R&B Syuhari Inc.Download PDFTrademark Trial and Appeal BoardJun 24, 201987412810 (T.T.A.B. Jun. 24, 2019) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: June 24, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re R&B Syuhari Inc. _____ Serial No. 87412810 _____ 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. _____ 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 REDROCK (standard characters) for “Restaurant” services in International Class 43.1 1 Serial No. 87412810 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 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. 87412810 - 2 - 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 fails to show the 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. Serial Nos. 87412810 - 3 - applied-for mark in use in commerce and does not reference the services.5 After the Trademark Examining Attorney made the refusals 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. Serial Nos. 87412810 - 4 - 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 Services, Channels of Trade and Conditions of Sale We turn first to the DuPont factors regarding the similarity or dissimilarity of the respective services, channels of trade and classes of purchasers, and conditions of sale. Applicant’s “restaurant” services are encompassed by Registrant’s “restaurant and tavern services.” The services thus are identical in part. Applicant points out that its identification does not include “tavern services,” but we need not find relatedness as to every service listed in the identifications. It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item or any service within a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014). Serial Nos. 87412810 - 5 - Applicant also argues that the respective restaurant services are different because Applicant and Registrant restaurants “greatly differ in cuisines” and dining experiences. 7 TTABVUE 9. In particular, Applicant “asserts that its restaurant services [center solely on beef and] are limited to its specialty, that is, Japanese style beef bowls, which do not relate to restaurant and tavern services centered on southwestern and American style dining.” 4 TTABVUE 17. However, the issue of likelihood of confusion must be determined on the basis of the services as set forth in the application and the cited registration, not on extrinsic evidence of actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). In the present case, there are no limitations on the identified services in either the application or registration. Thus, Registrant’s broadly worded “restaurant services” is presumed to cover all types of restaurant services, including those of the type offered by Applicant. As to the channels of trade and classes of purchasers, we must presume that the channels of trade and classes of purchasers are the same because the services described in the application and in the cited registration are in part identical. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same). We find that the second and third DuPont factors weigh heavily in favor of finding a likelihood of confusion. Serial Nos. 87412810 - 6 - As to the conditions of sale, Applicant argues that confusion is “improbable and impracticable” because the conditions under which consumers would encounter the marks are different due to the differences in cuisine. These differences between Applicant’s goods [sic] and Registrant’s services are evident at the point of sale. Where the sale occurs—either at a standalone restaurant specializing in one type of entrée, or a chain of restaurants specializing in a large variety of traditional southwest American fare—further illustrates the fact that the conditions under which consumers would encounter Applicant’s mark and Registrant’s mark are entirely different. 4 TTABVUE 18. There is no evidence of record relating to the conditions under which sales are made and this is merely attorney argument. In any event, the recitations of services do not include any limitations as to the cuisine or price point, and we must presume that the meals offered at the restaurants include inexpensively priced items, of any type of cuisine, and that the decision to dine at either of Applicant’s or Registrant’s restaurants would be made with nothing more than ordinary care. The fourth DuPont factor also weighs in favor of a finding of likelihood of confusion. B. 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 & Co., 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 Serial Nos. 87412810 - 7 - overall commercial impression that confusion as to the source of the 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)). In comparing the marks, we are mindful that where, as here, the services are legally identical in part, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). While the marks must be considered in their entireties, 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, 110 USPQ2d at 1161 (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 verbally request the services, e.g., if seeking directory assistance for purposes of making a reservation or directions to a restaurant. 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, Serial Nos. 87412810 - 8 - 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. In re National Data Corp., 224 USPQ at 751-52. Registrant’s mark is and Applicant’s mark is REDROCK. 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 of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark). The disclaimed term 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. Serial Nos. 87412810 - 9 - 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 virtually identical in appearance to Applicant’s REDROCK mark, with the only visual difference being the space between RED and ROCK, which is not a significant difference. See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (SEAGUARD and SEA GUARD “are, in contemplation of law, identical”). Also, REDROCK or 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.”). 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). 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). Serial Nos. 87412810 - 10 - The first DuPont factor weighs in favor of finding a likelihood of confusion. II. Conclusion on Likelihood of confusion We have considered all of the arguments and evidence of record, and all relevant DuPont 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 argue against the refusal on this basis. 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.7 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 § 7 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. Serial Nos. 87412810 - 11 - 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 was sufficient. Id. The Examining Attorney contends that Applicant’s specimen is not acceptable because it does not reference the services. 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 as shown without any additional information from Applicant. “A service mark specimen must show the mark as used in the sale or advertising of the services.” Trademark Rule 2.56(b)(2), 37 C.F.R. § 2.56(b)(2). An acceptable specimen must show “some direct association between the offer of services and the mark sought to be registered therefor.” In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973). A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage. In re Adair, 45 USPQ2d 1211, 1214-15 (TTAB 1997); In re Duratech Industries Inc., 13 Serial Nos. 87412810 - 12 - USPQ2d 2052, 2054 (TTAB 1989). We consider the specimen to be an advertisement, and not a specimen showing the mark as used in the rendering of services. For specimens showing the mark in advertising the services, “[i]n order to create the required ‘direct association,’ the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source.” In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010). Applicant’s specimen contains no reference that would create an association between restaurant services and the mark REDROCK. The wording “RoastBeef Bowl & SlicedSteak Bowl,” “Japanese Style” and “Kobe/Tokyo” on the specimen would not be perceived as a reference to restaurant services. Accordingly, we find a lack of association between REDROCK and any restaurant service offered by Applicant in the specimen. The refusal based on Applicant’s failure to comply with the specimen requirement is affirmed. Decision: The refusal to register application Serial No. 87412810 is affirmed on the ground of likelihood of confusion, under Section 2(d), and on the requirement to submit an acceptable specimen of use. Copy with citationCopy as parenthetical citation