Starr Restaurant Organization, L.P.

Trademark Trial and Appeal Board

Jun 3, 2011

No. 77424964 (T.T.A.B. Jun. 3, 2011)

Mailed:
June 3, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Starr Restaurant Organization, L.P.
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Serial No. 77424964
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David V. Radack of Eckert Seamans Cherin & Mellott, LLC for
Starr Restaurant Organization, L.P.

Ellen J.G. Perkins, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
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Before Bucher, Bergsman and Lykos,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Starr Restaurant Organization, L.P. (“applicant”)
filed an intent-to-use application on the Principal
Register for the mark TNT TACOS ‘N TEQUILA, in standard
character format, for “bar and restaurant services,” in
International Class 43. Applicant disclaimed the exclusive
right to use the term “Tacos ‘N Tequila.”
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. § 1052(d), on the ground that applicant’s
mark is likely to cause confusion with Registration No.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77424964
2
3641339 for the mark T&T TACOS TEQUILA for “carry-out
restaurants; restaurant and bar services,” in International
Class 43.1 The registrant disclaimed the exclusive right to
use the words “Tacos” and “Tequila.”
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the issue of likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks”).

1 Issued June 16, 2009.
Serial No. 77424964
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A. The similarity or dissimilarity and nature of the
services as described in the application and
registrations, the likely-to-continue channels of
trade and classes of consumers.

The services are legally identical. Because the
services described in the application and the cited
registration are legally identical, we must presume that
the channels of trade and classes of purchasers are the
same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”).
B. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn now to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
Serial No. 77424964
4
de Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd., 9
USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
are mindful that where, as here, the services are in part
identical, the degree of similarity necessary to find
likelihood of confusion need not be as great 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); Schering-Plough
HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1325 (TTAB 2007); Jansen Enterprises Inc. v. Rind,
85 USPQ2d 1104, 1108 (TTAB 2007).
Moreover, in comparing the marks, 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 terms of their overall commercial
impression so that confusion as to the source of the goods
offered under the respective marks is likely to result.
San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735,
1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir.
Serial No. 77424964
5
June 5, 1992). The proper focus is on the recollection of
the average customer, who retains a general rather than a
specific impression of the marks. Winnebago Industries,
Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB
1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975). In this case, the average customer would
be an ordinary consumer who patronize restaurants and bars.
The marks are similar in appearance and sound because
they share similar letters and words in the same structure.
The marks start with the letters TNT or T&T followed by
TACOS ‘N TEQUILA or TACOS TEQUILA. The letters TNT are
phonetically equivalent to T&T and the terms TACOS ‘N
TEQUILA and TACOS TEQUILA are phonetically similar. In
this regard, the ampersand (&) in T&T is a symbol for the
word “and”2 and “‘N” is a contraction of the word “and.”3
Thus, any differences in the appearance and sound of the
marks are de minimis.
The marks engender the same commercial impression. In
TNT TACOS ‘N TEQUILA, the letters TNT refer to the first
letters in Tacos ‘N Tequila. In the mark T&T TACOS

2 The Random House Dictionary of the English Language (Unabridge),
p. 70 (2nd ed. 1987). The Board may take judicial notice of dictionary
evidence. University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
3 Compact Oxford English Dictionary (askoxford.com) attached to the
March 22, 2010 Office Action.
Serial No. 77424964
6
TEQUILA, the letters T&T refer to Tacos and Tequila. In
other words, consumers will perceive TNT and T&T as
referencing “Tacos and Tequila,” Mexican fare.
Applicant contends that its use of the letters TNT has
a double meaning as an acronym for TACOS ‘N TEQUILA and as
an abbreviation for the explosive.4 We are not persuaded.
As indicated above, when consumers view applicant’s mark
TNT TACOS ‘N TEQUILA, they are going to perceive TNT as
referring to TACOS ‘N TEQUILA, not an explosive. On the
other hand, we acknowledge that if applicant were to use
TNT TACOS ‘N TEQUILA in connection with a design depicting
an explosion, there could be a double entendre with letters
TNT interpreted as the explosive. However, likelihood of
confusion is determined based on the mark as shown in the
drawing of an application and the mark shown in the cited
registration. Thus, applicant is free to use its mark
without reference to a design depicting an explosion. In
re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1268 (TTAB
2011). See also Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000) (when the
registered mark is a typed drawing, it is irrelevant that
registrant has a particular display for the mark, and the
Board was correct to ignore those features); In re Shell
Serial No. 77424964
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Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir.
1993) (rejecting applicant's argument that it would use the
applied-for mark in connection with its other trademarks;
registrability is based on the description of the mark in
the application); In re Lebanese Arak Corp., 94 USPQ2d
1215, 1220 (TTAB 2010) (“If applicant were to obtain a
registration for its mark it would not be limited to use of
the mark in conjunction with this trade dress, or in
conjunction with the words ‘Armenian Wine,’ or to any
particular rendition now in use”). Furthermore, “[i]t is
settled … that a distinction in trade dress cannot weigh
against likelihood of confusion with respect to the
registration of a simple word mark like [TNT TACOS ‘N
TEQUILA].” Kimberly Clark Corp. v. H. Douglas Enterprises,
Ltd., 774 F.2d 1144, 1147, 227 USPQ 541, 543 (Fed. Cir.
1985).
In view of the foregoing, we find that the marks are
similar in terms of appearance, sound, meaning and
commercial impression.
C. Balancing the factors.
In view of the facts that the marks are similar and
the services are legally identical and the presumption that
the services move in the same channels of trade and are

4 Applicant’s Brief, p. 2.
Serial No. 77424964
8
sold to the same classes of consumers, we find that
applicant’s mark TNT TACOS ‘N TEQUILA for “bar and
restaurant services” is likely to cause confusion with the
mark T&T TACOS TEQUILA for “carry-out restaurants;
restaurant and bar services.”
Decision: The refusal to register is affirmed.