Smokey Mo’s Bar-B-Q, LLC

Trademark Trial and Appeal Board

Apr 17, 2015

No. 85939513 (T.T.A.B. Apr. 17, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: April 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Smokey Mo’s Bar-B-Q, LLC
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Serial Nos. 85939425, 85939513 & 85939692
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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.
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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
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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
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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
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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
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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
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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.