Pure Entertainment, LLCv.Butter Licensing, LLC

Trademark Trial and Appeal Board

Feb 25, 2010

No. 92049767 (T.T.A.B. Feb. 25, 2010)

MBA Mailed: February 25, 2010

Opposition No. 91183799
Cancellation No. 92049767

Pure Entertainment, LLC
v.
Butter Licensing, LLC
Before Bucher, Zervas and Bergsman, Administrative Trademark
Judges

By the Board:
These consolidated cases now come up for consideration
of: (1) opposer/petitioner Pure Entertainment LLC’s
(“opposer”) motion for summary judgment, filed April 29,
2009; (2) applicant/respondent Butter Licensing, LLC’s
(“applicant”) cross-motion for summary judgment, filed
October 16, 2009; (3) opposer’s motion, filed November 5,
2009, to strike applicant’s combined response to opposer’s
motion for summary judgment and cross-motion for exceeding
the page limit; and (4) applicant’s cross-motion, filed
November 24, 2009, for “leave to re-submit” a revised
response and cross-motion not exceeding the page limit.
Each motion is fully-briefed. Both parties seek summary
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91183799 and Cancellation No. 92049767
2
judgment on opposer’s claims of priority and likelihood of
confusion and fraud.
Background
Applicant owns a registration of the mark BUTTER
RESTAURANT1 and a pending application to register butter
lounge,2 both for restaurant, nightclub and bar services.
In its pleadings, opposer alleges prior use of BUTTER and
the mark shown below

(“BUTTER & Design”) for bar, restaurant and nightclub
services. Opposer further alleges that it previously owned
a registration of its BUTTER & Design mark,3 and that after
that registration was cancelled under Section 8, opposer

1 Registration No. 3380349, the subject of Cancellation No.
92049767, issued February 12, 2008 from an application filed
January 15, 2007, with the exclusive right to use the word
RESTAURANT disclaimed, based on a date of first use in commerce
of April 1, 2002 for “services, namely nightclub” and “services
namely restaurant and bar.”
2 Application Serial No. 77071279, the subject of Opposition
No. 91183799, filed December 26, 2006 with the exclusive right to
use the word LOUNGE disclaimed, based on an intent to use the
mark for “Nightclub Services” and “bar, lounge and restaurant
services.”
3 Registration No. 2395741, issued October 17, 2000 from an
application filed October 28, 1999, and based on a date of first
use in commerce of May 20, 1999, with the exclusive right to use
the word BUTTER disclaimed, for “Restaurant and bar services
featuring the provision of food and drink, both alcoholic and
non-alcoholic.”
Opposition No. 91183799 and Cancellation No. 92049767
3
filed, and currently owns, a pending application to register
the same mark.4 As grounds for opposition and cancellation,
opposer alleges that use of applicant’s marks is likely to
cause confusion with, and dilute, opposer’s marks, and that
applicant committed fraud because at the time it filed its
applications, applicant “knew or should have known” of
opposer’s prior use of its marks, but “failed to disclose”
this fact to the Office. In its answers, applicant denies
the salient allegations in opposer’s pleadings and asserts
several affirmative defenses, including that opposer
abandoned its BUTTER & Design mark and that applicant has
priority.
The Parties’ Motions
Opposer relies primarily on the Declarations of Carlton
Solle (“Solle Dec.”), its former owner and member, and
Oliver Paine (“Paine Dec.”), its current owner and member.
These witnesses testify that opposer has used BUTTER “as a
fictitious business and trade name,” and BUTTER & Design as
a mark, for restaurant and bar services “continuously and
without interruption” since May 20, 1999. Solle Dec. ¶¶ 6,
10-12; Paine Dec. ¶¶ 5-7, 11-12; Paine Dec. Ex. 1, 2, 10

4 Application Serial No. 77361106, filed December 28, 2007
based on a claimed date of first use in commerce of May 20, 1999
for “Entertainment services, namely, providing disc jockey
services and accompanying mixed musical, video, film and light
shows, nightclub services” and “Restaurant and bar services.”

