SBE Licensing, LLC

Trademark Trial and Appeal Board

Sep 18, 2013

No. 85449899re (T.T.A.B. Sep. 18, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 18, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re SBE Licensing, LLC
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Serial No. 85449899
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Lee J. Eulgen of Neal Gerber & Eisenberg LLP for SBE Licensing, LLC.

Emily K. Carlsen, Trademark Examining Attorney, Law Office 103 (Michael
Hamilton, Managing Attorney).
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Before Zervas, Adlin, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
On September 5, 2013, applicant filed a Motion for Reconsideration of the
Board’s order of August 5, 2013, wherein it affirmed the refusal to register.
In its motion, applicant reasserts the arguments in its appeal brief regarding
the relationship between the services and the similarity of the marks.
The general premise underlying a request for reconsideration is that, “based
on the evidence of record and the prevailing authorities, the Board erred in reaching
the decision it issued. The request may not be … devoted simply to a reargument of
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the points presented in the requesting party's brief on the case.” TBMP Section
543.
Here, applicant’s motion consists of mere reargument. For example, in its
appeal brief, Applicant asserts:
The Examiner argues that these services are similar
because some businesses in America provide both
restaurant and nightclub services under the same name.
However, businesses providing restaurant services
occasionally provide myriad other services, from theater
to video gaming and amusement services to off-track
betting. It can hardly be argued that two services are
“closely related” simply because a minority of third-party
businesses may provide both of those services.
Indeed, “the determination of likelihood of confusion
involves, to the extent possible, an evaluation of what
happens in a real world setting.” Nat’l Cable Television
Ass’n., Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572,
1579, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991) (emphasis
added). In refusing to register a mark, the Examiner must
show that the services would be “likely to be seen by the
same persons under circumstances which would give
rise…to a mistaken belief that they originate from or are
in some way associated with the same producer” or that
the two producers are associated. In re Iolo Techs., LLC,
95 USPQ2d 1498, 1499 (TTAB 2010)
Appeal Brief, p. 3-4 (internal citations omitted).
In the request for reconsideration, applicant argues:
The linchpin of both the final refusal and the Board’s final
order affirming that refusal is an insistence that
confusion is likely because the respective mark owners’
services are “closely related,” which the Board determined
based on “the examining attorney’s submission of web
pages reflecting the offering of restaurant and nightclub
services in the same establishments.” However, the record
establishes that that simply is not the case here. The
owner of the Cited Mark (“Registrant”) has registered and
uses that mark only with restaurant services. On the
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other hand, Applicant seeks to register its Mark with
nightclub services in Class 41. Live music is at the heart
of Applicant’s nightclub services, and is the reason that
nightclub services are in Class 41 (covering a variety of
entertainment services) as opposed to Class 43 (covering,
inter alia, restaurant services). The record confirms that
live music is a central component of Applicant’s nightclub
services. However, web site printouts also show that live
music is not offered at the GREYSTONE GRILL
restaurant. (See Id. at Ex 3.) This fundamentally
differentiates the respective owners’ uses. Hence, the fact
that some third parties may offer both nightclub services
and restaurant services under the same mark is of no
moment here because in this “real world” instance, the
Registrant provides only restaurant services in Class 43
under the Cited Mark, while Applicant provides nightclub
services in Class 41 under its Mark. Nat’l Cable Television
Ass’n., Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572,
1579, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991) (“The
determination of likelihood of confusion involves, to the
extent possible, an evaluation of what happens in a real
world setting”) (emphasis added). Therefore, the simple
fact is that the respective mark owners’ services are not
closely related but are distinct.
Request for Reconsideration p. 1-2.
In addition to merely rearguing its appeal brief, applicant quotes a portion of
National Cable Television Ass’n out of context. The quoted passage refers not, as
applicant implies, to whether particular services are related, but instead to whether
consumers have become conditioned by common third party use of a term to expect
that goods or services offered under the term come from different sources. The
Federal Circuit’s clear holding with respect to services, as explained in our final
decision, is that our evaluation must be based on the services as identified in the
cited registration and involved application. Final Decision at 3 and cases cited
therein. And we have repeatedly held, as explained in the Final Decision at page 4,
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that we may consider third party registrations establishing that the services in
question are of a kind that may emanate from a single source. The “real world” is
not for applicant alone to define.
Applicant also asserts that the cited registration’s co-existence with a third-
party registration weighs against a finding of likelihood of confusion. The mark in
the cited registration is GREYSTONE GRILL and the mark in the third-party
registration is GRAYSTONE COFFEE COMPANY. Applicant’s argument that the
co-existence of these registrations weighs against a finding of likelihood of confusion
is inapposite in that it presumes that the prior registration of a particular term
should be of some persuasive authority in handling later applications involving
similar marks. However, we are not privy to the record of the prior proceeding and
are bound to make a decision based on the record before us. See AMF Inc. v.
American Leisure Products, Inc., 177 USPQ 268, 269 (CCPA 1973); In re
International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000); and In re Sunmarks Inc.,
32 USPQ2d 1470 (TTAB 1994).
In view of the foregoing, petitioner’s motion for reconsideration is denied.