R&B Syuhari Inc.

Trademark Trial and Appeal Board

Jun 24, 2019

87412809 (T.T.A.B. Jun. 24, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: June 24, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re R&B Syuhari Inc.
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Serial No. 87412809
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Songfong Tommy Wang of Wang IP Law Group PC
for R&B Syuhari Inc.
Yatsye I. Lee, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Kuhlke, Wellington and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
On April 15, 2017, R&B Syuhari Inc. (“Applicant”) filed an application seeking
registration on the Principal Register of the mark RED ROCK (standard characters)
for “Ready-to-eat meals comprised primarily of meats, cheese and also including rice;
Roast beef” in International Class 29.1

1 Serial No. 87412809, filed April 15, 2017, under Section 1(a) of the Trademark Act, 15 U.S.C.
§1051(a), claiming a date of first use and first use in commerce of March 1, 2013.
In this decision, page numbers in the application record are referred to as they appear in the
Office’s online Trademark Status and Document Retrieval (TSDR) database. Citations to the
briefs on appeal refer to the Board’s TTABVUE docket system.
Serial Nos. 87412809
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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
Applicant’s mark so resembles the registered marks shown below, all owned by the
same entity, as to be likely to cause confusion, mistake or to deceive.

for “restaurant and tavern services” in International Class 42;2
REDROCK CANYON GRILL (typed drawing)
for “Restaurant services” in International Class 43;3 and

for “Restaurant and bar services” in International Class 43.4
The Examining Attorney also refused registration under Trademark Act Sections
1 and 45, 15 U.S.C. §§1051, 1127 on the basis that the specimen “appears to be mere

2 Registration No. 2169420 issued June 30, 1998; second renewal. “Grill” is disclaimed.
3 Registration No. 2876740 issued August 24, 2004; renewed. “Grill” is disclaimed. Effective
November 2, 2003, the term “standard character” drawing replaced the term “typed” drawing.
TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (October 2018).
Effective January 1, 2002, restaurant services were reclassified from International Class 42
to International Class 43, under the Nice Agreement.
4 Registration No. 3404844 issued April 1, 2008; renewed. “Grill” is disclaimed and color is
not claimed as a feature of the mark.
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advertising” and fails to show the applied-for mark in use in commerce.5 After the
Trademark Examining Attorney made the refusal final, Applicant appealed to this
Board. We affirm the refusals to register.
I. Likelihood of confusion
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 likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). See also In re Majestic Distilling Co., 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 or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). These factors, and the other relevant DuPont factors, now
before us, are discussed below. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127
USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342,
94 USPQ2d 1257, 1259 (Fed. Cir. 2010) (“Not all of the [du ]Pont factors are relevant
to every case, and only factors of significance to the particular mark need be
considered.”)); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242
(TTAB 2015) (“While we have considered each factor for which we have evidence, we
focus our analysis on those factors we find to be relevant.”).

