SKP and Associates, Inc.

Trademark Trial and Appeal Board

Feb 5, 2010

No. 77040558 (T.T.A.B. Feb. 5, 2010)

Mailed:
February 5, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SKP and Associates, Inc.
________

Serial No. 77040558
_______

John E. Russell of Allmark Trademark for SKP and
Associates, Inc.

Leigh A. Lowry1, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Hairston, Cataldo, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

On November 9, 2006, SKP and Associates, Inc.,
applicant, filed an application to register the mark BLACK
HORSE (in standard character form) for “sauces, spice
blends, dry rubs for meats and fish, marinades, dipping
sauces, and glazes for meats and fish” in International
Class 30.2

1 The application was re-assigned to the identified examining
attorney after an appeal had been filed.
2 Application Serial No. 77040558 was filed under Section 1(b)
based on an allegation of a bona fide intent to use the mark in
commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77040558
2
The examining attorney refused to register the mark
under Section 2(d) of the Trademark Act, 15 U.S.C. §
1052(d), based on a registration for the following mark:

for “bar services; cocktail lounges; restaurants; snack
bars” in International Class 42.3
After the examining attorney made the refusal final,
this appeal followed.4
Before we begin our likelihood of confusion analysis,
we address the examining attorney’s objection to
applicant’s submission of a list of third-party
registrations.5 Specifically, the examining attorney
objects to the lists because of their source (Lexis

3 Registration No. 2948345, issued May 10, 2005.
4 Because the application was re-assigned to the examining
attorney identified above after the appeal was filed, the Board
granted the examining attorney’s request to remand the
application file to her for purposes of introducing additional
evidence. In an office action (dated May 28, 2009), the
examining attorney maintained the refusal to register and
attached evidence thereto. The Board then resumed the appeal and
allowed applicant time to respond to the office action and the
newly-submitted evidence. When that time expired without any
word from applicant, the Board reset the examining attorney’s
time to file her brief.
5 Attached as exhibits to applicant’s response (dated September
24, 2007) to office action and its appeal brief.
Serial No. 77040558
3
commercial database), the format in which they were
submitted (by listing them rather than providing USPTO
database copies thereof), and their lack of probative value
due to several of the identified registrations being based
solely on either Section 44 or 66(a) of the Act, i.e., not
having any allegations of use in commerce in the United
States.
While the examining attorney’s objections are normally
well-taken, we note that the lists of registrations were
first submitted by applicant with its response (dated
September 24, 2007) to an office action and then
resubmitted with its appeal brief. When first addressing
the lists of third-party registrations, the then-assigned
examining attorney did not object to the lists at all, but
responded by stating:
As to applicant’s claim that there are only 22 marks
on the Register that list both restaurants and
sauces/marinades, the examining attorney respectfully
disagrees and notes that applicant’s search was too
restrictive.

[from office action dated August 5, 2008].

The TBMP provides that “...if the examining attorney
discusses the registrations in an Office action or brief,
without objecting to them, the registrations will be
treated as stipulated into the record.” TBMP § 1208.02 (2d
ed. rev. 2004), including citation to, In re Total Quality
Serial No. 77040558
4
Group Inc., 51 USPQ2d 1474, 1477 n.6 (TTAB 1999) (examining
attorney did not object to listing of third-party
registrations, and considered registrations as if they were
of record) and In re Dos Padres Inc., supra (listings from
a commercial trademark search report submitted by applicant
during prosecution).
Based on the then-assigned examining attorney’s
initial treatment of the lists of third-party registrations
submitted by applicant, we find them to have been treated
as stipulated into the record. Moreover, we find any
subsequent objection by the current examining attorney to
these lists to have been waived. Accordingly, the
objection to the lists of third party registrations is
overruled.
Despite our overruling the examining attorney’s
objection, it is noted that “the Board will not consider
more than the information provided by applicant. Thus, if
applicant has provided only a list of registrations numbers
and/or marks, the list will have very limited probative
value.” TBMP § 1208.02. In this regard and for the
reasons identified by the examining attorney in her brief,
we note that there are several shortcomings to the
evidentiary value of the lists submitted by applicant.
Moreover, whatever probative value there is to applicant’s
Serial No. 77040558
5
lists of registrations is weighed in conjunction with the
evidence of additional third-party registrations submitted
by the examining attorney.
We turn now to the merits of this case.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant
to the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973).
However, as indicated in Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976), in any likelihood of confusion analysis, two key
considerations are the similarity or dissimilarity in the
goods/services at issue and the similarity or dissimilarity
of the respective marks in their entireties.
We first consider the marks at issue and, in doing so,
we examine the similarities and dissimilarities of the
marks in their appearance, sound, meaning, and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). Here, the literal portions of
the marks are nearly identical inasmuch as applicant’s mark
is BLACK HORSE and registrant’s mark is the compound term
BLACKHORSE. The addition of a black horse design in
Serial No. 77040558
6
registrant’s mark does very little to distinguish the two
marks because it is merely a pictorial of the literal
portions of both marks, i.e., a black horse. Thus the
design does not create a different commercial impression or
connotation. Furthermore, as has often been stated, the
word portions of the marks are more likely to be impressed
upon a purchaser’s memory and, as such, should be accorded
greater weight in determining likelihood of confusion,
citing In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596
(TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729
(TTAB 1976); and TMEP §1207.01(c)(ii). Consumers, when
calling for or otherwise speaking of either party’s goods
or services, are very likely to just reference the goods or
services by simply “black horse.”
In sum, we conclude that the literal portions of the
marks are phonetically equivalent and nearly identical in
appearance. And, in spite of the horse design in
registrant’s mark, the marks create the same commercial
impression and have the same connotation. Indeed, and as
discussed above, because the design of a black horse in
registrant’s mark is a pictorial representation of the
wording in both marks, such design further reinforces the
Serial No. 77040558
7
similarities between them. Accordingly, this du Pont
factor favors a finding of likelihood of confusion.
We turn now to the relatedness, if any, of
registrant’s restaurant services6 to applicant’s goods. The
goods and services need not be identical, and they
obviously are not, to find likelihood of confusion under
Section 2(d) of the Trademark Act. Rather, they need only
be related in such a way that the circumstances surrounding
their marketing would result in relevant consumers
mistakenly believing that the goods and services originate
from or are associated with the same source. See On-Line
Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471 (Fed. Cir. 2000); In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Furthermore, we must view the goods and services as they
are identified in the registration and application. Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods”).

