Thursday, June 25, 2015

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 In re G2D Management, LLC, Serial No. 85703129 (June 22, 2015) [not precedential].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."

Read comments and post your comment here

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.


At 10:37 AM, Anonymous Anonymous said...

Assuming that it was worth the time and money to do an ex parte appeal, I hear the same rumblings you do of a cancellation petition coming down the road and for good reason. It has always seemed like a waste of time to invoke that "collateral attack" rule and force someone to go after someone else and spend a lot of time, money and Board resources IF it was clear that the cited mark in all likelihood should not have registered. This one seems like a "weak mark" argument and if the owner of the cited mark believes that his mark isn't generic, well, then he can file the Opposition and put it into evidence. This has always seemed like a convoluted way to get there.

At 11:16 AM, Anonymous Mcornman said...

Board was indeed Venetian blind. The design elements, the colors,geometry, number 041should have carried the day since "Bacaro " which was disclaimed was one small element. Indeed if "restaurant " or "bar" were substituted for Bacaro the case would have been allowed in a minute. Applicant should not have to pay for a cancellation of an improvidently granted registration. The mark is allowable over the citation. A mark which is the foreign translation of "wine bar" can be weak when considered as an element of a design mark for a wine bar.

At 10:46 PM, Anonymous Anonymous said...

Notwithstanding the comments about the cancellation, I look at this as an evidentiary mistake on Applicant's part. The applicant should have submitted better evidence such as the actual uses of the mark found on the Internet rather than just search results. Why he did not attach the actual pages and give a brief synopsis in the brief is fathomless, as well as why he cited cited to one or more extraterritorial uses. Arghhh@! The applicant should pay attention and do it right in the coming down the pike cancellation


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