Opposition No. 91183799 and Cancellation No. 92049767
4
(advertisements and promotional items); see also,
Declaration of Vlad Cood (“Cood Dec.”), one of opposer’s
current members and owners in support of opposer’s Response
to Applicant’s Cross-Motion Ex. 1 (exterior signage);
Supplemental Declaration of Oliver Paine (“Paine Supp.
Dec.”) in Support of opposer’s Response to Applicant’s
Cross-Motion Ex. 17 (promotional materials).5 Opposer
further claims that the parties’ marks are “virtually
identical” in overall commercial impression, are used for
identical services and travel in similar or identical
channels of trade.
With respect to its fraud claim, opposer introduced
evidence that in 2001, after becoming aware of applicant’s
intention to use BUTTER for a restaurant, it sent a cease
and desist letter to applicant informing it of opposer’s
alleged prior rights. Solle Dec. ¶¶ 13-18 and Ex. 2-7.
Based on this evidence, subsequent communications between
the parties, id., and opposer’s now-cancelled registration,
opposer argues that applicant had “actual knowledge of
Opposer’s senior use over a long period of time.” According
to opposer, applicant therefore committed fraud on the
Office when it submitted declarations in connection with its

5 While opposer’s evidence indicates that opposer at some
point adopted a modified mark comprising BUTTER and a design
resembling a melting stick of butter, it nevertheless reveals
continuous use of the original BUTTER & Design mark.

Opposition No. 91183799 and Cancellation No. 92049767
5
applications stating that to the best of its knowledge, “no
other person, firm, corporation or association has the right
to use the mark in commerce, either in the identical form
thereof or in such near resemblance thereto as to be likely,
when used on or in connection with the goods/services of
such other person, to cause confusion ….” Opposer further
argues that applicant had an “objective intent” to commit
fraud, and/or had a “reckless disregard for the truth.”
Applicant’s original response to opposer’s motion for
summary judgment and cross-motion, including the tables
submitted therewith, exceeds the page limit set forth in
Trademark Rule 2.127(a).6 This page limit “cannot be waived
by action, inaction or consent of the parties.” Saint-
Gobain Corp. v. Minnesota Mining and Manufacturing Co., 66
USPQ2d 1220, 1222 (TTAB 2003). Furthermore, although
applicant’s filing consists of a response to opposer’s
motion and a cross-motion, this is of no consequence because
both the response and cross-motion address the same issues
raised in opposer’s motion. Cooper Technologies Co. v.
Denier Electric Co., 89 USPQ2d 1478, 1479 (TTAB 2008).
Accordingly, opposer’s motion to strike the response and

6 Trademark Rule 2.127(a) states in relevant part: “Neither the
brief in support of a motion nor the brief in response to a
motion shall exceed twenty-five pages in length in its entirety,
including table of contents, index of cases, description of the
record, statement of the issues, recitation of the facts,
argument, and summary.”

