Restaurant Advisory Services, Inc.v.Restaurant Accounting Services, Inc.

Trademark Trial and Appeal Board

Aug 1, 2012

No. 92051403 (T.T.A.B. Aug. 1, 2012)

With ref

Mailed: 8/1/2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Restaurant Advisory Services, Inc.
v.
Restaurant Accounting Services, Inc.
_____

Cancellation No. 92051403
_____

Robert C. Pfeilsticker, Jr. for Restaurant Advisory Services,
Inc.

Timothy J. Meagher of Hamilton Brook Smith & Reynolds for
Restaurant Accounting Services, Inc.
______

Before Quinn, Bucher and Cataldo,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Restaurant Accounting Services, Inc. (“respondent”) owns a
registration of the mark RAS (in standard characters) for
“accounting services” in International Class 35.1
Restaurant Advisory Services, Inc. (“petitioner”) filed a
petition to cancel the registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that

1 Registration No. 3634863, issued June 9, 2009. The registration sets forth
dates of first use of July 31, 2006.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Can. No. 92051403

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respondent’s mark, when used in connection with respondent’s
services, so resembles petitioner’s previously used and
registered mark RAS (in standard characters) for “consulting
services to the restaurant and hospitality industries”2 in
International Class 42 as to be likely to cause confusion.
Respondent, in its answer, denied the salient allegation of
likelihood of confusion.
The record consists of the pleadings; a copy of the
registration sought to be cancelled; trial testimony, with
related exhibits, taken by petitioner; a status and title copy
of petitioner’s pleaded registration, a copy of an email between
the parties’ attorneys, excerpts from printed publications, and
respondent’s responses to petitioner’s interrogatories, all
introduced by way of petitioner’s notices of reliance.3
Respondent neither took testimony nor offered any other
evidence. Only petitioner filed a brief on the case.
Ronald Gorodesky, petitioner’s president and sole
shareholder, testified that petitioner is engaged in consulting
services in the areas of financial and operations development to
the restaurant and hospitality industries. The services have
been continually marketed and sold under the mark RAS since
1992; over sixty percent of respondent’s services involve

2 Registration No. 1894471, issued May 16, 1995; renewed.
3 The email correspondence is not proper subject matter for a notice of
reliance. See Trademark Rule 2.122(e). Respondent did not object to this
introduction, however, and so we have considered the evidence.
Can. No. 92051403

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accounting and financial advice. (p. 15). Mr. Gorodesky has
authored articles in trade magazines directed to the restaurant
and hospitality industries; one of the articles is titled
“Restaurant Accounting: For Profit’s Sake, Inventory Your Food
Cost.” Petitioner’s services are marketed through trade
journals, as well as magazines, print advertising and the
Internet.
Petitioner has established its standing to cancel
respondent’s registration. In particular, petitioner has
properly made its pleaded registration of the mark RAS of record
and, further, has shown that it is not a mere intermeddler.
Petitioner’s use and registration of its mark RAS establish that
petitioner has standing. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185 (CCPA 1982).
Petitioner likewise has established priority of use.
Respondent did not take testimony or offer any other evidence.
In this situation, the earliest date upon which respondent can
rely is the filing date of the application which matured into
its registration. See Brewski Beer Co. v. Brewski Brothers
Inc., 47 USPQ2d 1281, 1284 (TTAB 1998). The filing date of
application Serial No. 77607451 that matured into Registration
Can. No. 92051403

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No. 3634863 is November 5, 2008. Petitioner proved prior and
continuous use of its mark RAS dating back to 1992, that is,
long prior to respondent’s earliest priority date. Accordingly,
petitioner has shown its priority of use in connection with
consulting services to the restaurant and hospitality
industries.
We now turn to the only issue that remains for decision,
namely likelihood of confusion. Our determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). Petitioner must establish that
there is a likelihood of confusion by a preponderance of the
evidence. In any likelihood of confusion analysis, however, two
key considerations are the similarities between the marks and
the similarities between the goods and/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
evidence in the proceeding now before us, are discussed below.
With respect to the first du Pont factor, we must consider
the marks in their entireties as to appearance, sound,
connotation and commercial impression to determine the
similarity or dissimilarity between them. Palm Bay Imports,
Can. No. 92051403

