Ram International I, LLC

Trademark Trial and Appeal Board

Dec 14, 2005

No. 76541379 (T.T.A.B. Dec. 14, 2005)

Mailed: December 14, 2005
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ram International I, LLC
________

Serial No. 76541379
_______

Mark J. Nielsen and Cynthia L. Doll of Law Office of Mark J.
Nielsen for Ram International I, LLC.

Amy E. Hella, Trademark Examining Attorney, Law Office 110 (Chris
A. F. Pedersen, Managing Attorney).
_______

Before Hohein, Chapman and Grendel, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Ram International I, LLC has filed an application to
register on the Principal Register the mark shown below

for "restaurant services; [and] bar services" in International
Class 43.1

1 Ser. No. 76541379, filed on August 18, 2003, which is based on an
allegation of a date of first use anywhere and in commerce of December
31, 1971.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 76541379
2
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 applied to its services, so resembles the
mark "RAMS HEAD," which is registered on the Principal Register
in standard character form for "restaurant, tavern" services in
International Class 43,2 as to be likely to cause confusion, or
to cause mistake, or to deceive.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods or services at issue and the
similarity or dissimilarity of the respective marks in their
entireties.3 Here, inasmuch as applicant's restaurant and bar
services are, for purposes of analysis, legally identical to

2 Reg. No. 2,794,001, issued on December 16, 2003, which sets forth a
date of first use anywhere and in commerce of December 15, 1987.

3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [or services] and differences
in the marks." 192 USPQ at 29.

Ser. No. 76541379
3
registrant's restaurant and tavern services, and therefore would
be rendered to the same classes of ordinary consumers (e.g.,
members of the general public in the case of restaurant services
and those of legal drinking age in the case of bar or tavern
services),4 the primary focus of our inquiry is on the
similarities and dissimilarities in the respective marks when
considered in their entireties.
Turning, therefore, to consideration of the marks at
issue, we note as a preliminary matter that, "[w]hen marks would
appear on virtually identical goods or services, the degree of
similarity [of the marks] necessary to support a conclusion of
likely confusion declines." Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992), cert. denied, 506 U.S. 1034 (1994). See also ECI
Division of E-Systems, Inc. v. Environmental Communications Inc.,
207 USPQ 443, 449 (TTAB 1980). Moreover, as stated in TMEP
Section 1207.01(c)(i) (4th ed. 2005):
Under the doctrine of legal equivalents,
a pictorial representation and its literal
equivalent may be found to be confusingly
similar. This doctrine is based on a
recognition that a pictorial depiction and
equivalent wording are likely to impress the
same mental image on purchasers. See, e.g.,
In re Rolf Nilsson AB, 230 USPQ 141 (TTAB
1986) (design comprising the silhouette of
the head of a lion and the letter "L" for
shoes held likely to be confused with LION
for shoes); Puma-Sportschuhfabriken Rudolf
Dassler KG v. Garan, Inc., 224 USPQ 1064
(TTAB 1984) (designs of mountain lion, for
shirts and tops, held confusingly similar to

4 Applicant, we note, does not contend otherwise in either its initial
or reply briefs.

Ser. No. 76541379
4
PUMA, for items of clothing; the design of a
puma, for items of sporting goods and
clothing; and PUMA and design, for T-shirts);
In re Duofold Inc., 184 USPQ 638 (TTAB 1974)
(design of eagle lined for the color gold,
for various items of sports apparel, held
likely to be confused with GOLDEN EAGLE and
design of an eagle, for various items of
clothing).

Applicant nonetheless contends, in its initial brief,
that:
First, the express language of the
[quoted section of the] TMEP recognizes that
a design mark may be found to be confusingly
similar but such a finding is not mandatory.
The doctrine of legal equivalents should be
invoked only when circumstances show that
confusion is likely, not when a finding of
legal equivalence is supported only by a
semantic syllogism. Here, both Applicant and
the owner of the cited mark own registrations
for RAM-formative marks for restaurant and
bar services. Under such circumstances, a
finding of likelihood of confusion should
have a particularly substantial basis.

