Precedential No. 20: Prior Registration of 5IVE RESTAURANT Fails to Shield 5IVE STEAKHOUSE From Section 2(d) Refusal

In a precedential, ruling, the Board affirmed a Section 2(d) refusal of the mark 5IVE STEAKHOUSE & Design (below left) in view of the registered mark 5IVESTEAK (Stylized), both for "restaurant and bar services." Applicant's third-party registration evidence was unsatisfying, and its reliance on its prior registration of a similar mark lacked sizzle. In re Inn at St. John’s, LLC, 126 USPQ2d 1742 (TTAB 2018), aff'd per curiam, (Fed. Cir., Sept. 23, 2019). [precedential] (Opinion by Judge Marc A. Bergsman).

Third-party registration and usage: In an effort to show that 5IVE is a weak formative. applicant pointed to 21 registrations and applications for marks that include that word, two registrations for marks that include FIFTH for restaurant services , and one registration for 51 FIFTEEN for restaurant and bar services.

The Board pointed out that pending applications are not evidence of use of the marks. Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). Second, only five of the submitted registrations related to restaurant and bar services, and therefore the others have limited probative value. See In re i.am.symbolic, LLC, 123 USPQ2d at 1751 Moreover, one of the five registrations had been cancelled and therefore had no probative value. In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264 (TTAB 2011). Two of the remaining four registrations were for related but not identical services and the other two covered identical services but contained the non-identical term "FIFTH."

There was no evidence of third-party usage; only evidence of "just a few" third-party registrations. The Board pointed out once again that the "“existence of [third-party] registrations is not evidence of what happens in the marketplace or that customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973).

Nevertheless, in determining the degree of weakness, if any, in the shared terms, we must “adequately account for the apparent force of [third-party use and registration] evidence,” regardless of whether “specifics” pertaining to the extent and impact of such use have been proven. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-5 (Fed. Cir. 2015). “[E]xtensive evidence of third-party use and registrations is ‘powerful on its face,’ even where the specific extent and impact of the usage has not been established.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (2016) (citing Juice Generation v. GS Enters., 115 USPQ2d at 1674).

However, unlike Juice Generation, where "extensive evidence" of third-party registration and use of similar marks was deemed "powerful on its face," applicant here presented no evidence of use and at most four third-party registrations of varying probative value (two for non-identical services and two for non-identical terms). "This is a far cry from the large quantum of evidence of third-party use and third-party registrations that was held to be significant in both Jack Wolfskin v. New Millennium Sports, 116 USPQ2d at 1136, and Juice Generation v. GS Enters., 115 USPQ2d at 1674.

Therefore the Board considered this 6th du Pont factor to be neutral.

The marks: The Board again observed that when the involved services are identical, as here, a lesser degree of similarity between the marks is necessary to support a finding of likelihood of confusion. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).

The Board found the marks to be "highly similar" in appearance, sound, connotation, and commercial impression. Applicant maintained that the marks have significant differences in appearance, but the Board pointed out that the literal portion of a word + design mark is often considered the dominant feature because it is the portion that is most likely to indicate source. "In other words, the literal elements of a mark are likely to make a greater impression upon purchasers than any stylization of the words or accompanying designs, and would be remembered by them and used by them to request the services." See In re Viterra, 101 USPQ2d at 1908 and 1911 (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)). Moreover, the knife-and-fork design in applicant's mark is a relatively small element of the mark and is at best suggestive of restaurant services.

Applicant's prior registration: Under the thirteenth du Pont factor, the Board may consider "any other establish fact probative of the effect of use." The Board observed that "[w]here an applicant owns a prior registration that is over five years old and the mark is substantially the same as in the applied-for application, this can weigh against finding that there is a likelihood of confusion. See, e.g., In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012) (applicant’s prior registration for ANYWEARS in standard characters substantially similar to the applied-for mark ANYWEAR in stylized form for identical goods).

Applicant pointed to its prior registration for the mark shown immediately above, which has coexisted with the cited registration on the Trademark Register for more than five years. The Board, however, observed that the applied-for mark "moves closer to the cited registration" than the mark in the prior registration. The Board acknowledged that STEAK, STEAKHOUSE, and RESTAURANT are generic, or at best descriptive, "but such terms, in appropriate circumstances may - and here, do - contribute to the overall commercial impression created by a mark." See Juice Generation v. GS Enters., 115 USPQ2d at 1676 (Board paid insufficient heed to the word JUICE in mark for juice bar services).

Because of the similarity of the wording 5IVE STEAKHOUSE and 5IVESTEAK, the Board deemed the existence of applicant's prior registration to be a neutral factor in the Section 2(d) analysis.

Conclusion: The Board found confusion likely and so it affirmed the refusal.

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TTABlog comment: Note that the Board referred to applicant's prior registration as being "over five years old," without using the misleading and erroneous term "incontestable."

Text Copyright John L. Welch 2018.