Tuesday, March 07, 2017

TTAB Test: Is "THE GREEN PEPPER" Confusable With "GREEN BURRITO" For Restaurant Services?

Carl's Jr. Restaurants opposed an application for registration of the mark THE GREEN PEPPER, in standard character form, for restaurant services, alleging a likelihood of confusion with the registered mark GREEN BURRITO, also in standard character form and also for restaurant services [BURRITO disclaimed]. So the services are identical, but what about the marks? How do you think this came out? Carl’s Jr. Restaurants LLC v. AKM Food Svcs. LLC, Opposition No. 91204459 (March 2, 2017) [not precedential].


Because the services are identical, the Board must presume that they are offered through the same channels of trade to the same classes of consumers. Furthermore, when the services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Opposer claimed that its mark GREEN BURRITO is famous, but its proofs fell short. Carl's pointed to use of the mark for more than 30 years, and widespread advertising and promotion. However, it did not place its sales under the mark in a context that would establish fame. Nonetheless, the Board found that the mark has achieved "at least some degree of recognition and strength in the restaurant market, and ... is therefore entitled to a broader scope of protection than might be accorded a mark with less recognition." [I think that means that the mark has some strength - ed.].

As to the marks, the Board found that the word GREEN is the dominant feature of both marks.

This is because a burrito is a common menu item in Mexican restaurants, served by Opposer and Applicant. As such, the term BURRITO is, at best, highly suggestive of Opposer's services. In addition, the term GREEN modifies the term that follows and denotes a green pepper, an ingredient in many types of foods including Mexican food.

The significance of the word GREEN in the involved marks is reinforced "by its location as the first portion thereof." [What THE? - ed.].


The Board concluded that the similarities between the marks, particularly in appearance, outweigh the differences, and that the marks convey similar commercial impressions. Consumers viewing applicant' s mark would believe that opposer had "established this mark to denote another restaurant, but nonetheless pointing to the same source as its GREEN BURRITO mark."

Balancing the relevant du Pont factors, the Board found confusion likely and it sustained Carl's Section 2(d) claim. The Board dismissed opposer's dilution claim, however, pointing out that since opposer failed to prove fame for Section 2(d) purposes, it could not satisfy the higher standard for fame in the dilution context.

Read comments and post your comment here.

TTABlog comment: Well, what do you think?

Text Copyright John L. Welch 2017.

24 Comments:

At 7:16 AM, Blogger Heather Bond Vargas, Esq. said...

Maybe it is because I do not live in a Carl's Jr. state, but I am not buying this one.

 
At 9:03 AM, Anonymous Anonymous said...

This decision does not sit well with me as this case gives Carl's Jr. broad rights to the common GREEN term found throughout the restaurant and food industry.

 
At 9:11 AM, Blogger Gene Bolmarcich said...

This is a terrible decision. GREEN is the dominant word as between Green Burrito and Green Pepper??? "Green" merely describes the color of these two very different things...how is one to make good decisions for a client with TTAB reasoning like this?

 
At 9:22 AM, Anonymous Anonymous said...

The applicant did not file any testimony, evidence or even a brief. A different result would likely have occurred if the record contained evidence of third party use and registration of marks containing GREEN for restaurants.

 
At 9:32 AM, Anonymous Anonymous said...

Interestingly, the applicant owns Registration No. 4677322 for the mark THE GREEN PEPPER AN AUTHENTIC MEXICAN JOINT which was not opposed by Carl's Jr and which was the subject of a settlement agreement between the parties. In the settlement, the applicant agreed to cease using BURRITO in its mark which is likely why it did not contest this opposition.

 
At 9:34 AM, Anonymous Anonymous said...

GREEN PEPPER has a fairly descriptive/generic impression of a vegetable, ala Cordua Restaurants, but GREEN BURRITO has an impression of an organic, vegetarian, or fresh burrito. These impressions seem far apart to me.

 
At 9:47 AM, Blogger David Oppenhuizen said...

