Tuesday, April 19, 2022

Third-Party Use Evidence Falls Short: TTAB Affirms Section 2(d) Refusal of PROOF for "Restaurant services namely Pizza"

The Board affirmed a Section 2(d) refusal of the proposed mark PROOF & Design (shown below) for "Restaurant services namely Pizza," finding confusion likeliy with the registered mark PROOF, in standard characters, for “Restaurant and bar services and catering services.” The applicant feebly argued that its restaurant serves only pizza and not alcohol, whereas registrant “is a bar restaurant serving alcoholic beverages at a sit down restaurant." Applicant spiced thing up, however, with its contention that PROOF is a weak mark for restaurant services, both conceptually and commercially. In re Princeton Pi Holdings, LLC, Serial No. 88962401 (April 15, 2022) [not precedential] (Opinion by Judge Martha B. Allard).

Applicant's comparison of actual services went nowhere: "Applicant’s arguments based on 'real world' conditions, such as whether alcohol is served or catering services are rendered, has no impact on our decision ... we must decide this case relying on the identifications of the services in the involved application and the cited registration." Because the services are legally identical, the Board must presume that they travel in the same trade channels to the same classes of consumers.

Turning to the strength of the cited mark, beginning with conceptual strength the applicant submitted a dictionary definition of the word "proof" ("of standard strength or quality or alcoholic content”), as well as four third-party registrations for marks incorporating the term PROOF [PROOF A BAR + INCUBATOR, NAVY PROOF FOOD & SPIRITS, PROOFREAD and THE PROOF OF GOOD COFFEE] in arguing that PROOF is a weak mark. The Board agreed with Examining Attorney John Mitchell that the cited marks "are different in sight, sound, and meaning and make a different commercial impression from the cited mark," and are therefore not probative. However, based on the dictionary definition of "proof," the Board found that "PROOF is slightly suggestive of restaurant and bar services because it evokes the alcohol content of alcoholic drinks."

As to commercial strength, applicant argued that the registered mark exists in a crowded field and is therefore entitled to a limited scope of protection. The Board found nine of thethird-party uses (six for PROOF, one for PROOF PIZZA, one for 4C 80 PROOF, and one for PROOF & PROVISION) to be probative. Applicant did not provide evidence of the extent and impact of these uses, but the Board noted that this third-party evidence may be relevant on the issue of commercial strength under Jack Wolfskin and Juice Generation. However, the Board was not impressed by the quantity of the evidence: "we believe that the record of third-party use in this case reflects a more modest amount of evidence than that found convincing in Jack Wolfskin and Juice Generation wherein ‘a considerable number of third parties’ use [of] similar marks was shown.'"

The Board concluded that the registered mark is "slightly conceptually weak and somewhat commercially weak due to evidence of third-party use with restaurant and/or bar services. On balance, this weighs against finding likelihood of confusion."

Comparing the marks, applicant contended that its geometric design causes the mark PROOF to connote mathematical concepts of “proof” used in geometry. In contrast, registrant’s mark refers to the strength of an alcoholic spirit. The Examining Attorney argued that the marks engender the same commercial impression, including "the idea of using evidence and logic to establish the validity of a statement or principle."

The Board concluded that because the shared literal element is the same and the services are legally identical, Applicant’s and registrant’s marks could have the same connotation. Moreover, "because registrant’s mark is registered in standard character format, it may appear in any lettering style, even one such as Applicant’s. Further, we find that the shared literal element and the fact that it is pronounced the same in Applicant’s and registrant’s marks is entitled to great weight." In sum, the Board found the marks to be "highly similar." 

Despite the finding that the cited mark is slightly suggestive and somewhat commercially weak, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: To me, applicant's mark looks like ROOF next to an ice cream cone.

Text Copyright John L. Welch 2022.


At 9:33 AM, Blogger rschafer said...

A perfect example of how the description of the mark matters. The applicant might have been able to register ROOF+design for the same mark. And if some customers get the concept and call the place PROOF, well, that's OK, since there's no definition of how a mark should be pronounced. I have succeeded in the past in registering a "spiral design" that previously had been unregistrable as a "stylized G."

At 1:00 PM, Anonymous Anonymous said...

When I see "proof" used for a pizza restaurant, I think of proving dough, not alcoholic content

At 1:19 PM, Anonymous Anonymous said...

Seems to me "PROOF" has a different connotation as used in connection with bar/restaurant services (alcohol proof) versus pizza joint (proofing pizza dough).

At 3:58 PM, Anonymous Anonymous said...

Your suggestion that it looks like an "ice-cream-cone" next to the word ROOF suggests that the portion "ice-cream-cone" could be filed separately as a logo.
Or do you believe this is a unitary mark?

At 12:56 PM, Anonymous Anonymous said...

I agree with rschafer's comments


Post a Comment

<< Home