Thursday, November 17, 2011

TTAB Finds Restaurant Services and Food and Beverage Items Related, Affirms 2(d) Refusal of ST. JOE'S COFFEE

We know that, for Section 2(d) purposes, pretty much all beverages are related and all snack foods are related. Now it appears that numerous food and beverage products are also related to restaurant services. Third-party registration and website evidence led the Board to affirm a Section 2(d) refusal to register the mark ST. JOE'S COFFEE for a variety of food products, including coffee, pastries, and smoothies [COFFEE disclaimed], on the ground of likelihood of confusion with the registered mark ST JOE for hotel, restaurant, and dining services. In re Gabriel Miller & Jason Miller, Serial No. 77855808 (November 3, 2011) [not precedential].

As to the similarity of the marks at issue here, the Board found that this "critical" du Pont factor points to a finding of likely confusion. Not a surprise.

As to the involved goods/services, the Board has repeatedly observed that there is no per se rule that food and beverage items are related to restaurant services for Section 2(d) purposes. "Something more" must be shown than just the similarity or identity of the marks. Here, the Board found that Examining Attorney Meghan Reinhart "carefully established something more:" the evidence demonstrated a "close relationship between coffee and restaurant services with some of the larges franchise operations in the country" [e.g., DUNKIN DONUTS and STARBUCKS]; between other beverage and food items, and restaurant services [e.g., MAUI WOWI and COLLEGE HILL COFFEE CO.]; and between various pastries/bakery items and restaurant services [e.g., THE CHEESECAKE FACTORY, COCO'S BAKERY, THE CUPCAKERY, and TOBIES RESTAURANT AND BAKERY].

In addition, the Examining Attorney submitted third-party registrations that listed both hotel, dining, and/or restaurant services, on the one hand, and coffee, hot chocolate, bakery goods, and smoothies, on the other hand [e.g., BR BASKIN ROBBINS, CALIFORNIA PIZZA KITCHEN, AUNTIE ANNE'S PERFECT PRETZEL]. [As we know, under Albert Trostel and Mucky Duck, third-party registrations may have some probative value in suggesting that the listed goods and/or services are of a type that may emanate from a single source.

The Board therefore found that the Applicant's "food and beverage items are closely related to registrant's types of restaurant and dining services." Moreover, there is a "significant overlap" in channels of trade, and the classes of consumers are the same.

The Board therefore concluded that confusion is likely, and it affirmed the Section 2(d) refusal.

TTABlog comment: Does this mean that, for Section 2(d) purposes, restaurant services are related to any and every food and beverage item served in restaurants?

Text Copyright John L. Welch 2011.


At 9:15 AM, Anonymous Gary Tannenbaum said...

Or does this mean that everyone with a food or beverage registration may now open up that restaurant they've always dreamed of?

At 12:20 PM, Anonymous Anonymous said...

This is a terrible decision. So many of these are fact based and subjective. There is also no way to show how a cited mark is actually used in an ex-parte setting.

This will make trademark attorneys happy though - they get to stomp on the billing pedal to respond to office actions that should not have issued in the first place.

At 2:43 PM, Anonymous Mike Brown said...

Does this mean that, for Section 2(d) purposes, restaurant services are related to any and every food and beverage item served in restaurants?

I think not - Dunkin' Donuts, Starbucks, etc., all sell coffee as coffee in their restaurants (i.e. bags of beans or ground coffee), as a andjunct to their restaurant services serving it to customers. That has become very common in coffee shops. The same is true of the baked-goods specialty restaurants the TTAB mentioned. I think it's the sale of coffee or cupcakes for take-home which gives rise to the relation here, not the serving of them for in-store consumption.

If a restaurant served buttered toast with their breakfasts, I don't think this decision would give much support to claiming that they had a trademark for toast, as a product.

At 7:03 PM, Anonymous Marta R. said...

Does this mean that, for Section 2(d) purposes, restaurant services are related to any and every food and beverage item served in restaurants?

It's common to see food or drink applications refused over restaurant registrations, but are restaurant applications ever refused over food or drink registrations?

As to Mike's contention that the relationship is based on take-out items, that's not necessarily true. We have seen rejections of wine trademarks based on registrations for restaurants that had no take-out offerings at all (they might have house wines) and restaurants that abjure alcoholic beverages entirely. (It's snarky of me to believe that someday we'll see restaurant regs used to reject anything that goes into the mouth, including denture cream -- but I wouldn't be surprised.)

At 12:11 PM, Anonymous Anonymous said...

This decision is terrible. The last several years the Board has been cutting back on likelihood of confusion among medical goods and services. (The last opinion dismissively said that since medical goods/services are 20% of the economy, use of the same mark doesn't mean much absent all the other factors being analyzed.) Whether that is good or bad is open to debate, but on the other hand the Board is now expanding the reach of restaurants and food/beverage marks? Because consumers of restaurants and foods aren't very bright? How about a little consistency in application of DuPont so we know how to advise clients when we do a search?


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