Spin Concepts, Inc.v.Capital Restaurant Group, Inc.

Trademark Trial and Appeal Board

Jun 3, 2015

No. 91210915 (T.T.A.B. Jun. 3, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Spin Concepts, Inc.
v.
Capital Restaurant Group, Inc.
_____

Opposition No. 91210915
against Serial No. 85802199
_____

Joan Optican Herman and Cheryl L. Burbach of Hovey Williams LLP
for Spin Concepts, Inc.
Jon A. Schiffrin of Schiffrin & Longo, P.C.
for Capital Restaurant Group, Inc.

_____

Before Bergsman, Taylor and Lykos,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On December 13, 2012, Capital Restaurant Group (“Applicant”) filed an
application to register on the Principal Register the mark SPINFIRE in standard
characters for “restaurant services; restaurant services, including sit-down service
of food and take-out restaurant services; restaurant services, namely, providing of
Opposition No. 91210915
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food and beverages for consumption on and off the premises; restaurant services
featuring pizza, salads, and gelato” in International Class 43.1
Spin Concepts, Inc. (“Opposer”) opposed the registration of Applicant’s mark on
the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), with Opposer’s previously used and registered SPIN formative
marks. In the notice of opposition, Opposer pleaded ownership of the following
registered marks:
Registration No. 3302233 for the mark SPIN! in standard characters on the
Principal Register for “prepared foods for consumption on and off the
premises, namely, pizza, panini, and gelato” in International Class 30 and
“restaurant services and restaurant carry-out services” in International Class
43;2

Registration No. 3163808 for the mark displayed below on the Principal
Register

for “Restaurant services and restaurant carry-out services” in International
Class 43;3

1 Application Serial No. 85802199, filed pursuant to Section 1(b) of the Trademark Act, 15
U.S.C. §1051(b), alleging a bona fide intent to use the mark in commerce.
Following briefing of this case, on January 7, 2015, Capital Restaurant Group, Inc.
assigned the entire interest in its application to Spinfire, LLC. See Assignment Division
Records, Reel 5437, Frame 0195 (recorded January 9, 2015).
2 Registered October 2, 2007, alleging May 1, 2005 as the date of first use anywhere and in
commerce; Sections 8 and 15 affidavits accepted and acknowledged.
3 Registered October 24, 2006, alleging May 1, 2005 as the date of first use anywhere and in
commerce; Sections 8 and 15 affidavits accepted and acknowledged. The registration
includes a disclaimer of “NEOPOLITAN PIZZA” apart from the mark as shown. The
Opposition No. 91210915
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Registration No. 3172270 for the mark displayed on the Principal Register

for “Prepared foods for consumption on and off the premises, namely, pizza,
panini and gelato” in International Class 30 and “Restaurant services and
restaurant carry-out services” in International Class 43.4

In its answer, Applicant denied the salient allegations in the notice of opposition.
The case is now fully briefed.
I. Opposer’s Motion to Strike
Before turning to the substance of this appeal, the Board will address Opposer’s
motion to strike the following exhibits submitted with Applicant’s main brief5 as
untimely:
● Exhibit H: Search results for the entry “spin” from the online dictionary
search engine entitled “OneLook” based on the MacMillan Dictionary;

registration is partially cancelled for failure to file a Section 8 affidavit as to the goods in
International Class 30.
4 Registered November 14, 2006, alleging May 1, 2005 as the date of first use anywhere and
in commerce; Sections 8 and 15 affidavits accepted and acknowledged. Opposer disclaimed
the exclusive right to use the term “Neopolitan Pizza.”
Opposer also pleaded ownership of two applications, Application Serial Nos. 85432074 and
85325175.
5 Applicant appended to its main brief portions of the record as renamed exhibits A-N, and
cited to the record in this manner. This was improper. Rather, Applicant in its main brief
should have cited to the portions of the pre-existing evidentiary record where the
supporting evidence can be found, and preferably with a reference to TTABVUE, the
Board’s publicly available online docket system. See Turdin v. Trilobite, Ltd., 109 USPQ2d
1473, 1476 n.6 (TTAB 2014).
Opposition No. 91210915
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● Exhibit L: Excerpt from Opposer’s web site www.spinpizza.com;

● Exhibit M: The file history from the USPTO Trademark Status Document
and Retrieval (“TSDR”) database of Registration No. 3709870 for the mark
MOONSPIN; and

● Exhibit N: The file history from the USPTO TSDR database of Opposer’s
pleaded Registration No. 3302233.

