SBE Licensing, LLC

Trademark Trial and Appeal Board

Aug 5, 2013

No. 85449899 (T.T.A.B. Aug. 5, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 5, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

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).
_____

Before Zervas, Adlin, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
SBE Licensing, LLC (applicant) filed an application to register the mark
GREYSTONE MANOR (in standard character form) for “night club services” in
Class 41.1 Registration has been refused pursuant to Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), on the ground that applicant's mark so resembles the
registered mark GREYSTONE GRILL (in standard character form) for “restaurant

1 Application Serial No. 85449899, filed October 18, 2011, based on intent-to-use pursuant
to Section 1(b) of the Trademark Act.
Serial No. 85449899

2

services” in Class 432 that, as used in connection with applicant's identified
services, it is likely to cause confusion or mistake or to deceive. The examining
attorney issued a final refusal of registration, which applicant has appealed.
As a preliminary matter, the examining attorney has objected to applicant’s
reliance on third-party registrations in its May 29, 2012 response to the first Office
action.3 The basis for the objection is that applicant did not submit copies of the
registrations with the response. The general rule is that “merely listing third-party
registrations is insufficient to properly make them of record.” In re Compania de
Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012). However, the
objection is deemed waived “if an applicant includes a listing of registrations in a
response to an office action, and the examining attorney does not advise the
applicant that the listing is insufficient” or if the examining attorney “discusses the
registrations in an Office action … without objecting to them.” TBMP §§ 1208.02
(3d ed. 2013) (and cases cited therein).
The examining attorney did not object to this list, in fact she referred to the
evidence as “printouts of third-party registrations for marks containing the wording
‘greystone’” and she discussed the registrations in the Office action. See Office
action dated June 21, 2012. Accordingly, the examining attorney’s objection is
deemed waived and the information provided will be considered for whatever
probative value it may have.

2 Registration No. 2979664, issued July 26, 2005; Section 8 & 15 Affidavits accepted and
acknowledged.
3 Applicant provided a list of eight registrations, which included the registration numbers,
the marks and the goods or services.
Serial No. 85449899

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We turn next to the substantive issue of likelihood of confusion. Our
determination of the issue of likelihood of confusion is based on an analysis of all of
the probative facts in evidence that are relevant to the factors set forth in 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).
In any likelihood of confusion analysis, 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). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997).
We start by looking at the services at issue. Our evaluation of the services is
based on the services as identified in the registration and application. Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Further, “where the goods [and services] in
a cited registration are broadly described and there are no limitations in the
identification of [services] as to their nature, type, channels of trade or classes of
purchasers, it is presumed that the scope of the registration encompasses all goods
[and services] of the nature and type described, that the identified goods move in all
channels of trade that would be normal for such goods, and that the goods [and
services] would be purchased by all potential customers. In re Elbaum, 211 USPQ
639, 640 (TTAB 1981).
Serial No. 85449899

4

Applicant’s services are identified as “nightclub services” and the services in
the cited registration are “restaurant services.” Applicant contends that its “high-
end and exclusive nightclub in Los Angeles is entirely distinct from the Maryland
restaurant of the owner of the cited registration.” Appeal Brief, p. 3. Because our
evaluation of the services is based on the services as identified in the registration
and application, this argument is not persuasive. In fact, applicant’s “nightclub
services” are not identified as “high-end” and neither the application nor the
involved registration is geographically restricted to Los Angeles, Maryland or
anywhere else.
The examining attorney has established that the services are related through
ten third-party registrations she introduced into the record, each of which includes
both applicant's and registrant's services and serves to suggest that the services are
of a kind that may emanate from a single source. See In re RiseSmart Inc., 104
USPQ2d 1931, 1934-1935 (TTAB 2012); In re Infinity Broad. Corp., 60 USPQ2d
1214, 1217-18 (TTAB 2001); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993). See, for example,
• Reg. No. 3204545 – Lucky Bar
for: “nightclub services” in Cl. 41 and “bar, restaurant,
and cocktail lounge services” in Class 43,
owned by Station Casinos LLC

• Reg. No. 3290343 – TURF GRILL
for: “nightclub services” in Cl. 41 and
“bar, restaurant, and cocktail lounge services” in Class 43,
owned by NP IP Holdings;

• Reg. No. 3503077 – MOKAKI
for: “night clubs”in Cl. 41; and
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Serial No. 85449899

7

Grant Grill (www.grantgrill.com).
Thus, the examining attorney has established that the services are closely
related. Further, since nightclub services and restaurant services are offered by the
same establishments, the services travel in the same channels of trade to the same
purchasers.
Applicant asserts that “the level of care exhibited by the discriminating
purchasers of both the parties’ respective services renders them sophisticated
purchasers.” Appeal Brief, p. 6. While there is no evidence that purchasers of
nightclub or restaurant services are discriminating purchasers, even if we accept
that purchasers of nightclub and restaurant services exercise a heightened degree of
Serial No. 85449899

