Wednesday, April 27, 2016

TTAB Test: Is BLACK BARK for Restaurant Services Confusable with BLACK BARK BRISKET for Meat?

Last week we had olive oil and restaurant services. Now it's restaurant services and beef. The USPTO refused registration of the mark BLACK BARK for restaurant services, finding it likely to cause confusion with the registered mark BLACK BARK BRISKET for "Meat; Prepared meat." The marks are similar, but are the goods and services related? How do you think this came out? In re DLMW-BBQ, LLC, Serial No. 86457938 (April 25, 2016) [not precedential].

The marks: The Board found the marks to be substantially similar in appearance and sound. As to meaning, in the field of barbecued meats, "BARK is understood to mean the desirable crust that develops on meat that has been properly cooked." "Bark" may be black in color, and in fact that color is desirable to some.

In overall commercial impression, Registrant’s mark, as applied to meat, describes a brisket meat that is cooked or barbecued in such a way that it has a black-colored crust; and Applicant’s mark, as applied to restaurant services suggests the availability of meat that is cooked or barbecued so as to have a black-colored crust. We find these commercial impressions to be similar, although not identical.

The Board found that the first du Pont factor, the similarity or dissimilarity of the marks weighed in favor of a finding of likelihood of confusion.

Goods/Services: "To establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services." Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 1236, 212 USPQ 641, 642 (CCPA 1982).

In an attempt to show relatedness, the Examining Attorney submitted several website excerpts from restaurants or food trucks that specialize in barbecue and offered meat by the pound, as well as six third-party registrations covering restaurant services and meat products. Only two of the websites excerpts were probative.

The Board, however, wanted to see the "something more." It noted that the cited mark is a relatively weak source indicator for most products because of its descriptiveness, and it found the two websites and the relatively small number of registrations to be insufficient under the "something more" standard.

The Board concluded that the USPTO failed to prove that confusion is likely, and it therefore reversed the refusal.

Read comments and post your comment here.

TTABlog comment: I'm surprised the PTO couldn't come up with more websites and registrations to support the refusal. Why was the evidence limited to barbecue restaurants?

Text Copyright John L. Welch 2016.


At 10:25 AM, Anonymous Anonymous said...

What's the rationale for requiring "something more" to show a relationship between food and restaurants? What's so special about these goods and services? Something more standards are a cop out - just another way of saying we really don't have a standard and you can do what you want.

At 1:58 PM, Anonymous Anonymous said...

I agree that, as the TTAB (and even this blog) seems to be interpreting "something more," there is no rationale for the rule. Neither food nor restaurants are a special class products that require a different likelihood of confusion rule. In fact, the "something more" rule has been bastardized since the first pronouncement in Jacobs v. International Multifoods Corp. In that case, the appellate court was reacting to an apparent argument by the appellant that LOC must be found between food and food services. The Jacobs court then quoted the earlier case Interstate Brands Corp. v. Celestial Seasonings, Inc. to the effect that there is no such categorical rule. Thus, the Jacobs Court pronounced that "[t]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used for both food products and for restaurant services." This is simply a restatement of the Interstate Brands Court's rejection of a categorical rule, not the creation of a special rule for food and restaurants.


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