Opposer’s motion to strike is granted in part and denied in part.
First, as to Exhibit H, Applicant acknowledges that it did not make the
definition of “spin” from the OneLook search engine of record during its testimony
period but now requests that the Board take judicial notice of the definition.
Applicant’s request is granted insofar as the definition is from derived from the
MacMillian Dictionary, a reference which is the electronic equivalent of a print
dictionary and has regular fixed editions. See Trademark Rule 2.122(a) and Fed. R.
Civ. P. 201 (“Judicial Notice of Adjudicative Facts”). See also Trademark Trial and
Appeal Board Manual of Procedure (“TBMP”) § 704.12 (2014) (“Judicial Notice”) and
cases cited therein. Cf. TBMP § 1208.03 (“Internet Material”) (case citations
omitted).
With regard to Exhibit L, Opposer’s motion to strike is granted because the web
site excerpts from www.spinpizza.com, while attached to Opposer’s notice of
opposition, were not properly made of record during Applicant’s assigned testimony
period. See Trademark Rule 2.123(l).
Lastly, as to Exhibits M and N, Opposer’s motion to strike is denied; Applicant
previously made the materials properly of record via notice of reliance.
Opposition No. 91210915
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II. The Record6
The record includes the pleadings, and pursuant to Trademark Rule 2.122(b),
Applicant’s application file. In addition, the parties introduced the following:
A. Opposer’s Evidence
Opposer submitted a notice of reliance on the following documents:7
● Exhibit A: Dictionary definitions of the word “spin”;
● Exhibit B: Copies of third-party registration certificates with
corresponding TESS printouts for SPIN formative marks covering bicycles and
related goods and services; and
● Exhibit C: Copies of third-party registration certificates with
corresponding TESS printouts for marks “containing action words similar to ‘spin’
including, but not limited to ‘toss’, ‘flip’, and ‘twist’, and variations thereof” for
restaurant services and related goods and services, including pizza.
Opposer also introduced the testimony deposition of Gail Lozoff, Chief Executive
Office of Opposer (“Lozoff Deposition”) with exhibits attached thereto.
B. Applicant’s Evidence
Applicant submitted a notice of reliance on the following documents:

6 Citations to the record throughout the decision include references to TTABVUE. The
number preceding “TTABVUE” corresponds to the docket entry number; the number(s)
following “TTABVUE” refer to the page number(s) of that particular docket entry.
In addition, portions of the record have been designated confidential and have been
treated as such. All citations to the record refer to the redacted, publicly available versions
of each submission.
7 Opposer, by submitting only plain copies of its pleaded registration certificates with its
notice of opposition, did not properly make the registrations of record. See Trademark Rule
2.122(d). See, e.g., Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1116-
17 (TTAB 2009).
Opposition No. 91210915
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● Exhibit A: TESS printouts of third-party registrations for marks
including the term “fire” for restaurant services;
● Exhibit B: TESS printouts of third-party registrations and
applications for marks including the “prefix term ‘spin’”;
● Exhibit C: A TSDR printout of Opposer’s pleaded Registration No.
3302233 showing its current title and status as well as the prosecution history;
● Exhibit D: Opposer’s Responses to Applicant’s First Set of
Interrogatories No. 3;
● Exhibit E: Printouts from third-party websites showing use of the
word “spin” as a mark as well as articles discussing pizza making; and
● Exhibit G: TESS printouts of third-party registrations for marks
including the term “spin” for International Class 29 and 30 goods;
Applicant did not take any testimony depositions.
III.Standing
Because Opposer’s pleaded Registration No. 3302233 for the mark SPIN! is of
record, we find that Opposer has established its standing to oppose registration of
Applicant’s mark.8 See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d

