Tuesday, July 29, 2008

TTAB Finds "ZABA'S" for Restaurant Services Confusingly Similar to "ZABAR'S" for Catering and Retail Store Services

In this cross-country service mark battle, the Board sustained a Section 2(d) opposition to registration of the mark ZABA'S, in standard character and design form, for "restaurant services," finding it likely to cause confusion with the previously-used and registered mark ZABAR'S (in various forms) for food catering services, retail store services, and mail order services for gourmet food and related items. Zabar's & Co. v. Zaba's Grill, LLC, Opposition No. 91163191 (July 10, 2008) [not precedential].

Opposer is the owner of the well-known food emporium on Manhattan's Upper West Side. Applicant operates several Mexican restaurants in Las Vegas under the name ZABA'S Mexican Grill. They clashed at the TTAB.

The Board began with Opposer's claim of fame, but was not persuaded that ZABAR'S had achieved that lofty status. Although ZABAR'S is "something of an institution" in New York City, "it is not clear from the record how many people outside of the New York area are familiar with the mark ZABAR'S." Opposer distributes 500,000 catalogs, but "it is not clear to whom these catalogs are sent." Opposer's e-mail and faxed orders suffered from the same problem, and the hits at Opposer's website could have been multiple hits from the same individual, or merely casual hits from individuals "looking for a search term such as 'lox' or some other product available in opposer's store." Moreover, Opposer's advertising expenditures of $500,000 are "very low compared to annual advertising figures for other marks we have found to be famous."

The Board had no doubt that Opposer "has attained a degree of renown as a New York City establishment and among gourmet food enthusiasts," but "such evidence of regional or niche fame falls short of establishing that awareness of opposer's products and services among those segments of the population translates into widespread recognition of the mark."

Nonetheless, the evidence did establish that the mark ZABAR'S "has achieved at least a degree of recognition and strength in the market and that the mark is therefore entitled to a broader scope of protection than might be accorded a less distinctive mark."

As to the marks, the Board found them "highly similar" in appearance. Consumers familiar with the ZABAR'S mark are not likely to notice that the "R" is absent from Applicant's mark. The design element and the stylization of Applicant's mark are of less import because it is the literal portion that is likely to be remembered. Although both parties presented argument regarding the pronunciation of the marks, that issue is irrelevant because "it is well settled that there is no correct pronunciation of a trademark." [TTABlog note: I can attest to that: in Boston, the phrase "a trademark" is pronounced "a trayd-mock," while in Chicago it's "a trade-marrk," or something like that. You get the point.]

Applicant's argument that Opposer's mark is the surname of its founder (Louis Zabar), while its mark is derived from name of the tallest mountain in Mexico, was of no help. There was insufficient evidence that consumers would perceive ZABAR's as a surname [TTABlog query: what else would a consumer think, given the apostrophe "S" at the end?], and it was not clear whether consumers would perceive that ZABA's comes from "Pico de Orizaba."

Finally, Applicant's assertion that the Board must consider the marks in the context in which they are used (a Mexican restaurant versus a New York gourmet market) was legally off track, since there are no such limitations in the opposed applications or in the asserted registrations.

As to the services as recited, the Board found them related. In fact, Applicant's own expert testified that it is not uncommon for restaurants to offer catering services. Moreover, Applicant acknowledged that Opposer has a "small cafe on location in its retail store." Finally, Opposer submitted a number of third-party registrations that included both restaurant services, on the one hand, and catering and food store services, on the other. Opposer's admissions that Applicant runs a Mexican-style restaurant and that Opposer does not sell Mexican food cannot limit the parties' services as identified in their respective applications and registrations.

The parties are presumed to marked their respective services through the normal channels of trade to the general public. Both parties sell inexpensive food items, as to which purchasers will not exercise a great deal of care.

Balancing all the duPont factors, the Board ruled in favor of Opposer.

TTABlog Comment: I lived on West 91st Street for six years back in the '70s. ZABAR's is famous to me. Would I be confused by a Mexican restaurant in Las Vegas called ZABA'S. Of course not. But that's not the question, is it? If someone said to me, "that ZABA's restaurant is awful," I might think to myself, "Boy, I guess ZABAR's has gone downhill in the last three decades." When you're living in TTAB land - not New York, Boston, Chicago, or Las Vegas - that's the point.

Text Copyright John L. Welch 2008.


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