Oscar D. Taylor

Trademark Trial and Appeal Board

Dec 18, 2013

No. 85521900 (T.T.A.B. Dec. 18, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
December 18, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Oscar D. Taylor
_____

Serial No. 85521900
_____

John C. Cain of Wong, Cabello, Lutsch, Rutherford & Brucculeri, L.L.P. for Oscar D.
Taylor.

Andrea Hack, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence,
Managing Attorney).
_____

Before Quinn, Wolfson, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Oscar D. Taylor filed an application to register on the Principal Register the
mark set forth below for “Bar services; Restaurant services, namely, providing of
food and beverages for consumption on and off the premises,” in International Class
43.1

1 Application Serial No. 85521900, filed under Trademark Act § 1(a), 15 U.S.C. § 1051(a), on
January 20, 2012, claiming December 21, 2006 as the date of first use and the date of first
use in commerce.
Serial No. 85521900

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The colors red, yellow, black and white are claimed as features of the mark. The
wording along the bottom edge of the mark is GENUINE CREOLE, UNIQUELY
CAJUN! No claim is made to the exclusive right to use WINGS, CREOLE, and
CAJUN.
The trademark examining attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, as used in
connection with applicant’s services, so resembles the registered mark BONFIRE as
to be likely to cause confusion, or to cause mistake, or to deceive.2 The cited mark is
registered on the Principal Register for “Restaurant and bar services including the
on-premises offering of food and drink,” in International Class 42. When the refusal
was made final, applicant requested reconsideration, which the examining attorney
denied. This appeal ensued. Applicant and the examining attorney have filed
briefs and applicant has filed a reply brief.
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 as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities

2 Reg. No. 2650328, issued on November 12, 2002; Section 8 and 15 affidavits accepted and
acknowledged; renewed.
Serial No. 85521900

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between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, applicant
and the examining attorney have also submitted evidence and arguments regarding
the alleged weakness of the registered mark due to dilution of the term BONFIRE
and the length of time of coexistence without actual confusion.
1. The services at issue.
Addressing first the services of applicant and registrant, we find that they
are legally identical. Both the application and the registration identify restaurant
services, bar services, and provision of food and drink for on-premises consumption.3
Applicant does not argue as to the identical nature of the services. This du Pont
factor weighs heavily in favor of a finding of likelihood of confusion.
2. Customers; trade channels.
As applicant’s services are legally identical to those of registrant, we must
presume that those services move in the same channels of trade and are available to
the same classes of customers for those services. In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012); American Lebanese Syrian Associated
Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB
2011); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). Accordingly,
these two du Pont factors favor a finding of likelihood of confusion.

3 The fact that the application also covers provision of food and drink for off-premises
consumption does not undermine the identical nature of all the other identified services.
See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).
Serial No. 85521900

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3. The marks at issue.
We now consider the similarity or dissimilarity of the marks in appearance,
sound, meaning, and overall commercial impression. The cited registered mark
consists of the single word BONFIRE. Applicant’s mark consists of the designation
BONFIRE WINGS in large, cursive lettering, accompanied by the slogan GENUINE
CREOLE, UNIQUELY CAJUN! presented in much smaller, block capital letters.
The wording is set within an oval carrier flanked by two designs representing
flaming fleurs-de-lis.
In our analysis under Section 2(d) we must compare the marks at issue in
their entireties. However, there 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 a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). Applicant argues strenuously that the examining attorney’s analysis violates
the “anti-dissection” rule by “focus[ing] entirely on the shared use of the word
BONFIRE….”4 In this regard, we agree that the examining attorney has too
zealously sought to diminish the significance of the other portions of applicant’s
mark. For example, the examining attorney devotes one portion of her brief to
“Determining the Source-Indicating Portion of Applicant’s Mark.”5 According to the
standards that govern analysis of the marks, there is no reason why any portion of
applicant’s mark might not contribute to the overall source-indicating function of

