Wednesday, March 02, 2011

Precedential No. 6: With Proof of "Something More" Lacking, TTAB Finds Barbecue Sauce and Catering Services Not Related

The Board reversed a Section 2(d) refusal to register the mark JUMPIN' JACKS for barbecue sauce in view of the registered mark JUMPIN JACK'S for catering services. It ruled that the Office had failed to provide the "something more" required by Jacobs v. International Multifoods Corp., 212 USPQ 641 (CCPA 1982), to show that food items are related to catering services. [Actually, Jacobs dealt with restaurant services, but the Board extended the principle to catering services]. In re Giovanni Food Co., Inc., 97 USPQ2d 1990 (TTAB 2011) [precedential].

The Board first dealt with a procedural matter. Applicant attached to its brief copies of documents from the file history of the cited registration. However, the Board pointed out that "the filewrapper of a cited registration is not made of record by virtue of the Examining Attorney attaching to the Office Action the printout detailing the particulars of the issued registration." The Applicant must make the documents of record during the prosecution of the application.

Turning to the substantive issue, Applicant did not contest that the marks are "similar." The real question was whether barbecue sauce and catering services are sufficiently related that confusion of source is likely.

The Board noted for the umpteenth time that there is no per se rule that restaurant services and food products are related. See Lloyd's Food Products, Inc. v. Eli's, Inc., 25 USPQ2d 2027 (Fed. Cir. 1993). In order to establish such a likelihood of confusion, the Office "most show something more that that similar or even identical marks are used for food products and for restaurant services." Jacobs, 212 USPQ2d at 642 (emphasis added). The Board deemed it "appropriate" to apply the "something more" requirement to other services involving providing prepared foods, such as catering services.

The Examining Attorney relied on third-party registrations showing that a single mark has been registered for both "barbeque sauce" and "restaurant and catering services," and on website printouts "showing that barbeque restaurant and catering services and barbeque sauce are offered under the same mark from a single source."

The Board pointed out, however, that the proffered websites and all but one of the registrations "make clear that the restaurant and catering services specialize in barbecue."

The mere fact that some restaurants that specialize in barbeque also provide catering services and sell barbeque sauce is not sufficient to establish a relationship between catering services in general and barbeque sauce. See Coors Brewing, 68 USPQ2d at 1064. There is no evidence that registrant’s catering services specialize in barbeque. [Isn't the Board impermissibly ignoring the fact that the recitation of services in the cited registration does not exclude catering services featuring barbecued food? - ed.]

Moreover, nothing in the record demonstrated that the cited mark is a "very strong, unique" term like the mark MUCKY DUCK in in re Mucky Duck Mustard, 6 USPQ2d 1467 {MUCKY DUCK for mustard confusingly similar to MUCKY DUCK for restaurant services).

In short, there was insufficient evidence to show that barbeque sauce and catering services are related, and so the Board reversed the refusal.

TTABlog comment: The recitation of services in the cited registration read "coffee-house services; and catering services." The Examining Attorney understandably cited only the "catering services" in the refusal to register.

As to whether the cited mark is "very strong or unique," in which case the Office could point to Mucky Duck to support the refusal, how is the Office going to prove that? In an inter partes context, one party has the evidence to show whether its mark is strong and unique. But in an ex parte context it would be up to the Examining Attorney to do so. Does the Office have the capability or resources to prove that a cited mark is very strong or unique?

PS: Hat tip to @pchestek for the MUCKY DUCK photo.

Text Copyright John L. Welch 2011.


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

It's an odd decision. The Board is essentially saying that the Examining Attorney should go outside the four corners of the application and assess whether a mark is diluted enough by third party usage to allow it to squeeze on the Register with the cited registration (and Examining Attorneys are taught that considering third party usage for anything beyong 2(e)(1)/(2) purposes is verbotten) and they are also telling Examining Attorneys to look at external docs to determine whether an Applicant "specializes" in a given food item. Again, asking Examiners to look outside of the application for evidence not to make a refusal. They could have just said this is a coffee house that does catering on the side and they don't cater BBQ, so we'll side with the Applicant. Instead, they pass the buck to the Examining Attorney. If I were an Examining Attorney I would do what exactly if the situation arose in the future? Issue an Office Action and ask them if they serve BBQ sauce and if they say "no," ask my manager for permission to publish the application for opposition as a CYA? Seems very inefficient.


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