Wednesday, April 20, 2016

TTAB Test: Are Olive Oil and Restaurant Services Related for Section 2(d) Purposes?

The USPTO refused registration of the mark MORO in the design form shown below left, for "olive oil," finding the mark likely to cause confusion with the registered marks MORO in standard characters and MORO RESTAURANT & Design (below right) for "restaurant and catering services." The Board noted that there is no per se rule dictating a likelihood of confusion between a mark for food items and a similar mark for restaurant services Something more must be shown. How do you think this came out? In re Conga Foods Pty Ltd., Serial No. 86261786 (April 8, 2016) [not precedential].

The Board focused on the cited standard character mark MORO. It noted that "something more" has been found when "the mark for restaurant service made clear that the restaurant specialized in the identified food goods" (E.g., COLOMBIANO COFFEE HOUSE and COLUMBIAN for coffee). Or when the restaurant's wines were actually sold in applicant's restaurant (OPUS ONE for wines confusable with the identical mark for restaurant services). Or when the mark was a "very unique, strong mark" (MUCKY DUCK for mustard confusable with MUCKY DUCK for restaurant services).

The examining attorney submitted evidence of third-party registration and use of a single mark for both edible oils and restaurant services. The Board found the evidence relevant, but it did not show "that the goods and services originate from the same source or that there is an association or connection between the sources of the goods and services." [Not clear why not - ed.].

The cited mark does not indicate that registrant specializes in olive oil as a type of food. The fact that olive oil may be an ingredient in some of the items on Registrant's menu is not enough, by itself, to support a Section 2(d) refusal. "That is, use of a term referring to an ingredient in some dishes does not carry the same weight as use of a term referring to an entire type of food, such as Mexican food, or to a complete product, like pancakes or coffee." (The Board noted that the result here might have been different if registrant specialized in olive-based cuisine.)

As to the strength of the cited mark, the Board did not find MORO to be a "very unique, strong mark," or "unique and memorable."

Finally, there was no evidence that registrant sells applicant's olive oil in its restaurants or via its catering services.

The Board concluded that the USPTO had failed to prove the "something more" required to support the refusal, and so it reversed.

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Text Copyright John L. Welch 2016.


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