Wow, I'm surprised by this as well. I did a cursory search on TESS and there are probably 100+ use-based registrations for "green" marks used in connection with restaurants. It looks to me like GREEN BURRITO should be afforded a narrow scope of protection because this is a crowded field. In my opinion, THE GREEN PEPPER falls well outside that narrow scope. There are many other use-based registrations for marks that are at least as close as THE GREEN PEPPER.

 
At 9:56 AM, Anonymous Anonymous said...

In my opinion the Board dissected these marks to reach this conclusion. Even if GREEN is held to be the dominant element, the other elements have significant impact on the marks as a whole. For example,the design elements in both marks, colors, fonts, etc. are unique. Also, while PEPPER and BURRITO may lack distinctiveness, it is arguable that they are the dominant elements in the marks. These are the elements that have the most impact on the consumer. But despite which element is dominant, PEPPER and BURRITO change the meaning of these marks, and hence, their overall commercial impression. Board got it wrong. What's going on over there?

 
At 9:57 AM, Blogger RT said...

Ugh. The connotations are very different.

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

The Board put the comparison of trademarks THE GREEN PEPPER and GREEN BURRITO into its 2(d) decision making machine and failed to realize that the machine's algorithm is broken. The people who would confuse the marks THE GREEN PEPPER and GREEN BURRITO are the same people who confuses the marks COKE with PEPSI (about 8% apparently).

 
At 10:31 AM, Anonymous Bob Klein said...

After reading the decision, I have to wonder what a survey with a sample size greater than three (judges) would have shown. There are so many other restaurants found in TESS with "green" in the name that it seems possible that real customers who are not comparing the marks side by side would not be confused.

 
At 11:22 AM, Anonymous Mike said...

As usual in 2(d) cases, the Board is out to lunch.

They apply the confusion test mechanically, without regard to how consumers actually perceive/behave in the modern marketplace.

The Board would be lying if it clicked the reCaptcha statement below that says, "I'm not a robot."

 
At 11:41 AM, Anonymous Anonymous said...

Bad decision by TTAB. These marks are not that similar, and Opposer has sort of been given a monopoly on any mark that starts with the word GREEN for restaurant services!!!

 
At 4:04 PM, Anonymous Anonymous said...

I agree with the consensus to disagree with this decision but what one of the anonymous posters said about the applicant not mounting a real defense, especially in view of the highly aggressive firm representing Opposer, I think pretty well explains the result.

 
At 5:05 PM, Anonymous Erik Pelton said...

In a recent filing with the USPTO for a related refusal, our firm provided a listing of more than than 25 pairings or groupings of trademarks registered by different owners in connection with restaurant, café, and other similar food services, where each pair or group features the same dominant term plus additional descriptive or generic wording.

I have posted our response to the USPTO on my blog at
http://www.erikpelton.com/2017/03/07/trademark-crowdsourcing-restaurant-and-food-service-registered-trademarks-with-overlapping-names/
I have posted our response publicly because finding such groupings is quite challenging - there is no easy or intuitive mechanism in the USPTO's TESS database for finding them. As a result, Applicants are at a disadvantage regarding the types of evidence that can be produced in these types of appeals and cases. By posting our findings, I hope others will comment or email me with additional pairings and we can "crowdsource" to improve the data for the benefit of all Applicants -- I will supplement this post with any additional pairings I receive by posting in the comments or in a separate new post. If this experiment is positive, I intend to post a similar crowdsource project for beer and wine pairings.

 
At 5:44 PM, Anonymous Anonymous said...

What THE? This makes no sense.

 
At 3:30 AM, Anonymous Anonymous said...

It's not easy being green.

 
At 9:37 AM, Anonymous Anonymous said...

Erik, I do not see how these "pairings" are probative in a 2(d) analysis. Is your point, the PTO often makes bad decisions? The Board would not argue with you on that!

 
At 5:30 PM, Blogger Erik Pelton said...

Dear Anonymous (is that your first name or last name?):
I don't think that 25+ groupings shows a series of isolated of "bad decisions," I think it shows a pattern of marks that have been allowed to coexist despite sharing a key word and being used with identical services.
I believe that these pairings show that (a) the USPTO has already allowed many marks that have approximately the same degree of similarity - in the same industry - to coexist. They also show that (b) the field is crowded in that industry, and (c) consumers shopping in that industry are used to seeing marks from different source with shared terms or a smaller differences than in other industries.

