Unsurprisingly, TTAB Deems JAPANESE COWBOY Confusable with TOKYO COWBOY for Restaurant and Bar Services

The Board affirmed a Section 2(d) refusal to register the mark JAPANESE COWBOY for "Restaurant and bar services" [JAPANESE disclaimed], concluding that confusion is likely with the registered mark TOKYO COWBOY for "bar services; restaurant services." Applicant Catch & Shoot mainly contended that COWBOY is a weak formative in the restaurant field, pointing to 15 third-party registrations og marks containing the word COWBOY. The Board was not roped in by that argument. In re Catch & Shoot, LLC, Serial No. 98888426 (March 17, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Because the cited mark is registered on the Principal Register without a claim of acquired distinctiveness under Section 2(f), the Board observed that "it is inherently distinctive, i.e., that it is at worst suggestive of the [services]." Nonetheless, an applicant may show that "the existence of third-party registrations on similar services diminish[es] the cited mark’s conceptual strength."

The Board found that 15 of the registrations submitted by the applicant were probative, including registrations for the marks COCKTAIL COWBOYS, ITALIAN COWBOY, NORTHERN COWBOY, and THE CAJUN COWBOY.

These registrations are probative to demonstrate that COWBOY is a common element in marks for restaurant and bar services. Apex Bank v. CC Serve Corp., 156 F.4th 1230, 1235 (Fed. Cir. 2025) (“The sixth DuPont factor requires the Board to consider similar marks for similar goods and services.”). This shows that the COWBOY term is relatively weak as applied to the restaurant and bar services in the cited mark. Juice Generation, 794 F.3d at 1339 (“Third party registrations are relevant to prove that some segment of the composite marks which both contesting parties use has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.”).

There was no evidence of third-party use of COWBOY-formative marks in the restaurant/bar field that might affect the commercial strength of the TOKYO COWBOY mark.

The Board observed once again that "where (as here) the parties services are identical, a 'lesser degree of similarity between the marks may be sufficient to give rise to a likelihood of confusion.' Coach Servs., 668 F.3d at 1368." Applicant Catch & Shoot argued that the differences between TOKYO and JAPANESE are sufficient to distinguish the marks in sight and sound. Examining Attorney Jonah R. Berthelsen maintained that the shared term COWBOY is the dominant element in both marks, and that their overall meanings are similar (since Tokyo is a city in Japan), resulting in similar commercial impressions.

The Board noted applicant's argument that consumers often focus on the first term in marks, but here, according to the Board, consumers would focus on the marks as a whole due to their incongruous nature. Moreover, "simply replacing the word TOKYO in the cited mark with JAPANESE is unlikely to obviate confusion because consumers may mistakenly believe that the mark denotes a new line of restaurants and bars from the same owner." The Board concluded that, "[d]espite the weakness of the shared COWBOY term, . . . the marks, considered in their entireties, are similar in sight and sound, and more importantly very similar in meaning and overall commercial impression.

In this case, the second, and third DuPont factors weigh heavily in favor of likelihood of confusion given the identical nature of the services provided in overlapping trade channels to the same classes of consumers. The first factor weighs strongly in favor of a likelihood of confusion due to the shared connotation and commercial impression. These factors outweigh the sixth factor, which weighs only slightly against a likelihood of confusion.

And so, the Board affirmed the refusal.

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TTABlogger comment: WYHA? Based on the third-party registration evidence, what meaning is to be ascribed to the term "cowboy" in the restaurant and bar field? Since there was no evidence that these registered marks were in use, they should have no effect on the commercial strength of the cited mark.

Text Copyright John L. Welch 2026.