Second, the decisions cited in the TMEP
and relied on by the Examining Attorney ...
do not involve situations where the applicant
also owned registrations featuring the name
of the animal shown in the design mark. ....

Specifically, applicant notes that it is the owner of subsisting
registrations on the Principal Register for both the mark "RAM
RESTAURANT & BREWERY" and design, as depicted below,5

5 Reg. No. 2,906,626, issued on November 20, 2004, which sets forth a
date of first use anywhere and in commerce of September 30, 2000. The
terms "RESTAURANT & BREWERY" are disclaimed. The mark, which is
described as consisting of the "of the words RAM RESTAURANT & BREWERY
in stylized lettering," includes a claim to the color gold in the word
"RAM" as a feature of the mark.

Ser. No. 76541379
5
and the mark "RAM RESTAURANTS BIG HORN BREWERIES" and design, as
illustrated below,6

which pertain, in each instance, to "restaurants; bar services."
Applicant also points out that the owner of the cited mark owns a
registration for the mark "RAMS HEAD WHERE GREAT MINDS MEET" and
design, as reproduced below,7

for "restaurant, tavern" services, "which includes a pictorial
representation of two rams showing their horns, head, chest and
front legs."
Referring, in addition, to copies of various third-
party registrations which it asserts "were submitted for the sole
purpose of demonstrating that graphic representations of male
bighorn sheep prominently feature a ram's distinctive cured
horns," applicant stresses that:

6 Reg. No. 2,802,831, issued on January 6, 2004, which sets forth a
date of first use anywhere and in commerce of April 30, 2001. The
words "RESTAURANTS" and "BREWERIES" are disclaimed.

7 Reg. No. 2,918,363, issued on January 18, 2005, which sets forth a
date of first use anywhere and in commerce of December 15, 1987. The
description of the mark states that the lining is a feature of the
mark and does not indicate color, while the stippling is for shading
purposes only and does not indicate color.

Ser. No. 76541379
6
The distinctive feature of a ram, the
male bighorn sheep, is a curved horn on
either side of its head. There are no other
distinctive aspects of this animal's
coloring, shape or size. A ram's head is
not, per se, its distinctive feature; only
the curved horns are the distinctive feature
of a ram. Accordingly, a ram's head is
often, but not always, included in graphic
depictions of rams, but the head is
incidental to the curved horns. This is
confirmed by the fact that while graphic
depictions of a ram may show only the curved
horns without the head, a ram's head is never
shown without the horns. Similarly, graphic
depictions of rams always include the curved
horns but never focus on the head, per se,
because it is not an identifying feature of
male bighorn sheep; graphic depictions of
rams always show the horns and may not
include the head at all, or may include only
the head, or the head and neck, or the head,
neck and front legs, or the entire body.

Based upon all of the foregoing, applicant maintains
that:
The doctrine of legal equivalents, which
is not mandatory in any circumstances, must
be applied much more deferentially, if at
all, when the owner of the design mark in
question also owns registrations featuring
the legal equivalent of the subject matter of
the design. If the Patent and Trademark
Office has seen fit to issue registrations to
different entities for marks featuring the
same words for the same or closely related
services, then the doctrine of legal
equivalents should either not apply at all or
should be applied very narrowly to one
registrant's design mark only when unusual
circumstances warrant application of the
doctrine.

Applicant, in particular, argues that in this instance,
"the Examining Attorney has not correctly analyzed the facts
pertinent to this application and that the refusal to register
should be reversed. Here, applicant insists, the Examining
Ser. No. 76541379
7
Attorney is in error in asserting that the "plain meaning" of the
cited mark "is that it refers to the head of a ram," arguing that
such mark has no definite meaning:
Applicant recognizes that we live in an age
in which punctuation is often informal if not
incorrect, but Applicant believes the
Examining Attorney has reached too far in
saying that the cited mark has a plain
meaning at all and in saying that the plain
meaning of RAMS HEAD is the same as the plain
meaning of "a ram's head" and "a ram head."

