ESTTA Tracking number: ESTTA1118774 03/08/2021

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1118774

Filing date: 03/08/2021

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 88727621

Applicant Old Blind Dog BBQ LLC

Applied for Mark OLD BLIND DOG BBQ

CorrespondenceAddress

ERIK M. PELTONERIK M. PELTON & ASSOCIATES, PLLCPO BOX 100637ARLINGTON, VA 22210UNITED STATESPrimary Email: [email protected]

Submission Appeal Brief

Attachments 2021-03-08 OLD BLIND DOG BBQ Appeal Brief - FINAL.pdf(444943 bytes )

Appealed class Class 030. First Use: 0 First Use In Commerce: 0All goods and services in the class are appealed, namely: sauces; BBQ sauces

Filer's Name Erik M. Pelton

Filer's email [email protected]

Signature /ErikMPelton/

Date 03/08/2021

http://estta.uspto.gov

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Serial No. 88/727,621

Applicant: Old Blind Dog BBQ LLC

Mark:

Examining Atty: Alicia Collin Edwards

Law Office 115

APPLICANT’S EX PARTE APPEAL BRIEF

Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 ii

TABLE OF CONTENTS

TABLE OF CONTENTS ................................................................................................................ ii

INDEX OF CITATIONS ............................................................................................................... iii

PROSECUTION HISTORY ........................................................................................................... 4

SUMMARY OF EVIDENCE ......................................................................................................... 5

ARGUMENT .................................................................................................................................. 9

I. The Examining Attorney Has Not Established Relatedness. ............................................... 9

A. The Examining Attorney’s evidence fails to demonstrate that Applicant’s sauces are

related to Registrant’s restaurant services.......................................................................... 10

B. The facts here are distinguishable from situations where the Board found relatedness

between food products and restaurant services. ................................................................. 14

C. Applicant’s Evidence of Coexisting Pairs of Third-Party Marks Registered Separately

for Class 43 Services and Class 30 Goods by Different Owners Weighs in Favor of

Registration of Applicant’s Mark. ..................................................................................... 17

II. Applicant’s Mark and Registrant’s OLDE BLIND DOG Marks Create Distinct

Commercial Impressions. .................................................................................................. 19

CONCLUSION ............................................................................................................................. 22

Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 iii

INDEX OF CITATIONS

Cases:

Citigroup Inc. v. Capital City Bank Grp., Inc., 98 USPQ2d 1253 (Fed. Cir. 2011) ................................... 20

Consolidated Artists BV v. Camille Beckman Corporation,

Opp. No. 91188863 (Feb. 16, 2012) ........................................................................................................ 22

Destileria Serralles, Inc. v. Kabushiki Kaisha Donq DBA Donq Co., Ltd.,

TTAB LEXIS 473, at *1 (TTAB 2017) .................................................................................................. 13

In re American Olean Tile Co., 1 USPQ2d 1823 (TTAB 1986) ................................................................. 14

In re Coors Brewing, 68 USPQ2d 1059 (Fed. Cir. 2003) ................................................................... passim

In re E.I. Du Pont de Nemours & Co., 177 USPQ 563 (CCPA 1973) ....................................................... 19

In re Giovanni Food Co., 97 USPQ2d 1990 (TTAB 2011) ................................................................... 12-13

In re Golden Griddle Pancake House Ltd., 17 USPQ2d 1074 (TTAB 1990) ............................................ 15

In re Hearst Corporation, 982 F.2d 493 (Fed. Cir. 1992) .......................................................................... 22

In re Hunke & Jochheim, 185 USPQ 188 (TTAB 1975) ............................................................................ 20

In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988) .................................................. 15, 16

In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001).................................................................... 11, 14, 16

In re Parallel World Brewing Company LLC,

2020 TTAB LEXIS 297 at *1 (TTAB 2020) ........................................................................................... 16

In re Sears, Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987) ..................................................................... 21

In re St. Helena Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014) ................................................................. 11

Indus. Nucleonics Corp. v. Hinde, 177 USPQ 386 (CCPA 1973) .............................................................. 10

Jacobs v. International Multifoods Corp., 212 USPQ 641 (CCPA 1982) ................................................. 10

