Monday, October 28, 2019

TTABlog Test: Are These Two Word+Design Marks Confusable for Food Items and Restaurant Services?

Weigel Stores applied to register the mark shown first below, for "Processed, ready to eat foods, namely, sandwiches, wrap sandwiches, pizza and pastries" and for "restaurant services," but QuikTrip West opposed, claiming a likelihood of confusion with its registered mark shown next below, for "Garden, vegetable, meat, cheese and fruit salads" and "Processed, ready to eat foods, namely, sandwiches, wraps, pastries and pasta salads." Well, they both do use the color red! How do you think this came out?  QuikTrip West, Inc. v. Weigel Stores, Inc., Opposition No. 91235273 (October 24, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The Goods and Services: The Board found that the goods overlap in part. Moreover, Applicant Weigel's restaurant services are related to QuikTrip West's food items. The "something more" required to show the relatedness of restaurant services and food items was found in evidence suggesting that "in contexts such as convenience stores and quick-serve restaurants, the same marks are used in connection with the restaurant services as are also used for food items such as sandwiches, wraps, and pastries." [Doesn't that finding blow a large hole in the "something more" requirement, since the same can virtually always be said of "restaurant services" (which encompasses an in-store restaurant at a convenience stores) and most food items? - ed.].

Strength of the term KITCHEN(S): Not surprisingly, based on dictionary definitions and third-party usage, the Board found KITCHEN(S) to be a "rather weak" formative for the involved goods and services.

The Marks: The Board deemed the "W" and the word WEIGEL'S to be the dominant elements in applicant's mark, the former reinforcing the latter. The size, color, and location of the "W" contribute to its dominance. Both KITCHEN and NOW OPEN were disclaimed by Weigel. The possessive surname form of WEIGEL'S also contributes to its dominance as the focus of the marks source-indicating capacity. In QuikTrip West's mark, the letters QT and the chef's hat design stand out as dominant.

Comparing the two marks, the Board found them "quite different." Other than the word KITCHEN(S), the literal elements have no similarities, and even the word KITCHEN(S) appears in very different fonts. The background for the W and the QT portions are both red, but of different shapes, and the chef's hat design further distinguishes the marks. The marks are phonetically different, not "similar, and nearly identical" as QuikTrip West conveniently asserted.

As to connotation, applicant's mark would perceived as referring to a kitchen operated by someone named WEIGEL, a perception reinforced by the prominent initial W. Opposer's mark centers on QT, which may be perceived as the initials of someone named QT, perhaps a chef who runs multiple kitchens. [Does QT also suggest quick time? ed.]. In sum, the connotations and commercial impressions are quite different.

The Board therefore found that the first du Pont factor weigeled weighed heavily in applicant's favor.

13th du Pont Factor: QuikTrip West claimed that Weigel was aware of its mark and exhibited a pattern of bad behavior vis-a-vis its intellectual property. Weigel argued that it repeatedly changed its mark when QuikTrip West objected, and its actions showed good faith, particularly in light of the obvious dissimilarities in the marks."

The Board found no evidence of an intent to confuse consumers. Instead the record reflected "Applicant's willingness to take some steps - albeit not all the steps Opposer wanted - to avoid confusion." The Board therefore found no bad faith in Weigel's adoption of its mark.

Conclusion: "Applicant's mark is so dissimilar to Opposer's pleaded mark, and the common element between them so weak that no likelihood of confusion exists."

Read comments and post your comment here.

TTABlog comment:  WYHO?

Text Copyright John L. Welch 2019.


At 1:26 PM, Blogger TMAttorneyHeller said...

No I would not have opposed!!!

At 7:03 PM, Anonymous Anonymous said...

Sad that Applicant had to defend against this. I wonder why this was not disposed of by Summary Judgment?


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