TTABlog Test: Is "CALI BANH MI" Confusable With "BÁNH MÌ & CHÈ CALI" for Restaurant Services?

The USPTO refused to register the proposed mark CALI BANH MI for "Restaurant services featuring banh mi baguettes, banh mi sandwiches, pastries, noodles bowls, rice bowls, salad bowls, soups, boba tea drinks and blended drinks” [BANH MI disclaimed], finding confusion likely with the registered mark BÁNH MÌ & CHÈ CALI for "Restaurant services; Take-out restaurant services" [BANH MI AND CHI] disclaimed. The services overlap, but what about the marks? How do you think this came out? In re Cali Banh Mi Inc., Serial No. 90000386 (July 29, 2022) [not precedential] (Opinion by Cynthia C. Lynch).

The broad recitation "restaurant services" in the cited registration encompasses the more narrow services recited in the subject application. The Board must presume that these legally identical services travel in the same trade channels to the same classes of consumers.

Moreover, because the involved services are in-part legally identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion.

Comparing the marks in their entireties, the Board found them to be "similar in appearance, sound and commercial impression. The identical terms CALI and BANH MI appear in both marks, and the cited mark’s only additional wording, “& CHÈ,” merely refers to menu items featured by the restaurant(s)." Despite the differing order of the words, the appearance of the identical words in each mark makes the marks look and sound similar overall.

[B]oth marks convey the meaning and impression of California-based Vietnamese food, or as Applicant argues, California-style Vietnamese food. CALI dominates both marks because all the other wording in each mark merely refers to menu items, and has been disclaimed"

Applicant contended that its mark "suggests a fresh and novel type of Vietnamese cuisine that is popping up across the country," and that CALI (supposedly referencing "California food culture") signifies a "CALI-style interpretation[] of Asian style foods." Applicant submitted 13 declarations asserting that CALI "carries a supposedly different meaning, as a descriptor only of chè." Some of the declarations parroted the same language from a Wikipedia entry. The Board was not impressed.

First, the fact that all of the declarants come from the same city and Applicant’s CEO identifies them as having a “similar ethnic and cultural background[]” suggests that they are not representative of the unlimited trade channels and classes of consumers of the recited restaurant services. Applicant has not demonstrated that the general consuming public, who do not necessarily share the declarants’ “good knowledge of the Vietnamese language” and Vietnamese foods, likely would place the same alleged linguistic significance on the placement of CALI at the beginning or end of the respective marks.

Second, the declarations were preprinted forms with the declarant filling in his or her personal information. And third, there was no evidence of a recognized beverage or dish named "chè Cali," and the declarations’ references to "some sort of California style sweet beverage, dessert soup or pudding" were simply too vague to be probative.

The Board concluded that these declarations tend to show that "both marks refer to Vietnamese foods and drinks that are “Cali-style,” and we find this supports the similarity of the meaning and commercial impressions of the marks."

And so, the Board affirmed the refusal to register.

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TTABlogger comment: How did you do? Is this a WHYA? By the way, the applicant had amended its application to the Supplemental Register to overcome a geographical descriptiveness refusal.

Text Copyright John L. Welch 2022.