Ten: The Enthusiast Network Magazines, LLC

Trademark Trial and Appeal Board

Jun 19, 2015

No. 85953003 (T.T.A.B. Jun. 19, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: June 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ten: The Enthusiast Network Magazines, LLC
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Serial No. 85953003
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Diana R. Malhis of Source Interlink Companies Inc.,
for Ten: The Enthusiast Network Magazines, LLC.

Christopher Reams, Trademark Examining Attorney, Law Office 112,
Mitchell Front, Managing Attorney.
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Before Bucher, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Ten: The Enthusiast Network Magazines, LLC (“Applicant”) seeks registration
of the mark shown below

Serial No. 85953003
2

for “Burritos.”1 The Examining Attorney refused registration under Section 2(d) of
the Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the
previously-registered mark LOW RIDER, in typed format,2 for “sandwiches,”3 that
use of Applicant’s mark in connection with Applicant’s goods is likely to cause
confusion or mistake or to deceive. After the refusal became final, Applicant
appealed and filed a motion for reconsideration which was denied. Applicant and
the Examining Attorney filed briefs.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all 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 Company, 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 goods. 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)

1 Application Serial No. 85953003, filed June 6, 2013 based on Applicant’s intent to use the
mark in commerce under Section 1(b) of the Trademark Act.
2 There is no substantive difference between “standard character” marks and marks in
“typed” form. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012)
(“until 2003, ‘standard character’ marks formerly were known as ‘typed’ marks, but the
preferred nomenclature was changed in 2003 to conform to the Madrid Protocol … we do
not see anything in the 2003 amendments that substantively alters our interpretation of
the scope of such marks”).
3 Registration No. 1953335, issued January 30, 1996; renewed.
Serial No. 85953003
3

goes to the cumulative effect of differences in the essential characteristics of the
goods and differences in the marks.”).
Turning first to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). That is, we may
not dissect the marks into their various components. In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v.
Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981).
The marks are quite similar in appearance, sound, connotation and overall
commercial impression, because the literal portion of Applicant’s mark is essentially
identical to Registrant’s mark. Applicant’s use of stylized lettering and the design
portion of its mark are not enough to distinguish it from the cited mark. Indeed, not
only is what Applicant refers to as its “golo man” design smaller and less prominent
than the word LOWRIDER, but consumers are likely to remember and use the word
LOWRIDER to request Applicant’s burritos. In re Appetito Provisions Co. Inc., 3
USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the marks comprises both
a word and a design, then the word is normally accorded greater weight because it
would be used by purchasers to request the goods or services” and “because
applicant’s mark shares with registrant’s mark that element responsible for
creating its overall commercial impression, the marks are confusingly similar”); see
also, In re Viterra Inc., 101 USPQ2d at 1911 (“the verbal portion of a word and
Serial No. 85953003
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design mark likely will be the dominant portion”). Applicant’s presentation of the
word LOWRIDER in a particular stylized format does not reduce the likelihood of
confusion because the cited mark is in typed format, meaning Registrant could
display it in a stylized manner very similar or even identical to the way Applicant
displays the word LOWRIDER. Id. at 1909, and cases cited therein. It also does not
matter that in Applicant’s mark LOWRIDER is “telescoped” and presented as one
word rather than two, especially because the Examining Attorney has introduced a
dictionary definition which indicates that “low rider,” presented as two words, is an
alternative spelling for “lowrider,” which means “[a] customized car whose springs
have been shortened so that the chassis rides close to the ground ….” Office Action
of July 12, 2013.4 See generally, In re Carlson, 91 USPQ2d 1198, 1200 (TTAB 2009)
(URBANHOUZING merely descriptive of real estate brokerage, real estate
consultation and real estate listing services); In re A La Vieille Russie Inc., 60
USPQ2d 1895, 1897 n.2 (TTAB 2001) (“the compound term RUSSIANART is as
merely descriptive as its constituent words, ‘Russian Art’”). In short, because they
both consist entirely or predominantly of a form of the word LOWRIDER, the marks
look quite similar, sound identical and convey identical meanings.5 This factor
therefore weighs in favor of a finding of likelihood of confusion.6

4 http://education.yahoo.com/reference/dictionary/entry/lowrider.
5 Applicant has not introduced any evidence whatsoever, let alone any evidence that its
“golo man” design results in its mark having a different connotation than the term LOW
RIDER alone.
6 Applicant’s argument that the Office’s registration of identical or similar third-party
marks for apparently similar goods compels registration of the involved mark fails for two
reasons. First, Applicant was informed in the November 25, 2014 denial of its Request for
Serial No. 85953003
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Turning to the goods and channels of trade, they need not be identical or even
competitive in order to support a finding of likelihood of confusion. In fact,
notwithstanding Applicant’s argument that “registration for one good does not
extend to other goods,” Applicant’s Appeal Brief at 2, it is enough that the goods are
related in some manner or that the circumstances surrounding their marketing are
such that they would be likely to be seen by the same persons under circumstances
which could give rise, because of the marks used, to a mistaken belief that
Applicant’s and Registrant’s goods originate from or are in some way associated
with the same source or that there is an association between the sources of the
goods. Hilson Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423, 1432 (TTAB 1993); In re Melville Corp., 18 USPQ2d 1386, 1388
(TTAB 1991); In re International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978).
The goods are quite similar, as revealed by the following dictionary definitions
introduced by the Examining Attorney:
Sandwich: “Two or more slices of bread with a filling
such as meat or cheese placed between them.”

