The Works Gourmet Burger Bistro, Inc.

Trademark Trial and Appeal Board

Nov 29, 2013

No. 76704959 (T.T.A.B. Nov. 29, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
November 29, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re The Works Gourmet Burger Bistro, Inc.
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Serial No. 76704957
Serial No. 76704959
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David K. Hou of Boylan Code LLP for The Works Gourmet Burger Bistro, Inc.

Warren L. Olandria, Trademark Examining Attorney, Law Office 112 (Angela
Wilson, Managing Attorney).
_____

Before Kuhlke, Bergsman and Adlin, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
The Works Gourmet Burger Bistro, Inc., (“applicant”) filed intent-to-use
applications for the marks THE WORKS GOURMET BURGER BISTRO and
design, shown below (Serial No. 76704957),

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and THE WORKS GOURMET BURGER BISTRO, in standard character form
(Serial No. 76704959). Both applications are for the following goods and services as
amended:
Clothing, namely, t-shirts, tank tops, vests, jackets,
sweatshirts, hats and baseball caps related to restaurant
services and food products, in Class 25; and
Operation of restaurant services; operation of carry-out
food services, in Class 43.
In both applications, applicant disclaimed the exclusive right to use the term
“Gourmet Bistro Burger.”
The Trademark Examining Attorney refused to register applicant’s marks
pursuant to Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that they so resemble the previously registered mark THE WORKS, in
typed drawing form, for inter alia “restaurant services; take-out restaurant
services,” in Class 43, as to be likely to cause confusion.1
Preliminary Issues
A. Consolidation
When, as here, applicant has filed ex parte appeals to the Board in two
copending applications, and the cases involve common issues of law or fact, the
Board, upon request by the applicant or examining attorney or upon its own
initiative, may order the consolidation of the appeals for purposes of briefing, oral
hearing, and/or final decision. TBMP § 1214 (June 2013). See also, e.g., In re

1 Registration No. 2944307, issued April 26, 2005; Sections 8 and 15 affidavits accepted and
acknowledged.
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Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (Board sua sponte consolidated two
appeals); In re Country Music Association, Inc., 100 USPQ2d 1824, 1827 (TTAB
2011) (same); In re Bacardi & Co. Ltd., 48 USPQ2d 1031, 1033 (TTAB 1997) (Board
sua sponte considered appeals in five applications together and rendered single
opinion). Accordingly, the Board consolidates these appeals. References to the
record refer to Application Serial No. 76704957 unless otherwise indicated.
B. Previously-Cited Registration Nos. 2699070 and 3776763.
In the first Office actions (February 7, 2011), the Trademark Examining
Attorney refused to register applicant’s marks under Section 2(d) of the Trademark
Act on the ground that applicant’s marks so resemble the registered mark WORKS,
in typed drawing form, for inter alia “clothing, namely t-shirts related to
motorsports, motorsports racing jerseys, and motorcycle racing parts,” in Class 25,2
and the registered mark THE WORKS BAKERY CAFE and design for inter alia
restaurant services, in Class 43, as to be likely to cause confusion.3
In an office action dated February 29, 2012, the Trademark Examining
Attorney also cited the mark in Registration No. 2944307 for the mark THE
WORKS, noted above, as a bar to registration under Section 2(d).
However, in the October 10, 2012 “Final” Office actions, the Trademark
Examining Attorney refused to register applicant’s marks under Section 2(d) of the
Trademark Act only with respect to Registration No. 2944307.

