Wednesday, May 30, 2018

HONEYHOLE SANDWICHES for Restaurant Services Confusable with HONEY HOLE for Alcoholic Beverages, Says TTAB

The Board affirmed a Section 2(d) refusal to register HONEYHOLE SANDWICHES for "restaurant with bar specializing in serving proprietary unique sandwiches, local beers and alcohol in a vibrant, eclectic environment" [SANDWICHES disclaimed], finding the mark likely to cause confusion with the registered mark HONEY HOLE for "alcoholic beverages except beers." The Board found the "something more" required to prove relatedness between restaurant services and a food item, in the strength of the cited mark, the fact that applicant serves alcohol ("HONEYHOLE COCKTAILS"), and third-party use evidence. In re Honeyhole Sandwiches Inc., Serial No. 87138294 (May 22, 2018) [not precedential] (Opinion by Judge Frances Wolfson).



Evidentiary Issues: The Board first dealt with various evidentiary issues, including objections to applicant's submission of lists of third-party registrations rather than copies of the corresponding PTO records, and its submission of website evidence without inclusion of the date and URL. See In re Mueller Sports Medicine, Inc. [TTABlogged here].

Applicant submitted a "ThorCheck" report purporting to show 100 pairs of marks registered to different owners, for restaurant services and alcoholic beverages, but the Board was not much impressed since the report comprised merely a list of registrations. Moreover, the dates of registration were missing, as was the current status of each registration. in 38 of the pairs one or both marks contain design elements, and in 4 pairs the owner of the two marks were the same.

The Marks: Not surprisingly, the Board found the terms HONEYHOLE to be the dominant portion of applicant's mark. HONEYHOLE is "slang for a location that yields a valued commodity or resource." Applicant urged that because registrant's alcoholic beverages are honey-flavored, the cited mark is weak. The Board found that, while this fact may undercut the conceptual strength of the cited mark, there was no evidence of third-party use of similar marks that would lessen the mark's commercial strength.

Even consumers who are unfamiliar with the slang expression and who recognize that some of registrants goods may contain honey (there is no such limitation in the registration), are likely to conclude that "the marks emanate from the same source of origin."

In sum, the marks are similar in sight, sound, connotation and commercial impression.

The Goods and Services: "[T]he mere fact that a restaurant may offer certain food items or beverages does not by itself mean that the food or drink is related to the restaurant services; rather, in order '[t]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services.'" Jacobs v. Int'l Multifoods Corp., 212 USPQ 641, 642 (CCPA 1982). [Emphasis by the Board].

The Board has found the requisite "something more" when the registrant's mark was a "very unique, strong mark" and there was a commercial relationship between the goods and restaurants: e.g., in Mucky Duck (mustard) and Opus One (registrant's wines were actually sold in applicant's restaurants).

Here, the Board found the cited mark to be strong, and it further noted that applicant's recitation of services includes "serving ... alcohol." Applicant's specimen of use showed that applicant uses the term HONEYHOLE to identify cocktails sold at its establishment.

Examining Attorney Kim Teresa Moninghoff submitted 45 use-based third-party registrations for marks covering both restaurant services and alcoholic drinks. In addition, she submitted evidence showing that restaurants offer private-label alcoholic beverages under the same mark as used for their restaurant services. And finally, she provided evidence of online advertising by companies offering to create private label beverage lines for restaurants.

The Board therefore found that the "something more" showing was made and that applicant's restaurant services are sufficiently related to respondent's goods.

Conclusion: Finding confusion likely, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Suppose applicant had filed for "sandwich restaurant services?" Would that have made a difference? How do you think a court would rule if registrant brought an infringement claim?

Text Copyright John L. Welch 2018.

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