Thursday, April 29, 2010

WYHA? TTAB Finds "THE ORIGINAL CHUBBYS MEXICAN FOOD" and "EL CHUBBY'S" Confusingly Similar for Restaurant Services

In a mere seven pages, the TTAB affirmed a Section 2(d) refusal to register the mark THE ORIGINAL CHUBBYS MEXICAN FOOD for bar and restaurant services [THE ORIGINAL and MEXICAN FOOD disclaimed], finding the mark likely to cause confusion with the registered mark EL CHUBBY'S for "restaurant services featuring Mexican food." If you were Applicant's counsel, what argument would you have made to overcome the refusal? In re Chubby’s, Inc., Serial No. 77481121 (April 23, 2010) [not precedential].

Of course, the Board found the involved services to be legally identical, and it presumed that the services are marketed in the same, normal trade channels to the same classes of customers.

Applicant argued that "[t]he consumer who is interested in purchasing Mexican food is sophisticated." [I am and I'm not. - ed.] The Board, however, observed that "restaurant patrons include ordinary consumers exercising only a normal degree of care."

Before turning to the marks, the Board pointed out once again that, because the involved services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

The Board took judicial notice that the word "EL" in the registered mark is the Spanish word for "the" and therefore has no trademark significance. As to Applicant's mark, the word "CHUBBYS" is the dominant portion, since the remaining words are laudatory or descriptive and have been disclaimed.

The Board concluded that "although the marks in their entireties appear and sound different, they have similar connotations and commercial impressions, and their dominant features are the same." Therefore this factor weighed in favor of the refusal.

And so, weighing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

TTABlog comment: There seem to be quite a number of different "CHUBBY'S" restaurants in Colorado. You may find some discussion of that fact by conducting a GOOGLE brand search for "Chubby's Colorado."

Text Copyright John L. Welch 2010.


At 10:59 AM, Anonymous Anonymous said...

The respective owners are related, so this is a family feud. But the green chile is to die for!


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