Applicant contends that the cited mark
is a syntactic anomaly, being the conjunction
of a plural noun and a singular noun with no
obvious or certain meaning. For example, ...
"Rams Head" could refer to a geographic place
such as a headland known as "Rams Head." Any
other meaning assigned to "Rams Head" would
be contrary to conventional rules of grammar
and punctuation. As a result, the literal
meaning of "Rams Head" is uncertain, and this
expression leaves it up to the viewer to
settle upon a specific meaning.

Applicant further insists, in consequence thereof,
that:
In interpreting the meaning of RAMS
HEAD, it is particularly useful to refer to
the design mark belonging to the owner of the
cited mark, namely Registration No. 2,918,363
for RAMS HEAD WHERE GREAT MINDS MEET. The
graphics in this mark show that the owner of
the cited mark does not think the plain
meaning of RAMS HEAD is the head of a ram.
The design mark shows two drawings of male
bighorn sheep (prominently featuring curved
horns, of course, that are disproportionately
large) showing their front legs, shoulders,
heads and horns. If the plain meaning of
RAMS HEAD is the head of a ram, one might
expect the owner of the mark to recognize the
plain meaning of its own mark and use
graphics that show only or primarily the head
of one ram. But that is not the case. The
design mark suggests that RAMS is indeed a
plural noun and that whatever the RAMS HEAD
Ser. No. 76541379
8
mark as a whole means, it does not mean the
head of one ram.

Applicant acknowledges that one of
several possible meanings that might be
ascribed to RAMS HEAD is "the head of a ram,"
but this is not the only or the most obvious
meaning of RAMS HEAD. This point is
important here because if the literal meaning
of RAMS HEAD is not clear or certain, this
should have a significant impact on the
application of the doctrine of legal
equivalents. How can Applicant's design be
confusingly similar to the literal equivalent
of RAMS HEAD when RAMS HEAD does not have a
clear, literal equivalent and several
different meanings might be ascribed to this
mark?

In the alternative, however, applicant contends that
"[e]ven if ... the cited mark had a literal meaning and that
literal meaning was 'the head of a ram,' the doctrine of legal
equivalents should not be applied here" because applicant's mark
is, assertedly, "not a pictorial representation of the head of a
ram" but rather would be regarded as simply signifying a
depiction of a ram. Specifically, applicant argues that:
As noted above, curved horns are the
sole distinguishing characteristic of male
bighorn sheep. Depictions of rams always
feature the curved horns because those are
the features that signal to consumers that
the animal being depicted is a male bighorn
sheep or ram. Whether the head is shown at
all, or whether the head, neck and chest are
shown, or (as in the drawing [of the other
mark] registered by the owner of the cited
mark) the head, neck, chest and front legs
are shown is irrelevant to the meaning of the
drawing. The curved horns are the single
essential element in a depiction of a ram.
The other elements are a matter of
indifference for the meaning of the drawing;
the other elements are a matter of aesthetic
sensibility, which will vary with the style
and purpose of each illustration. The
[applicant's] subject mark happens to be a
Ser. No. 76541379
9
simple, stylized line drawing of the curved
horn, head and neck of a ram, but it is the
curved horn that identifies the subject of
the drawing as a ram. For over 30 years, the
subject mark has been viewed by consumers as
a ram, which is the graphic equivalent of the
dominant element of applicant's [two]
registrations. The meaning of the subject
mark is simply "ram," not "the horn of a
ram," or "the neck of a ram," or "the head of
a ram." The subject mark is not likely to be
viewed as "the head of a ram" and is unlikely
to ever be confused with the RAMS HEAD mark.