 
At 10:06 AM, Anonymous Anonymous said...

Dear Erik, my first name is Orrin and my last name is Falby. I am a paralegal at Davis Wright Tremaine, in the NY office. I hope I fully understand what you are proposing. Please correct me if I am mistaken. The use of coexisting third-party registrations or common law uses to show that a common element has a certain meaning in connection with certain goods/services is well established legal precedent. However, you seem to be suggesting that the "mere fact" marks with common elements coexist in a certain industry, is/should be relevant in a 2(d) analysis. I happen to disagree with this, if I am understanding you correctly. I believe your statement that "consumers shopping in that industry are used to seeing marks from different source with shared terms or a smaller differences than in other industries" is an assumption and probably false. Sorry, I just don't see the point of your exercise. For example, how is the coexistence of UNITED-formative marks in the financial industry relevant to an argument that POLARIS FINANCIAL and POLARIS ADVANTAGE ADVISORS for use in banking relevant to allowing coexistence thereof? Marks with common elements, more than likely, coexist in all industries and as you know, marks MUST be assessed on a case-by-case basis.

 
At 1:04 PM, Blogger Erik Pelton said...

Thanks for your response, Orrin. To use your example, in banking and financial services, there are many marks using FIDELITY or UNITED. I would argue that this can be relevant to a 2(d) analysis in the same industry even for marks that feature neither term - it demonstrates what *consumers* are used to and already capable of differentiating in the marketplace. In the instant case, would it be relevant if RED PEPPER and RED BURRITO were already co-existing on the register? What about BROOKLYN PEPPER and BROOKLYN BURRITO? What about BROOKLYN STEAK and BROOKLYN FILET? I think that in the not too distant future someone could develop computer software that visualizes, in a particular industry, what degree of similarity has been permitted already. Given the sheer volume of marks for restaurants and apparel, I would imagine that in those industries, less differentiation is generally needed to permit co-existence and co-registration. The pairs of examples I used are a crude attempt to show the same thing.

 
At 11:23 AM, Anonymous Orrin A. Falby said...

I understand your argument. However, your examples contain highly suggestive, if not descriptive matter that in my opinion would be probative in the case at hand, with the exception of BROOKLYN STEAK and BROOKLYN FILET. In my opinion, your proposal is dependent on an assumption that all consumers are conditioned to see things in the same way. What about those who are not familiar with a certain industry and would not be able to make this leap? Should the PTO allowed strong marks to coexist, simply because "some" trademark owners in an industry choose to register and use marks that are entitled to a limited scope of protection? What about NIKE for restaurant services and BROOKLYN NIKE STEAK?

 
At 2:14 PM, Anonymous LTG said...

This is a *ridiculous* decision. Even without the applicant putting up a proper fight, the term GREEN is so heavily registered/used in the restaurant industry that I'd warrant no sane consumer would assume a connection between a GREEN PEPPER and THE GREEN BURRITO, even without the designs. How does Carls, Jr. get a monopoly on GREEN for [Mexican] restaurant services? And where the applicant has its own prior GREEN PEPPER restaurant combo mark? That's nuts.

 
At 8:38 PM, Anonymous Mitch Stabbe said...

I agree with the various comments criticizing this decision. However, this ruling creates broader problems than those suffered by the applicant.

Specifically, this decision increases the difficulty faced by trademark lawyers who provide opinions on the availability of marks. Having reviewed searches for 35 years, I cannot count the number of times that I have seen multiple marks with the same dominant term, followed by a descriptive term, for identical goods and/or services, which co-exist on the Principal Register. (I believe I saw a Federal Circuit case on this issue within the last 6 months, but did not print it out. If this rings a bell with anyone, I'd appreciate the case citation.)

In light of the often subjective evaluations that go into likelihood of confusion analyses, it is virtually impossible to provide an unqualified opinion. That said, clients want some degree of certainty and do not want a string of "On the one hand ... On the other hand ..." opinions that are all but useless. With decisions such as these, it becomes harder and harder to provide opinions that provide the client with practical guidance.

 

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