TTABlog Test: Are These Two Word + Design Marks Confusable for Restaurant Services?
The USPTO refused registration for the mark shown below left, finding it likely to cause confusion with the mark shown below right, both for restaurant services. On appeal, applicant argued that his restaurant is in Virginia while registrant's is in Alabama, that his mark features a buffalo, not a chicken, and that the word PHILLY'S refers to to a geographical location [Cleveland), whereas PHIL's is a person's name. How do you think this came out? In re Shah, Serial No. 86042729 (May 6, 2016) [not precedential]
Of course, applicant's geographical distinction went nowhere, since the cited registration provides nationwide protection, and since applicant is seeking a nationwide registration.
As to the marks, The Board observed for the umpteenth time that when the services are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion.
Despite the distinctions between the marks, the Board find that their overall look "remains close."
Both designs are essentially circular, with two concentric circles surrounding the drawing of the head of a central animal figure, and wording that is placed above and beneath the animal’s head. The dominant portion of both Applicant’s and Registrant’s marks, however, are not the designs, which serve as background, but the prominent words BUFFALO PHILLY’S and BUFFALO PHIL’S; ....
The Board noted that in a word + design mark, the literal portion is usually given greater weight because literal portion of a mark is far more likely to be remembered impressed and to be used when ordering the goods. It found "little memorable difference" between BUFFALO PHILLY'S and BUFFALO PHIL'S. As to connotation, there was no evidence of any geographical meaning [judicial notice? - ed.], but if there were one it would apply to both marks. In sum, the Board found the marks to be "highly similar in pronunciation and connotation and, despite the differences in appearance, are similar in their overall commercial impressions."
The Board concluded that confusion is likely, and so it affirmed the refusal.
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TTABlog comment: Is this a WYHA? Would BISON PHILLY'S be confusable with BUFFALO PHIL'S? How about BISON BILL'S and BUFFALO PHIL'S?
Text Copyright John L. Welch 2016.
posted by John L. Welch @ 5/10/2016
2 comments
2 Comments:
I've been practicing trademark law for 25 years and I can't even come close to rationalizing this decision. Am I alone in seeing a sea change in the Board's severe lowering of the confusion threshold to that of Mr. Magoo?
This decision follows the classic USPTO/TTAB likelihood of confusion analysis for registration refusal purposes (under Section 2(d)) and is not the least bit surprising. What seems rather surprising is that Swyers (or any trademark attorney) would have appealed this refusal because as a former examiner, he should have known that the PTO would follow this line of reasoning, namely that the word portion is more dominant than the design elements and the differences in the marks (especially if only graphical) are insufficient given that the services are identical (geographical usage is irrelevant). Then again, knowing now what we know about Swyers record at the USPTO, I suppose this really isn't surprising but is rather typical and illustrates the OED case against him.
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