Moreover, as to the cited "RAMS HEAD" mark, applicant
again asserts its contention that such mark "does not have a
clear, literal meaning," arguing that "[f]ew consumers would view
the subject mark to mean "the head of a ram," as the Examining
Attorney maintains, because such a meaning "is one of several
possible meanings that might be ascribed to this syntactic
anomaly." Applicant reiterates its contention that, [j]udging
from Registration No. 2,918,363, ... the owner of the cited mark
does not agree with the Examining Attorney that the [cited] mark
means the head of one ram." Rather, as previously noted,
applicant urges that "[t]he owner of the cited mark associates
its RAMS HEAD mark with a drawing of two rams featuring the
curved horns and the front half of the rams' bodies, not with a
depiction of a head of a ram." Applicant thus concludes that,
"[i]n the absence of a clear, literal meaning, there is no
certain comparison point between the cited mark and pictorial
representation of the [mark which is the subject of the]
application under consideration." Given such uncertainty,
applicant insists that "there can be no basis for concluding that
confusion is likely between RAMS HEAD and the subject mark."
Ser. No. 76541379
10
We agree, however, with the Examining Attorney that
confusion is likely. Among other things, we concur with the
Examining Attorney that, as stated in her brief, we "need not
decide if there should be an exception to the doctrine of literal
[or legal] equivalents based on the ownership of previous
registrations where the [marks which are the subjects of the]
previous registrations are the literal [or legal] equivalent of
the [applicant's] subject mark." Aside from the odd contention
that, basically, the doctrine of legal equivalents should be used
so as not to apply the doctrine of legal equivalents, we note
that in this case neither of applicant's prior registrations--
which each issued subsequently to the cited registration--are
for, in essence, the mark "RAM" per se.8 Rather, one of such
registrations is for the stylized mark "RAM RESTAURANT & BREWERY"
and design, which does not merely include the generic terminology
"RESTAURANT & BREWERY" but also prominently displays the word
"RAM" in the color gold as a claimed feature of the mark, while
the other registration is for the mark "RAM RESTAURANTS BIGHORN
BREWERIES" and design, which similarly contains not just the
generic terms "RESTAURANTS" and "BREWERIES" but also displays the
word "BIGHORN" along with other integral design features.
Neither of such marks, therefore, is the legal equivalent of the
design mark which applicant presently seeks to register.

8 As set forth in, for example, Van Dyne-Crotty Inc. v. Wear-Guard
Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991), for a
mark to be the legal equivalent of another mark, "the consumer should
consider both as the same mark." Thus, as further explained therein,
legally equivalent marks must create the same, continuing commercial
impression and each mark should not materially differ from or alter
the character of the other mark.
Ser. No. 76541379
11
Moreover, a more fundamental reason for not adopting
the approach advocated by applicant is that, insofar as the
registrability of applicant's mark is concerned, it is settled
that the issue of likelihood of confusion must be determined
solely on the basis of such mark and registrant's mark as they
are respectively set forth in the application and cited
registration. This is because Section 2(d) of the Trademark Act
precludes registration of "a mark which so resembles a mark
registered in the Patent and Trademark Office ... as to be likely
... to cause confusion ...." Thus, the fact that applicant owns
two registrations for marks which include the word "RAM," as well
as the fact that the owner of the cited mark owns a registration
which includes the depiction of two rams, are irrelevant and
immaterial to the issue of likelihood of confusion.9 See, e.g.,
Sealy, Inc. v. Simmons Co., 265 F.2d 934, 121 USPQ 456, 459 (CCPA
1959); Burton-Dixie Corp. v. Restonic Corp., 234 F.2d 668, 110
USPQ 272, 273-74 (CCPA 1956); Hat Corp. of America v. John B.
Stetson Co., 223 F.2d 485, 106 USPQ 200, 203 (CCPA 1955); and ITT
Canteen Corp. v. Haven Homes Inc., 174 USPQ 539, 540 (TTAB 1972).
As to applicant's arguments that its mark would be
regarded by restaurant and bar patrons as a design or depiction
of the word "RAM" and that the registrant's cited mark has no

9 Even if, however, such registration were properly to be given any
weight, the mirror image depiction of two rams ready to butt heads,
which gives symmetry to the graphical style of the "RAMS HEAD" and
design mark and serves to accentuate the subordinate slogan "WHERE
GREAT MINDS MEET" therein, is not sufficient to persuade us that the
cited registrant and customers would necessarily regard the words
"RAMS HEAD" as connoting the words "RAMS' HEAD" rather than "RAM'S
HEAD."

