Friday, April 07, 2006

TTAB Citable No. 20: Divided Panel Affirms 2(a) Deceptiveness Refusal of "CAFETERIA" for Non-Cafeterias

What does it mean when a 2-1 Board decision is deemed citable? Is that a slap in the face to the dissenting judge? Does it weaken the decision's precedential punch? Whatever. In the Board's 20th citable decision of the year, the panel majority affirmed a Section 2(a) refusal to register the mark CAFETERIA (in the form shown below) on the Supplemental Register, finding the mark to be deceptive for "restaurants providing full service to sit-down patrons, excluding cafeteria-style restaurants." In re Alp of South Beach, Inc., 79 USPQ2d 1009 (TTAB 2006).

The Board applied the CAFC's test for Section 2(a) deceptiveness found in In re Budge Mfg. Co., 8 USPQ2d 1259, 1260 (Fed. Cir. 1988):
  1. Is the term misdescriptive of the character, quality, function, composition or use of the goods (or services)?
  2. If so, are prospective purchasers likely to believe that the misdescription actually describes the goods (or services)?
  3. If so, is the misdescription likely to affect the decision to purchase?
The panel majority answered all three questions in the affirmative.

As to point 1, the applicant admitted that its restaurant does not meet the dictionary definition of "cafeteria" because it is neither self-service nor a cafeteria.

As to point 2, Applicant argued that "the determining factor is the probably reaction of reasonably prudent members of the public," and that prospective patrons would be aware from media coverage of the nature of applicant's restaurant "well before the targeted individuals ever entered into the premises." It also pointed to cases in which a consumer is able to discover that a mark is obviously misdescriptive by looking at the involved goods. The panel majority was not impressed:

"Applicant has cited no cases saying that the owner of a service mark can advertise or display false information prominently about its services to prospective consumers, and then escape a finding of deceptiveness because the sale may ultimately not be consummated when the customer discovers the misrepresentation just in time to avoid the transaction." (slip op., pp. 10-11).

The majority also noted Applicant's acknowledgement that a few prospective customers appeared to have "misimpressions about the nature of applicant's services." The Board found this "similar to likelihood of confusion cases, where evidence of some actual confusion can serve as a powerful demonstration that many more people are likely to be confused."

As to the third Budge prong, the majority concluded that "there are features of a cafeteria that some prospective patrons will prefer to those of a table-service restaurant. Thus, whether or not restaurant services have significant attributes of a cafeteria may be material to the decision to patronize a particular establishment." Applicant argued that "patrons who realize their mistake are able to walk away from the reservation desk before purchasing meals requiring full table service." The panel majority, however, agreed with Examining Attorney Jennifer D. Chicoski that "the critical point for gauging whether or not potential patrons believe the misdescription inherent in applicant's service mark is earlier than applicant has argued."

"we find that the existence of pre-sale deception does not depend upon whether or not a sale is completed as a result of the deception. The mere fact that one may have decided to go to applicant's restaurant in order to patronize a true cafeteria, based solely upon applicant's choice of a deceptively misdescriptive name for a restaurant, is sufficient to meet the test of the final prong of the Budge test for deceptiveness." (slip op., pp. 19-20).

The Board therefore affirmed the Section 2(a) refusal to register.

In a 20-page dissent, Administrative Trademark Judge Rogers expressed his doubts "about the misdescription created by applicant's mark," about whether reasonable consumers would be deceived, and about whether "any misunderstanding that may be created in the minds of a very few consumers would be more than fleeting."

Text Copyright John L. Welch 2006.


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