William BonofigloDownload PDFTrademark Trial and Appeal BoardMar 28, 2017No. 86733206 (T.T.A.B. Mar. 28, 2017) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: March 28, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re William Bonofiglo _____ Serial No. 86733206 _____ Gunther J. Evanina of Butzel Long for William Bonofiglo. Florentina Blandu, Trademark Examining Attorney, Law Office 117, Hellen Bryan Johnson, Managing Attorney. _____ Before Taylor, Adlin and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: William Bonofiglo (“Applicant”) seeks registration on the Principal Register of the mark shown below for “Wearable garments and clothing, namely, shirts: in Serial No. 86733206 - 2 - International Class 25 and “Restaurant services” in International Class 431: The Examining Attorney refused registration as to the services in International Class 43 only under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark shown below, with the wording MISTER TACO disclaimed, for “Bar and restaurant services” in International Classes 43.2 1 Application Serial No. 86733206 was filed August 21, 2015 based on an intent to use under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). The application includes this description of the mark: “The mark consists of the words ‘MR. TACO’ above an anthropomorphic taco filled with toppings and having masculine facial features, namely, a mustache and diverse dots all over its face and wearing a sombrero and boots. The boots feature spurs and a star on each boot.” 2 Registration No. 3939533 issued April 5, 2011. Registrant has not yet submitted a Section 8 affidavit of continued use. The colors black, white, red and green are claimed as a feature of the mark, and the registration includes this description of the mark: “The mark consists of the words ‘Mister Taco’ where only one ‘T’ is used to write both words and a little taco man in a sombrero. The color red is used for the letters ‘M’, ‘I’, ‘S’, ‘E’, ‘R’, ‘A’, ‘C’, ‘O’ and for the hat; the color white is used as the background of the logo, the skin of the little man, and the white design on the hat; the color black is used for the letter ‘T’, the body outline, the shoes, and the pants on the little man, as well as his hair and facial features including his eyes, nose, eyebrows, mustache, and mouth; the color green is used as the little man’s jacket.” Serial No. 86733206 - 3 - After the Examining Attorney made the partial refusal final, Applicant appealed.3 We affirm. The determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, hereinafter referred to as “du Pont factors”); see also In re Majestic Distilling Co., 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 relatedness of the services. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); 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 Services, Trade Channels, and Classes of Consumers The subject application and cited registration both identify restaurant services. Thus, the services are identical in part. Turning to the trade channels, because Applicant’s and Registrant’s recitations of services are unrestricted, and because they overlap, we presume that both Applicant’s and Registrant’s restaurant services move in the identical usual channels of trade for such services and are available to all the 3 In the final action, the Examining Attorney also cited an additional registered mark, DON TACO for “restaurant services,” Reg. No. 2025883, as a ground for refusal based on likely confusion, but in her brief the Examining Attorney withdrew the partial refusal as to that registration. 6 TTABVUE 2. Serial No. 86733206 - 4 - same potential classes of ordinary consumers. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where the identification is unrestricted, “we must deem the goods to travel in all appropriate trade channels to all potential purchasers of such goods”); In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion); American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). Thus, the second and third du Pont factors strongly weigh in favor of a finding of likely confusion. B. Similarity of the Marks Turning to the comparison of the applied-for and cited marks, we consider 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). The test assesses not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the services offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). We also bear in mind that, given the identical restaurant services, “… the degree of similarity necessary to support a conclusion of Serial No. 86733206 - 5 - likely confusion declines.” Century 21 Real Estate v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). The wording in Applicant’s and Registrant’s marks is almost identical, with Applicant’s mark containing the words MR. TACO and Registrant’s containing the words MISTER TACO. “Mr.” is an identically-pronounced abbreviation for “Mister,” a title used before a man’s full name or surname.4 Thus, the two marks are phonetic equivalents. We consider this point quite significant in the analysis, because consumers likely would focus most on the identical-sounding words for source indication because they would use them to refer to the restaurants and “call for” the services. See Viterra, 101 USPQ2d at 1911. Visually, each mark includes a design element that emphasizes the wording in the mark by depicting a “Mister/Mr. Taco” character. As shown below, Applicant’s is a cartoonish taco with human attributes including facial features, a mustache, legs and a sombrero. Similarly, Registrant describes its cartoonish human figure as a “little taco man in a sombrero”5: 4 Dec. 11, 2015 Office Action at 7 (online American Heritage Dictionary www.ahdictionary.com). 5 Dec. 11, 2015 Office Action at 5. Serial No. 86733206 - 6 - Applicant argues that in view of the disclaimer of MISTER TACO in the cited registration, this wording “is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted.”6 However, we must consider the marks in their entireties, and as our primary reviewing court has held, “[t]he public is unaware of what words have been disclaimed during prosecution of the trademark application at the PTO,” and the proper consideration is the likely public perception at the time of the likelihood of confusion determination. See In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751-52 (Fed. Cir. 1985). We do not agree with Applicant that consumers would disregard “MISTER TACO” as merely descriptive in the registered mark. Typically, when a mark comprises both wording and a design, greater weight is given to the wording. See, e.g., Viterra, 101 USPQ2d at 1911; see also In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010) (holding applicant’s mark, MAX with pillar design, and registrant’s mark, MAX, likely to cause confusion, noting that the “addition of a column design to the cited mark ... is not sufficient to convey that [the] marks ... identify different sources for legally identical insurance services”). Here, MISTER TACO is larger than 6 4 TTABVUE 7 (Applicant’s Brief). Serial No. 86733206 - 7 - Registrant’s design element and depicted in red letters. It is an important element of the mark. We further find the connotation and commercial impression of both marks to be quite similar, if not identical. The use of the title MISTER/MR. with the word TACO, along with the design elements in each mark create the impression of a taco-related character or personification. The wording, as well as the hats, clothing and features of each character point to the tacos presumably featured at the restaurants. Given the resemblance in sound, appearance, connotation and commercial impression, we therefore find the two marks very similar. C. Number and Nature of Similar Marks for Similar Services Applicant’s Reply Brief includes an argument that MISTER should be considered weak in the context of restaurant services based on “more than two dozen active federally registered trademarks using the word ‘MISTER’ in connection with restaurant services.”7 However, Applicant failed to introduce these registrations, and “[a]ttorney argument is no substitute for evidence.” Enzo Biochem Inc. v. Gen Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005).8 Thus, we find this factor neutral. 7 7 TTABUE 4 (Applicant’s Reply Brief). 8 We note that during prosecution, Applicant submitted results of a Google image search of “mister taco,” but given the nature of the evidence, as a mere collection of images without other identifying information, and given the lack of context, we do not find the evidence probative. In re Thomas, 79 USPQ2d 1021, 1026 (TTAB 2006) (Board rejected an applicant’s attempt to show weakness of a term in a mark through citation to a large number of GOOGLE “hits” because the results lacked sufficient context). Serial No. 86733206 - 8 - Conclusion The overall similarity of the marks for overlapping services that move in the same channels of trade to the same classes of customers renders confusion likely. Decision: The partial refusal to register Applicant’s mark as to the services in International Class 43 is affirmed. In due course, the application will be forwarded to the Examining Attorney for appropriate action with respect to the goods in International Class 25. Copy with citationCopy as parenthetical citation