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Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
The marks RAS, both in standard characters, are identical
in every respect. This factor weighs heavily in petitioner’s
favor.
In comparing the services, we initially note that where
identical marks are involved, as is the case here, the degree of
similarity between the parties’ services that is required to
support a finding of likelihood of confusion declines. In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed.
Cir. 1993); Time Warner Entertainment Co. v. Jones, 65 USPQ2d
1650 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812 (TTAB
2001). It is only necessary that there be a viable relationship
between the two to support a finding of likelihood of confusion.
In re Concordia International Forwarding Corp., 222 USPQ 355,
356 (TTAB 1983). The issue here, of course, is not whether
purchasers would confuse the services, but rather whether there
is a likelihood of confusion as to the source of these services.
In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
We make our determination regarding the similarities
between the parties’ services, channels of trade and classes of
purchasers based on the services as they are identified in the
respective registrations. Octocom Systems Inc. v. Houston
Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
Can. No. 92051403

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(Fed. Cir. 1990). Petitioner’s “consulting services” are
described broadly enough to include providing advice in the
areas of accounting and other financial matters to the
restaurant and hospitality industries. Further, respondent’s
services are identified as “accounting services.” This
recitation encompasses accounting services for restaurants and,
indeed, the evidence establishes that respondent’s services are,
in fact, rendered to restaurants. Mr. Gorodesky testified that
the parties do the exact same things as part of their described
services, such as identifying costs and advising on cash flow.
Accordingly, the services are closely related, and this
factor weighs in petitioner’s favor.
The recitations of services do not include any limitations
as to trade channels and purchasers, and so we must presume that
they move in all channels of trade normal for these services,
and that they are available to all classes of purchasers for the
described services. See Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir.
1987); and In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).
Thus, the services would move through the identical trade
channels, such as through websites on the Internet, and, as
noted above, both parties render their services to restaurants.
These similarities weigh in petitioner’s favor.
Can. No. 92051403

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Based on the above, we find that there is a likelihood of
confusion between the marks.
There are other facts which buttress our conclusion in this
case. Respondent, upon discovery of petitioner’s mark, sent a
cease and desist letter to petitioner. (Gorodesky dep., p. 16-
17, ex. P-9). In the letter, respondent alleged that
petitioner’s mark is confusingly similar to respondent’s mark,
and that use of petitioner’s mark constitutes an infringement of
respondent’s registered and common law rights. In addition to
cessation of use, respondent also demanded that petitioner
withdraw any trademark applications and/or cancel any
registrations it owned for the mark RAS. Although certainly not
dispositive of the present case, we have considered respondent’s
prior statements as illuminative of shade and tone in the total
picture of likelihood of confusion, but nothing more than that.
See Interstate Brands Corp. v. Celestial Seasonings, Inc., 576
F.2d 926, 198 USPQ 151 (CCPA 1978); and Anthony’s Pizza & Pasta
International, Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d
1271, 1281 (TTAB 2009).
Finally, we note that respondent, subsequent to service of
the petition for cancellation on it, discontinued use of its
registered RAS mark, opting instead for a new logo that uses its
full company name. In an email to petitioner’s counsel on April
7, 2011 (just prior to trial), respondent’s counsel wrote the
Can. No. 92051403

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following: “My client has completed its phase over to its new
logo which uses its full company name....As a result, my client
will be taking no further action on the matter or on the
Cancellation proceeding. I have been instructed to take no
further action and I am not authorized to consent to any action
or filing.”
We conclude that purchasers familiar with petitioner’s
consulting services to the restaurant and hospitality industries
rendered under the mark RAS would be likely to mistakenly
believe, upon encountering respondent’s identical mark RAS for
accounting services, that the services originated from or are
associated with or sponsored by the same entity.
Decision: The petition for cancellation is granted, and
Registration No. 3634863 will be cancelled in due course.