TTABlog Test: Is HOLLYWOOD COFFEE CO. for Retail Store Services Confusable with HOLLYWOOD CAFÉ for Restaurant Services?

The USPTO refused to register the mark HOLLYWOOD COFFEE CO. for "Retail store services featuring packaged coffee and packaged foods" [COFFEE CO. disclaimed], finding confusion likely with the registered mark HOLLYWOOD CAFÉ, in standard character form, for "Mobile restaurant services; restaurant and café services; restaurant services featuring coffee, coffee products, other hot and cold beverages, desserts, pastries and snacks" [CAFÉ disclaimed]. There must be a lot of "Hollywood" marks, right? How do you think this came out? In re USA Innovations, Inc., Serial No. 97441814 (June 25, 2024) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

Applicant included in its brief, a list of third-party registrations for HOLLYWOOD-formative marks, but they were not previously made of record. Examining Attorney Bridgett Smith objected and the Board sustained the objection. "Only evidence filed during examination is timely, Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), and it should not be submitted on appeal."

The Board, not surprisingly, found HOLLYWOOD to be the dominant element of the involved marks. "While there are some specific differences between HOLLYWOOD CAFÉ and HOLLYWOOD COFFEE CO., when the marks are viewed in their entireties, they are similar in appearance, sound and connotation, and they convey similar commercial impressions, due to the common presence of the identical arbitrary term HOLLYWOOD." [I think they look and sound different and have different connotations - ed.]

As to the services, the Examining Attorney submitted the third-party website printouts from Black Acres Roastery, Zeke’s Coffee, Starbucks and Dunkin’, "all of which offer under their own names restaurant services featuring coffee like those identified in the cited registration, and packaged coffee through a retail component like the retail store services identified in the application." She also submitted seven third-party, use-based registrations "covering the types of restaurant and café services identified in the cited registration as well as retail store services featuring packaged coffee of the type identified in the application."

This same evidence sufficed to establish the overlap in channels of trade and classes of consumers.

And so, the Board affirmed the refusal to register

Read comments and post your comment here.

TTABlogger comment: What do you think? Is it worth seeking review by way of civil action, where the applicant could submit additional evidence?

Text Copyright John L. Welch 2024.