2 Registration No. 2699070, issued March 25, 2003; renewed.
3 Registration No. 3776763, issued April 20, 2010.
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For the reasons set forth below, the refusal to register
under Trademark Act Section 2(d) is now made FINAL
with respect to U.S. Registration No(s). 2944307.
The October 10, 2012 “Final” Office actions did not reference Registration No.
2699070 or Registration No. 3776763.
In its appeal briefs, at footnote 3, page 5, applicant noted that the “Final
Office Action was silent as to the Examiner’s previous objections based on cited U.S.
Reg. No. 3776763 for the mark BAKERY CAFE THE WORKS & design or U.S. Reg.
No. 2699070 for the mark THE WORKS; it is Applicant’s understanding that those
registrations no longer form the basis for any 2(d) refusal to register.”
In his appeal briefs, the Trademark Examining Attorney stated that the
likelihood of confusion refusal is based on both Registration Nos. 2699070 and
2944307. The Trademark Examining Attorney expressly withdrew the refusal
based on Registration No. 3776763. In his briefs, the Trademark Examining
Attorney incorrectly stated that in the October 10, 2012 Office actions, he had made
final the refusal based on Registration No. 2699070. The Trademark Examining
Attorney did not reference applicant’s footnote 3 discussed above.
When a Trademark Examining Attorney issues a “Final” refusal, the
Examining Attorney is required to restate any refusals that remain outstanding.
TMEP § 714.04 (October 2013). The Trademark Examining Attorney must also
reference any refusals or requirements that have been withdrawn. Id. See also
TMEP § 713.02 (“Every refusal or requirement made in a prior Office action that is
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still outstanding must be referenced in any subsequent action.”). According to
TMEP § 713.02,
A refusal or requirement issued in a previous action
remains in effect unless the examining attorney
specifically indicates that it has been withdrawn,
obviated, or satisfied. Thus, if an examining attorney
issues an Office action that does not mention an
outstanding refusal or requirement that was raised in a
previous action, the refusal or requirement may
nonetheless be made final in a subsequent action, if the
application is otherwise in condition to be made final.
Although the Trademark Examining Attorney did not expressly withdraw the
refusal to register applicant’s marks based on Registration No. 2699070, we find
that the Trademark Examining Attorney did in fact withdraw that registration as a
basis for refusing registration when he issued his October 10, 2012 “Final” Office
action referencing only Registration No. 2944307. The Trademark Examining
Attorney did not follow procedure and issue a “Final” refusal under Section 2(d)
based on Registration No. 2699070 as required by TMEP § 714. Because the “Final”
Office action referenced only Registration No. 2944307, applicant considered only
the mark and the services identified in that registration in making its
determination whether to appeal the refusal. To allow the Trademark Examining
Attorney to maintain the refusal based on Registration No. 2699070 unfairly
prejudices applicant.
In view of the foregoing, we consider Registration No. 2944307 as the only
basis for the Section 2(d) refusal.

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C. Evidence filed with applicant’s brief.
Applicant submitted evidence, not previously made of record, with its appeal
brief. The Trademark Examining Attorney lodged an objection to the evidence
attached to applicant’s brief on the ground that it was not timely filed. Applicant
did not file a reply brief or otherwise contest the objection.
Trademark Rule 2.142(d) provides the following:
The record in the application should be complete prior to
the filing of an appeal. The Trademark Trial and Appeal
Board will ordinarily not consider additional evidence
filed with the Board by the appellant or by the examiner
after the appeal is filed. After an appeal is filed, if the
appellant or the examiner desires to introduce additional
evidence, the appellant or the examiner may request the
Board to suspend the appeal and to remand the
application for further examination.
The objection is therefore sustained and we will not consider the evidence
submitted with applicant’s brief.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in 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 goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper
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Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
A. The similarity or dissimilarity and nature of the services as described in the
applications and registration, established likely-to-continue channels of trade
and classes of consumers.

Applicant’s “operation of restaurant services; operation of carry-out food
services” and registrant’s “restaurant services; take-out restaurant services” are
identical. Applicant did not argue that there were any differences between the
services.
Because the services described in the applications and registration are
identical, we must presume that the channels of trade and classes of purchasers are
the same. See American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); 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.”). 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).
We find that the du Pont factors of similarity of services and channels of
trade favor a finding of likelihood of confusion.

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B. The similarity or dissimilarity of the marks in their entirety in terms of
appearance, sound, connotation and commercial impression.