6 Although registrant’s services also include bar, snack bar and
cocktail lounge services, our likelihood of confusion analysis
focuses on registrant’s restaurant services vis-à-vis applicant’s
goods inasmuch as the evidence and arguments were directed to a
connection or lack thereof with respect to these specific
services and goods.
Serial No. 77040558
8
Again, the registered mark is for, inter alia,
restaurant services whereas applicant seeks to register its
mark for “sauces, spice blends, dry rubs for meats and
fish, marinades, dipping sauces, and glazes for meats and
fish.”
In deciding how we are to analyze the relatedness of
restaurant services and food items, we keep in mind the
“something more” precedent that has been set forth by the
Board and our primary reviewing court (and its
predecessor); that is, in order “[t]o establish likelihood
of confusion a party must show something more than that
similar or even identical marks are used for food products
and for restaurant services.” Jacobs v. International
Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA
1982) (emphasis added). In other words, we must consider
the particular facts of each case and there is no per se
rule dictating that restaurant services and food products
are related; rather, the case law indicates that “something
more” must be present to establish that confusion is
likely. In re Comexa Ltda., 60 USPQ2d 1118, 1120 (TTAB
2001) (AMAZON and design for chili sauce and pepper sauce
held likely to be confused with AMAZON for restaurant
services); see also, In re Azteca Restaurant Enterprises
Inc., 50 USPQ2d 1209 (TTAB 1999) (AZTECA MEXICAN RESTAURANT
Serial No. 77040558
9
for restaurant services held likely to be confused with
AZTECA for partially prepared Mexican foods, namely
tortillas). Cf., In re Coors Brewing Co., 343 F.3d 1340,
68 USPQ2d 1059 (Fed. Cir. 2003) (Court reversed Board
decision finding likelihood of confusion between BLUE MOON
with a naturalistic design of woods at night for beer, and
BLUE MOON with an art deco design and a moon with a cartoon
face for restaurant services); and Jacobs, 668 F.2d 1234
(BOSTON TEA PARTY for tea held not likely to be confused
with BOSTON SEA PARTY for restaurant services).
In this case, the evidence submitted by the examining
attorney demonstrates the required “something more” to show
that applicant’s goods and registrant’s restaurant services
are related. Specifically, there are numerous (over forty-
five) third-party registrations of record showing that a
single entity has registered its mark for both restaurant
services and the relevant specific type of goods, e.g.,
sauces, spice rubs, seasonings and marinades. While these
registrations are not evidence that the marks are in use or
that consumers are familiar with them, they do suggest that
the listed goods and services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).
In addition, the examining attorney submitted ample
Serial No. 77040558
10
website evidence of advertisements for restaurant services
and food items such as sauces, spice rubs, seasonings, etc.
under the same mark by a single entity. The website
evidence shows that food items bearing the same mark as the
restaurant may be sold either directly by the restaurant or
through retail food stores. For example, there is a
website for the Taco Bell restaurant, www.tacobell.com,
advertising their tacos and other Mexican food items and
then the website for Safeway food stores, www.safeway.com,
shows that the supermarket offers “Taco Bell” taco
seasoning and sauces. The website for Emeril’s
restaurants, www.emerils.com, not only touts the restaurant
services, but also advertises “Emeril’s spices” for sale,
including burger seasoning, turkey rub, rib rub, barbeque
sauces, etc. Another website for the restaurant K-Paul’s,
www.kpauls.com, does the same thing, i.e., advertises its
restaurant services and offers various seasonings and
barbeque sauces for sale. The evidence further shows that
several other restaurants that may not be so well-known
also advertise their “own special” sauces or rubs.
Taken together, the evidence satisfies the “something
more” requirement by not only showing that restaurants also
sell individual food items under the same mark, but that
the specific food items identified in the application are
Serial No. 77040558
11
of the type, e.g., spices, seasonings, rubs, sauces, etc.,
that restaurants sell.
We therefore find that applicant’s goods and
registrant’s restaurant services are related, and that this
du Pont factor favors a finding of likelihood of confusion.