5 The Examining Attorney treated the specimen issue as a procedural requirement. July 11,
2017 Office Action at TSDR 1.
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For purposes of our likelihood of confusion analysis, we focus on the most relevant
cited registration, Registration No. 2169420, for the mark . If we find a
likelihood of confusion as to this cited registration, we need not find it as to the other
two cited registrations, REDROCK CANYON GRILL and REDROCK CANYON
GRILL and design. On the other hand, if we do not reach that conclusion, we would
not find it as to the other cited registrations either. See In re Max Capital Group Ltd.,
93 USPQ2d 1243, 1245 (TTAB 2010).
A. Similarity or Dissimilarity of the Marks
We must compare the marks in their entireties as to appearance, sound,
connotation and commercial impression to determine the similarity or dissimilarity
between them. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1690 (Fed. Cir. 2005) (quoting In re E. I. du
Pont de Nemours, 177 USPQ at 567). The test, under the first DuPont factor, is not
whether the marks 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 goods and services
offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph
Learning, LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting
Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB
2007)).
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While the marks must be considered in their entireties, including any disclaimed
matter and designs, it is nevertheless appropriate, for rational reasons, to regard
certain features of a mark as being more dominant or otherwise significant, and
therefore to give those features greater weight. Stone Lion Capital Partners, L.P. v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (quoting
In re National Data Corp.., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)).
In the case of marks which consist of words and a design, the words are normally
accorded greater weight because they would be used by purchasers to request the
services or goods. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (“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.’”) (quoting CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200
(Fed. Cir. 1983)); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 2001)
(“words are normally accorded greater weight because they would be used by
purchasers to request the goods”). Also, disclaimed or otherwise descriptive matter is
generally viewed as a less dominant or significant feature of a mark. See In re
National Data Corp., 224 USPQ at 751-52.
Registrant’s mark is and Applicant’s mark is RED ROCK. The dominant
and distinguishing portion of Registrant’s word and design mark is RED ROCK
because it is more prominently displayed, as well as being the first words of the literal
portion. See Palm Bay Imps. 73 USPQ2d at 1692 (“Veuve” is the most prominent part
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of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark).
Although Applicant argues that the word GRILL plays a significant role in the overall
impression of the cited mark, the disclaimed word GRILL is a highly descriptive, if
not generic, term for restaurant services, and is given less weight. In re National
Data, 224 USPQ at 751. As to the design elements of Registrant’s mark, we find that
they also deserve less weight in our analysis because customers will likely use the
word portion of the mark to request the services. The concentric circle feature serves
merely to frame the literal elements and is subordinate thereto, while two of the three
stars serve simply to separate RED ROCK from GRILL. Although one of the three
stars is relatively prominent in size, it would not be used by consumers to search or
call for Registrant’s services.
We acknowledge the obvious differences in the marks pointed out by Applicant in
terms of the overall appearance, and sound.6 Nonetheless, the dominant and
distinguishing portion of Registrant’s mark, RED ROCK, is identical in sound and
appearance to Applicant’s RED ROCK mark. Also, RED ROCK has a similar
connotation of a geographic location and similar commercial impression. See Hard
Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1409 (TTAB 1998) (“RED
ROCK, EAGLE ROCK and BLOWING ROCK are all likely to connote a geographic
location.”).

6 Applicant also argues that in commerce, Applicant’s mark contains several prominent
design elements to distinguish the marks. However, we compare the marks as depicted in
the application and the cited registration, not as actually used. In re Aquitaine Wine USA,
LLC, 126 USPQ2d 1181, 1186 (TTAB 2018). Here, Applicant’s mark is a standard character
mark consisting of words. Accordingly, Applicant’s arguments are unavailing. In re Jump
Designs, LLC 80 USPQ2d 1370, 1376 (TTAB 2006).
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When viewed in their entireties, the marks are more similar than dissimilar.
While admittedly there are differences in the marks, particularly the presence of a
disclaimed term, and the inclusion of a design in Registrant’s mark, the presence of
these elements does not offer a sufficient difference such that the marks as a whole
would create separate and different commercial impressions. See In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997) (THE DELTA
CAFE and design was similar to the mark DELTA, and neither the design element
nor the generic term “café” offered sufficient distinctiveness to create a different
commercial impression).
The first DuPont factor weighs in favor of finding a likelihood of confusion.
B. Similarity or Dissimilarity of the Goods and Services and Trade
Channels
As to the goods and services, we must determine whether their degree of
relatedness rises to such a level that consumers would mistakenly believe the
respective goods and services emanate from the same source. In making this analysis
of the second DuPont factor, we look to the identifications in the application and cited
registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d
at 1162; Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990).
Applicant is seeking to register its mark for “Ready-to-eat meals comprised
primarily of meats, cheese and also including rice; Roast beef” and the cited mark is
registered for “restaurant and tavern services.” Although Applicant argues that it
provides “traditional Japanese cuisine” while Registrant provides “traditional
Serial Nos. 87412809
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American cuisine,” we cannot restrict the scope of Applicant’s goods or Registrant’s
restaurant services based on extrinsic evidence of use or argument. Applicant’s ready-
to-eat meals are not restricted to any particular cuisine, and Registrant’s restaurant
services are unrestricted and encompass all types of restaurant services, including
restaurants that serve food of the type offered by Applicant.
Although Applicant seeks registration for food products and Registrant’s
restaurant offers food, “there is no per se rule which mandates a finding that
confusion is likely whenever foods and restaurant services are sold under similar
marks.” In re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209, 1210 (TTAB
1999). Rather, “[t]o establish likelihood of confusion a party must show something
more than that similar or even identical marks are used for food products and for
restaurant services.” Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212
USPQ 641, 642 (CCPA 1982). Thus, for purposes of our analysis regarding
relatedness of the involved restaurant services and ready-to-eat meals, we look for
evidence showing “something more” to a relationship other than the obvious food
aspect.
The Examining Attorney submitted website evidence that restaurants, many of
which are chain restaurants, such as California Pizza Kitchen, Marie Calenders, Bob
Evans, PF Changs, Pizzeria Uno, Margaritaville, Boston Market, and TGI Fridays,
as well as the single location restaurant Frontera Grill, also offer, under the same
mark, frozen entrées or other packaged foods (such as appetizers or side dishes) that
are available for purchase in retail stores. February 6, 2018 Office Action at TSDR
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38-53. This website evidence demonstrates that restaurant services and
packaged/frozen foods that feature foods offered by these restaurants (e.g., pizza,
appetizers, entrées) are marketed and sold together under the same marks and
names. See In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1469 (TTAB 1988)
(The element of “something more” is demonstrated, for example, where the food item
served in the restaurant is of the type which may typically be packaged for retail sale
by the restaurant under the same name, such as house specialty products.). See also
Hewlett-Packard Co. v. Packard Press Inc., 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)
(evidence that “a single company sells the goods and services of both parties, if
presented, is relevant to the relatedness analysis”).7
Applicant submits that the marketplace evidence is not sufficient because “the
relatedness of the goods and services is not evident, well known, or generally
recognized by consumers,” a “handful of hundreds of thousands of establishments in
the United States offer both restaurant services and ready-made meals for retail
sale,” and the Examining Attorney did not provide evidence “to demonstrate a high
frequency in which this [the selling of packaged meals by restaurants for retail sale]
occurs.” 4 TTABVUE 12-13. Applicant references its evidence which indicates that
there were 616,008 restaurants in 2012, with 339,770 (more than 56%) independent