8 Applicant, with its notice of reliance, made of record a TSDR printout of Opposer’s pleaded
Registration No. 3302233 showing its current title and status. Applicant’s Notice of
Reliance Ex. C; 5 TTABVUE 43-55. Once a document is admitted into evidence, it may be
relied on by an adverse party and considered by the Board for any relevant purpose.
Anheuser-Busch, Inc. v. Major Mud & Chemical Co., Inc., 221 USPQ 1191, 1192 n.7 (TTAB
1984).

Opposition No. 91210915
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1024, 213 USPQ 185 (CCPA 1982).
IV. Section 2(d) Claim
We will now consider Opposer’s Section 2(d) claim, focusing on Opposer’s
Registration No. 3302233 for the mark SPIN! for the services listed in International
Class 43 “restaurant services and restaurant carry-out services.” This is because
when that mark is considered vis-à-vis the applied-for mark and identified services,
it is that mark that is most likely to support a finding of likelihood of confusion. In
other words, if confusion is likely between these marks, there is no need for us to
consider the likelihood of confusion with Opposer’s other marks, and if there is no
likelihood of confusion between Applicant's mark and Opposer’s mark, then there
would be no likelihood of confusion with Opposer’s other pleaded marks. See, e.g., In
re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).9
A. Priority
To prevail on a likelihood of confusion claim brought under Trademark Act
Section 2(d), a party must first prove that it owns “a mark registered in the Patent
and Trademark Office or a mark or trade name previously used in the United
States … and not abandoned … .” Trademark Act Section 2, 15 U.S.C. § 1052.
Priority is not in issue in view of Opposer’s ownership of its valid and subsisting
Registration No. 3302233 for the mark SPIN! for the Class 43 services identified
therein. See King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).

9 In addition, this is Opposer’s only pleaded registration which is of record in this case.
Accordingly, we have not considered Opposer’s family of marks arguments.
Opposition No. 91210915
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B. Likelihood of Confusion
The remaining issue in this case is likelihood of confusion. Opposer, as plaintiff
in this proceeding, bears the burden of establishing that there is a likelihood of
confusion by a preponderance of the evidence.
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). “Not all of the du Pont factors are relevant to every case, and only
factors of significance to the particular mark need be considered.” In re Mighty Leaf
Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). For example, the
Board can “focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods.” Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
1164, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (citation omitted). These factors and
the other relevant du Pont factors are discussed below.
1. The similarity or dissimilarity and nature of the services.
At the outset, we compare the parties’ respective services as they are identified
in the application and registration at issue. See Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). See also, Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Here, the involved application and
Opposition No. 91210915
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Opposer’s pleaded Registration No. 3302233 involve services that are identical, at
least in part. Both identify the broad category of “restaurant services” as a separate
service. In addition, because Opposer’s registration includes “restaurant services” as
unrestricted, it necessarily encompasses Applicant’s more narrowly delineated
restaurant services featuring pizza.” In other words, we must assume that Opposer
also offers restaurant services featuring pizza. Furthermore, we deem the services
identified as “take-out restaurant services” and “restaurant carry-out services,”
while worded slightly differently, to be identical. In view thereof, the second du Pont
factor weighs in favor of finding a likelihood of confusion.
2. The established, likely-to-continue channels of trade and classes of
consumers.

