SDI Petroleum, LLC

Trademark Trial and Appeal Board

Nov 30, 2015

No. 86011946 (T.T.A.B. Nov. 30, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re SDI Petroleum, LLC
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Serial No. 86011946
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Melissa LaBauve, LaBauve IP Law,
for SDI Petroleum, LLC.
Josh S. Toy, Trademark Examining Attorney, Law Office 120,1
Michael W. Baird, Managing Attorney.
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Before Ritchie, Adlin and Goodman,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
SDI Petroleum, LLC (“Applicant”) seeks registration on the Principal Register of
the mark DASH NEIGHBORHOOD (in standard characters), for services
ultimately identified as “retail store services featuring gasoline,” in International
Class 35.2

1 The case was reassigned to this Trademark Examining Attorney after the appeal was
filed.
2 Application Serial No. 86011946 was filed on July 16, 2013, under Section 1(b) of the
Trademark Act, alleging a bona fide intent to use the mark in commerce.
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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, when applied to the identified services, so resembles the
previously registered marks DASH IN,3 in standard character format, and D DASH
IN, and design,4 as shown below, both owned by the same registrant, and both for,
as relevant, “retail store services featuring convenience store items and gasoline,” in
International Class 35, as to be likely to cause confusion, mistake, or to deceive:

The Examining Attorney also required that Applicant disclaim the term
“NEIGHBORHOOD” on the ground that it is merely descriptive of the identified
services under Section 2(e)(1) and 6(a) of the Trademark Act, 15 U.S.C. §§ 1052(e)(1)
and 1056.

3 Registration No. 3060794, issued February 21, 2006. Sections 8 and 15 affidavit accepted
and acknowledged. Renewed.
4 Registration No. 2978044, issued July 26, 2005. Sections 8 and 15 affidavit accepted and
acknowledged. Renewed.
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When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed. We affirm the disclaimer requirement, but
reverse the Section 2(d) refusal to register.
I. Disclaimer Requirement
A term must be disclaimed apart from the mark as shown if it is merely
descriptive of the identified goods or services. See In re Grass GmbH, 79 USPQ2d
1600, 1603 (TTAB 2006); Trademark Manual of Examining Procedure §1215.07
(October 2015). A term is merely descriptive if it immediately conveys knowledge of
a quality, feature, function, or characteristic of the goods or services with which it is
used. See In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012), citing In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009
(Fed. Cir. 1987). Whether a term is merely descriptive is determined not in the
abstract, but in relation to the goods or services for which registration is sought, the
context in which it is being used on or in connection with those goods or services,
and the possible significance that the term would have to the average purchaser of
the goods or services because of the manner of its use. That a term may have other
meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979). Moreover, it is settled that “[t]he question is not whether
someone presented with only the mark could guess what the goods or services are.
Rather, the question is whether someone who knows what the goods or services are
will understand the mark to convey information about them.” In re Tower Tech Inc.,
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64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re Patent & Trademark Services
Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home Builders Association of Greenville,
18 USPQ2d 1313 (TTAB 1990); and In re American Greetings Corp., 226 USPQ 365
(TTAB 1985).
The Examining Attorney argues that the term NEIGHBORHOOD identifies a
feature or characteristic of Applicant’s services, i.e., that they are offered to the
surrounding “neighborhood.” The Examining Attorney submitted the following
dictionary definition:
Neighborhood: 3. A place or region near; 4.a. The people living near
one another; b. a section lived in by neighbors and usually having
distinguishing characteristics. Merriam-Webster; m-w.com.

The Examining Attorney also submitted third-party web sites that discuss or
show use of the term “NEIGHBORHOOD” in a descriptive manner in connection
with gasoline and convenience store services. These include the following:
Goodies Convenience Store: Your friendly neighborhood convenience
store without convenience store prices. October 29, 2013 Office Action,
p. 27.
Goodiescoveniencestore.com

Church Produce: Organic Fruits, Vegetables, and Grains: Stop by
today for quality produce at affordable prices from your
neighborhood convenience store. . . .
History: Church Produce is a neighborhood produce market and
convenience store that has been in operation for 30 years. Our owners
opened the store because there was a lack of markets in the
neighborhood, and they wanted to offer customers healthier food
choices.
October 29, 2013 Office Action, p. 29-30.
Churchproduce.com

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Welcome to Miller’s 76! We are your friendly, old-fashioned
neighborhood service station with a proud history of exceptional
service to the community of Pismo Beach. September 8, 2014 Final
Office Action, p. 7.
http://pismo76.com

Robersonville, NC Gas Station & Convenience Store: Our
Robersonville, NC location also offers kerosene and Western Union
money order services for your convenience. Stop by your
neighborhood Handy Mart gas station today – we’re open 24 hours a
day, 7 days a week. September 8, 2014 Final Office Action, p. 9.
Handymarts.com