7 The Examining Attorney included restaurant marketplace evidence that Japanese style
restaurants frequently serve bowl entrées and have carryout services. February 6, 2018
Office Action at TSDR 16-37. Applicant does not dispute this showing but asserts that “take-
out meals simply do not equate to ready-made meals offered for sale in a retail setting, rather
than a restaurant,” and contends that “the primary distinction between Registrants’
restaurant services and ready-to-eat meals sold in a retail setting is the fact that consumers
who purchase ready-to-eat meals in retail settings do so to avoid having to visit a restaurant
to order takeout.” 4 TTABVUE 19; 7 TTABVUE 7. We agree.
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restaurants and 276,238 (more than 43%) restaurant franchises or chains. January
10, 2018 Response to Office Action at TSDR 29-30. Applicant argues that the
Examining Attorney’s evidence does not establish relatedness because the
marketplace evidence shows only “well known establishments which package its most
popular menu items for retail sale” and that “these restaurants comprise only a
miniscule fraction of establishments offering restaurant services in the United
States.” 4 TTABVUE 12. However, we find that the Examining Attorney’s evidence
is sufficient to show “something more,” as contemplated in the Jacobs v. International
Multifoods decision. Chain or franchise restaurants are representative of a large
segment of the restaurant industry, and the marketplace evidence demonstrates that
the offering of packaged/frozen meals or featured menu items by these types of
restaurants is not uncommon. In addition, because the particular items listed in
Applicant’s identification are not limited to a particular cuisine, and meat entrées are
normally found in all types of restaurants, a connection with the Registrant’s
restaurant services would be made.
The second DuPont factor favors a finding of likelihood of confusion.
As to trade channels, absent such restrictions or limitations, we must assume that
the goods and services travel in all “the normal and usual channels of trade and
methods of distribution.” CBS Inc. v. Morrow, 218 USPQ at 199. See also Octocom
Sys., 16 USPQ2d at 1787. Applicant argues that there is no evidence that ready-made
meals and restaurants share the same “point of sale.”8 In particular, Applicant

