W C Beanery, LLC

Trademark Trial and Appeal Board

Sep 23, 2010

No. 77371479 (T.T.A.B. Sep. 23, 2010)

Mailed:
September 23, 2010
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re W C Beanery, LLC
________

Serial No. 77371479
_______

James E. Hudson, III, of Crain Caton & James, P.C. for
W C Beanery, LLC.

Amy Alfieri, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).
_______

Before Quinn, Bucher and Taylor, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
W C Beanery, LLC seeks registration on the Principal
Register of the mark W C BEANERY (in standard character
format) for services recited in the application as follows:
“drive-through retail store services
featuring coffee and related goods” in
International Class 35;
and
“coffee shops; coffee-house and snack-bar
services” in International Class 43.1

1 Application Serial No. 77371479 was filed on January 14,
2008, based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. No claim is made to the exclusive
right to use the word “Beanery” apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77371479
- 2 -
The Trademark Examining Attorney issued a final
refusal to register this designation based upon Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d). The
Trademark Examining Attorney has taken the position that
applicant’s mark, when used in connection with the recited
services, so resembles the following mark:

registered for “restaurant services” in International Class
43,2 as to be likely to cause confusion, to cause mistake or
to deceive.
After the Trademark Examining Attorney made the
refusal final, applicant appealed to this Board. Applicant
and the Trademark Examining Attorney have fully briefed the
issues in this appeal. We affirm the refusal to register.
In urging registrability, applicant contends that the
Trademark Examining Attorney improperly dissected the marks
in making her likelihood of confusion determination, with
her “singular focus on the fact that the marks share the
term WC ….” For example, applicant argues, the term

2 Registration No. 3527552 issued to Whiskey Creek Franchise
Systems, LLC on November 4, 2008.
Serial No. 77371479
- 3 -
“Beanery” in applicant’s mark creates the impression of a
place to obtain coffee. By contrast, registrant’s mark:
… featuring letters within a circle in
connection with “restaurant services”
clearly calls to mind the effect of a
branding iron and therefore beef products —
and does not call to mind a coffee shop.

Applicant’s reply brief at 2.

By contrast, the Trademark Examining Attorney argues
that the disclaimed word “Beanery” in applicant’s mark is
less significant than the arbitrary letters “W C.” She
argues that the oval shaped border is not distinctive
enough to change the commercial impression of the
registered mark beyond simply the arbitrary letters, “W C.”
As to the relationship of the services, the Trademark
Examining Attorney takes the position that:
… businesses that provide drive-through
retail services featuring coffee generally
provide services that are similar to
restaurant services, where the customers
may purchase food and drinks without leaving
their vehicles.

Trademark Examining Attorney’s brief at unnumbered 11. She
also provided third-party registrations showing that single
entities provide retail store services featuring coffee,
drive-through coffee shop services, as well as other more
typical restaurant services.
Serial No. 77371479
- 4 -
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood
of confusion is based upon our analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on this issue. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also, In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). In any likelihood of confusion analysis, however,
two key, although not exclusive, considerations are the
similarities between the marks and the relationship between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
We turn first to the du Pont factor focusing on the
similarity or dissimilarity of the marks 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, 1692 (Fed. Cir. 2005).
In her brief, the Trademark Examining Attorney makes
the following observations, which we have summarized
herein:
Serial No. 77371479
- 5 -
The focus is on the recollection of the average
purchaser who normally retains a general rather
than specific impression of trademarks;
Both marks share the letters “W C” / “WC”;
The term “Beanery” in applicant’s mark refers to an
inexpensive restaurant or café, and applicant has
correctly disclaimed this highly descriptive, if
not generic, term;
One feature of a mark may be recognized as more
significant in creating the commercial impression,
and in this case, with applicant’s mark, that
feature is the leading part of the mark, the
arbitrary letter combination “W C”;
The mere addition of a non-source-indicating term
to a registered mark generally does not obviate the
similarity between the marks so as to overcome a
likelihood of confusion;
When a composite mark consists of wording and a
design, the word portion is more likely to be
impressed upon a purchaser’s memory and to be used
in calling for the services;
Applicant’s suggestion that prospective consumers
will construe the cited mark as a “branding iron”
creating “a connotation of dining on beef products
cooked with a western flare” is merely unpersuasive
speculation; and
If granted a registration of its standard character
mark, nothing would stop applicant from presenting
its mark in an oval border.
We agree with the Trademark Examining Attorney that
the mark in the cited registration could be nothing more
Serial No. 77371479
- 6 -
than two letters of the alphabet inside a prosaic oval
carrier device, it could represent a branding iron, or it
could suggest a coffee bean. We do not find that the
Trademark Examining Attorney has improperly dissected the
marks, but rather, she has followed black-letter trademark
law precisely in finding that these marks will both be
remembered and called for as “W C.” Even if registrant’s
mark is derived from its “Whiskey Creek” name, we must
consider it to be a strong and arbitrary mark for
restaurant, café and coffee house services. Accordingly,
this du Pont factor weighs in favor of the position taken
by the Trademark Examining Attorney herein.
We turn next to the du Pont factor focusing on the
relationship of the services as described in the
application and registration. As seen above, applicant
seeks registration of its proposed mark for “drive-through
retail store services featuring coffee and related goods”
and “coffee shops; coffee house and snack bar services,”
while the cited mark is used in connection with
“restaurant services.”
The Trademark Examining Attorney included in the
record the following relevant definitions from The
American Heritage Dictionary of the English Language,
Fourth Edition:
Serial No. 77371479
- 7 -
coffee shop: “a small restaurant in which coffee and
light meals are served,”
coffee house: “a restaurant where coffee and other
refreshments are served, especially one where
people gather for conversation, games, or
musical entertainment,” and
snack bar: “a lunch counter or small restaurant where
light meals are served.”
These terms are defined in a way that makes each of
these establishments a sub-set of the larger set of all
restaurants. Registrant’s restaurant services are
recited very broadly and without restriction. Hence, we
must construe registrant’s restaurant services as
possibly including services offered through coffee shops,
coffee houses or snack bars. Similarly we must presume
that registrant’s services will move in all the normal
trade channels for such services, and that they are
available to all potential customers. In re Elbaum,
211 USPQ 639, 640 (TTAB 1981); and In re Optica Int’l,
196 USPQ 775, 778 (TTAB 1977).
As to a related du Pont factor, we also attribute a
relatively low level of care to the decision-making
process in choosing a cup of coffee. This strengthens the
Trademark Examining Attorney’s position herein.
Serial No. 77371479
- 8 -
The Trademark Examining Attorney provided evidence
from the Internet demonstrating that retail businesses
that provide increasingly popular drive-through services
featuring coffee generally provide services that are also
quite similar to other types of restaurant services:
About Drive-Through Coffee Shops
…
Significance
Drive-through coffee shops serve a dual purpose when coupled with a
regular coffee shop. They are a fast, convenient way for customers to order
coffee without ever having to get out of their vehicle …
Features
Drive-through coffee shops are usually no different than the regular coffee
shops they are part of…
… 3

