Friday, December 02, 2016

TTAB Test: Is "LUCKY SUSHI BAR" Confusable With "LUCKY BAR" for Restaurant Services?

Try your luck on this Section 2(d) bar. The USPTO refused registration of the mark LUCKY SUSHI BAR for bar and restaurant services [SUSHI BAR disclaimed], finding a likelihood of confusion with the registered mark LUCKY BAR for the same services [BAR disclaimed]. Applicant argued that LUCKY is a weak formative, pointing to more than two dozen third-party, use-based registration for marks containing the word LUCKY for restaurant or bar services, or both. How do you think this came out? In re LSB Group LLC, Serial No. 86510189 (November 30, 2016) [not precedential].

Applicant relied on 28 third-party registrations for LUCKY-containing marks, including LUCKY BEAVER BAR & BURGER, LUCKY'S LOUNGE [in Boston, near WGS], and LUCKY NOODLES. The Board pointed out, however, that third-party registrations are not evidence that the marks are in use, but they can show that a mark or a portion thereof has a descriptive or suggestive meaning, and is therefore weak. "An applicant may come closer to a weak mark without causing likelihood of confusion."

Applicant argued that in this context, "lucky" may have the conventional connotation of "good luck," or may bring to mind the slang expression "get lucky." The Board agreed that this number of registrations lends support to the argument that "lucky" is at least suggestive here. [Of what? - ed.]. However, most of the referenced marks are distinguishable from the marks involved here because many place "lucky" within a broader expression having a meaning different from "lucky" alone: e.g., "lucky strike," "lucky horseshoe," "lucky clover," or "lucky streak." Others use the possessive "Lucky's," suggesting an individual. Still others add non-generic/non-descriptive wording, whereas the two marks here consist of only the word "lucky" and generic terms.

However, because there was no evidence that these or any other "lucky" marks are in use, or that consumers are aware of the marks, the Board could not conclude that "lucky" is diluted and commercially weak. [In Juice Generation and Jack Wolfskin, there was proof both of third-party registrations and of considerable third-party use].

Even assuming that "lucky" is conceptually weak, the Board observed that "likelihood of confusion is to be avoided, as much between 'weak' marks as between 'strong' marks."

The Board found, not surprisingly, that the word LUCKY dominates both marks. It found the marks to be similar in appearance and pronunciation, particularly in view of the identity in services. As to commercial impression, the Board agreed to some extent with applicant that SUSHI BAR creates a different impression than BAR alone. However, both the application and cited registration are broad enough to cover more specialized types of restaurants. Evidence showed the some establishments provide sushi bars and bar services.

Finally, the Board found no evidence to support applicant's assertion that sophisticated purchasers are involved, and the argument regarding lack of actual confusion was of little or no value in this ex parte context, where the registrant has no opportunity to be heard.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? Was this a WYHA?

Text Copyright John L. Welch 2016.


At 8:06 AM, Anonymous Joe dreitler said...

Presumably, the Examiner here didn't like Broadway Chicken.
But, from a practical point, if there are that many other "lucky" bars, is another registration worth the paper it is printed on? Can this Applicant stop and else from using the word lucky as part of a restaurant name? Not sure it was worth the fight.

At 8:45 AM, Anonymous D. Dennison said...

Another loss for Mr. Swyers. Interestingly, he argues that there is no evidence of actual confusion, yet the application is an intent-to-use filing with no use claimed. Rather difficult to show lack of confusion in such a case.

At 9:42 AM, Anonymous Anonymous said...

"Board pointed out, however, that third-party registrations are not evidence that the marks are in use"

This is one of the cockamamie doctrines that makes trademark law frustrating, since it is completely counterintuitive.

At 10:06 AM, Anonymous Lawrence Binderow said...

I agree with Anonymous above. How does one obtain (and maintain) a United States trademark registration without providing the PTO with viable evidence showing actual "use" of the mark? Go figure!

At 10:23 AM, Anonymous Anonymous said...

It seems like Yelp would be a better source of evidence than TSDR in these contexts. Registration does not show use, so it seems evidence should focus on "use". I.e. restaurant listings with hours and menus, that can be garnered rather easily online.


At 3:55 PM, Anonymous Anonymous said...

The discussion of the sixth duPont factor for "Number and Nature of Similar Marks for Similar Services" is poorly written and sloppy use of case law. If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, it "is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection."

The large number of registrations clearly showed the LUCKY mark is VERY weak.

I think the Board just decided that putting SUSHI in the middle of LUCKY BAR was not enough to distinguish the two marks. LUCKY BAR could be a sushi bar. End of story.

In any case, the right result, but poor reasoning.

At 12:04 PM, Anonymous Anonymous said...

I agree with the Yelp comment. Why wouldn't the applicant's attorney simply included very easily gathered Internet evidence of third-party use?

At 12:18 PM, Anonymous Anonymous said...

"I think the Board just decided that putting SUSHI in the middle of LUCKY BAR was not enough to distinguish the two marks. LUCKY BAR could be a sushi bar. End of story."

I would hope the Board has better understanding of the law. But the again I am not sure whether you are making a highly nuanced argument regarding the definition of the word BAR (that the term could be understood by consumers as implying sushi bar) or if you are conflating the first two factors. In either case, I disagree. I do not think consumers view the term BAR as including SUSHI BAR. Whether or not LUCKY BAR is a sushi bar is of no moment under the first factor.

I actually think the applicant could have prevailed had its attorney provided real world evidence that the term LUCKY is weak for restaurant services.


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