Opposition No. 91183799 and Cancellation No. 92049767
6
cross-motion is hereby GRANTED, and applicant’s cross-motion
for leave to re-submit a compliant brief is hereby DENIED as
the proposed amended brief is untimely. We have given no
consideration to applicant’s response or cross-motion.
However, we will not treat opposer’s motion as conceded, and
we herein consider the evidence submitted in support of
applicant’s response and cross-motion.
Applicant relies in large part on the Declaration of
Scott Sartiano (“Sartiano Dec.”), one of its members, who
testifies that “[s]ince April 2002 [applicant] and its
affiliate and licensee Varrick Group LLC have operated an
internationally-known restaurant and lounge” in New York
under the mark BUTTER RESTAURANT. Sartiano Dec. ¶ 4. While
applicant’s claimed date of first use is subsequent to
opposer’s, applicant contends that opposer abandoned its
marks. Specifically, Craig Spierer, one of applicant’s
attorneys, testified that after opposer failed to file its
Section 8 Affidavit in connection with its now-cancelled
registration, he conducted an investigation “to determine
whether [opposer] continued to operate a bar in San
Francisco.” Declaration of Craig Spierer (“Spierer Dec.”) ¶
5. Mr. Spierer “placed several telephone calls” to opposer
which were not answered, and reviewed opposer’s website
“which showed no recent entries in the ‘Events’ and ‘News’
sections. The most recent photographs date in 2004 in the
Opposition No. 91183799 and Cancellation No. 92049767
7
‘Photos’ section of the website.” Id. ¶¶ 5-6. Another of
applicant’s attorneys, Kenneth Sussmane, claimed in an
unsworm “Affirmation” that on August 28, 2009 he inspected
opposer’s place of business, and BUTTER & Design “was not
used or displayed in the premises.”7 Affirmation of Kenneth
Sussmane ¶¶ 4, 7. Finally, Mr. Sartiano claimed that
opposer failed to follow up on its cease and desist letter
sent in 2001, and “[h]aving failed to receive any
correspondence from [opposer] since April 2002, [applicant]
had no knowledge whether [opposer] continued to be in
business.” Sartiano Dec. ¶¶ 20-21. Therefore, applicant
claims that it “was completely honest” in asserting in its
September 7, 2007 response to the April 19, 2007 Office
Action issued in application Serial No. 77083255 that it
“believes there is no likelihood of confusion with
[opposer’s BUTTER & Design mark] as the registration has
been cancelled under Section 8 as no statement of continued
use has been filed.” Spierer Dec. ¶ 10.
With respect to opposer’s likelihood of confusion
claim, applicant introduced evidence that its restaurant and
bar services are quite different from opposer’s. For

7 Opposer moves to strike Paragraphs 4-9 of the Sussmane
Affirmation and Paragraphs 4-10 of the Spierer Declaration
because these paragraphs contain “uncorroborated and conclusory
statements, legal conclusions, speculation, foundationless
matters, and opinion testimony ….” Opposer’s motion is DENIED.
We have considered only the factual claims in these paragraphs
about which the witnesses have personal knowledge.