4 Applicant’s brief at 1; applicant’s reply brief at 1-5.
5 Examining attorney’s brief, Part I (B) at pp. 5-8 (emphasis supplied).
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the mark. We cannot agree with the examining attorney’s argument that
“applicant’s addition of design elements is not likely to make a significant
commercial impression to consumers regarding the source of the services,”6
(especially when we consider the rather unusual nature of the flaming fleur-de-lis
design). Moreover, we cannot agree with her argument relating to the disclaimer of
the word WINGS:
Further, that “WINGS” is disclaimed and appears as the
second word in this (more significant) phrase ensures that
“BONFIRE” alone will be the source-indicating,
memorable portion of the mark for consumers, who are
generally more inclined to focus on the first word, prefix,
or syllable in any mark.7
Although we agree that the examining attorney has focused too closely on the
word BONFIRE in the mark and accorded too little weight to the other elements
and the overall impression of the mark as a whole, when we consider applicant’s
mark in its entirety, we ultimately find it similar to the cited registered mark.
In the context of the overall design of applicant’s mark, the words BONFIRE
WINGS are the dominant feature. These two words appear in the center of the
mark in lettering that is four to five times as large as any other lettering in the
mark, and they are unified by the similar style and color of their lettering, which is
a cursive style that resembles handwriting. The other wording of the mark,
GENUINE CREOLE, UNIQUELY CAJUN! is positioned at the bottom of the mark,

6 Examining attorney’s brief at 6.
7 Id. at 7 (emphasis supplied).
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in much smaller lettering, and it has the character of a slogan that is, in terms of
importance, subsidiary to the words BONFIRE WINGS.
As the examining attorney correctly points out, in the case of marks
consisting of words and a design, the words are normally given greater weight
because they would be used by consumers to request the products or services. In re
Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito
Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also Sweats Fashions Inc.
v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant
Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
1983). In the case before us, customers are likely to identify applicant’s services by
the words BONFIRE WINGS rather than by the lengthy slogan GENUINE
CREOLE, UNIQUELY CAJUN! or by reference to the fleur-de-lis designs. Indeed,
the third-party website has referred to applicant’s services by use of the
two words BONFIRE WINGS without the slogan and without use of the design
element of applicant’s mark.8 When applicant’s services are to be identified in text,
the two words BONFIRE WINGS are more likely to be used than the slogan and the
design. See In re Viterra, 101 USPQ2d at 1911; In re Dakin’s Miniatures, Inc., 59
USPQ2d at 1596; CBS Inc. v. Morrow, 708 F.2d 1579, 1582, 218 USPQ 198, 200
(Fed. Cir. 1983). This is, in fact, the way the services are identified in the text of
applicant’s website:
On August 1st, 2001 Bonfire Wings opened to
overwhelming local support. Bonfire Wings is a

8 , Office Action of April 26 2013.
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neighborhood based fast-casual, counter service
restaurant. Bonfire Wings specializes in eleven unique
flavors of hot wings and authentic Creole/ Cajun
specialties.9
In the context of applicant’s restaurant services, the word WINGS is
descriptive of a feature of the service, as the evidence shows that chicken wings are
a specialty of the restaurant.10 It is well-settled that 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), quoting, In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1983)
(“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”).
Applicant argues that because of the design elements of his mark and its five
additional words, the mark has “no visual similarity” to the cited one-word mark.
However, the standard character form of the cited registration does not limit the
manner in which the registrant may display its mark in graphic form. See Squirtco
v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI
Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Pollio Dairy Products
Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); In re Viterra, 101 USPQ2d at 1909-10.
The registered mark therefore might, for example, be displayed in a cursive style of

9 , Office Action of April 26 2013.
10 Id.; see also applicant’s request for reconsideration, Exhibit D.
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lettering. In that case there would likely be substantial visual similarity between
applicant’s mark and the registered mark.
We acknowledge that there are phonetic differences between the registered
mark and the pronunciation of all of the wording of applicant’s mark. However, it is
equally clear that there is substantial phonetic similarity between the registered
mark and the dominant portion (BONFIRE WINGS) of applicant’s mark.
With respect to the meanings of the marks, applicant contends that the
registered mark BONFIRE, standing alone, may cause a consumer to “envision the
types of foods that are typically cooked over an open flame or the types of foods
typically encountered at a beach or camp setting where bonfires are popular. …
However, chicken wings is not typically the type of food that is encountered at a
typical camp or beach bonfire or at a cookout over an open flame.”11 If applicant is
arguing that the combination of the words BONFIRE and WINGS creates an
incongruity (not present in the registered mark) arising from the inappropriateness
of using a bonfire to cook chicken wings, we are not persuaded. There is no evidence
of record to show that chicken wings would not be cooked over an open flame or
encountered at a cookout or other setting involving a bonfire. Moreover, the
suggestion of cooking over a bonfire is not the only significance that might arise
from the word BONFIRE when used in connection with restaurant services. There
is no reason why customers would not perceive, in both marks, the literal meaning
of BONFIRE (which, as the examining attorney argues, carries no suggestion of

