WYHA? TTAB Affirms 2(d) Refusal of BRIX CELLARS over BRIX for Restaurant Services

This applicant sought to register the marks BRIX CELLARS, in standard character form, and BRIX WINE CELLARS, in standard character and design forms, for "bar and restaurant services; restaurant; restaurant and bar services; wine bars" [sic!]. The terms CELLARS and WINE CELLARS were disclaimed. Examining Attorney Jeffrey C. Coward refused registration under Section 2(d), deeming the marks confusingly similar to the registered marks BRIX for "restaurant and bar servies" and BRIXX for "restaurant services." The Board affirmed. Would You Have Appealed from the PTO refusal? In re Brix Cellars LLC dba Brix Wine Cellars, Serial Nos. 85111647, 85111682 and 85112408 (January 25, 2013) [not precedential].

The Board found the services involved to be legally identical. Applicant argued that its wine bar is "somewhat dark and sophisticated and has a relatively enclosed atmosphere," whereas registrant's establishment has "a relatively light and airy atmosphere overlooking outdoor vistas." That, of course, was irrelevant, since there are no such limitations in the subject applications and registrations.

Applicant next argued that the restaurants of applicant and registrant are in locations distant from each other, respectively. Again, irrelevant, since applicant sought nationwide registrations and since the cited registrations are nationwide in scope.

Because the services are legally identical, they are presumably rendered in the same channels of trade to the same classes of customers.

Applicant contended that the conditions of sale outweigh all other factors, and there is no likelihood of confusion because the potential customers are quite careful and sophisticated. The Board, however, noted that the recitations of services do not exclude less sophisticated customers who will exercise only ordinary care.

Because restaurant and bar services can run the gamut in terms of cost and clientele, we cannot accept applicant's position that only sophisticated individuals will be the patrons of either applicant's or registrant's establishments.

Moreover, even discriminating consumers may be confused by very similar marks used for identical services.

As to the marks, the registered marks BRIX and BRIXX are arbitrary for restaurant and bar services, and are strong marks, "both conceptually and commercially." [What was the evidence showing that registrant's marks are strong commercially? - ed.]

The Board agreed with the Examining Attorney that, despite the addition of the non-distinctive and disclaimed terms CELLARS and WINE CELLARS, applicant's marks still engender the same overall commercial impressions as the cited marks. The word BRIX "retains its identity as a separately identifiable term in all of applicant's marks, and, indeed, as the sole term with any real source-identifying significance."

Finally, applicant maintained that there has not been any actual confusion between the marks during three years of contemporaneous use. Of course, the Board observed, actual confusion is not required to proved likelihood of confusion. Moreover, the assertion of a lack of actual confusion in an ex parte context carries little weight, since the registrant does not have the opportunity to be heard on the issue.

Balancing the du Pont factors, the Board found confusion likely, and it affirmed the refusal.

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Text Copyright John L. Welch 2013.