Opposition No. 91183799 and Cancellation No. 92049767
8
example, while opposer bills itself as a “white trash
bistro” offering inexpensive “comfort” food served from a
faux “trailer,” such as Tater Tots and fried Twinkies,
applicant maintains an elegant, large restaurant, staffed by
professional waiters who serve food “French in style and
technique and all-American in ingredients,” which is
prepared by a “celebrated executive chef.” Compare Sussmane
Dec. Ex. Q (Transcript of Deposition of Oliver Paine (“Paine
Tr.”)) pp. 29-45 with Sartiano Dec. ¶¶ 5-8. Applicant’s
customers spend an average of $57 per person for dinner,
while opposer’s menu items generally cost under $5.
Applicant also introduced evidence that opposer’s mark
is suggestive. Specifically, Mr. Paine testified that “Our
Butter name was meant to be directly tied to our food
service in terms of its – what it represents … Comfort.
There’s a grease factor to it.” Paine Tr. p. 52. Finally,
Mr. Sartiano testifies that he is “not aware of any
confusion between Butter Restaurant and Butter San
Francisco.” Sartiano Dec. ¶ 21.
Decision
Summary judgment is appropriate where there are no
genuine issues of material fact in dispute, thus allowing
the case to be resolved as a matter of law. Fed. R. Civ. P.
56(c). Opposer, as the movant seeking summary judgment,
bears the initial burden of demonstrating the absence of any
Opposition No. 91183799 and Cancellation No. 92049767
9
genuine issue of material fact. See, Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v.
Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793,
1796 (Fed. Cir. 1987). A factual dispute is genuine if, on
the evidence of record, a reasonable fact finder could
resolve the matter in favor of the non-moving party. See,
Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme
Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542,
1544 (Fed. Cir. 1992).
The evidence on summary judgment must be viewed in a
light most favorable to the non-movant, in this case
applicant, and all justifiable inferences are to be drawn in
applicant’s favor. Lloyd’s Food Products, Inc. v. Eli’s,
Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993);
Opryland USA, 23 USPQ2d at 1472. The Board may not resolve
issues of material fact; it may only ascertain whether
issues of material fact exist. See, Lloyd’s Food Products,
25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1542.
Standing
There is no genuine issue of material fact regarding
opposer’s standing. Opposer’s evidence establishes “its
standing to bring this opposition as the prior user of”
BUTTER and BUTTER & Design for restaurant and bar services.
Green Spot (Thailand) Ltd. v. Vitasoy International Holdings
Opposition No. 91183799 and Cancellation No. 92049767
10
Ltd., 86 USPQ2d 1283, 1285 (TTAB 2008) (citations omitted).
Applicant did not introduce any contrary evidence.
Priority and Alleged Abandonment
There is no genuine issue of material fact regarding
priority. Opposer’s declaration testimony and the
accompanying exhibits establish that opposer’s first use of
BUTTER and BUTTER & Design was at least as early as May 20,
1999. Green Spot (Thailand), 86 USPQ2d at 1284 (relying on
declaration testimony of opposer’s chairman to establish
date of first use).8 Applicant concedes that its date of
first use was thereafter, in April 2002. Sartiano Dec. ¶ 4.
Opposer’s evidence also establishes continuous use of
its marks from May 20, 1999 to the present time. Solle Dec.
¶¶ 6, 10-12; Paine Dec. ¶¶ 5-7, 11-12 and Ex. 1, 2, 10; Cood
Dec. Ex. 1; Paine Supp. Dec. Ex. 17. Applicant has not
contradicted this evidence or established a genuine issue of
material fact with respect to it. In fact, applicant’s
purported “evidence” of abandonment constitutes mere
conjecture. That is, applicant’s investigation merely
revealed that opposer’s phone rang without being answered,
that its website was apparently not updated after 2004 and

8 “[A] trade name lacking any independent trademark or service
mark significance may bar registration of a trademark or service
mark that is confusingly similar to that trade name.” Martahus
v. Video Duplication Services, Inc., 3 F.3d 417, 27 USPQ2d 1846,
1850-51 (Fed. Cir. 1993).
Opposition No. 91183799 and Cancellation No. 92049767
11
that opposer did not display its mark(s) inside its premises
on a given day, not that opposer abandoned use of its marks.
Likelihood of Confusion
“We determine likelihood of confusion by focusing on …
whether the purchasing public would mistakenly assume that
the applicant’s goods originate from the same source as, or
are associated with,” opposer’s goods. In re Majestic
Distilling Co., 315 F.3d 1311, 1314-15, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In considering the question on a motion
for summary judgment, we analyze all probative facts in
evidence which are relevant to any of the 13 likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), as well
as whether there are genuine disputes as to any of these
factors which would be material to a decision on the merits.
In this case, the parties have introduced evidence
concerning, and we have therefore considered, the similarity
of the parties’ marks, services and channels of trade, and
the strength of opposer’s marks.9
Turning first to the similarity of the parties’
services and channels of trade, we must compare the services
identified in applicant’s application and registration to

9 While Mr. Paine testified during his discovery deposition
that certain unidentified people at unspecified times “mentioned
that they either tried to go to or found themselves at Butter New
York assuming that it was something connected with us,” this does
Opposition No. 91183799 and Cancellation No. 92049767
12
the services opposer offers under its marks. Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1004 (Fed. Cir. 2002).
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
sales of the goods are directed.