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care in selecting such services, we are not persuaded that such categorization would
avoid a likelihood of confusion. The fact that “the relevant class of purchasers may
exercise care does not necessarily impose on that class the responsibility of
distinguishing between similar marks for similar services. Human memories even
of discriminating purchasers are not infallible.” In re Research and Trading Corp.,
793 F2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (internal citation omitted).
Next, we consider the strength of registrant’s mark, GREYSTONE GRILL (in
standard character form). Applicant contends that the term GREYSTONE is weak
because it “has become diluted through registration of multiple marks containing
the term.” Appeal Brief, p. 4. In support of this contention applicant has provided
information about eight registrations for marks containing either GREYSTONE or
GRAYSTONE for the following goods and services: restaurant services, wine,
graphic design services, home furnishings, televisions and surveillance systems,
amusement parks, and business investigations. Response to Office Action dated
May 29, 2012. However, these mere registrations do not establish that the term
GREYSTONE is weak for restaurant services, because there is no evidence that the
marks in these registrations are actually in use Evidence of weakness or dilution
consisting solely of third-party registrations is generally entitled to little weight in
determining the strength of a mark, because such registrations do not establish that
the registered marks identified therein are in actual use in the marketplace or that
consumers are accustomed to seeing them. See: AMF Inc. v. Am. Leisure Prods.,
Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Davey Prods.
Serial No. 85449899

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Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d
1634, 1639 (TTAB 2009); Richardson-Vicks Inc. v. Franklin Mint Corp., 216 USPQ
989, 992 (TTAB 1982). Moreover, with the exception of two registrations, one for
the mark GRAYSTONE COFFEE COMPANY for restaurant services and the other
for the mark GREYSTONE CELLARS for table wine, all of the registrations are for
completely unrelated goods or services.
To establish third party use of similar marks, applicant also submitted
webpages from six third-party websites for companies with trade names containing
either GREYSTONE or GRAYSTONE. Request for Reconsideration dated October
24, 2012. However, none of these websites are for related goods or services.
Accordingly, this evidence does not establish that the term GREYSTONE is diluted
or that it is not entitled to protection against applicant’s mark.
We now compare the marks to determine the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression. du Pont at 567. In evaluating the similarities between marks, the
emphasis must be on the recollection of the average purchaser, who normally
retains a general, rather than specific, impression of trademarks. In re Cynosure,
Inc., 90 USPQ2d 1644, 1645 (TTAB 2009), citing Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975).
Applicant argues that the examining attorney “impermissibly dissected
Applicant’s mark when comparing it to the cited mark.” Appeal Brief, page 2.
Applicant’s argument is unavailing. While “the similarity or dissimilarity of the
Serial No. 85449899

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marks is determined based on the marks in their entireties… there is nothing
improper in stating that, for rational reasons, more or less weight has been given to
a particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Here, the term GREYSTONE is the dominant element in both marks. In the
GREYSTONE GRILL mark, the word “GRILL,” which has been disclaimed, is
descriptive and thus we accord it less weight. “Manor” as defined by the examining
attorney is “the mansion of a lord or wealthy person.”5 As such, the examining
attorney contends that “manor connotes an elegant home or structure.” Examining
Attorney’s Appeal Brief, p. 6. We agree. As such, the word “MANOR” as used by
applicant in the mark GREYSTONE MANOR is suggestive of an elegant
environment and is subordinate to the term “GREYSTONE.”
The significance of the word “GREYSTONE” as the dominant element of the
GREYSTONE MANOR and GREYSTONE GRILL marks is further reinforced by its
location as the first part of the marks. See Presto Products Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a
mark which is most likely to be impressed upon the mind of a purchaser and
remembered”). See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396
F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent
part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark

5 Definition from the online dictionary www.vocabulary.com submitted by examining
attorney in the November 30, 2011 Office action.
Serial No. 85449899

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and the first word to appear on the label); Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon
encountering the marks, consumers will first notice the identical lead word).
When we compare the marks in their entireties, and give greater weight to
the dominant elements, we conclude that the marks are similar in appearance,
sound, and meaning. See Palm Bay Imports., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, at 1692 (affirming TTAB’s holding that contemporaneous
use of appellant’s mark, VEUVE ROYALE, for sparkling wine, and appellee’s
marks, VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN, for
champagne, is likely to cause confusion, noting that the presence of the “strong
distinctive term [VEUVE] as the first word in both parties’ marks renders the
marks similar, especially in light of the largely laudatory (and hence non-source
identifying) significance of the word ROYALE”); In re Chatam Int’l 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.”); and
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1266, 62 USPQ2d 1001,
1004 (Fed. Cir. 2002) (finding that even though applicant’s mark PACKARD
TECHNOLOGIES (with “TECHNOLOGIES” disclaimed) does not incorporate every
feature of opposer’s HEWLETT PACKARD marks, a similar overall commercial
impression is created).
Serial No. 85449899

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Having considered all the evidence and argument on the relevant du Pont
factors, we find that applicant’s mark is likely to cause confusion with the cited
registration.
Decision: The refusal to register is affirmed.