood of Confusion
After considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, we find that the services are identical-in-part and
otherwise related, and we presume they would travel through the same channels of
trade to some of the same general consumers. We further find that the marks as a
whole are similar in sight, sound, and especially, in commercial impression.
Accordingly, we find a likelihood of confusion between Applicant’s mark
for “catering services; restaurant services” and the mark
JASMINE for “restaurant, bar and cocktail lounge services.”
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed, as is
the requirement for Applicant to disclaim the term “MEDITERRANEAN” apart from
the mark as shown.