Octocom Systems, Inc. v. Houston Computers Services, Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Here,
applicant’s services are identified as restaurant, bar and
nightclub services, without any limitation of any kind.
Opposer’s services are legally identical, notwithstanding
that its nightclub, bar and restaurant may be different than
applicant’s. Accordingly, not only is there no genuine
issue of material fact regarding the similarity of the
parties’ services (we must presume them to be identical),
but there is also no genuine issue of material fact
regarding the channels of trade for the parties’ services.
We must presume that those too are the same. Id. (“Because
[applicant] seeks an unrestricted registration, such
evidence as there is of a specific class of customers did

not establish actual confusion. We have therefore not considered
opposer’s apparent claim of actual confusion.
Opposition No. 91183799 and Cancellation No. 92049767
13
not relate to a material fact.” (emphasis in original)); see
also, Hewlett-Packard, 62 USPQ2d at 1005.
Turning next to the similarity or dissimilarity of the
parties’ marks, we note preliminarily that “in cases such as
this, where the applicant’s goods are identical (in part) to
the opposer’s goods, the degree of similarity between the
marks which is required to support a finding of likelihood
of confusion is less than it would be if the goods were not
identical.” Barbara’s Bakery, Inc. v. Landesman, 82 USPQ2d
1283, 1288 (TTAB 2007).
The dominant portion of the parties’ marks, i.e.
BUTTER, is similar or identical in appearance, and
completely identical in sound and meaning. The remaining
elements of applicant’s marks – LOUNGE and RESTAURANT – are
descriptive and disclaimed, and may therefore be given
little weight. Cunningham, 222 F.3d at 943, 55 USPQ2d at
1846. And the design portion of opposer’s mark appears to
be nothing more than a rectangular border of, and dominated
by, the word BUTTER. “In this case, we think that it is
appropriate to give greater weight to the word portio[n] of
the mark, because it is by the words that purchasers will
refer to the [services], and the words, rather than the
design feature or the stylized lettering, will therefore
have a greater impression on them.” Ceccato v. Manifattura
Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1197
Opposition No. 91183799 and Cancellation No. 92049767
14
(TTAB 1994); see also, Jansen Enterprises, Inc. v. Rind, 85
USPQ2d 1104, 1109 (TTAB 2007). Therefore, after careful
consideration of the appearance, sound, connotation and
commercial impression of the parties’ marks, Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005),
we find no genuine issue of material fact remaining for
trial on the issue of confusing similarity.
Finally, applicant’s evidence that opposer’s marks are
suggestive, in the form of Mr. Paine’s testimony, does not
create a genuine issue of material fact. Even assuming
that opposer’s marks are suggestive, they are still entitled
to protection against confusingly similar marks. Nautilus
Group, Inc. v. ICON Health and Fitness, Inc., 372 F.3d 1330,
71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (a suggestive mark “is
considered to be inherently distinctive, and thus
automatically qualifies for trademark protection under 15
U.S.C. § 1051”).10
In sum, we find, based on the record herein and the
applicable law, that there is no genuine issue of material
fact that opposer has priority and that the parties’ marks,
services and channels of trade are similar or identical.

10 Applicant’s evidence of a lack of actual confusion does not
raise a genuine issue of material fact precluding entry of
summary judgment. Apple Computer v. TVNET.net Inc., 90 USPQ2d
1393, 1397-98 (TTAB 2007).
Opposition No. 91183799 and Cancellation No. 92049767
15
Accordingly, opposer has established its priority and
likelihood of confusion as a matter of law.11
Conclusion
Opposer’s motion for summary judgment is hereby
GRANTED. Judgment is hereby entered against applicant, the
notice of opposition is sustained and petition for
cancellation granted, Registration No. 3380349 will be
cancelled in due course and registration of application
Serial No. 77071279 is refused. Therefore, there is no need
to consider opposer’s fraud claim.
***

11 Applicant’s evidence does not support its affirmative
defense of laches, because opposer filed each proceeding within
one year of applicant’s applications being published for
opposition and applicant’s registration being issued. See, e.g.,
Teledyne Technologies, Inc. v. Western Skyways, Inc., 78 USPQ2d
1203, 1210 & n. 10 (TTAB 2006).