Finding Restaurant Services and Sauces Related, TTAB Affirms 2(d) Refusal of "BLACK HORSE"

Finding restaurant services related to Applicant's "sauces, spice blends, dry rubs for meats and fish, marinades, dipping sauces, and glazes for meats and fish," the Board affirmed a Section 2(d) refusal to register the mark BLACK HORSE, finding it likely to cause confusion with the registered mark BLACK HORSE & Design shown immediately below. In re SKP and Associates, Inc., Serial No. 77040558 (February 5, 2010) [not precedential].


The Board not surprisingly found the similarity of the marks to weigh in favor of likelihood of confusion. "Because the design of a black horse in registrant's mark is a pictorial representation of the wording in both marks, such design further reinforces the similarities between them."

The key issue was the relatedness of the goods and services. The Board began by citing the oft-cited decision in Jacobs v. International Multifoods Corp., 212 USPQ 641, 642 (CCPA 1982), which states that "[t]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services." [Emphasis in original]. In other words, there is no per se rule that restaurant services and food products are related.

Here, the "something more" provided by the Examining Attorney consisted of more than 45 third-party registrations that covered both restaurant services and Applicant's food items, as well as website evidence for restaurant services and food items offered under a single mark (for example, Taco Bell, Emeril's, and K-Paul's).

The Board therefore concluded that applicant's goods and registrant's restaurant services are related.

As to channels of trade, Applicant futilely asserted that Registrant offers its services solely to members of the "Black Horse Golf Club" in Houston, Texas. However, because there is no limitation on channels of trade in the cited registration, the determination under Section 2(d) must be made on the basis of the service identified in the registration regardless of the real world situation.

Therefore, the Board must presume that Applicant's goods and Registrant's services will be offered in all appropriate channels. "This would mean that applicant's goods may be sold in regular retail supermarkets and other food stores, but, as shown by the evidence, such goods may also be sold directly by restaurants." Moreover the same classes of consumers, the general public, will encounter both the goods and the services.

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

TTABlog comment: Well here's a good example of how the TTAB world diverges from the real world. Do you think a court would ever find trademark infringement here?

Text Copyright John L. Welch 2010.