TTABlog Test: Are Restaurant Services and Live Musical Entertainment Related for Section 2(d) Purposes?
The USPTO refused to register the mark KOSA for "restaurant and bar services," finding confusion likely with the identical mark registered for "entertainment in the nature of music festivals and live musical performances; entertainment, namely, production of music festivals and live performances featuring music; entertainment, namely, live music concerts." The key issue, of course, was whether the involved services are related for Section 2(d) purposes. How do you think this appeal came out? In re Angel Asset Management LLC, Serial No. 90188208 (May 10, 2023) [not precedential] (Opinion by Judge Frances S. Wolfson).
The Board once again observed that when the involve marks are identical, a lesser degree of similarity between the services is necessary to support a finding of likely confusion. "[A]ll that is required is a 'viable relationship' between the services." Moreover, it is sufficient that relatedness is established between any of the services recited in the registration and applicant’s services.
Examining Attorney Jeffrey Look submitted evidence of third-party use of a single mark for both restaurant and bar services and entertainment services in the nature of live musical performances and live music concert, as well as more than 100 use-based, third-party registrations. The examining attorney also matched several of the registered marks with evidence of actual use for those services (e.g., HARD ROCK and FLORA-BAMA).
Applicant submitted 49 pairs of third-party registrations (31 of which the Board found to be pertinent) owned by different entities for the same or similar mark, where each entity has registered its mark for one of the services at issue, suggesting that the USPTO considers restaurant/bar services unrelated to musical entertainment services. The Board was unimpressed.
[T]he record here does not support a finding that consumers are aware that the involved services are offered by unrelated companies under the same or similar marks. Rather, the overwhelming evidence, not just of registration but of use, shows that consumers have become accustomed to restaurants and bars featuring live musical performances. We agree with the Examining Attorney that the number of registrations and Internet evidence submitted by the USPTO “tips the scale in favor of a finding that the services of Applicant and Registrant are closely related.”
The Board found that the probative effect of the pairs of third-party registrations was diminished by the lack of supporting evidence of use of any of the marks. There was also nothing to negate the possibility of licenses or coexistent agreements in place between any of the paired registrants.
The Board's finding was "bolstered" by articles from trade journals and popular magazines "showing that consumers prefer to enjoy an entertainment experience, such as live music, while eating or drinking in a bar or restaurant and that such consumers tend to linger longer, order more food and drinks."
The evidence sufficiently demonstrates a relationship between Applicant’s services and those in the cited registration, particularly given the reduced degree of similarity between the services that is necessary for confusion to be likely, arising from the fact that they are provided under identical marks. The second DuPont factor supports a finding of a likelihood of confusion.
And so, the Board affirmed the refusal to register.
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TTABlogger comment: How did you do?
Text Copyright John L. Welch 2023.
posted by John L. Welch @ 5/12/2023
7 comments
7 Comments:
How is it relevant that people enjoy eating food while listening to music???
I suppose that sofas and televisions are related because people sit on sofas while watching TV?
We are approaching a point where an examining attorney could probably convince the TTAB that nearly any two sets of G/S are related unless they are incredibly specific. There is simply enough third party registration evidence out there to probably connect nearly anything that isn't nuanced.
Anyways, see you at the Applebee concert series this weekend.
Wouldn't the simple solution for the Applicant be to amend it's ID to "restaurant services that never include live musical performances". Someone who has eaten at such a restaurant who thereafter encounters a live musical performance would NEVER assume that it is somehow associated with that restaurant (it's not located there...DUH). All of the evidence consisted of venues where consumers could BOTH eat and be entertained. That is not even close to being the most common type of restaurant.
Do a Google search of "what does KOSA mean?" and ask yourself, "what world do the USPTO and TTAB live in? because it sure isn't this one.
As part of the Commerce Department, they do a bang up job of "promoting commerce and competition." and by "bang up" I mean one of those New Delhi car traffic jams.
Why have a classification scheme? Looks like PTO is going out of its way recently to:
1. find that all G & S are related, or 2. That the applied for mark fails to function as a mark
"There was also nothing to negate the possibility of licenses or coexistent agreements in place between any of the paired registrants."
Ah, the old, "You failed to prove the negative countering an argument that no one made any effort to prove," gambit.
To Gene, Esq.'s point, he application is examined on the basis of the G&S description, so the description could explicitly remove the possibility of confusion without having any effect on the real world.
It is so sad the TTAB has lost its way in this area.
This was a case of identical marks being used on services that do have a strong relationship with each other. Tell me if you are representing a restaurant franchise that you would not have sent a cease and desist letter to a concert venue operating under exactly the same mark especially if your client is also offering in house live musical performances. Even the concert venue is likely going to sell alcoholic beverages and $25 hamburgers on site. Would Flor-bama the restaurant have a problem with Flori-bama the music venue located either down the street or in Destin instead of Perdido Key? I suspect they would as would Blake Shelton, Planet Hollywood, Jimmy Buffett and even Applebees. Don't just clear your marks in Class 43, look at 42, 41 and even 35. I think if they had come to me, I would have told them to go back to the drawing board and come up with a new name.
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