We turn next 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 De Nemours & Co., 177
USPQ at 567. In comparing the marks, 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 as where there is a recognizable disparity between
the services. See 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).
Further, 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 services 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. June 5, 1992). The proper focus is on the recollection of the average
customer, who retains a general rather than 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). Since
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the services at issue are restaurant services without any limitations or restrictions,
the average customer is any person who patronizes a restaurant.
Applicant’s marks and registrant’s mark are similar to the extent that they
all feature the term “The Works.” Nevertheless, applicant’s marks contain
additional matter which applicant argues distinguishes the marks.
Because the similarity or dissimilarity of the marks is determined based on
the marks in their entireties, our analysis cannot be predicated on dissecting the
marks into their various components; that is, the decision must be based on the
entire marks, not just part of the marks. In re National 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 23, 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”). On the other hand, different
features may be analyzed to determine whether the marks are similar. Price Candy
Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268
(CCPA 1955). In fact, 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. In re National Data Corp., 224 USPQ at 751.
We find that the term “The Works” is the dominant element of applicant’s
marks. With respect to the term “Gourmet Bistro Burgers,” it is well-settled that
because the term is disclaimed, and merely descriptive, it is entitled to less weight
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in our likelihood of confusion determination. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1983) (“Regarding descriptive
terms, this court has noted that the descriptive component of a mark may be given
little weight in reaching a conclusion on the likelihood of confusion”); In re Dixie
Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re
Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is
often “less significant in creating the mark’s commercial impression”).
That “The Works” is the dominant element of applicant’s marks is further
reinforced by it being the first part of the marks. See Presto Products Inc. v. Nice-
Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t 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 Imports Inc. v. Veuve Clicquot Ponsardin Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“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).
With respect to applicant’s composite word and design mark, the term THE
WORKS GOURMET BISTRO BURGERS is the part of the mark which catches
consumers’ attention and is most prominent because it is superimposed on the letter
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“W,” and the letter “W” highlights or emphasizes the term “The Works.” Moreover,
consumers will refer to applicant’s restaurant services as THE WORKS, not W THE
WORKS.
Because the marks share the term “The Works” and because the term “The
Works” is the dominant element of applicant’s marks, consumers are likely to
understand THE WORKS and THE WORKS GOURMET BISTRO BURGERS as
variations of the same mark and will view THE WORKS as merely a shortened
form of THE WORKS GOURMET BISTRO BURGERS.
[C]ompanies are frequently called by shortened names,
such as Penney’s for J.C. Penney’s, Sears for Sears and
Roebuck (even before it officially changed its name to
Sears alone), Ward’s for Montgomery Ward’s, and
Bloomies for Bloomingdales.
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992).
We therefore find that the marks are similar in appearance, sound, meaning
and commercial impression.
C. The strength of registrant’s mark.

Applicant argues that “registrant’s use of ‘WORKS’ is highly descriptive, and
is so commonly used that consumers will look to other elements to distinguish the
source of goods or services.”4 To support this argument, applicant submitted the
following evidence.5

4 Applicant’s Brief, p. 10.
5 Applicant also submitted the results of a search of the USPTO automated database for
marks containing the word “Works” in Class 43 that displays the serial number,
registration number, mark and status. However, because applicant did not display the
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1. Four third-party registrations on the Principal Register for service
marks incorporating the word “Works” for restaurant services.6
a. Registration No. 4069926 for the mark A1A BURRITO WORKS
TACO SHOP. Registrant disclaimed the exclusive right to use
“A1A BURRITO” and “TACO SHOP.”

b. Registration No. 3132146 for the mark EGG WORKS.
Registrant disclaimed the exclusive right to use the word “Egg.”

c. Registration No. 2890229 for the mark FRESH WORKS.
Registrant disclaimed the exclusive right to use the word
“Fresh.”

d. Registration No. 368137 for the mark POTBELLY SANDWICH
WORKS and design. Registrant disclaimed the exclusive right
to use the word “Sandwich.”

2. Excerpts from third-party websites displaying the use of the term
“Works” as a part of a service mark in connection with restaurant services.7
a. Bone Works Grill (boneworksgrill.com).

b. EGG WORKS (theeggworks.com) “the flagship breakfast joint in
the Las Vegas area.”

c. THE FRESH WORKS (thefreshworks.com) located in the
Philadelphia metropolitan area.

d. THE WORKS (gearedforfun.com) located in Wyomissing,
Pennsylvania.

e. THE WORKS BRICK OVEN RESTAURANT
(theworkspizza.com) located in Loveland, Ohio.

services and because Class 43 is not limited to restaurant services, the search results have
limited probative value.
6 January 9, 2012 response to Office action.
7 January 9, 2012 response to Office action. We have not considered WILDSTAR FOOD
STORE – THE WORKS because it is not located in the United States.
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f. THE WORKS (gyrosglenview.com) located in Glenview, Illinois.

