Thursday, March 04, 2010

TTAB Affirms 2(d) Refusal of "CARMINE'S" Design for Restaurant Services in view of Two Other "CARMINE'S" Designs

Two CARMINE'S is/are enough, said the TTAB, in affirming a Section 2(d) refusal to register the mark CARMINE'S in the form shown here, in view of the two registered marks shown below (owned by different entities), all for restaurant services. Applicant Carmine's Broadway Feast, Inc. pointed out that one of those two marks was cited against the other during prosecution but the refusal was withdrawn; however, the Board observed once again that it is not bound by the actions taken by Examining Attorneys in cases not before it. In re Carmine's Broadway Feast Inc., Serial No. 78934642 (February 25, 2010) [not precedential]. [Postscript: This decision was vacated by the Board in an Order dated May 15, 2015 (here) on the ground of mootness].

The Board wasted little time in finding the marks to be "highly similar" since CARMINE's is the dominant element in each mark. The displays of the marks do not alter the marks' similar connotations or commercial impressions.

Applicant argued that CARMINE'S is a given name and therefore the term is entitled to only a narrow scope of protection. The Board noted, however, that "contrary to the implication in applicant's argument," Section 2(e)(4) applies only to surnames, not given names. There is no provision of the Trademark Act that requires different treatment for given names than any other mark.

Applicant maintained that the coexistence of the two cited registrations dictates reversal. Since one of the cited marks issued despite initially being refused registration over the other, Applicant argued that the Board should reverse here to be consistent. No, said the Board. It is required to assess Applicant's mark in light of the record before it, and is not bound by the actions of Examining Attorneys with regard to other applications.

Next, Applicant urged that CARMINE'S is a weak mark in light of use of that name by several third parties. It provided menus from fourteen establishments that use CARMINE or CARMINE'S as their entire name or part of their name. The Board, however, found this evidence unpersuasive.

This is unlike cases where the Board has found a term to be weak because it is highly suggestive or descriptive, as applied to the relevant goods or services, based on evidence of third-party use in the relevant field. Cf. Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1315 (TTAB 2005). Rather, the record, limited as it is, suggests that numerous parties use these marks in distinct geographical areas. There is no basis for us to conclude that the customers of restaurants would view CARMINE as highly suggestive or descriptive of restaurant services. Quite the contrary -- in each example CARMINE or CARMINE’S appears to be the most distinctive element of the mark.

Finally, Applicant asserted that there have been no incidents of actual confusion between the marks at issue. The Board pointed out, however, that the issue is likelihood of confusion, not actual confusion. Moreover, Applicant itself argued that the three entities operate in different geographical markets. "More importantly, self-serving arguments of no actual confusion have little or no probative value in an ex parte proceeding."

The Board concluded that confusion is likely and it therefore affirmed the refusal.

TTABlog comment: The first cited CARMINE'S is in Rochester, NY, while the second was in Albany (it is apparently now closed). Do you think there is or was any likelihood of confusion in the real world, as opposed to TTAB-world?

Text Copyright John L. Welch 2010.


At 7:47 AM, Anonymous Ben said...

The Albany Carmines was operated by something of a local celebrity. The restaurant included a small studio where Carmine film a local TV cooking show. I don't know if any of that was in the record, but it certainly could have contributed to a likelihood of confusion.

I can't vouch for whether or not it's closed, I haven't lived in Albany in almost eight years, but that Carmines did have great calamari.

At 10:37 AM, Anonymous Orrin A. Falby said...

Being a New Yorker, I can tell you that CARMINES is a famous landmark that has been in operation for numerous years.

The argument submitted by counsel that the mark is weak is obviously flawed. They should have focused on the coexistence angle. That is where their case lies. My question is whether coexistence in the real world as opposed to the Register is probative in the ex parte proceeding? I tried this argument once, but the EA did not buy it.

At this point, they should re-file and seek concurrent use.


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