Because the services are in part identical, and neither Opposer’s Registration
No. 3302233 nor the involved application contains any limitations on the channels
of trade and classes of purchasers, we must presume that the channels of trade and
classes of purchasers are the same for those identical services. See Stone Lion, 110
USPQ2d at 1161; In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723
(CCPA 1968) (where there are legally identical goods, the channels of trade and
classes of purchasers are considered to be the same); American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022,
1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of
trade and classes of consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion). As such, the third du Pont
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factor – the similarity or dissimilarity of established, likely to continue trade
channels – also favors a finding of likelihood of confusion.
3. Conditions of sale
Next we consider the conditions under which the services are likely to be
purchased, e.g., whether on impulse or after careful consideration, as well as the
degree, if any, of sophistication of the consumers. Purchaser sophistication or
degree of care may tend to minimize likelihood of confusion. Conversely, impulse
purchases of inexpensive items may tend to have the opposite effect. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1695 (Fed. Cir. 2005).
Because the involved application and registration are unrestricted, we must
assume that both Applicant’s and Opposer’s restaurant services are sold to the
same purchasers under the same conditions. See e.g., In re Bercut-Vandervoort &
Co., 229 USPQ 763, 764 (TTAB 1986) (where both applicant’s and registrant’s goods
were identified as “wine,” applicant not permitted to distinguish its French wine by
extrinsic evidence of higher quality and price). Further, there is no evidence in the
record to support a finding that potential purchasers exercise a degree of care such
that the conditions of sale would weigh in favor of Applicant. Indeed, the record
shows the opposite insofar as Opposer’s restaurant services are relatively
inexpensive, with the average meal price falling in the range of $12-13. Lozoff
Deposition 20:21-22:23; 22:6-9. See Hard Rock Café Licensing Corp. v. Elsea, 48
USPQ2d 1400, 1407 (TTAB 1998) (“While ordinary consumers can be said to choose
Opposition No. 91210915
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their restaurants with a certain degree of care based on their own experience and
the recommendations of others, we do not find this fact to warrant the conclusion,
with respect to likelihood of confusion, that consumers exercise a high degree of
discrimination or sophistication with regard to their decision to patronize certain
eating establishments.”). This lesser standard of care makes confusion more likely.
See Palm Bay Imports, 73 USPQ2d at 1695. See also Specialty Brands, Inc. v. Coffee
Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984).
Accordingly, we find that this factor also weighs in favor of finding a likelihood of
confusion.
4. The number and nature of similar marks in use on similar services.
We will now consider the number and nature of similar marks in use on similar
services. “The purpose of a defendant introducing third-party uses is to show that
customers have become so conditioned by a plethora of such similar marks that
customers have been educated to distinguish between different such marks on the
bases of minute distinctions.” Palm Bay, 73 USPQ2d at 1694.
Applicant maintains that term “spin” is diluted and weak in the restaurant
industry. In support thereof, Applicant has made of record various use-based third-
party registrations to show that Opposer’s mark is diluted and entitled to a narrow
scope of protection for restaurant services.10 Applicant’s Notice of Reliance Ex. B, 5

10 Insofar as Registration No. 2916223 was cancelled on September 3, 2014 for failure to file
a Section 8 affidavit, it has not been considered. Furthermore, we have not considered
Registration No. 4296943 which was registered under Section 44(e) with no Section 8
affidavit yet filed.

