Smokey Mo’s Bar-B-Q, LLCDownload PDFTrademark Trial and Appeal BoardApr 17, 2015No. 85939425 (T.T.A.B. Apr. 17, 2015) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: April 17, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Smokey Mo’s Bar-B-Q, LLC _____ Serial Nos. 85939425, 85939513 & 85939692 _____ Gail Taylor Russell of Taylor Russell & Russell PC, for Smokey Mo’s Bar-B-Q, LLC. Linda A. Powell, Trademark Examining Attorney, Law Office 106, Mary I. Sparrow, Managing Attorney. _____ Before Bucher, Wellington and Gorowitz, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Smokey Mo’s Bar-B-Q, LLC (hereinafter “Applicant”) seeks registration on the Principal Register of three marks: THOSE WHO KNOW EAT AT SMOKEY MO’S, SMOKEY MO’S BBQ and SMOKEY MO’S BAR-B-Q (all in standard character format) for “restaurant and catering services” in International Class 43.1 The Trademark Examining Attorney refused registration on the ground that 1 Applications Serial Nos. 85939425, 85939513 & 85939692 were filed on May 22, 2013, based upon Applicant’s claim of first use anywhere and use in commerce of THOSE WHO KNOW EAT AT SMOKEY MO’S since at least as early as January 1, 2009, and based upon Applicant’s claim of first use anywhere and use in commerce of SMOKEY MO’S BBQ and SMOKEY MO’S BAR-B-Q since at least as early as July 7, 2000. No claim is made to the exclusive right to use the terms “BBQ” or “BAR-B-Q” apart from the marks as shown. Serial Nos. 85939425, 85939513 & 85939692 - 2 - Applicant’s marks so resemble the registered mark shown at right for “restaurants, catering,” also in International Class 43,2 as to be likely to cause confusion, to cause mistake or to deceive under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). After the Trademark Examining Attorney made the refusals final, Applicant appealed to this Board. We affirm the refusals to register. Our determination under Trademark Act § 2(d) is based upon an analysis of the probative facts in evidence that are relevant to the factors bearing on a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999). As identified, the restaurant and catering services in the applications and the registration are identical. Absent restrictions in the applications and registration, 2 Registration No. 2773992 issued on October 14, 2003; renewed. No claim is made to the exclusive right to use the terms “Barbeque” or “BBQ” apart from the mark as shown. Serial Nos. 85939425, 85939513 & 85939692 - 3 - these legally identical services are presumed to travel through the same channels of trade to the same classes of ordinary consumers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d, 1905, 1908 (Fed. Cir. 2012). In view of the above, the du Pont factors focused on the relatedness of the services, the respective channels of trade and classes of consumers strongly favor a finding of likelihood of confusion. We turn then to the marks. In determining the similarity or dissimilarity thereof, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc. 73 USPQ2d at 1691-92. Although the marks must be considered in their entireties, 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. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). For instance, “that a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark … .” Id. at 751. Moreover, 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 their entireties that confusion as to the source of the 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). Finally, we are mindful that where, as here, the services are identical, the degree of similarity necessary to find likelihood of confusion need not be as great Serial Nos. 85939425, 85939513 & 85939692 - 4 - as where there is a recognizable disparity between the services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). Applicant maintains that there is a dissimilarity of the marks in their entireties as to appearance, sound and overall commercial impression and that this is the single determinative du Pont factor that unequivocally supports a finding of no likelihood of confusion. Applicant specifically argues that the dominant element of the cited mark is the fanciful design of a pig – not the designation “Smokin’ Mo’s” as argued by the Trademark Examining Attorney. We disagree with Applicant’s position. We find the fanciful design of a pig insufficient to distinguish Registrant’s mark from Applicant’s several marks. Although the design element is a prominent visual element in the cited mark, it simply reinforces the importance of barbequed pork in both Applicant’s and Registrant’s restaurant and catering cuisine. Furthermore, a clever slogan such as Applicant’s ’425 mark, or advertising taglines contained within Registrant’s composite mark, like “Pig Out” or “ Mo Barbecue Please!,” if even noticed, will be seen as variations on the theme of the knowledgeable, enthusiastic patron who chooses “Smokin’/Smokey Mo’s” – not independent source identifiers by themselves. Moreover, when evaluating a composite mark containing both words and designs, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed because it is the portion of the mark that Serial Nos. 85939425, 85939513 & 85939692 - 5 - consumers would use to refer to or request the goods. In re Viterra Inc., 101 USPQ2d at 1908, 1911. Accordingly, it is the quite similar literal portions SMOKIN’ MO’S and SMOKEY MO’S that would be used by consumers when calling for or discussing both Registrant’s and Applicant’s services. Thus, for Registrant and Applicant, it is this distinctive combination that would make the greatest impression on consumers and it is the portion that is more likely to be remembered as the source-signifying portion of both Registrant’s and Applicant’s marks. See e.g., In re Appetito Provisions Co., Inc., 3 USPQ2d and confusingly similar to 1553 (TTAB 1987). This principle is especially important in cases involving restaurant services in view of the propensity of persons to try restaurants based upon word-of-mouth recommendations. Id. at 1554. This result is contrasted with an example cited by Applicant where the large, prominent portion of that applicant’s mark was the arbitrary, literal element “ZU” found to overcome a likelihood of confusion under the facts of that case. See Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066 (TTAB 2011). not confusingly similar to ELEMENT In conclusion, given the identical services involved herein marketed in connection with a number of different marks, all of which include a similar dominant portion and convey very similar overall commercial impressions, we find that there is a likelihood of confusion. Serial Nos. 85939425, 85939513 & 85939692 - 6 - Decision: The refusals to register Applicant’s marks THOSE WHO KNOW EAT AT SMOKEY MO’S, SMOKEY MO’S BBQ and SMOKEY MO’S BAR-B-Q under Section 2(d) of the Lanham Act are all hereby affirmed. Copy with citationCopy as parenthetical citation