Studner Enterprises, Inc.

Trademark Trial and Appeal Board

Nov 27, 2000

No. 75380198 (T.T.A.B. Nov. 27, 2000)

Paper No. 13
HRW
11/27/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Studner Enterprises, Inc.
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Serial No. 75/380,198
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Leon I. Edelson for Studner Enterprises, Inc.
Christine M. Baker, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).
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Before Quinn, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Studner Enterprises, Inc. has filed an application to
register the mark BARNACLE’S RESTAURANT & LOUNGE for
“restaurant services.”1
Registration has been finally refused under Section
2(d) on the ground of likelihood of confusion with the mark

1 Serial No. 75/380,198, filed October 27, 1997, claiming a date
of first use of September 1983 and a date of first use in
commerce of September 1985. A disclaimer has been entered of the
words RESTAURANT & LOUNGE.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/380,198
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BARNACLE’S SEAFOOD, OYSTERS & SPORTS and design, in the
form depicted below, which is registered for
“restaurant/bar.”2
The refusal has been appealed and both applicant and the
Examining Attorney have filed briefs. An oral hearing was
not requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont3 factors which are
relevant under the circumstances at hand. Two key
considerations in any analysis are the similarity or
dissimilarity of the respective marks and the similarity or
dissimilarity of the goods or services with which the marks
are being used. See In re Azteca Restaurant Enterprises,
Inc., 50 USPQ2d 1209 (TTAB 1999) and the cases cited
therein.

2 Registration No. 2,171,068, issued July 7, 1998, claiming first
use dates of March 22, 1993. A disclaimer has been made of the
words SEAFOOD, OYSTERS & SPORTS. As pointed out by the Examining
Attorney, although the registration issued in Class 41, the
correct class for the recited services is Class 42.
3 See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
Ser No. 75/380,198
3
Looking to the marks, we agree with that Examining
Attorney that the dominant part of both applicant’s and
registrant’s marks is the word BARNACLE’S. While it is
true that marks must be considered in their entireties in
determining likelihood of confusion, it is also well
established that there is nothing improper in giving more
or less weight to a particular portion of a mark. See In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). Although disclaimed matter cannot be ignored,
the fact remains that consumers are more likely to rely on
the non-descriptive portion of the mark as an indication of
source. See Hilson Research Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993). Moreover,
if one of the marks comprises both words and a design, the
words are normally accorded greater weight because the
words are what would be used by consumers to request or
refer to the services. This is particularly true when
restaurant services are involved, since consumers are often
likely to patronize restaurants on the basis of word-of-
mouth recommendations. See In re Appetito Provisions Co.,
3 USPQ2d 1553 (TTAB 1987).
Here, the descriptive wording RESTAURANT & LOUNGE in
applicant’s mark has little or no significance as an
indicator of a particular source. It is simply the generic
Ser No. 75/380,198
4
term for an establishment of this type. The specimens
themselves demonstrate that consumers would refer to
applicant’s restaurant as BARNACLE’S. (See comment, “Loved
it, you need to put a Barnacles [sic] in West Virginia”).
In registrant’s mark the wording SEAFOOD, OYSTERS & SPORTS
merely describes the type of food available, along with the
type of entertainment. This also is a description which
would be appropriate for many such establishments and,
thus, has little source-indicating significance. It is the
word BARNACLE’S which is the portion of each mark which
would be relied upon as the identifier of the particular
source of the restaurant services being provided
thereunder. See In re Dixie Restaurants, Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Applicant argues that the design of a clam serving
seafood is the distinctive feature of registrant’s mark,
and cannot be ignored in viewing the marks as a whole.
While we agree that this design feature must be considered
in comparing the marks in their entireties, we also are
thoroughly convinced that it is the word BARNACLE’S by
which consumers would refer to registrant’s restaurant/bar
services and not a description of the clam holding a beer
and a plate of seafood. Although the design may be eye-
Ser No. 75/380,198
5
catching, it is not the dominant portion of the mark for
purposes of source-identification.
Accordingly, when the respective marks are considered
in their entireties, we find that, although there are
obvious differences in appearance and sound, both marks are
dominated by the word BARNACLE’S and, as a result, create
highly similar commercial impressions.
Turning to the services, we agree with the Examining
Attorney that applicant’s restaurant services and
registrant’s restaurant/bar services are identical.
Despite the fact that the cited registration issued in
Class 41, the restaurant services recited in the
registration are the same as applicant’s services.
Furthermore, it is obvious from applicant’s mark that its
restaurant also features a lounge or bar.
Applicant has also raised the issue of the lack of
actual confusion, with applicant’s assertion of use of its
mark since 1983 and registrant’s claim of use since 1993.
This factor can be given little probative weight, however,
because registrant has not had the opportunity to be heard
from on this point. See In re National Novice Hockey
League, Inc., 222 USPQ 638 (TTAB 1984). Although applicant
points out that it is located in Ormond Beach, Florida,
whereas registrant’s restaurants are purportedly located in
Ser No. 75/380,198
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Atlanta, Georgia, any present geographic separation in the
area of use of the marks is irrelevant.4 Federal
registration creates the presumption that registrant has
the exclusive right to use its mark throughout the United
States. See Coach House Restaurant Inc. v. Coach and Six
Restaurants Inc., 934 F.2d 1551, 19 USPQ2d 1401 (Fed. Cir.
1991). This is not a concurrent use proceeding in which
the issue of concurrent registrations with geographic
limitations as to areas of use is taken under
consideration. See Trademark Rule 2.133(c).
Finally, applicant argues that applicant has earlier
dates of first use and first use in commerce than those
claimed by registrant. Priority of use, however, is not
germane to the determination of an applicant’s right to
register in an ex parte proceeding. See In re Calgon
Corp., 435 F.2d 596, 168 USPQ 278 (CCPA 1971). Any
challenge to the cited registration must be raised in a
cancellation proceeding.
Accordingly, in view of the similarity of commercial
impressions of the respective marks and the use thereof in

4 Applicant has attached portions of the file history of the
cited registration to its brief. This evidence is untimely under
Trademark Rule 2.142(d) and will not be considered. Although the
Examining Attorney did not raise an objection thereto, she did
not address the evidence on the merits. Even if we considered
the evidence, we would reach the same decision on the case.
Ser No. 75/380,198
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connection with identical restaurant services, we find
confusion likely.
Decision: The refusal to register under Section 2(d)
is affirmed.
T. J. Quinn
B. A. Chapman
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board
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