Opposition No. 91210915
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TTABVUE 26-55. As we have often stated, because third-party registrations of
marks are not evidence that the registered marks are in use, they are of limited
probative value for demonstrating weakness of the marks. See In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). That being said, third-
party registrations may be used to show that a term has a meaning or significance
in the same way that dictionaries are used. Tektronix, Inc. v. Daktronics, Inc., 534
F.2d 915, 189 USPQ 693, 694 (CCPA 1976). See also The Institut National des
Appellations D'Origine v. Vintners International Co. Inc., 22 USPQ2d 1190, 1196
(Fed. Cir. 1992) (“third party registrations show the sense in which the word is used
in ordinary parlance and may show that a particular term has descriptive
significance as applied to certain goods or services.”) (internal citations omitted).
Two of the third-party registrations are of little relevance here because they
consist of the marks SPINOZAS and SPINNAKERS (Registration Nos. 3800384
and 1205013) which merely incorporate the letter string “s” “p” “i” “n” and project
an entirely different meaning and commercial impression. With regard to
Registration No. 4374394, which includes the term SPINX, we cannot definitively
say that consumers would perceive the word “spin” as a separable element from the
letter “x.” The remaining registrations for the marks SPINNERS and SPIN CAFE
are of minimal, if any, probative value because we cannot determine from the face of
the registrations whether the term “spin” is descriptive or generic of “restaurant
services” and therefore weak or deserving of a lesser degree of protection based on
the registrations.
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Applicant has also introduced excerpts from various web sites offering
restaurant services under the following marks:
● SPINNERS PIZZA PARLOR (www.spinnerspizzaparlor.com)
● SPINNERS (www.spinners.brnmgt.com)
● SPINN’S BURGER & BEER (www.spinnsrestaurant.com)
● TASTY SPIN (www.tastyspin.com)
● SPIN STANDARD STREET FOOD (losangeles.spingalactic.com)
● SPIN RESTAURANT (www.sarastotaraquetclub.com/spin_restaurant)
● SPINNELLI’S PIZZA & SUBS (www.spinnellispizzafrisco.com)
● SPIN RESTAURANT NIGHTCLUB (www.spinhagerstown.com)
● SPIN LOUNGE (www.facebook.com/spinlounge)
● SPIN CAFÉ (www.spincafe.net)
● SPIN MILWAKEE (www.milwakee.spingalectic.com)
● SPIN (www.aimbranded.com/thespinningpie).
Applicant’s Notice of Reliance Ex. E; 5 TTABVUE 105-138. The websites constitute
evidence that “the public may have been exposed to those internet websites and
therefore may be aware of the advertisements contained therein.” Rocket
Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011). That
being said, they give no indication as to actual sales, when each mark was adopted
or customer familiarity with the marks. Sports Authority Michigan Inc. v. PC
Authority Inc., 63 USPQ2d 1782, 1798 (TTAB 2002) (internal citations omitted).
Based on this record, this relatively limited evidence of third-party usage does not
Opposition No. 91210915
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indicate that the word “spin” when used in connection with “restaurant services” is
“attractive to many businesses.” Compare id. Further, the third-party evidence fails
to show that the different “Spin” restaurants are in the same trading areas which
would indicate that consumers are likely to encounter multiple “Spin” restaurants
and, therefore, learn to distinguish among them by looking to features other than
the word “Spin.” See Anthony’s Pizza & Pasta International Inc. v. Anthony’s Pizza
Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009), aff’d unpublished, No. 2010-1191
(Fed Cir. November 18, 2010). We therefore find this factor to be neutral.
5. The similarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression

We now turn to the du Pont likelihood of confusion factor regarding the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay, 73 USPQ2d at 1691. “The
proper test is not a side-by-side comparison of the marks, but instead ‘whether the
marks are sufficiently similar in terms of their commercial impression’ such that
persons who encounter the marks would be likely to assume a connection between
the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. In re Jack B. Binion, 93 USPQ2d 1531 (TTAB
2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In this case,
the average purchaser is an average consumer.
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Because Opposer’s and Applicant’s services are in part identical, the degree of
similarity between the marks that is necessary to support a finding of likely
confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Both parties’ marks are comprised, either in whole or in part, of the word “spin.”
With regard to Opposer’s mark SPIN!, the word “spin” constitutes the dominant
element of the mark. The addition of the exclamation point does little to detract
from the dominance of the word but instead reinforces its meaning. See Trademark
Manual of Examining Procedure (“TMEP”) § 1213.05(b)(ii)(c) (Jan. 2015)
(“Punctuation”) (“An exclamation point is used after an interjection or exclamation
to indicate a forceful utterance or strong feeling.”) (citation omitted). Definitions of
the word “spin” include “to turn or cause someone or something to turn around
repeatedly” and “to make something turn around quickly.” Opposer’s Notice of
Reliance Ex A (entry for “spin” from the online versions of Merriam-Webster and
MacMillian Dictionary; 9 TTABVUE 8 and 12. The word “spin” when used in
connection with restaurant services offering pizza has the more specific connotation
of spinning pizza dough. See Applicant’s Notice of Reliance (excerpts from website
entitled “Pizza Making” at pizzamaking.com and “Extra Cheese: The Art of
Spinning Pizza Dough”); 5 TTABVUE 119-125. Opposer testified that in selecting
its mark, it sought to evoke the baking process of Italian hand-spun pizza and as
well as the bicycle culture of Italy:
We wanted to project the personality of the Italian life-style of
authentic pizza which is hand-spun; therefore the word “Spin”;
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also representing a bicycle culture which is also Italian which
refers to the spinning of the bicycle wheels. Lozoff Deposition
13:17-24; 7 TTABVUE 14.

