TTAB Test: Are Sandwiches and Vegetable Salads Related for Section 2(d) Purposes?
The USPTO refused registration of the mark THE LAFAYETTE for sandwiches, finding it likely to cause confusion with the mark LAFAYETTE, registered for vegetable salads. On appeal, applicant argued that sandwiches are main dishes, whereas vegetable salads are side dishes, and that the term THE in THE LAFAYETTE has source-identifying significance. How do you think this came out? In re The Express Cafe & Bakery, LLC dba Goose Feathers, Serial No. 85862485 (February 3, 2015) [not precedential].
The marks: Applicant maintained that, for sandwiches, the word THE is significant because consumer are accustomed to sandwich marketing that includes the word THE. The Board did not bite. Applicant uses LAFAYETTE both with and without THE, and it is therefore unlikely that consumers will place any weight on the article. Second, consumers are not likely to see THE as source-identifying even if it is the practice to use THE as part of a sandwich name. And third, even those consumers who are aware of the naming practice for sandwiches will likely assume, when they see the mark LAFAYETTE for a salad, that the word THE has been omitted because the mark is not being used with a sandwich.
Applicant next argued that LAFAYETTE connotes "something foreign and may furthermore directly implicate a French hero of the American revolution," while THE LAFAYETTE "connotes very different domestic references." The Board, however, found it unlikely that consumers will spend much time considering the nuances of the word THE, and under actual marketing conditions will not remember whether a mark has or does not have the word THE.
Finally, applicant asserted that the marks differ because in applicant's mark the "LA" part of LAFAYETTE may be perceived as the French article meaning "the," and so consumers will confront the incongruity of Applicant's mark being "THE the FAYETTE." The Board pooh-poohed that argument, pointing to applicant's use of both LAFAYETTE and THE LAFAYETTE on its specimen of use, and to the fact that LAFAYETTE will be recognized as the name of a Revolutionary hero. In short, consumers are not likely to parse the name LAFAYETTE as applicant suggested.
And so the Board found the marks "extremely similar in appearance and pronunciation and essentially identical in connotation and commercial impression."
The goods: Five third-party registrations covering both sandwiches and salads helped convince the Board that the goods are related. Applicant asserted that sandwiches are main dishes while salads are side dishes, but the Board refused to "get mired in an extensive discussion of the similarities and differences of salads and sandwiches." The evidence showed that sandwiches and salads may be marketed "as variations of each other."
The USPTO's website evidence was not helpful because it referenced restaurants offering both sandwiches and salads, and it was not clear that the items were sold under a trademark identifying the product, or whether the mark identified just the restaurant services.
The Board concluded from the evidence that pre-packaged sandwiches and salads may be sold in grocery stores, conveniences stores, truck stops, etc. Even if they were sold in separate sections of a store, the Board saw no reason why a customer might not grab a sandwich and a salad "to go."
Thus the duPont factors concerning the relatedness of the goods and the channels of trade supported the refusal. The conditions of person did also, since sandwiches and salads are inexpensive items not likely to be purchase under close examination. And the mark LAFAYETTE is arbitrary when used with salads, and therefore is a conceptually strong mark.
Considering the relevant duPont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.
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Text Copyright John L. Welch 2015.