Affirming 2(d) Refusal of "SMOKEYS HOUSE OF BARBEQUE," TTAB Finds Clothing and Sauce Related to Restaurant Services

Applicant Full Service Deli Distributors could not argue its way around the PTO's evidence in support of a 2(d) refusal of SMOKEYS HOUSE OF BARBEQUE for "wearing apparel, namely, shirts, T-shirts, shorts and aprons," "food preparations, namely, salad dressing, barbeque sauce, marinade, ketchup and hot sauce," and "restaurant services" ["BARBEQUE" disclaimed]. The Board found the mark likely to cause confusion with the registered mark shown below, for restaurant services [SMOKEY'S ORIGINAL RIB PIT BAR-B-QUE" disclaimed]. In re Full Service Deli Distributors, Inc., Serial No. 77084059 (June 4, 2008) [not precedential].


Applicant argued that the goods and services are "different," ignoring that the services are in part identical. As to its goods, Applicant lamely contended that "there has been no indication that ... [registrant] is going to expand into [those] different markets." Examining Attorney Stephen Aquila successfully maintained, however, that the goods are closely related to restaurant services. He submitted website evidence that "service marks used in connection with certain barbeque restaurants ... are also used as marks for various collateral products such as t-shirts and/or barbeque sauce."

Therefore, it was "plain" to the Board that "consumers would also consider applicant's items of wearing apparel and various food preparations to be related to or collateral products of registrant's restaurant and catering services if such goods and services were to be marketed under similar marks."

As to the marks, Applicant argued that there are "numerous differences" between the marks that preclude a likelihood of confusion. But the Board agreed with the Examining Attorney that the marks are "sufficiently similar in sound, appearance, connotation and commercial impression as to be likely to cause confusion."

"While applicant is correct that differences are apparent from its meticulous side-by-side comparison of the respective marks, such a comparison is not the proper test to be used in determining the issue of likelihood of confusion inasmuch as it is not the ordinary way that customers will be exposed to the marks."

The proper emphasis, the Board reiterated, is on "the recollection of the average purchaser, who normally retains a general rather than a specific impression of marks."

Reviewing at length the various principles of mark comparison, the Board concurred with the PTO that "when the marks at issue are considered in their entireties, the terms 'SMOKEYS' and its equivalent 'SMOKEY'S' respectively, constitute the dominant portions of applicant's and registrant's marks." Moreover, "it is the literal or word portion of registrant's mark which 'is more likely to be impressed upon a purchaser's memory and to be used in calling for the goods or services.'"

Weighing all the du Pont factors, the Board found confusion likely and it affirmed the refusal to register.

TTABlog comment: I wonder how many barbeque joints in this country are called "Smokey's"? It seems to me that the word has a suggestive, or even highly suggestive, connotation. Is it so a weak a formative that the other differences in the two mark here should be given greater weight?

Text Copyright John L. Welch 2008.