3. The definition of the word “Works” as a location where “a specific type
of business or industry is carried on,” and regarding “the full range of possibilities;
everything. Use with the: ordered a pizza with the works.”8
Applicant argues that “third party [sic] registrations are useful in
demonstrating the extent of a common mark’s usage or adoption in common
parlance to narrow the scope of protection available to it. … Use of third-party
registrations in this way has been recognized by the Office by allowing marks to be
registered (such as those submitted by Applicant as evidence), which contain
common or similar features for the same or closely related goods where the
remaining portions of the marks are sufficient to distinguish the marks as a
whole.”9 Moreover, applicant contends that by providing evidence of third-party
use, it has shown that “it is unlikely that consumers will be confused; rather, third-
party uses can confirm that consumers are able to distinguish between marks based
on other elements or features, even descriptive ones.”10 Thus, applicant concludes
that “the referenced third party [sic] registrations and actual uses in commerce
demonstrate that the registrant’s use of ‘WORKS’ is highly descriptive, and is so

8 AMERICAN HERITAGE DICTIONARY (ahdictionary.com) attached to the January 9, 2012
response to Office action. See also Oxford Dictionaries Online (Oxforddictionaries.com).
9 Applicant’s Brief, p. 9.
10 Applicant’s Brief, p. 9.
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commonly used that consumers will look to other elements to distinguish the source
of the goods or services.”11
There are several problems with applicant’s evidence and arguments. First,
because the cited mark THE WORKS is registered, it is entitled to a presumption of
validity by Section 7(b) of the Trademark Act of 1946, 15 U.S.C. § 1057(b) ( a
certificate of registration is prima facie evidence of the validity of the registered
mark and of the registration of the mark, of the ownership of the mark, and of the
owner's exclusive right to use the registered mark in commerce on or in connection
with the goods or services specified in the registration). Thus, the registered mark
THE WORKS cannot be treated as merely descriptive; we must consider the mark
to be at worst highly suggestive.
Second, the third-party registrations are probative only to the extent that
they may show the meaning of a mark or a portion of the mark in the same way
that dictionaries are employed. Mead Johnson & Co. v. Peter Eckes, 195 USPQ 187,
191 (TTAB 1977). In this case, the third-party registrations show that others in the
field have adopted the word “Works” to suggest that the business is the location
where restaurant services are rendered or a food product with everything on it.
However, these handful of third-party registrations are not sufficient to justify the
registration of what could be another confusingly similar mark. Id.
To allow [the third-registrations] to play a decisive role in
resolving [the question of likelihood of confusion] would be
to substitute mathematical or syllogistic reasoning for
logic and reason necessary for the orderly and equitable

