Shehadeh Forever Inc.

Trademark Trial and Appeal Board

Mar 20, 2013

No. 85218264 (T.T.A.B. Mar. 20, 2013)

Mailed: 3/20/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Shehadeh Forever Inc.
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Serial No. 85218264
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Denise Olrich, Esq. for Shehadeh Forever Inc.

Priscilla Milton, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
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Before Quinn, Bergsman and Lykos,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Shehadeh Forever Inc. filed, on January 14, 2011, an
application to register the mark IKE’S PLACE (in standard
characters) for “T-shirts” (in International Class 25), and
“restaurant services featuring sandwiches” (in International
Class 43).1 The word “PLACE” is disclaimed apart from the mark
as used in connection with the identified services.
The trademark examining attorney refused registration only
in Class 43 under Section 2(d) of the Trademark Act, 15 U.S.C.

1 Applicant alleges first use dates of September 1, 2008 in Class 25;
and first use dates of October 31, 2007 in Class 43.
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser. No. 85218264

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§ 1052(d), on the ground that applicant’s mark, when used in
connection with applicant’s services, so resembles the
previously registered mark IKE’S (in standard characters) for
“restaurant and bar services” (in International Class 42)2 as to
be likely to cause confusion.
When the refusal was made final in Class 43, applicant
appealed. Applicant and the examining attorney filed briefs.
Applicant argues that the marks are different based on how
the marks are actually used, and that the services are
different. Applicant also states that the only actual use by
registrant of the mark IKE’S is in connection with salad
dressing served at registrant’s restaurant; in applicant’s
words, the registered mark is used on “one small item on a large
menu of a restaurant with a different name, Pizzeria Uno.”
According to applicant, registrant does not use IKE’S as a
restaurant name, and thus states that the cited registration
should be cancelled. Applicant tries to distinguish its
sandwich shop from registrant’s pizza restaurants, and also
highlights the fact that its sandwich shop has garnered many
awards, including best sandwich shop in the San Francisco Bay
area. According to applicant, its mark is famous and this fame
militates against likelihood of confusion. Applicant further