As to the channels of trade and classes of purchasers,
applicant asserts that the registered mark and registrant’s
services “solely target the members of the ‘Blackhorse Golf
Club.’” Brief, p. 7. In essence, applicant argues that
registrant’s use of its mark is limited to the members of a
golf club. With respect to its own goods, applicant argues
that their “advertising and marketing efforts are solely
directed to...high end retailers.” Id. at 8. Applicant
submitted evidence in support of these assertions.
The problem with applicant’s aforementioned arguments
and supporting evidence is that neither registrant’s
recitation of services nor applicant's identification goods
are limited to any certain trade channels or classes of
purchasers. It is also well-established and oft-stated
that the question of likelihood of confusion must be
determined based on an analysis of the goods recited in
applicant's application vis-à-vis the services recited in
the cited registration, rather than what the evidence shows
the goods and/or services to be. See Canadian Imperial
Serial No. 77040558
12
Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987); In re William Hodges & Co.,
Inc., 190 USPQ 47 (TTAB 1976). This is because the
presumptions afforded a registration under Section 7(b) of
the Trademark Act extend to the goods or services as
disclosed therein, and include a presumption of use on all
goods or services encompassed by said description. See
Burger Chef Systems, Inc. v. Sandwich Chef, Inc., 201 USPQ
611 (TTAB 1978), aff'd 608 F.2d 895, 203 USPQ 733 (CCPA
1979).
We must therefore deem that applicant’s goods can be
sold and registrant’s restaurant services will be offered
in all appropriate channels for goods and services of those
types. See In re Davis-Cleaver Produce Company, 197 USPQ
248 (TTAB 1977). This would mean that applicant’s goods
may be sold in regular retail supermarkets and other food
stores, but, as shown by the evidence, such goods may also
be sold directly by restaurants. Likewise, although
restaurant services would be offered through different
venues from the goods, the registration’s restaurant
services are not restricted to a country club environment
or being offered to only club members. Rather, the same
classes of consumers will encounter both the goods and the
services. That is, the identified food items and
Serial No. 77040558
13
restaurant services are consumer goods and services, and
will be offered to the general public. Moreover,
applicant’s identified goods are sauces, spice rubs and
seasonings which can be relatively inexpensive, and
purchased on impulse and without care. Likewise,
restaurant services may reasonably include fast food and
other inexpensive restaurants.
For these reasons, the du Pont factors involving
channels of trade and classes of purchasers favor a finding
of likelihood of confusion.
Applicant also argues that “no one has mistakenly
contacted applicant seeking registrant’s ‘restaurant
services’” and that “there exists no evidence of actual
confusion.” Brief, p. 10. The fact that an applicant in
an ex parte case is unaware of any instances of actual
confusion is generally entitled to little probative weight
in the likelihood of confusion analysis, inasmuch as the
Board in such cases generally has no way to know whether
the registrant likewise is unaware of any instances of
actual confusion, nor is it usually possible to determine
that there has been any significant opportunity for actual
confusion to have occurred. See, e.g., In re Jeep
Corporation, 222 USPQ 333 (TTAB 1984). There is no
evidence in the record regarding the extent of use of
Serial No. 77040558
14
either applicant's or registrant's marks; thus we are
unable to determine if there has been any meaningful
opportunity for confusion to occur in the marketplace. In
any event, the test is likelihood of confusion, not actual
confusion, and, as often stated, it is unnecessary to show
actual confusion in establishing likelihood of confusion.
See e.g., Weiss Associates Inc. v. HRL Associates Inc., 902
F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
Accordingly, the du Pont factor involving instances of
actual confusion is neutral.
Upon consideration of all the du Pont factors on which
there is evidence or argument, we find that applicant's use
of the mark BLACK HORSE for “sauces, spice blends, dry rubs
for meats and fish, marinades, dipping sauces, and glazes
for meats and fish” is likely to cause confusion with the
registered mark BLACKHORSE (and design) for restaurant
services.
Decision: The examining attorney's refusal to
register under Section 2(d) is affirmed.