Monday, March 20, 2006

TTAB Affirms 2(d) Refusal of "TOP DOG & Design" for Food Concession Services

Applicant Volume Services found itself the bottom dog in its appeal from the PTO's Section 2(d) refusal to register the mark TOP DOG & design for food kiosk and concession services. The Board affirmed, finding the mark likely to cause confusion with the registered mark TOP DOG FAST FOODS (Stylized) for restaurant services. In re Volume Services America, Inc., Serial No. 78313276 (March 8, 2006) [not citable].


Volume argued that the inclusion of its house mark "Centerplate" (below the words "TOP DOG") removed any likelihood of confusion, that the services of the parties are rendered in different geographical markets, and that the cited mark is weak due to the "encroachment" of similar marks on the Register.

Examining Attorney Richard F. White maintained that the dominant term in both marks is TOP DOG, that Volume's addition of its house mark only increases the likelihood of confusion, that many fast-food and casual restaurants establish food stands and kiosks, that the alleged limited geographical scope of registrant's services is irrelevant, that the cited mark has not been shown to be weak, and that in any case even weak marks are entitled to protection.


The Board agreed with the PTO that the phrase TOP DOG dominates both marks. The phrase "A Centerplate Brand" appears in such small lettering that many consumers may overlook it. In any case, "the Centerplate tagline, if seen, increases the likelihood of confusion," and particularly of reverse confusion in this case [since "registrant's size does appear to pale in comparison with applicant"].

As to the services, third-party registration evidence showed that food stands, kiosks, and restaurants are commonly marketed under the same service mark [e.g., BIG BOY and WAFFLE WORLD]. Moreover, Internet evidence established that national restaurant chains like KFC, Pizza Hut, Domino's Pizza, and Taco Bell often have kiosks and stands within large recreational venues such as sports stadia. The Board therefore concluded that the involved services are "closely related."

Although registrant may offer its restaurant services only in two small communities in North Carolina, there is no such limitation in its registration. Furthermore, "one of applicant's roving vendor stands could be located right next door to one of registrant's restaurants." The Board pointed out that, in any case, the limited geographical scope of registrant's use is irrelevant because Section 7(b) of the Trademark Act accords registrant a presumption of an exclusive right to nationwide use of its mark.

The Board did not relish Volume's contention that the cited mark is entitled to a narrow scope of protection because of the existence of third-party registrations for marks containing the term "top dog," supposedly indicating that the PTO has "ostensibly acquiesced in the co-existence of a number of quite similar registrations." Once again the Board pointed out that previous decisions of other Examining Attorneys in approving other marks are not binding on the USPTO or on the Board. And, as the Examining Attorney asserted, even weak marks are entitled to protection.

The Board therefore ruled that Volume's mark failed to pass mustard.

Text Copyright John L. Welch 2006.


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