Applicant points out that there are several third-party registrations that
include the term “NEIGHBORHOOD,” including some with services in
International Class 35, but do not disclaim the term:
NEIGHBORHOOD TELEVISION, Registration No. 3,919,508; for
“education and entertainment services, namely, video film production,
and preparation of special effects including computer-generated
imagery and computer-generated graphics for real estate agents, home
buyers, renters, location scouters, web-based service providers,
businesses and all consumers,” in International Class 41;

NEIGHBORHOOD THRIFT, and design, Registration No. 4,414,115,
for “retail store services featuring new and used clothing, toys, home
accessories, furniture, home décor, sporting goods, and a wide variety
of consumer goods . . .” in International Class 35, and disclaiming
“thrift”;

NEIGHBORHOOD SALON,5 Registration No. 4,007,805; “beauty salon
services; beauty salons” in International Class 44, and disclaiming
“salon”;

5 We note that this registration is registered on the Supplemental Register, and thus is
presumed to be merely descriptive regardless of the absence of disclaimers. See Otter
Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1255 (TTAB 2012); citing Perma
Ceram Enterprises Inc. v. Preco Indus., Ltd., 23 USPQ2d 1134, 1137, n.11 (TTAB 1992)
(mark registered on the Supplemental Register constitutes an implied admission that the
term is descriptive, at least at the time of registration); In re Hunke & Jochheim, 185 USPQ
188, 189 (TTAB 1975) (supplemental registration “may be considered to establish prima
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NEIGHBORHOOD DIRECT, Registration No. 4,015,255, for, inter
alia, “advertising in periodicals, brochures, and newspapers;
advertising of commercial or residential real estate”; in International
Class 35;

NEIGHBOURHOOD WINERY, Registration No. 3,331,349, for “retail
shops featuring wine” in International Class 35 and disclaiming
“winery”;

NEIGHBORHOOD BOOKEEPING, Registration No. 4,214,823, for
“bookkeeping,” in International Class 35, and disclaiming
“bookkeeping”;

NEIGHBORHOOD NURSE, Registration No. 3,469,530, for “personal
coaching services in the field of individual health and wellness,” in
International Class 41, and disclaiming “nurse”;

YOUR NEIGHBORHOOD CPAS, Registration No. 2,747,316, for
“accounting services” in International Class 35, and disclaiming
“CPAS”; and

NEIGHBORHOOD FAMOUS, Registration No. 3,404,719, for
“restaurant services,” in International Class 43.

None of the registrations are for the same services as those identified in
Applicant’s application, nor are they evidence of an Office policy or practice. We also
note that some of the marks are slogans, and Office practice does not require a
disclaimer of words in unitary marks. Perhaps most importantly, we are not privy
to the records of any of the registrations, and our precedent dictates that each case
must be decided on its own merits. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some

facie that, at least the time of registration, the registered mark possessed a merely
descriptive significance.”).
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characteristics similar to Nett Designs’ application, the PTO’s allowance of such
prior registrations does not bind the Board or this court.”).
Applicant further argues that the term “NEIGHBORHOOD” is not merely
descriptive because the order of the terms in its mark DASH NEIGHBORHOOD is
incongruous. However, the disclaimer is only required as to the single term
“NEIGHBORHOOD,” and not the mark as a whole. There is no “mental pause,”
imagination, or analysis needed to decipher the meaning of “neighborhood” in order
to understand its significance in relation to Applicant’s services. Rather, based on
the dictionary definition as well as the third-party uses, we have no doubt that a
consumer would understand the term “NEIGHBORHOOD,” used in connection with
Applicant’s services, as directly conveying information about them, namely, that its
retail store services may serve the surrounding neighborhood. Thus, the applied-for
mark immediately describes a key feature or characteristic of the identified goods.
Therefore, we find that the mark is merely descriptive of the identified services, and
we affirm the disclaimer requirement.
II. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all 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 Company, 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
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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 consider the du Pont factors for which there
were arguments and evidence. The others, we consider to be neutral.
Services/Channels of Trade
We consider first the similarity or dissimilarity of the services. Applicant
identifies “retail store services featuring gasoline.” This is identical-in-part, and
thus legally identical to, the services identified in the cited registrations, “retail
store services featuring convenience store items and gasoline.”
Because the services identified in the application and the cited registrations are
in part identical, we must presume that the channels of trade and classes of
purchasers are also the same for those identical services. See Squirtco v. Tomy
Corporation, 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983); see also In re Smith
and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally
identical, they must be presumed to travel in the same channels of trade, and be
sold to the same class of purchasers.”). Additionally, there is nothing in the
identification of services in either the cited registrations or the application that
limits either Registrant’s or Applicant’s channels of trade. See In re Linkvest S.A.,
24 USPQ2d 1716, 1716 (TTAB 1992) (because there are no limitations as to
channels of trade or classes of purchasers in either the application or the cited
registration, it is presumed that the goods listed in the registration and the
application move in all channels of trade normal for those goods, and that the goods
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are available to all classes of purchasers for the goods). Accordingly, we find that
these du Pont factors weigh heavily in favor of finding a likelihood of consumer
confusion.
The Marks
When, as here, the services at issue are identical, the degree of similarity
between the marks which is required to support a finding of likelihood of confusion
is less than if the services were not identical. In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1912 (Fed. Cir. 2012) (citing Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992)). We consider and
compare the appearance, sound, connotation and commercial impression of the
marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
In comparing the marks, we are mindful that the test 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 overall commercial
impression so that confusion as to the source of the services offered under the
respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd mem.,
No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the
average customer, who retains a general rather than specific impression of the
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marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344
(TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Applicant’s mark is DASH NEIGHBORHOOD, whereas the marks in the cited
registrations are DASH IN and D DASH IN, and design, as shown below:

