Rovin, Inc.

Trademark Trial and Appeal Board

Sep 15, 2010

No. 76655570 (T.T.A.B. Sep. 15, 2010)

Mailed:
September 15, 2010
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rovin, Inc.
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Serial No. 76655570
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Charles S. Cotropia of Sidley Austin, LLP for Rovin, Inc.

Kevin M. Dinallo, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Seeherman, Bucher and Cataldo, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Rovin, Inc. seeks registration on the Principal Register
of the mark SWEETIE PIE'S RIBEYES (in standard character
format) for “restaurant services and catering of food and
drinks” in International Class 43.1
The Trademark Examining Attorney issued a final refusal
to register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney has taken the position that applicant’s mark, when
used in connection with the recited services, so resembles

1 Application Serial No. 76655570 was filed on February 21,
2006 based upon applicant’s allegation of a bona fide intention to
use the mark in commerce. No claim is made to the exclusive right
to use the word “Ribeyes” apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76655570
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the mark Sweetiepie (also in standard character format),
registered for “restaurant services,” also in International
Class 43,2 as to be likely to cause confusion, to cause
mistake or to deceive.
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board. Applicant and the
Trademark Examining Attorney filed briefs in this matter. We
affirm the refusal to register.
In urging registrability, applicant argues that the
appearance, sound, connotation, and commercial impression of
its mark are distinctly different from registrant’s mark, and
that the relevant purchasers will exercise careful
consideration in distinguishing the marks for the respective
services.
By contrast, in support of his refusal, the Trademark
Examining Attorney contends that inasmuch as the marks of
applicant and registrant are highly similar and the services
are the same, consumers are likely to confuse the source of
the services.
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
confusion is based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing on

2 Registration No. 3589004 issued on March 10, 2009.
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this issue. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of
confusion analysis, however, two key, although not exclusive,
considerations are the similarities between the marks and the
relationship between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
We turn first to the du Pont factor focusing on the
relatedness of the services. As to the differences in
applicant’s and registrant’s respective restaurant services,
applicant argues as follows:
With regard to the services of the parties,
the Applicant agrees with the Examining
Attorney that a portion of the services are
the same, namely Applicant’s “restaurant
services” and the services covered by the
cited registration for “restaurant
services.” However, Applicant’s application
is for two distinct services, namely
“restaurant services” and “catering of food
and drinks.” The Examining Attorney
improperly analyzes these services as one,
when in reality it is clear that these
services are clearly distinctive one from the
other….

Applicant’s reply brief at 2.
However, as we know, refusal of registration as to an
entire class of services may be made, because of likelihood
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of confusion, when even one of the services in the involved
class of services is found to be legally identical or
related. Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) [“[L]ikelihood
of confusion must be found if the public, being familiar with
[opposer’s] use of MONOPOLY for board games and seeing the
mark on any item that comes within the description of goods
set forth by appellant in its application … ” (Emphasis in
original)]. Here, because the respective restaurant services
are deemed to be legally identical, we need not even enter
the fray over whether catering services are related to
restaurant services.
We turn next to the du Pont factor focusing on the
similarities or dissimilarities in the appearance, sound,
connotation and commercial impression of the respective
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 begin this discussion by noting that where the
services are identical, “the degree of similarity [between
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, 1701 (Fed. Cir.
1992), cert. denied 506 U.S. 1034 (1992) [CENTURY 21 for inter
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alia, insurance brokerage service confusingly similar to
CENTURY LIFE OF AMERICA for insurance underwriting services];
and Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741, 1752
(TTAB 2006) [finding LESSBUCKS COFFEE similar in appearance,
sound, and overall commercial impression to STARBUCKS and
STARBUCKS COFFEE].
Nonetheless, applicant argues that the Trademark
Examining Attorney is in error in holding these marks to be
similar. Applicant claims that, in applicant’s mark,
“Sweetie pie” is two words – but in registrant’s mark, only
one; in applicant’s mark, “Sweetie Pie’s” is possessive – but
in registrant’s mark, not; and applicant’s mark includes the
additional word, “Ribeyes.” Applicant argues that, by the
mere addition of “Ribeyes,” the marks are changed visually
and phonetically and, when this word is combined with the
term “Sweetie pie’s” in applicant’s mark, it creates a clear
connotation of a steak restaurant as well as the impression
of a distinctive “sing song” sound, all clearly absent from
the cited mark.
Applicant’s entire argument appears to ignore the fact
that under actual market conditions, consumers generally do
not have the luxury of making side-by-side comparisons of
service marks. The Trademark Examining Attorney is correct
in noting that the test of likelihood of confusion is not
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whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks create
the same overall impression. See Recot, Inc. v. M.C. Becton,
214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir.
2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc.,
209 USPQ 179, 189 (TTAB 1980). The focus is on the
recollection of the average purchaser who normally retains a
general rather than specific impression of trademarks and
service marks. Chemetron Corp. v. Morris Coupling & Clamp
Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Thus,
although applicant’s mark uses the possessive form of “Sweetie
Pie’s” while the cited mark does not, and although “Sweetie
Pie’s” appears as two words in applicant’s mark and as one
(“Sweetiepie”) in the cited mark – these are not details that
consumers are likely to note or long remember.
As pointed out by applicant, its mark also contains the
word “Ribeyes,” while the registrant’s does not. While we
agree with applicant that the marks at issue must be
considered in their entireties, we also agree with the
Trademark Examining Attorney that one feature of a mark may
be more significant than another, and it is not improper to
give more weight to this dominant feature in determining the
impression created by a mark. See In re National Data Corp.,
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753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Applicant
itself makes the argument for why the seemingly arbitrary
term “Sweetie Pie’s is the dominant portion of its mark: “In
fact, the term “sweetiepie” is often used as a term of
endearment and is not specifically linked to any type of good
or service.” Applicant’s appeal brief at 4. In the same
vein, as to applicant’s mark, the word “Ribeyes” is clearly
generic for “steaks” and hence has substantially no source
indicating capabilities. Furthermore, we observe that the
general impression of “endearment” applicant attributes to
registrant’s “Sweetiepie” mark will not be totally lost with
the purported “sing song” cadence of applicant’s “Sweetie
Pie’s Ribeyes.” In sum, although we agree with applicant
that the word “Ribeyes” in its mark adds both a word and an
additional two syllables to the cited mark, it alters neither
the connotation nor commercial impression of applicant’s mark
when compared in its entirety to registrant’s mark. In re
Chatam International Inc., 380 F.3d 1340, 1343, 71 USPQ2d
1944, 1946 (Fed. Cir. 2004) ["Viewed in their entireties with
non-dominant features appropriately discounted, the marks
GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila
become nearly identical”]; Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.
2002) [HEWLETT PACKARD confusingly similar to PACKARD
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TECHNOLOGIES]; and In re El Torito Restaurants Inc., 9 USPQ2d
2002 (TTAB 1988) [MACHO COMBOS for food items and MACHO for
sandwich is likely to cause confusion].
As to applicant’s contention about the sophistication of
catering customers, we need not reach that argument under the
facts of this case. The standard of care for the relevant
consumers for restaurant services is that of the ordinary
restaurant diner.
Decision: Weighing all the relevant du Pont
factors, we find a likelihood of confusion. The refusal
to register under Section 2(d) of the Trademark Act is
hereby affirmed.