8 Point of sale is defined as “the store, dealer, or other retail outlet where an item is sold.”
RANDOM HOUSE UNABRIDGED DICTIONARY (2019), (dictionary.com). Accessed June 17,
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submits that “[w]hen consumers patronize a grocery store for ready-made meals, they
are aware that the meals they are purchasing are not ‘take-out’ and typically not
associated with meals served in conjunction with restaurant services.” However,
there is no evidence of record on this point. The third DuPont factor regarding the
similarity or dissimilarity of established, likely to continue trade channels is neutral.
II. Conclusion on Likelihood of Confusion
We have considered all of the arguments and evidence of record, and all relevant
du Pont factors. When we balance the DuPont factors, we conclude that confusion is
likely to occur between Applicant’s mark and Registrant’s mark.
III. Specimen
During prosecution of the application, Applicant did not respond to the Examining
Attorney’s requirement for an acceptable specimen or attempt to overcome the
requirement. In its appeal brief, Applicant failed to make even a single reference to
this requirement or to argue against the refusal. Only in its reply brief did Applicant
address the specimen requirement, but only by way of a request that it be allowed to
submit a substitute specimen, in the event of reversal of the Section 2(d) refusal.9

2019. The Board may take judicial notice of dictionary definitions, including online
dictionaries, which exist in printed format. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378
(TTAB 2006); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 213 USPQ
594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
9 Once an application has been considered and decided on appeal, the application will not be
reopened except for entry of a disclaimer. See Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g).
Thus, had we reversed the substantive refusal of registration, we would not have remanded
the application for further examination in regard to the outstanding specimen requirement.
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Given Applicant’s complete silence regarding this requirement, at least up to the
filing of its reply brief, Applicant effectively has waived its right to object to the
requirement. Under 15 U.S.C. §1062(b) and Trademark Rule 2.65(a), 37 C.F.R. §
2.65(a), an applicant must respond completely to each issue raised in the Examining
Attorney’s Office action to avoid abandonment. A response is incomplete if it does not
address one or more of the requirements or refusals in the Office action. TMEP §
718.03. Applicant did not address the requirement for a substitute specimen, and its
response was incomplete. Therefore, the application should have been deemed
abandoned by the Examining Attorney after the first Office Action. In re Peter S.
Herrick, P.A., 91 USPQ2d 1505, 1511 (TTAB 2009).
However, for purposes of completeness, and because the Examining Attorney
treated the application as if Applicant had challenged the requirement, we will
consider whether the specimen submitted with the application and shown below was
sufficient. Id.
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The Examining Attorney contends that Applicant’s specimen is not acceptable
because the specimen, “appears to be a flyer that simply promotes a specialty dish,”
is “mere advertising material,” and “is not acceptable as a print display associated
with the goods.” 6 TTABVUE 17. As we already indicated, Applicant has not provided
any explanation regarding the nature of the specimen nor has it provided any other
evidence of its use, so we consider the specimen without any additional information
from Applicant.
“A trademark specimen is a label, tag, or container for the goods, or a display
associated with the goods.” Trademark Rule 2.56(b)(1), 37 C.F.R. § 2.56(b)(1). In the
case of displays, “[w]e must determine whether the specimen is mere advertising or
whether, in addition to advertising, the specimen is also a display associated with the
goods.” In re Osterberg, 83 USPQ2d 1220, 1222 (TTAB 2007). Whether a specimen is
a display associated with the goods is a question of fact. Land’s End Inc. v. Manbeck,
797 F. Supp. 311, 24 USPQ2d 1314, 1316 (E.D. Va. 1992); In re Hydron Technologies
Inc., 51 USPQ2d 1531, 1533 (TTAB 1999).
Upon examination of Applicant’s specimen, we find that the specimen is not a
display but is mere advertising such as a flyer or poster. The specimen lacks pricing
and ordering or purchasing information. Accordingly, we find that Applicant’s
specimen is mere advertising, not a display used in association with the goods, and
therefore not acceptable to show trademark use of Applicant’s RED ROCK mark.
The refusal based on Applicant’s failure to comply with the specimen requirement
is affirmed.
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Decision: The refusal to register application Serial No. 87412809 is affirmed on
the ground of likelihood of confusion, under Section 2(d), and on the requirement to
submit an acceptable specimen of use.