Reconsideration that the submission of mere lists of registrations does not make the
registrations of record, but Applicant failed to make of record any of the registrations upon
which it relies. Second, “[n]either the Trademark Examining Attorney nor the Board is
bound to approve for registration an Applicant’s mark based solely upon the registration of
other assertedly similar marks for other goods or services having unique evidentiary
records.” In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); see also, In re Nett
Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board must
decide each case on its own merits … Even if some prior registrations had some
characteristics similar to Nett Designs’ application, the PTO’s allowance of such prior
registrations does not bind the Board or this court.”).
Serial No. 85953003
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Burrito: “A flour tortilla wrapped around a filling, as of
beef, beans, or cheese.”

Office Action of July 12, 2013.7 In other words, sandwiches and burritos are
conceptually similar, because, as the Examining Attorney points out, both “are
composed of a flour based exterior containing a filling such as meat or cheese.”
Examining Attorney’s Appeal Brief at 8. Furthermore, the Examining Attorney has
introduced evidence that burritos and sandwiches are offered by the same sources
under the same mark, further establishing a relationship between these goods.
Specifically, the Examining Attorney has made of record nine third-party use-based
registrations showing that a single mark has been registered for both sandwiches
and burritos, including the following:
MESQUITE RIVER MARKET in standard characters
(Reg. No. 4222413) is registered for “Sandwiches, wraps
in the nature of sandwiches, burritos, kolaches, bakery
goods.”

(Reg. No. 3308268) is registered for
“Packaged sandwiches, breakfast sandwiches, biscuits,
pastries, snack cakes, and burritos.”

EL PUESTO DE PEDRO in standard characters (Reg. No.
3563785) is registered for “Burritos; Sandwiches.”

MARKETFARE in typed format (Reg. No. 2579293) is
registered for “Prepackaged fresh or frozen sandwiches
and burritos; pizzas; bakery goods.”

7 http://education.yahoo.com/reference/dictionary/entry/sandwich and
http://education.yahoo.com/reference/dictionary/entry/burrito.
Serial No. 85953003
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ESSENTIAL FOODS in typed format (Reg. No. 1911608)
is registered for “prepared vegetarian food products,
namely vegetarian sandwiches and vegetarian burritos.”

Office Action of July 12, 2013. “Third-party registrations which cover a number of
differing goods and/or services, and which are based on use in commerce, although
not evidence that the marks shown therein are in use on a commercial scale or that
the public is familiar with them, may nevertheless have some probative value to the
extent that they may serve to suggest that such goods or services are of a type
which may emanate from a single source.” See, In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1998); see also In re Davey Prods. Pty. Ltd., 92
USPQ2d 1198, 1203 (TTAB 2009).
The Examining Attorney has also established that sandwiches and burritos
move in the same channels of trade and are offered to the same classes of
consumers. Specifically, website printouts reveal that:
Under the heading “Freezer Section” the Bob Evans
website features “breakfast sandwiches,” which include
“sausage egg cheese,” “turkey sausage egg and cheese,”
“egg and cheese” and “harvest” burritos.

The Inderbitzin Distributors Inc. website includes, under
the heading “Ready-to-Eat Sandwiches & Burritos,” a
variety of “Hot & Cold Sandwiches” on the one hand and
“Breakfast Burritos and Lunch Burritos To Go” on the
other.

Country Catering’s website, under the heading “The Deli”
promotes sandwiches and “burritos and wraps” side-by-
side.

Under the heading “Fresh Food,” Wawa’s website features
a “Breakfast Burrito” on the same page as “Breakfast
Hoagies.”
Serial No. 85953003
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Burger King’s website includes a “Breakfast Menu” which
includes a Sausage, Egg & Cheese Muffin Sandwich, a
Sausage Breakfast Burrito and a Southwestern Breakfast
Burrito.

McDonald’s website includes pages for a Sausage Burrito
and “Burgers & Sandwiches.”

The breakfast menu section of Sonic’s website includes a
variety of breakfast burritos and a CroisSONIC®
Breakfast Sandwich.

Red Table Café’s website lists, on the same page,
“Breakfast Sandwiches” and “Breakfast Burritos.”

The “Made-to-Order Food” page of Sheetz’s website
includes listings for “Deli Sandwiches,” “Grilled Chicken
Sandwiches,” “Breakfast Sandwiches” and “Burritos.”

The Carl’s Jr. website features nutritional information
about its Big Country® Breakfast Burrito and its Spicy
Chicken Sandwich.

The menu on the Bravo Burgers website includes Bravo
Sandwiches and Bravo Burritos.

Office Actions of July 12, 2013 and April 14, 2014. This page from the Jack in the
Box website is representative of the ways these fast food and other restaurants offer
burritos and sandwiches in the same channels of trade to the same consumers, often
under the same or related marks:
Serial No. 85953003
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Office Action of April 14, 2014.
In short, because sandwiches and burritos are by definition so closely related,
have such similar characteristics, and are so often sold under the same marks in the
same channels of trade to the same classes of consumers, these factors also weigh in
favor of finding a likelihood of confusion.8

8 Applicant argues that confusion is unlikely because of its longstanding use of the
LOWRIDER mark and “Golo man design” which are widely-recognized by the “automotive
community.” This is irrelevant, because “[t]he authority is legion that the question of
registrability of an applicant’s mark must be decided on the basis of the identification of
goods set forth in the application ….” Octocom Systems, Inc. v. Houston Computers Services,
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Serial No. 85953003
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There is no relevant evidence or argument concerning the remaining likelihood
of confusion factors, and we therefore treat them as neutral.
Conclusion
The marks are similar and Applicant’s failure to introduce any evidence leaves it
unable to counter the Examining Attorney’s extensive evidence that the goods are
closely related and offered in the same channels of trade to the same classes of
consumers.
Decision: The refusal to register Applicant’s mark under Section 2(d) of the Act is
affirmed.