It felt serendipitous that the bicycling (spinning) related broadly
to the idea of spinning pizza. Applicant’s Notice of Reliance, Ex.
D (“Opposer’s Answer to Interrogatory No. 3”); 5 TTABVUE 96.

That being said, our analysis cannot be predicated on dissection of the involved
marks. See Stone Lion, 110 USPQ2d at 1161. Rather, we are obliged to consider the
marks in their entireties. Id. See also, Franklin Mint Corp. v. Master Mfg. Co., 667
F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not
be dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). Nonetheless, there is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. Stone Lion, 110 USPQ2d at 1161. In that regard, we
acknowledge that Applicant’s compound word mark SPINFIRE includes an
additional element, namely the word “fire.” Applicant argues that the addition of
this word changes the sound, appearance, connotation and overall commercial
impression so as to avoid a likelihood of confusion. More specifically, Applicant
contends that “the word ‘fire’ in SPINFIRE makes Applicant’s mark longer,
changes the overall sound, and adds a word with a completely unrelated meaning to
‘spin’ used by itself.” Applicant’s Brief, p. 4; 11 TTABVUE 9. Applicant also points
to third-party registrations for other marks incorporating the term FIRE as
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evidence that “fire” is distinctive when used in connection with restaurant services.
Applicant’s Notice of Reliance Ex. A; 5 TTABVUE 30.
Applicant’s arguments are unconvincing. Because the word “spin” appears first
in Applicant’s mark SPINFIRE, consumers are generally more inclined to focus on
the first word, prefix, or syllable in any trademark or service mark. See Presto
Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (stating that
“it is often the first part of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered”). See also Palm Bay, 73 USPQ2d at 1692
(“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because
“veuve” is the first word in the mark and the first word to appear on the label);
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first
notice the identical lead word). Thus, it is more likely that prospective consumers
encountering Applicant’s mark will focus on the first word in Applicant’s compound
word mark.
In addition, the record shows that the term “fire” has some suggestive
significance in relation to the involved services insofar as it alludes to “Neapolitan
pizza,” a style of pizza cooked in a stone or wood fired oven. See Lozoff Deposition
39:3-13; 7 TTABVUE 40. Opposer presented testimony and evidence that its
restaurants serve pizza baked in a stone fire oven (Lozoff Deposition 10:22-11:2; 7
TTABVUE 11-12) and that it often promotes and advertises the fact that its offers
“stone-fired pizzas” in the “Neapolitan tradition.” Id. at 39:3-13, Ex. Bates No. 998,
Opposition No. 91210915
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5 TTABVUE 40. This is reflected in the fact that all of Opposer’s branded SPIN!
restaurants feature a stone-fired oven as its “centerpiece.”
And we design [each restaurant] so that what guests see when they
walk in is the fire in the oven and our pizza bakers turning pizzas in
the oven, getting them close to the fire, away from the fire, and then
finishing them off and taking them out.