11 Applicant’s brief at 4.
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cooking).12 Nor is there any reason why the suggestive meanings of BONFIRE
might not be the same with respect to both marks, regardless of the types of food
that might be served at the respective restaurants.
Alternatively, applicant proposes that in its mark the word BONFIRE
suggests the spiciness of the food served, arguing “’Hot Wings’ is a term of art… and
[applicant’s] mark may be seen as a play on the meaning of that term.”13 This
possible interpretation of applicant’s mark does not distinguish it from the cited
mark. The restaurant services covered by the registration are not limited to any
particular type of food; accordingly, the registered mark might be used in connection
with a restaurant featuring spicy foods, and customers might perceive the
registered mark as a reference to the “hotness” of the food. Moreover, if registrant
were to sell hot chicken wings, BONFIRE would have the same meaning as what
applicant proposes.
Applicant also argues that the additional words WINGS, GENUINE
CREOLE, and UNIQUELY CAJUN combine to give a different meaning to the word
BONFIRE. We can appreciate that these words readily convey to the customer
information regarding the nature of the food that will be offered in applicant’s
restaurant. However, we must consider the possibility that registrant’s mark might

12 See WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993) p. 251 (“A great open-air
fire kindled to mark a religious anniversary… or to highlight some public event (as a
political rally, a community outing, a victory celebration, the birthday of a famous person).”
The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
13 Applicant’s brief at 4.
Serial No. 85521900

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also be used for a Cajun or Creole restaurant, or a restaurant that features chicken
wings. Accordingly, this descriptive wording does not effectively distinguish
applicant’s mark from the registered mark.
Overall, we find that applicant’s mark and the cited registered mark create
substantially similar commercial impressions. Therefore, the du Pont factor of the
similarity or dissimilarity of the marks favors a finding of likelihood of confusion.
4. Similar marks in use in the marketplace.
Applicant contends that the source-indicating power of the cited registered
mark is weak as a result of widespread use of the designation BONFIRE as a
component of marks in the fields of food and restaurants. In support of this
argument, applicant has made of record14 copies of U.S. registrations of marks that
include the word BONFIRE, including:
AXEL’S BONFIRE
WOODFIRE COOKING for restaurant, carry-out and
bar services;

BONFIRE for salt;

SAMUEL ADAMS
BONFIRE RAUCHBIER for beer;

BONFIRE BREWING GATHER
‘ROUND (and design) for beer;

THE BONFIRE PEPPER COMPANY for pepper sauce, pepper,
pepper powder and pepper
spice.15

14 Request for reconsideration, Exhibit A.
15 Applicant has also submitted a registration of the mark TODD ENGLISH’S BONFIRE
for restaurant and bar services, but that registration belongs to the cited registrant and
cannot be fairly said to dilute the strength of the cited mark.
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In addition, applicant has submitted copies of registrations that include the foreign
equivalents of the word BONFIRE:
LA LUNA E I FALO for wine (two registrations);

LA FOGATA for salsa;

LA FOGATA for tequila and distilled spirits.

