Wednesday, April 20, 2005

Reversing 2(d) Refusal of "DELMONICO'S," TTAB Requires "Something More"

In restaurant/food product cases, CAFC precedent requires "something more" than mere similarity or identity of the marks to support a likelihood of confusion refusal. The PTO's failure to provide that "something more" led to reversal of its Section 2(d) refusal of the mark DELMONICO'S for restaurant services. In re Southwestern Management, Inc., Serial No. 78271067 (March 28, 2005) [not citable].

Delmonico's Italian Steakhouse
Utica, New York

The PTO contended that the applied-for mark was likely to cause confusion with two DELMONICO registrations owned by different entities: the first for macaroni, spaghetti, and noodles; and the second for alimentary pastes. The TTAB, however, hungered for more. Relying on the CCPA's 1983 Jacobs decision, and the Federal Circuit's 1993 Lloyd's and 2003 Coors decisions, the Board asserted:
"Our primary reviewing court has made it abundantly clear on numerous occasions that 'to establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services.'" [emphasis in original]

(Click on photo for larger picture.)

The Board observed that in only two situations has the appellate court found that "something more:" first, if the registered mark is not only identical to the applied-for mark, but also is "well known and famous" (Jacobs); and second, if the registered mark is identical and "particularly unique" (Mucky Duck).

The Board noted that here Applicant submitted more than 25 Internet references showing use of the term DELMONICO for a "wide array of different food items or food recipes." Moreover, it pointed out that the two cited registrations are owned by different entities. Thus the cited marks could not qualify as either "well known and famous" or "unique." The Board consequently ruled that, even though the marks at issue are "essentially identical," the Examining Attorney failed to provide the required "something more" to support her Section 2(d) refusal.

Text ©John L. Welch 2005. All Rights Reserved.


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