West Deptford Properties, LLCDownload PDFTrademark Trial and Appeal BoardMar 29, 2019EX (T.T.A.B. Mar. 29, 2019) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: March 29, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re West Deptford Properties, LLC _____ Serial No. 87069543 _____ Michael F. Snyder of Volpe and Koenig PC, for West Deptford Properties, LLC. Tiffany Y. Chiang, Trademark Examining Attorney, Law Office 113, Myriah Habeeb, Managing Attorney. _____ Before Zervas, Shaw, and Hightower, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: West Deptford Properties, LLC (“Applicant”) seeks registration on the Principal Register of the following mark,1 1 Application Serial No. 87069543 was filed under Section 1(a) of the Trademark Act, 15 U.S.C. § 1(a), on June 13, 2016, claiming a date of first use anywhere and in commerce of June 6, 2016. Serial No. 87069543 - 2 - for “Restaurant and bar services,” in International Class 43. The description of Applicant’s mark reads: “The mark consists of a stylized ‘CINDER BAR’ where the letters contain blemishes that resemble burn marks.” Color is not claimed as a feature of the mark and Applicant disclaims the term BAR apart from the mark as shown. Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used with the identified services, so resembles the mark, for services identified as “Restaurant and Carry-out Services” in International Class 43,2 as to be likely to cause confusion, mistake or deception. The description of Registrant’s mark reads: “The mark consists of the word ‘CINDER’S’ in script, on top of a design consisting of a burning flame coming out of a bed of charcoal briquettes.” When the refusal was made final, Applicant appealed and requested reconsideration. The Examining Attorney denied the request for reconsideration, and the appeal resumed. The case is fully briefed. Analysis Our determination of the issue of likelihood of confusion is based on an analysis of all the probative facts in evidence relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also In re 2 Registration No. 2669248, issued December 31, 2002; renewed. Serial No. 87069543 - 3 - Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the services and the similarities between the marks. 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 [or services] and differences in the marks.”). A. The nature and similarity or dissimilarity of the services, the established, likely- to-continue trade channels and classes of purchasers. We first consider the similarity of the services. Both Applicant’s and Registrant’s services identify restaurant services. Applicant argues that its services and Registrant’s services nevertheless “differ in kind from the services in the cited registration [because] Applicant’s services include bar services.”3 This argument is unpersuasive. It is well settled that in making our determination, we must look to the services as identified in the application vis-à-vis those recited in the cited registration. Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods [or services] set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods [or services]”). We find that Applicant’s and Registrant’s services are in part identical. Registration must be refused if Applicant’s mark for any of its identified services is likely to cause confusion 3 Applicant’s Br., p. 15, 15 TTABVUE 21. Serial No. 87069543 - 4 - with the Registrant’s mark for any of its identified services. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015) (“[I]t is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods [or services] within a particular class in the application.”). Moreover, where Applicant’s and Registrant’s services are identical, we must presume that the channels of trade and classes of purchasers for those services are the same. See 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 purchasers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). In this case, purchasers of restaurant services include members of the general public. The du Pont factors relating to the similarity of the services, the channels of trade and classes of purchasers favor a finding of likelihood of confusion. B. The similarity or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation and commercial impression. Next, we consider the similarity or dissimilarity of the marks. In comparing the marks we must consider their 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). The emphasis of our analysis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. Although we consider the Serial No. 87069543 - 5 - mark as a whole, “in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Moreover, “when the goods [or services] at issue are identical, ‘the degree of similarity necessary to support a conclusion of likely confusion declines.’” Viterra, 101 USPQ2d at 1912 (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992)). Applicant’s mark is comprised of the terms CINDER BAR in a stylized typeface featuring burn or scorch marks. Applicant describes the mark as “being disintegrated in heat or singed.”4 Registrant’s mark is comprised of the term CINDER’S with a design described as “consisting of a burning flame coming out of a bed of charcoal briquettes.”5 Although we must consider the marks in their entireties, we find the terms CINDER and CINDER’S to be the dominant portions of the marks. They are the first or only terms in the marks. See Presto Prods., Inc. v. Nice-Pak Prods., 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”). The wording BAR in Applicant’s mark is less dominant because it is below CINDER and is generic for Applicant’s bar services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 4 Applicant’s Br., p. 10, 15 TTABVUE 16. 