041 BACARO & Design Confusable With BACARO for Restaurant Services, Says TTAB
The Board affirmed a refusal to register the mark 041 BACARO & Design, shown below, for "Restaurant and bar services [BACARO disclaimed]," finding it likely to cause confusion with the mark BACARO, registered for the same services. Applicant argued that BACARO means "Venetian Bar" and therefore is descriptive or generic for the services, but the Board refused to consider that argument because it constituted an improper collateral attack on the validity of the cited registration. In re G2D Management, LLC, Serial No. 85703129 (June 22, 2015) [not precedential].
In addition to its futile arguments regarding descriptiveness and genericness of the cited mark, applicant also argued that the cited mark is weak because consumers are accustomed to seeing the term BACARO in restaurant names. In support of that contention, applicant submitted the results of two Google brand searches and copies of pages from a tour company website offering tours of Venice "bacari." However, the Google listing provided little information regarding each establishment, some references were ambiguous or irrelevant, and a few referred to foreign restaurants. In short, this evidence "failed to establish such widespread use of 'bacaro' for restaurants or bars that consumers would be accustomed to distinguishing marks using the term on the basis of other components of the marks."As to the tour guide pages, the eateries named were located in Italy. Although the pages were in English, and thus presumably available to U.S. customers, the record did not show the extent of exposure to the website or that "bacaro" applied to bars in the USA.
Examining Attorney Tracy Cross submitted copies of pages from the websites of both applicant and registrant, showing that each recognizes the Italian origins of "bacaro." This, however, did not demonstrate that BACARO is weak, but "merely underscores the foreign regional nature of the term 'bacaro.'" Applicant's disclaimer did not affect that conclusion, the Board noting that an applicant's voluntary disclaimer of a term has no effect on the the issue of likelihood of confusion.
Turning to a consideration of the marks, the Board found that, despite the large size of the numbers "041," the term BACARO is a "salient feature" of applicant's mark and is of equal prominence with the numbers. "Moreover, consumers are more likely to remember a pronounceable term such as 'bacaro' rather than an arbitrary string of numbers." The Board also pointed out that, because the cited mark is in standard character form, the registrant could display its mark in the same font style as applicant's mark.
Bearing in mind that the marks will be used for identical services, the Board found the marks "more similar than dissimilar and not so different as to avoid a likelihood of confusion."
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TTABlog note: Do you hear the rumblings of an oncoming cancellation proceeding? Justice is supposed to be blind, so would you say that here the Board was Venetian blind?
Text Copyright John L. Welch 2015.