Starbucks’ wheel strategy
… Starbucks Corp. [is] putting drive-throughs in about half of the new U.S. stores
it opens these days … 4

Drive-through Dunkin' Donuts in Gilbert to be open 24 hours
A new 24-hour Dunkin' Donuts drive-through will open at 5 a.m. on Aug. 28 on
the southeast corner of Lindsey and Warner roads. 5

To further demonstrate the close relationship of these
respective services, the Trademark Examining Attorney also
included in the record copies of the following third-party
registrations:

3 http://www.ehow.com/about_4779930_drivethrough-coffee-shops.html

4 http://www.bizjournals.com/seattle/stories/2008/10/06/story4.html

5 http://www.azcentral.com/community/gilbert/articles/2008
/08/12/20080812gr-dunkin0813.html

Serial No. 77371479
- 9 -
BLACK ROCK COFFEE BAR for, inter alia, “retail store
services featuring coffee, tea,
espresso, coffee-based beverages,
espresso-based beverages, tea-based
beverages, cocoa, roasted coffee
beans, ground coffee beans, baked
goods, namely, pastries, muffins,
scones, rolls, biscuits, cookies,
bagels, and sandwiches; … and drive-
through retail store services
featuring coffee and related goods”
in International Class 35; and
“Coffee shops; coffee-house and
snack-bar services” in International
Class 43;6
CHANGING YOUR WORLD
ONE BEAN AT A TIME
for, inter alia, “retail services,
namely, retail stores, wholesale
ordering, mail-order, and online
retail store services featuring
coffee, coffee beans, and coffee-
related products, namely, t-shirts,
caps, mugs, and napkins; drive
through retail store services
featuring coffee and related goods”
in International Class 35; and
“restaurant services” in
International Class 43.7

Certainly third-party registrations such as these
have probative value to the extent that they serve to
suggest that the services listed therein, namely, retail
store services featuring coffee, drive-through coffee
shops and restaurant services generally are all of a kind
that may emanate from a single source.

6 Registration No. 3489718 issued on August 19, 2008. No
claim is made to the exclusive right to use the term “Coffee Bar”
apart from the mark as shown.

7 Registration No. 3590668 issued on March 17, 2009.
Serial No. 77371479
- 10 -
Finally, to the extent that we harbor any doubt as to
the proper resolution of this case, we consider it
appropriate to resolve such doubt against the newcomer and
in favor of the prior user and registrant. See In re
Pneumatiques, Caoutchouc Manufacture, 487 F.2d 918,
179 USPQ 729 (CCPA 1973). See also TBC Corp. v. Holsa
Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997); and
In re Hyper Shoppes, 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir.
1988).
Decision: The refusal to register under Section 2(d)
of the Lanham Act is hereby affirmed.