2(d) Refusal Of "ICEBERG" For Cheese Melts Under TTAB Demand For "Something More"

As discussed here at the TTABlog, in restaurant/food product cases, CAFC precedent requires "something more" than mere similarity or identity of the marks to support a likelihood of confusion refusal. That "something more" was lacking in In re Roth Kase U.S.A. Ltd., Serial No. 76479059 (June 8, 2005). Consequently, the Board reversed a Section 2(d) refusal to register the mark ICEBERG for cheese, finding it not likely to cause confusion with the mark ICEBERG DRIVE INN, registered for restaurant services.

Original ICEBERG DRIVE INNSalt Lake City
The Examining Attorney relied on seven third-party registrations each covering restaurant services and food items, as well as on a copy of an ICEBERG DRIVE INN menu showing that the fare includes cheeseburgers, Philly cheesesteaks, and chili cheese dogs.

Roth Kase cheese
The Board applied In re Coors Brewing Co., 68 USPQ2d 1059 (Fed. Cir. 2003) -- a decision that neither the Applicant nor the Examining Attorney discussed -- in ruling that "there is not substantial evidence in the record to establish that purchasers are likely to assume that a source connection exists." The third-party registration evidence and Registrant's menu failed to establish the required "something more."

"Only three of the third-party registrations cover both restaurant services and cheese, per se. That cheese may be an ingredient in other of the food items covered by the third-party registrations, and an ingredient in several of the items on the cited registrant's own menu, is not enough, under In re Coors Brewing Co., supra, to persuade us that a likelihood of confusion exists."

TTABlog comment: No quarrel with this one. Why on earth would anyone think ICEBERG brand cheese would have a connection with the ICEBERG DRIVE INN chain? It would be a different story if it were McDONALD's for cheese, wouldn't it? Do you think the cited registrant will oppose? I think it would be a Titanic mistake.

Text Copyright John L. Welch 2005. All Rights Reserved.