TTABlog Test: Is UGLY DOG SALOON for Restaurant and Bar Services Confusable with UGLY DOG for Distilled Spirits?

The USPTO refused to register the mark UGLY DOG SALOON for "Bar and restaurant services; catering services" [SALOON disclaimed], finding confusion likely with the registered mark UGLY DOG for "alcoholic beverages, namely, distilled spirits; alcoholic cocktail mixes." Applicant argued that "it is very uncommon for a restaurant to offer distilled spirits under a common mark." How do you think this appeal came out? In re Saloon Promotions, Inc., Serial No. 90849904 (August 28, 2024) [not precedential] (Opinion by Judge Melanye K. Johnson).

The Board noted that the record "is devoid of any uses of, or registrations containing, 'ugly dog' for 'alcoholic beverages.'" It therefore found the cited mark to be arbitrary and inherently distinctive. "Arbitrary marks are inherently or conceptually strong," and so the cited mark is entitled to a "broad scope of protection."

Turning to the goods and services, applicant asserted that the Office is required (and failed) to show "'something more,' evidence-wise, than just marks that are used for both 'bar and restaurant services' and alcoholic beverages." See In re Coors Brewing Co., 343 F.3d 1340, 1345 (Fed. Cir. 2003) (quoting Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 1236 (CCPA 1982)).

The Board observed that "[t]here is no per se rule that certain goods are related, such as restaurant services and food and beverages." However, the Board has found the "something more" requirement to be met when, for example, an applicant’s mark clearly demonstrates its restaurant specializes in the registrant’s type of goods, or when the cited mark is particularly strong.

In addition to the inherent strength of Registrant’s UGLY DOG marks, to satisfy the “something more” requirement, the Examining Attorney submitted 20 valid and subsisting registrations to demonstrate that the same entity has registered a single mark for catering, bar, or restaurant services, as well as alcoholic beverages, distilled spirits, or alcoholic cocktail mixes.

The Examining Attorney also submitted printed pages from 28 third-party Internet websites showing that the same entity offers “bar and restaurant services” or catering services under a mark, and manufactures, produces, or offers for sale distilled spirits under that same mark.

Applicant’s principal argument is that, considering the holding of In re Coors, the facts and evidence here require us to find "it is very uncommon for a restaurant to offer distilled spirits under a common mark." The Board found applicant's evidence non probative and/or unpersuasive.

After consideration of the admissible evidence of record, we find . . . that collectively, the evidence of record here meets the “something more” requirement. In addition to the cited UGLY DOG registrations being arbitrary and inherently strong, as discussed above, the Examining Attorney submitted 20 third-party use-based registrations showing Registrant’s goods and Applicant’s services registered under the same mark. The Examining Attorney also submitted printed pages from 28 distinct third-party Internet websites showing the same entity offering Registrant’s goods and Applicant’s services at the websites, supporting our finding that the goods and services are complementary.

The Board also noted that applicant’s mark contains the word "saloon" - defined as "a place where alcoholic drinks are sold and drunk; a tavern." And Applicant’s specimen of record lists "Adult Beverages: Ask about cocktails + frozen drinks to-go" as a menu item.

And so, finding the marks confusingly similar, the Board affirmed the refusal to register.

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TTABlogger comment: The Ugly Dog Saloon is located in New Orleans. We'll have to check it out during the INTA mid-year meeting. PS: I think in these restaurant/alcoholic beverage cases, your only hope of winning is to weaken the cited mark through third-party evidence and then distinguish the two marks.

Text Copyright John L. Welch 2024.