The Examining Attorney argues that these marks are similar in sight, sound,
and commercial impression, in that they share the first terms “DASH,” and they
give the same commercial impression of dashing in or dashing around [the
neighborhood]. Applicant counters that the marks have obvious differences in sight
and sound, and argues that the commercial impressions are different as well.
Applicant submitted the declaration of Charles Shears, a “member and registered
agent” for Applicant, dated February 23, 2015, as well as of linguistics expert Lynn
Nichols, dated August 15, 2014. Dr. Nichols opined that, with regard to sound, in
her expert opinion, the “dominant acoustic feature of a word or a phrase is the
stress pattern,” and that dominant here are the second syllables in each of the
standard character marks, “DASH IN” and “DASH NEIGHBORHOOD.” With
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regard to commercial impression, she noted that the term “dash” in English is
“nearly always accompanied by a preposition of direction” and without that it is
“being used in a novel non-canonical, coined verb form.” August 15, 2014 Response
to Suspension Letter, p.18.
While we agree with Dr. Nichols that Applicant’s mark DASH
NEIGHBORHOOD does not contain a preposition, we disagree that consumers
would not thus understand it to have the connotation and commercial impression of
direction. Consumers would understand the mark to indicate a dash into or around
the neighborhood, presumably before or after obtaining Applicant’s retail gasoline
services. In this regard, the commercial impressions of the standard character
marks are generally similar.
Applicant further argues in its brief that regardless of similarities, the shared
term “DASH” is weak and “commonly associated with convenience stores” such that
consumers will note the differences between the marks in the cited registrations
and Applicant’s mark. 8 TTABVUE 7. In this regard, Applicant submitted examples
of at least 17 uses of “DASH” in connection with convenience store services around
the country, including submission of yellow pages information from the Internet
concerning:6 J&W Dash N Go (Garfield, GA); Gas N Dash Mart (East Moline, IL); A
Dash In Grocery (Garland, TX); Dash Food Mart & Deli (Richmond, VA); Splash &
Dash (Bellvue, ID); Daily’s Dash (Jacksonville, FL); Dash N Convenient Store

6 Applicant’s counsel also made calls to confirm that the businesses were in existence and
offering gasoline and convenience store services. See LaBauve decl. attached to August 15,
2014 Response to Suspension Letter.
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(Zebulon, NC); Dip N Dash (Ellabell, GA); Cash-N-Dash (Nevada, MO) Dan’s Dash
In (Spanish Fork, UT); Daniels Parkway Dash In Dash Out Food Mart (Fort Myers,
FL); Manatee Ave Dash In Dash Out Mart (Bradenton, FL); Ruskin Dash In Dash
Out Food Mart (Ruskin, FL); Gas ‘n Dash (Payson UT); Dash Inn (Tulsa, OK); Cash
N Dash (Covington, TN) Dash In (Gaithersburg, MD); Fast Dash Convenience Store
(Youngstown, OH).
We agree that this evidence indicates that consumers are accustomed to
encountering the term “DASH” in relation to convenience store and retail gasoline
services, particularly in that some of these uses are quite similar to the standard
character mark in the cited registration for DASH IN. See Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. August 19, 2015); Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed.
Cir. 2015). Accordingly, we find that consumers will look to slight differences in the
marks, and although their commercial impressions are somewhat similar, the
differences in sight and sound are sufficient, given the weakness of DASH for these
services, that the first and sixth du Pont factors weigh against finding a likelihood
of confusion.
III. Conclusion on Likelihood of Confusion
In conclusion, considering all of the arguments and evidence of record as they
pertain to the relevant du Pont factors, we find that although the services are in
relevant part identical and would therefore travel through the same channels of
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trade, the shared term in the marks, “DASH,” is so weak that consumers will look
to distinguishing features in the marks and there would be no likelihood of
confusion.
Decision: The Section 2(d) refusal to register Applicant’s mark is reversed. The
requirement for a disclaimer of the term “NEIGHBORHOOD,” as well as the refusal
to register in absence of a disclaimer is affirmed. However, if Applicant submits the
required disclaimer to the Board within two months of the mailing date of this
decision, then the decision will be set aside, and the application will proceed to
publication.