11 Applicant’s Brief, p. 10.
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conduct of the registration procedure outlined in the
Trademark Statute.
Id. citing AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ
268, 269 (CCPA 1973) (“The existence of these [third-party] registrations is not
evidence of what happens in the market place or that customers are familiar with
them nor should the existence on the register of confusingly similar marks aid an
applicant to register another likely to cause confusion, mistake or to deceive.”).
Finally, the Internet excerpts submitted by applicant show that the word
“Works” been used as a trademark for restaurant services by six other entities and,
like the third-party registrations, it suggests that the word “Works” may have a
significance in the restaurant field. Moreover, all of these excerpts are of limited
probative value because they do not demonstrate the extent to which the public is
aware of the businesses or their marks. Penguin Books Ltd. v. Eberhard, 48
USPQ2d 1280, 1284 n.5 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d
1559, 1565 n.16 (TTAB 1996). Since five of the six websites indicate that the
restaurants are local in nature and remote from each other, the evidence does not
show that consumers will encounter multiple restaurants featuring the “Works” as
part of their trademarks and, therefore, learn to distinguish them by looking to
features other than the word “Works.” 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).
The facts in this case more closely resemble the facts in Anthony’s Pizza &
Pasta International Inc. v. Anthony’s Pizza Holding Co. than the facts in any of the
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cases cited by applicant. There, the defendant owned a registration for
ANTHONY’S COAL-FIRED PIZZA, in standard character form, and filed an
application for ANTHONY’S COAL-FIRED PIZZA and design, both for restaurant
services. Plaintiff claimed ownership of the mark ANTHONY’S PIZZA & PASTA
for restaurant services and petitioned to cancel defendant’s registration and
opposed its application on the ground of likelihood of confusion. Defendant’s main
argument was that “[t]here is no likelihood of confusion between ANTHONY'S
PIZZA & PASTA and ANTHONY'S COAL-FIRED PIZZA because the name
‘Anthony's’ has extremely weak trademark significance and consumers will look to
other parts of the marks to distinguish the services.” Anthony’s Pizza & Pasta
International Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d at 1276.
Defendant further contends that the name “Anthony's” is
weak when used in connection with restaurant services,
particularly Italian restaurants, because it suggests a
New York style Italian restaurant. To support this
contention, defendant relied on the testimony of plaintiff's
witnesses, as well as fifteen third-party registrations
incorporating the name “Anthony's” for restaurant
services or food products, including but not limited to
Registration No. 2193501 for the mark ANTHONY'S
PIZZA THE WORLD'S GREATEST and design. In
addition, defendant introduced 8 third-party
cancelled/expired registrations for restaurant services or
food products.
Also, defendant introduced 33 active third-party
registrations, owned by 22 different entities, and 28
expired or cancelled registrations, owned by 18 different
entities, incorporating the name “Tony's,” and 6 active
third-party registrations, owned by 4 different entities,
and one cancelled registration incorporating the name
“Antonio” for restaurant and food products. Seven of the
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active “Tony” registrations also include the word “pizza”
as part of the mark.
With respect to evidence of third-party use of the name
“Anthony's,” defendant introduced Ms. Delegal's
testimony (discussed above) and telephone directory
listings. Ms. Delegal called twenty-nine restaurants from
a list she compiled from the Internet. Two of the
restaurants were listed as “Anthony's” and the remaining
twenty-seven included “Anthony's as part of the name
(e.g., Anthony's Pizza, Anthony's II, Anthony's J's Bistro,
etc.). Nineteen answered the telephone as “Anthony's,”
seven answered as “Anthony's” followed by other terms
(e.g., ANTHONY'S PIZZARIA, ANTHONY J's,
ANTHONY'S CAFE, etc.), one answered “How can I help
you,” one answered “Antonio's,” and one did not identify
itself. From this testimony, we conclude that 29 third
parties have adopted and used the name “Anthony's,” in
whole or in part, as the name for a restaurant. However,
this testimony does not tell us the extent of the usage and
whether there are multiple “Anthony's” restaurants in the
same trading areas so that consumers are likely to
encounter overlapping uses of “Anthony's.”
Finally, defendant introduced electronic versions of
telephone directories, both White Pages and Yellow
Pages, for numerous restaurants listed under variations
of the name “Anthony's” in cities located throughout the
United States. Many of the listings also included a word
indicating a focus on “pizza” (e.g., ANTHONY'S PIZZA,
ANTHONY'S PIZZERIA). The telephone listings carry a
presumption that the name “Anthony's” is being used by
third parties in connection with their restaurant services.
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993).
Anthony’s Pizza & Pasta International Inc. v. Anthony’s Pizza Holding Co., 95
USPQ2d at 1277.
In weighing this extensive third-party evidence, the Board concluded that
plaintiff’s mark ANTHONY’S PIZZA & PASTA is not sufficiently strong to bar the
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registration of every mark comprising the name “Anthony’s”; but that “it will only
bar the registration of marks “as to which the resemblance to [plaintiff's mark] is
striking enough to cause one seeing it to assume that there is some connection,
association or sponsorship between the two.” Id. at 1278. The same holds true in
this case. While the mark in the cited registration may be suggestive, registrant is
still entitled to a measure of protection against the registration of another mark
likely to cause confusion no matter how limited registrant’s rights may be.
D. Balancing the factors.
Because the marks are similar, the services are identical and we must
presume that the services move in the same channels of trade and that the services
are rendered to the same classes of consumers, we find that applicant’s marks THE
WORKS GOURMET BISTRO BURGERS and THE WORKS GOURMET BISTRO
BURGERS and design both for the “operation of restaurant services; operation of
carry-out food services” so resemble the mark THE WORKS for “restaurant
services; take-out restaurant services” as to be likely to cause confusion.
Decision: The refusal to register applicant’s mark in Class 43 is affirmed.
The application for the goods in Class 25 will proceed for the issuance of a notice of
allowance in due course.