5 Examining Attorney’s Office Action, February 28, 2014, p. 2. Serial No. 87069543 - 6 - (Fed. Cir. 2004) (descriptive terms are properly given less weight). CINDER’S appears in large black letters in registrant’s mark. In contrast, the “briquette” design in Registrant’s mark and the typeface in Applicant’s mark are less dominant because when a mark comprises both wording and a design, greater weight is typically given to the wording. It is the wording that purchasers generally use to refer to or request the goods or services. See Viterra, 101 USPQ2d at 1908; CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983). In terms of sound, both mark are similar because they begin with the word CINDER or CINDER’S and the presence of the generic word BAR in Applicant’s mark adds only a single syllable at the end of the mark. In terms of connotation and commercial impression, both marks suggest something that has been burned to a “cinder,” which is defined as “a small piece of burned or partly burned substance, such as coal, that is not reduced to ashes but is incapable of further combustion.”6 This connotation is reinforced in both marks by the “briquette” design in Registrant’s mark and the typeface in Applicant’s mark which both suggest heat or fire. Because CINDER or CINDER’S is the dominant portion of both marks, Registrant’s CINDER’S mark is likely to be perceived as a shortened version of Applicant’s mark, CINDER BAR. See In re Bay State Brewing Co., 117 USPQ2d 1958, 1961 (TTAB 2016) (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 219 6 American Heritage Dictionary, ahdictionary.com, September 26, 2016 Office action, TSDR p. 8. Serial No. 87069543 - 7 - (CCPA 1978) (Rich, J., concurring: “the users of language have a universal habit of shortening full names—from haste or laziness or just economy of words”)). Applicant argues that the apostrophe in Registrant’s mark creates a different commercial impression when compared to Applicant’s mark. “[T]he Cited Registration conveys an impression of a restaurant owned by a family or person named ‘CINDER’, tied to a very specific flame design.”7 Conversely, Applicant argues its mark “does not denote a possessive surname. Applicant’s Mark depicts the letters as being disintegrated in heat or singed, and includes the term ‘BAR’. Thus, Applicant’s Mark conveys an impression of a restaurant that serves alcohol, with none of the connotations of the Cited Registration.”8 This argument is unpersuasive. The “briquette” design in Registrant’s mark and the typeface in Applicant’s mark both reinforce the meaning of “cinder” primarily as referring to something “burned.” Furthermore, the presence of an “’S” in Registrant’s mark does little, if anything, to distinguish the terms, as the possessive form merely suggests that the services emanate from the same source: CINDER. See Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (no meaningful distinction arises from the possessive form of otherwise identical marks); In re Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986) (finding the marks McKENZIE’S and McKENZIE “virtually identical in commercial impression”); Winn’s Stores, Inc. v. Hi-Lo, Inc., 203 USPQ 140, 143 (TTAB 1979) (noting that “little if any 7 Applicant’s Br., p. 9, 15 TTABVUE 15. 8 Id. at 10, 15 TTABVUE 16. Serial No. 87069543 - 8 - trademark significance can be attributed to the apostrophe and the letter ‘s’ in opposer’s mark”). In fact, Applicant’s applied-for mark, with the disclaimed term BAR, could easily be perceived as an extension of Registrant’s services from the restaurant business into the bar business. That is, consumers familiar with Registrant’s restaurant could think that Applicant’s restaurant and bar was simply an expanded restaurant at a new location. “[C]areful purchasers who do notice the difference in the marks will not necessarily conclude that there are different sources for the [services], but will see the marks as variations of each other, pointing to a single source.” In re Hitachi High-Techs. Corp., 109 USPQ2d 1769, 1774 (TTAB 2014). When we compare the marks in their entireties, we recognize that there are some differences in appearance. The typeface is different. And Registrant’s mark is in possessive form and includes a “briquette” design. We nonetheless find that despite these differences, given the similarities between the marks in sound, connotation, meaning and commercial impression due to the shared term CINDER, the marks overall are more similar than dissimilar. Accordingly, the similarity of the marks is a factor that weighs in favor of a finding of likelihood of confusion. C. Third-party marks Applicant relies on a number of unrelated third-party marks to support a finding that there is no likelihood of confusion. Applicant argues that because a number of CEDAR-formative, BURN-formative, and CHERRY-formative marks have registered, Applicant’s mark is registrable as well. We do not find these marks to be relevant given the significant differences from the marks here. It is well settled that Serial No. 87069543 - 9 - each case must be decided on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [Applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”). We are therefore obligated to assess the registrability of Applicant’s mark on its own merits and on the arguments and evidence of record in this case. D. Absence of actual confusion Applicant argues that “the owner of the Cited Registration never opposed Applicant’s subsequently filed application and [that] the parties have co-existed in the marketplace without confusion for over two years is confirmation that there is no likelihood of confusion arising from Applicant’s use of CINDER BAR and design.”9 Applicant’s reliance on the lack of actual confusion is misplaced. “The absence of any reported instances of confusion is meaningful only if the record indicates appreciable and continuous use by applicant of its mark for a significant period of time in the same markets as those served by opposer under its marks.” Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011). Here, Applicant has been using its mark in commerce only since 2016. There is no evidence that would allow us to assess the extent to which there has been a meaningful opportunity for confusion to occur. We find the absence of any actual confusion does not weigh in Applicant’s favor. See Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The 9 Applicant’s Br., p. 16, 15 TTABVUE 22. Serial No. 87069543 - 10 - absence of any showing of actual confusion is of very little, if any, probative value.”). In any event, “it is unnecessary to show actual confusion in establishing likelihood of confusion.” Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). This du Pont factor is neutral. E. Conclusion Because the marks are similar, and the services are in part identical and travel in the same trade channels to the same classes of consumers, there is a likelihood of confusion between Applicant’s stylized mark, CINDER BAR, and the mark, CINDER’S and design, in the cited registration. Decision: The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act is affirmed. Copy with citationCopy as parenthetical citation