2 Registration No. 2951936, issued May 17, 2005; combined Sections 8
and 15 affidavit accepted and acknowledged.
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points to the absence of actual confusion. In urging that the
refusal be reversed, applicant introduced the declaration of Ike
Shehadeh, one of applicant’s two owners and the individual after
whom the restaurant is named. The declaration is accompanied by
a menu from registrant’s restaurant. Accompanying a request for
reconsideration is the declaration of Huda Shehadeh, the other
owner of applicant, with numerous exhibits (identified as
exhibits A through U), including several articles and awards to
show the significant success and notoriety of applicant’s
sandwich shop; a picture of the front of applicant’s restaurant;
and a menu from applicant’s restaurant showing actual use of the
restaurant name IKE’S PLACE.
The examining attorney maintains that the marks are
substantially similar, and that the services are identical
and/or related. The examining attorney also discounts the
absence of actual confusion, and considers applicant’s
suggestion that the cited registration should be cancelled as an
impermissible attack. In support of the refusal, the examining
attorney submitted, in relevant part, a dictionary definition of
“place,” and third-party registrations with disclaimers of
“place” for restaurant services.
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
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E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). 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).
Turning first to consider the services, we make our
determination regarding the similarities between the services,
channels of trade and classes of purchasers based on the
services as they are identified in the application and cited
registration, respectively. See Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir.
2012); and In re Iolo Techs, LLC, 95 USPQ2d 1498, 1500 (TTAB
2010).
To state the obvious, applicant’s “restaurant services
featuring sandwiches” and registrant’s “restaurant and bar
services,” are legally identical in part as set forth in the
application and registration. Registrant’s recitation, as
worded with no limitations in the cited registration, is broad
enough to encompass applicant’s particular type of restaurant
services featuring sandwiches. The services would be rendered
to the same classes of purchasers, including ordinary consumers.
Applicant’s argument that registrant’s services feature a
pizza parlor whereas applicant’s restaurant is a sandwich shop
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is irrelevant in the context of this proceeding. To reiterate,
our consideration of this du Pont factor is based on a
comparison of the services as they are identified in the
application and cited registration. An applicant may not
restrict the scope of the goods and/or services covered in the
cited registration by extrinsic argument or evidence. See In re
Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); and In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986).
Further, applicant contends that registrant uses its mark
IKE’S in connection with salad dressing only, and not with
restaurant services. Applicant asserts that the Office should
cancel the cited registration due to nonuse on the recited
services; we note, however, that there is nothing in the record
to indicate that applicant filed a petition to cancel the cited
registration. To the extent that applicant’s argument based on
alleged nonuse of the registered mark in connection with the
services identified in the cited registration constitutes a
collateral attack on the registration, we agree with the
examining attorney’s assessment that such attack is
impermissible. Section 7(b) of the Trademark Act, 15 U.S.C. §
1057(b), provides that a certificate of registration on the
Principal Register shall be prima facie evidence of the validity
of the registration, of the registrant’s ownership of the mark
and of the registrant’s exclusive right to use the mark in
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connection with the goods and/or services identified in the
certificate. During ex parte prosecution, including an ex parte
appeal, an applicant will not be heard on matters that
constitute a collateral attack on the cited registration. In re
Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534
(Fed. Cir. 1997); and In re Peebles Inc., 23 USPQ2d 1795, 1797
n.5 (TTAB 1992). See TMEP § 1207.01(d)(iv) (Oct. 2012).
Accordingly, no consideration has been given to applicant’s
arguments in this regard.
The legal identity between the identified services, and the
presumed identity in trade channels and classes of purchasers
are factors that weigh heavily in favor of a finding of
likelihood of confusion.
We next direct our attention to the du Pont factor of the
similarity/dissimilarity between the marks. Where the goods
and/or services are legally identical, as is the case herein at
least in part, the degree of similarity between the marks
necessary to support a determination that confusion is likely
declines. In re Viterra Inc., 672 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012).
We must compare the marks in their entireties as to
appearance, sound, connotation and commercial impression to
determine the similarity or dissimilarity between them. Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
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1772, 396 F.3d 1369, 73 USPQ2d 1689, 1690 (Fed. Cir. 2005),
quoting In re E. I. du Pont de Nemours & Co., 177 USPQ at 567.
The test, under the first du Pont factor, 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 that
confusion as to the source of the goods and/or services offered
under the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks. See
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Contrary to the gist of one of applicant’s arguments, we cannot
consider applicant’s mark in a logo format with a design feature
as actually used at its restaurant; the design feature is not
part of the proposed mark as shown in the drawing. Rather, our
comparison of the marks is based on how they are shown in the
application drawing and the cited registration.
It is well settled 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 commercial
impression created by the mark. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
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provided the ultimate conclusion rests on consideration of the
marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.”).
Applicant’s mark is dominated by “IKE’S” in view of the
merely descriptive and properly disclaimed term “PLACE.” See,
e.g., In re Dixie Restaurants, Inc., 41 USPQ2d at 1533-34
(affirming Board’s finding that “DELTA,” not the disclaimed
generic term “CAFÉ,” is the dominant portion of the mark THE
DELTA CAFÉ); and In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)
(finding that “BINION’S,” not the disclaimed descriptive wording
“ROADHOUSE,” is the dominant portion of the mark BINION’S
ROADHOUSE). Thus, the dominant portion of applicant’s mark is
identical to the entirety of registrant’s mark. Likelihood of
confusion is not necessarily avoided between otherwise
confusingly similar marks merely by adding a term that is
descriptive of the named services. See, e.g. In re Dixie
Restaurants, Inc., supra; and In re Computer Sys. Ctr. Inc., 5
USPQ2d 1378, 1381 (TTAB 1987).
The marks IKE’S and IKE’S PLACE, when considered in their
entireties, are substantially similar in appearance, sound,
meaning and overall commercial impression. This factor weighs
heavily in favor of a finding of likelihood of confusion.
Applicant argues its mark is famous and a highly recognized
brand, given the numerous “Best of” awards that applicant’s
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restaurant has garnered over the years. Even assuming arguendo
that the notoriety of applicant’s mark creates a situation of
reverse confusion, registrant was the first to register, and
thus is presumed to be the senior user. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984). See In re Thomas, 79 USPQ2d 1021
1027 n.11 (TTAB 2006) (fame is not normally a factor in ex parte
proceedings). Thus, applicant’s claim of fame is of no
consequence in our likelihood of confusion analysis.
Applicant’s assertion, in this ex parte proceeding, of the
contemporaneous use of applicant’s and registrant’s marks for a
period of five years without actual confusion is entitled to
little weight. See In re Majestic Distilling Co., Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003)(“uncorroborated
statements of no known instances of actual confusion are of
little evidentiary value”). See also In re Bisset-Berman Corp.,
476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that self-
serving testimony of applicant’s corporate president’s
unawareness of instances of actual confusion was not conclusive
that actual confusion did not exist or that there was no
likelihood of confusion); In re Binion, 93 USPQ2d at 1536; In re
1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1588 (TTAB
2007); and In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB
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1984). In any event, the record is devoid of probative evidence
relating to the extent of use of applicant’s and registrant’s
marks and, thus, whether there have been meaningful
opportunities for instances of actual confusion to have occurred
in the marketplace. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and In re
Wilson, 57 USPQ2d 1863, 1869 (TTAB 2001) (“[I]nasmuch as we have
heard from neither registrant nor the Highland Orange
Association in this appeal, we cannot conclude that, in fact, no
instances of actual confusion ever occurred.”). Accordingly,
the du Pont factor of the length of time during and conditions
under which there has been contemporaneous use without evidence
of actual confusion is considered neutral.
We conclude that consumers familiar with registrant’s
“restaurant and bar” services offered under the mark IKE’S would
be likely to believe, upon encountering applicant’s mark IKE’S
PLACE for “restaurant services featuring sandwiches,” that the
services originated from or are somehow associated with or
sponsored by the same entity.
Decision: The refusal to register in Class 43 is affirmed.
The application will proceed forward (with no disclaimer) in
Class 25 only.