Ser. No. 76541379
12
clear meaning due to the absence of an apostrophe in the word
"RAMS," we concur with the Examining Attorney that applicant's
mark is a picture or representation of a ram's head and that a
permissible or plain meaning for the registrant's cited "RAMS
HEAD" mark is "RAM'S HEAD." Clearly, in the case of applicant's
mark, because of the distinguishing curved horns and the lack of
any body or torso elements other than a portion of a neck, the
design of the male bighorn sheep depicted is literally that of a
ram's head. As such, it is but a pictorial representation of the
cited "RAMS HEAD" mark, notwithstanding the absence of an
apostrophe in the cited mark.10 Applicant, as the Examining
Attorney points out in her brief, has repeatedly acknowledged
that its design mark is that of a head of a ram, contending in
its response to the initial Office action that "the subject mark
is clearly a stylized depiction of the silhouette of a ram's
head" and that:
The drawing [of the mark] stops at the neck
and includes no other features of a ram and
no background or other graphic elements. In
short, the subject mark is clearly a stylized
depiction of the silhouette of a ram's head.
It is not a detailed, pictorial drawing meant
to depict a ram in a life-like way and would
never be viewed that way by consumers. ....

Nonetheless, while concededly, as applicant now argues
on appeal, some customers for its services could regard the

10 For the word "RAMS" in the cited mark to be principally regarded by
customers for restaurant and tavern services as "RAMS'" rather than
"RAM'S," the cited mark would have to be "RAMS HEADS" instead of "RAMS
HEAD." Stated otherwise, since the word "HEAD" in the cited mark is
singular instead of plural, the word "RAMS" therein would necessarily
be viewed by restaurant and tavern patrons as if it were the singular
possessive "RAM'S" rather than the plural possessive "RAMS'."

Ser. No. 76541379
13
readily recognizable head of a ram which constitutes applicant's
mark as simply the equivalent of the word "RAM," it is also
undeniably the case that many of those customers would
immediately perceive applicant's mark as that of a ram's head.
Such would especially be the case with respect to those who have
also heard of or otherwise are aware of or familiar with the
cited "RAMS HEAD" mark. The pictorial depiction of a ram's head
in applicant's mark and the words "RAMS HEAD" which comprise the
cited mark are thus likely to impress the same mental image on
customers for restaurant and bar or tavern services.
Moreover, even if it is arguably the case that visually
"the cited mark is a syntactic anomaly, being the conjunction of
a plural noun and a singular noun" as urged by applicant, there
is no uncertainty in its meaning or connotation when such mark is
pronounced. Here, as the Examining Attorney persuasively argues
in her brief, "the average purchaser will remember the cited mark
RAMS HEAD as 'ram's head' and will not stop to analyze or even
remember any grammatical error in the cited mark." In this case,
the mark "RAMS HEAD" could only mean or connote the term "RAM'S
HEAD," due to the singular form of the word "HEAD" in such mark.
Given, furthermore, that restaurant and tavern or bar services
are often advertised on the radio or promoted by word of mouth,
the absence of an apostrophe in the cited mark is immaterial
because the plain meaning of such mark when spoken is "ram's
head," which is literally identical to the mental image conveyed
by applicant's design mark.
Ser. No. 76541379
14
Finally, as to applicant's contention that the cited
mark may possibly have significance as a geographical term or
place, we concur with the Examining Attorney that the record
contains no evidence in support thereof. Specifically, as the
Examining Attorney accurately notes in her brief, applicant not
only failed to furnish any evidence of the possibility of any
such meaning for the cited "RAMS HEAD" mark, but the Examining
Attorney "attached evidence from the [cited] registrant's web
site that shows the locations of its taverns" and which further
shows that "[n]one are located in a geographical area known as
'Rams Head.'" In addition, as the Examining Attorney points out,
the record reveals that her "search of a geographical dictionary
found no entry for 'Rams Head' or 'Ram's Head," and that "copies
from an online version of the Columbia Gazetteer at
www.bartleby.com ... show no entry for a geographical location
known as RAMS HEAD or RAM'S HEAD."
Accordingly, we conclude that customers and prospective
patrons who are familiar or otherwise acquainted with the cited
registrant's "RAMS HEAD" mark for restaurant and tavern services
would be likely to believe, upon encountering applicant's legally
equivalent ram's head design mark for restaurant and bar
services, that such services emanate from, or are otherwise
sponsored by or affiliated with, the same source.
Decision: The refusal under Section 2(d) is affirmed.