Wednesday, August 08, 2012

TTAB Affirms Two of Three PHILADELPHIA'S CHEESESTEAK Refusals to Register

Rookie TTAB Judge Cindy B. Greenbaum cut her teeth on the PHILADELPHIA'S CHEESESTEAK appeal, penning the Board's opinion affirming the PTO's refusals to register that mark for "sandwiches; sandwiches, namely, cheesesteaks" [CHEESESTEAK disclaimed] on the grounds that (1) the mark is confusingly similar to the registered marks PHILADELPHIA CHEESESTEAK CO. & Design, PHILADELPHIA CHEESESTEAK CO., and THE ORIGINAL PHILADELPHIA CHEESESTEAK CO. for “prepared foods, namely, meat," and (2) the mark is primarily geographically descriptive under Section 2(e)(2). As a small consolation to Applicant, the Board reversed the PTO's rejection of Campo's specimen of use (shown below). In re Campo's Deli at Market, Inc., Serial No. 77768687 (August 7, 2012) [not precedential].

Section 2(d): Noting that the involved marks contain the virtually identical terms PHILADELPHIA'S CHEESESTEAK and PHILADELPHIA CHEESESTEAK, the Board concluded that they sound and look similar and have very similar meanings and commercial impressions.

Third-party registrations and Internet evidence helped establish the relatedness of sandwiches and cheesesteaks, on the one hand, and meat on the other hand. Moreover, Examining Attorney Evelyn Bradley perceptively pointed out that sandwiches may contain prepared meat.

Because there are no limitations in the application or the cited registrations, the Board presumed that the goods travel through the same, normal, channels of trade to the same classes of consumers. There was no evidence that consumers of these goods would necessarily be sophisticated. [Where would one possibly get such evidence? - ed.].

Finally, although the cited registrations either reside on the Supplemental Register or were issued under Section 2(f), even weak marks are entitled to protection. To the extent that the Board had any doubts on the Section 2(d) issue, it resolved them, as it must, in favor of the prior registrant.

Geographic Descriptiveness: The Board found that the primary significance of the applied-for mark is that of a well-known place: Pittsburgh Philadelphia. The Board noted that Campo's is located in Philadelphia, and therefore a goods/place association may be presumed.

Applicant, however, argued that "its use of PHILADELPHIA's designates a kind or type of sandwich that is available nationwide, and that no cheesesteak purchaser would believe that the cheesesteak came from anywhere other than where it was purchased." [FWIW, I agree. ed.]. But the Board saw the use of the possessive PHILADELPHIA'S as underscoring the geographic significance of the mark, "namely, that applicant's cheesesteak is of, or from, Philadelphia." In sum, Applicant failed to produce sufficient evidence to overcome the presumption of a goods/place association.

Specimen of use: The Examining Attorney rejected Campo's specimens of use, maintaining that they were mere advertising material or pictures of a restaurant, and not proper trademark specimens. The Board, however, found the specimen depicted above to be acceptable as a point-of-sale display, since the applied-for mark is clearly visible on the sign, and the menu behind the counter lists "cheese steaks" as one of Campo's specialties.

TTABlog comment: I think Campo's is saying that its "Philadelphia Cheesesteak" is the best in Philadelphia, or the one preferred by Philadelphians: i.e., of all the cheesesteaks in Philly, this is the one chosen by Philadelphia. Which makes me think that the mark is geographically descriptive, so forget what I said above.

Text Copyright John L. Welch 2012.


At 10:58 AM, Anonymous Bill Finkelstein said...

I think it's time for the Board, courts, and attorneys to start being more precise when it comes to use of the phrase "sophisticated consumers." We need to emphasize that the factor involved is consumers acting in a sophisticated and/or deliberate manner or making purchasing decisions based on sophisticated expertise. By way of example, one can be a slob but take their time buying a car. Or, put another way, Bill Gates acts in a "sophisticated manner" when he purchases software but not when he purchases a Philly cheesesteak in the Reading Terminal Market. So it's really the purchasing decision that involves "sophistication," not the "man." (With apologies to the late Helen Gurley Brown.)


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