Applicant has also made of record printouts of internet web pages relating to
restaurants having the designation BONFIRE in their names;16 and a list of
Google® search results.17
Third-party registrations do not prove that a mark is weak unless they are
accompanied by evidence of actual use of the marks. Otherwise, there is no basis
for concluding that the registered marks are in use on a commercial scale -- or at all
-- or that the public has become familiar with them. See Smith Bros. Mfg. Co. v.
Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); Productos Lacteos
Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934
(TTAB 2011).
The only evidence to show actual use of any of the marks in the submitted
registrations is the appearance of “Axel’s Bonfire” several times in the list of Google
search results. This is scant evidence of actual use; the list of results is generated
by the search engine, not by the purported user of the mark, and the fragments of
text in search results often do not accurately represent what appears on the

16 Request for reconsideration, Exhibit C.
17 Id., Exhibit B.
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underlying web pages. Accordingly, the Board finds such evidence of very limited
probative value. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,
1833 (Fed. Cir. 2007); In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB
2011).
Turning to the evidence of web pages on which BONFIRE appears in
connection with restaurants and bars, as a general matter, internet evidence is
acceptable in an ex parte case when the full web address (URL) for the page and the
date on which the page was accessed and downloaded are provided. In this case, no
such information is provided by applicant. However, the examining attorney has
not objected to the evidence on this ground, so we will consider it. There is little
information to be gathered from the web pages, as only a single page is provided for
each restaurant or bar and most of the web pages lack any information regarding
the proprietor of the mark. One might conclude that web pages showing differently
styled presentations of the mark BONFIRE represent establishments controlled by
different owners, but such a conclusion requires a speculative leap. If we make that
leap, the evidence shows only five restaurant or bar establishments using the term
BONFIRE and one using the designation BONFYRE. There are also five references
in plain text, apparently from Yelp.com, to restaurants called BONFIRE, but no
evidence of record shows that they are not restaurants of registrant. We note
applicant’s declaration stating, “From information available on its website, Todd
English appears to operate two ‘Bonfire’ restaurants in the Northeastern United
Serial No. 85521900

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States.”18 However, applicant is not in a position to have knowledge regarding the
extent of registrant’s operations; and review of a website of registrant is not
sufficient investigation to make applicant’s statement reliable on this point.
Without more, we cannot fairly assume that registrant has only two restaurants
and that there is no connection between applicant and any or all of the purported
third-party web pages in the record. In an ex parte case, where the registrant has
no opportunity to rebut allegations of applicant, clearer evidence is required in
order to persuade the Board of the weakness of a registered mark. Moreover, even
if we do assume that registrant operates only two restaurants, five third-party
restaurants or bars are not sufficient to persuade us that the mark BONFIRE is
weakened by dilution.19 Accordingly, we find the du Pont factor of other marks in
the marketplace to be neutral.
5. Absence of actual confusion.
Applicant states, “I have been using the BONFIRE WINGS name/mark in
connection with offering quality restaurant services since 2005 and have used the
logo mark that is the subject of the [ ] application… since at least December 2006”;
and “Since I began offering restaurant services under the BONFIRE WINGS

18 Request for reconsideration, Exhibit D. (Applicant’s brief and request for reconsideration
refer to this declaration as “Exhibit E.” However, it is not so marked and apparently was
filed as the last page of Exhibit D.)
19 Similarly, even if we were to give probative weight to the list of Google search results,
there is no evidence to establish that the establishments listed as “Bonfire” or “Bonfire
restaurant” do not refer to registrant. The entire list yields, aside from applicant, only four
names that, because they are substantially different, probably do not refer to registrant:
Hotwings Bonfire Restaurant, Axel’s Bonfire Restaurant, Bonfires, and Bonfyre. In any
event, as we have discussed above, there is too little information in the Google list to
persuasively demonstrate that any of these names is in actual use.
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name/mark in 2005, I have received no evidence that any confusion has occurred
between my use of the BONFIRE WINGS name/mark and the use of the
name/mark BONFIRE by [registrant].”20 Applicant’s uncorroborated statement of
no known instances of confusion is entitled to little weight, especially in an ex parte
context in which we have no input from registrant. See In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). We have before us no
persuasive evidence relating to the extent of actual use of registrant’s mark. Nor do
we have evidence showing whether there have been meaningful opportunities for
instances of actual confusion to have occurred in the marketplace. See
Cunningham, 55 USPQ2d at 1847; and Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992). 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 deemed neutral.
6. Balancing the factors.
Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find that applicant’s mark, as
applied to applicant’s services, so closely resembles the cited registered mark for
legally identical services as to be likely to cause confusion, mistake or deception as
to the source of applicant’s services.
Decision: The refusal of registration is affirmed.

20 Id. ¶¶ 2, 5.