Friday, November 20, 2015

WYHA? TTAB Finds "THE KITCHEN" Confusable with "DA KITCHEN" for Restaurant Services

The USPTO refused to register the mark THE KITCHEN for restaurant services, finding it likely to cause confusion with the registered mark DA KITCHEN for "restaurant services; carry out restaurant services; catering services" [KITCHEN disclaimed]. Examining Attorney John S. Miranda maintained that "DA" is understood as a slang term for “the," and with the goods being in part identical, end of story. Would you have appealed? In re The Kitchen Cafe, LLC, Serial No. 85969508 (November 17, 2015) [not precedential].

Applicant argued that 1) “DA” has other meanings; 2) "DA only means "the" if translated from Hawaiian pidgin or Hawaiian slang, which is not subject to the doctrine of foreign equivalents; 3) in any event, the term "DA" changes the overall commercial impression of the mark; 4) there is no evidence that consumers are likely to pronounce the marks identically; 5) the correct analysis is to compare KITCHEN (without “THE”) and DA KITCHEN; and 6) Registrant has acknowledged that the cited mark is entitled to a narrow scope of protection, and that the mark in the cited registration would not be confused with the term "THE KITCHEN."

The Examining Attorney submitted numerous examples of use of the term "Da" instead of "The," including several references to the Chicago Bears as "Da Bears." In fact Chicagoans seem to have particularly embraced the word "Da."

How to Fake a Chicago Accent: Emphasize “D” sounds at the start of words and replace “th-“ sounds with “D”s. For example, “I was supposed to see the Bears play but I got stuck in traffic on the Dan Ryan” becomes: “I was supposed to see da Bears play but I got stuck in traffic on da Dan Ryan.” If talking fast try to blend in the “th” with a “d” sound. April 24, 2015 Denial of Request for Reconsideration, at 57-58;

The Board concluded that the mark DA KITCHEN "gives the clear commercial impression of 'the kitchen.' It also has a very similar sound to the common pronunciation of 'the,' with a soft 'e.'"

While true that the registrant had argued that DA KITCHEN is not confusable with THE KITCHEN when it obtained its registration, that registration for THE KITCHEN had been abandoned at the time, and therefore this old argument merely adds "shade and tone" to the total picture here.

Finally, applicant argued that the cited mark is weak, pointing to registrant's disclaimer of KITCHEN, as well as to sixteen third-party registrations for marks with the word KITCHEN disclaimed. In addition, applicant seeks registration under Section 2(f), thereby acknowledging descriptiveness. However, there was no evidence of commercial weakness of the cited mark. Moreover, applicant's mark THE KITCHEN is more similar to DA KITCHEN than to any of the cited third-party marks.

The Board therefore found that the similarities in meaning and commercial impression in the involved marks outweigh the differences in sight and sound, and it held that confusion is likely.

Read comments and post your comment here.

TTABlog comment: If only Chicagoans are likely to be confused by these two marks (and maybe a few Hawaiians), would that be enough for a Section 2(d) bar? BTW, how do you blend the "th" sound with the "d" sound?

Text Copyright John L. Welch 2015.


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