Id. at 51:1-52:3, 5 TTABVUE 52. The same connotation may be gleaned from
Applicant’s mark, given that the services include restaurants featuring pizza. We
therefore find that Applicant’s combined word mark SPINFIRE is suggestive of the
baking and cooking process for Neapolitan style pizza made from freshly spun
dough, a food item which could conceivably be offered as part of Applicant’s
“restaurant services featuring pizza.”
Applicant argues that the term “spin” is conceptually weak, relying on the
doctrine of judicial estoppel in connection with the prosecution of Opposer’s
application for the mark SPIN! that eventually matured into its pleaded
Registration No. 3302233. The Examining Attorney had initially refused
registration of Opposer’s SPIN! mark for “restaurant services” under Section 2(d)
based on the registered marks SPIN for “coffee based beverages; espresso based
beverages” and SPIN CAFFE for “coffee house; coffee shop.” Applicant contends
that Opposer “only argued that ‘spin’ was a common term when it suited its own
trademark application and now claims that it has extensive rights in this
formative,” and that its present position in this case is ‘irreconcilable inconsistent.’”
Applicant’s Brief, p. 5. 11 TTABVUE 10. Applicant also points to a prior proceeding
involving Opposer, Spin Concepts Inc. v. Fosco, Inc., Opposition No. 91202544
Opposition No. 91210915
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(TTAB, January 15, 2014), asserting that because the Board made no statements
regarding the scope of protection afforded Opposer’s registered mark SPIN!, the
mark is undeserving of protection now.
To the extent that Opposer took a contrary position in any of these instances,
Opposer’s actions are “merely illuminative of shade and tone in the total picture
confronting the decision maker” and cannot serve as an admission against interest
or substitute for the Board in reaching its own ultimate conclusion on the record
before us in this case. See Interstate Brands, Corp. v. Celestial Seasonings, Inc., 576
F.2d 926, 198 USPQ 151, 154 (CCPA 1978). See also Stabilisierungsfonds fur Wein
v. Zimmermann-Graeff KG, 209 USPQ 434, 436 (TTAB 1980). We do not find
Opposer’s prior actions concerning the prosecution of its SPIN! mark to be of
probative value here. Indeed, the record fails to show whether all of the third-party
registrations relied upon by Opposer remain subsisting today. As to any statements
the Board made in Spin Concepts Inc. v. Fosco, Inc., that case was involved a
different applicant and mark, and cannot be relied upon by the Board now in
making a determination here.
Applicant also argues that because the USPTO permitted the marks SOUL and
SOULFIRE, QUICK and QUICKFIRE, and MOUNTAIN and MOUNTAIN
FIRE, all for restaurant services, to coexist on the Principal Register, the Board
should dismiss the opposition. In support thereof, Applicant relies solely on copies of
each registered mark obtained from the USPTO database. We are unable to
determine, however, from the face of the registration certificates the context under
Opposition No. 91210915
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which these third-party registrations were permitted. Cf. In re Nett Designs, Inc.,
263 F.3d 1339, 57 USPQ2d 1564, (Fed. Cir. 2001) (“Even if some prior registrations
had some characteristics similar to Nett Design’s application, the PTO’s allowance
of such registrations does not bind the Board or this court.”). For this reason,
Applicant’s evidence is of limited utility.
We therefore find that the involved marks SPIN! and SPINFIRE are similar in
sound, appearance, connotation and commercial impression, especially given the
identical nature of the services, notwithstanding the suggestive connotation of the
word “spin.” Indeed, despite the suggestive meaning of Opposer’s mark, it is still
deserving of protection. See In re Chica Inc., 84 USPQ2d 1845, 1850 (TTAB 2007)
(quoting In re Colonial Stores, 216 USPQ 793, 795 (TTAB 1982). In view of the
forgoing, the first du Pont factor also favors a finding that confusion is likely.
In the present case, each of the du Pont factors discussed above either favor a
finding of likelihood of confusion or is deemed neutral. Accordingly, we find that
Opposer has proved its standing, as well as priority and likelihood of confusion
under its Section 2(d) claim by a preponderance of the evidence.
Decision: The opposition is sustained.