Kellogg Co. v. Pack’em Enters., Inc., 951 F.2d 330 (Fed. Cir. 1991) .................................................. 22, 23

Lloyd’s Food Products, Inc. v. Eli’s, Inc., 25 USPQ2d 2027 (Fed. Cir. 1993) ................................... 11, 14

Long John Distilleries, Ltd. v. Sazerac, 166 USPQ 30 (CCPA 1970) ................................................... 19-20

Odom’s Tenn. Pride Sausage, Inc. v. FF Acquisition, L.L.C., 600 F.3d 1343 (Fed. Cir. 2010) ................. 22

Opryland USA Inc. v. Great Am. Music Show, Inc., 970 F.2d 847 (Fed. Cir. 1992) ................................. 21

Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238 (Fed. Cir. 2004) ............................................................. 21

Statutes:

Trademark Act Section 2(d), 15 U.S.C. § 1052(d) ............................................................................. 4, 9, 23

Other:

TMEP 1207.01(a)(vi) .................................................................................................................................... 9

Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 4

Applicant, Old Blind Dog BBQ LLC, respectfully appeals the Examining Attorney’s

refusal to register Applicant’s standard character OLD BLIND DOG BBQ mark in Application

Serial No. 88/727,621 (“Applicant’s mark”). The Examining Attorney refused registration of

Applicant’s mark for use in connection with “sauces; BBQ sauces” in International Class 30,

pursuant to Trademark Act § 2(d), 15 U.S.C. § 1052(d) as likely to be confused with the cited

OLDE BLIND DOG mark in Registration No. 4,010,839 for restaurant services in International

Class 43 and the registered mark in Registration No. 4,245,188 for hats and t-shirts in

Class 25 and restaurant services in Class 43. Both cited registrations are owned by Celtic

Knights, LLC (hereinafter referred to as “Registrant”). The refusal is inappropriate because the

marks create different commercial impressions when considered in relation to the goods and

services offered in connection with the respective marks. Further, the Examining Attorney has

not met the burden of demonstrating that Applicant’s sauces are related to Registrant’s restaurant

services. Therefore, the Examining Attorney’s refusal should be reversed.

PROSECUTION HISTORY

Applicant’s standard character mark application was filed on December 15, 2019,

seeking registration on the Principal Register for the mark OLD BLIND DOG BBQ in standard

characters for use in connection with “sauces; BBQ sauces” in International Class 30.

On March 14, 2020, the Examining Attorney issued an officiation, refusing to grant

registration of Applicant’s mark on the Principal Register under Section 2(d), 15 U.S.C. §

1052(d), finding OLD BLIND DOG BBQ likely to be confused with Registration Nos.


4,010,839 and 4,244,188 for the marks OLDE BLIND DOG and (collectively

referred to as “Registrant’s OLDE BLIND DOG Marks”) for “[r]estaurants” and “restaurant

services” respectively in International Class 43.1 The Examining Attorney also required

Applicant to disclaim the word “BBQ.”

On September 3, 2020, Applicant filed an Office Action response arguing against the

Section 2(d) refusal with Registrant’s OLDE BLIND DOG Marks and noting disclaiming the

word “BBQ” in its application.

On October 23, 2020, the Examining Attorney issued a Final Office Action, maintaining

the Section 2(d) refusal with Registrant’s OLDE BLIND DOG Marks.

On December 15, 2020, Applicant filed a Request for Reconsideration and a Notice of

Appeal to the Board. In its Request for Reconsideration, Applicant incorporated additional

evidence to demonstrate that its mark is distinguishable from the cited registration, including

more than ten pairs of overlapping sets of third-party registrations with similar terms for both

restaurant services and food/drink goods where the owner of the marks is different.

On January 4, 2021, the Examining Attorney denied the Request for Reconsideration.

On January 11, 2021, the Board resumed the ex parte appeal, granting Applicant sixty

days to submit its Appeal Brief.

SUMMARY OF EVIDENCE

Examining Attorney’s Evidence

1. Office Action of March 14, 2020

Information for Registration No. 4,010,839 for the mark OLDE BLIND DOG in

1 Applicant notes that Registration No. 4245188 is also registered for use in connection with “[h]ats; T-shirts” in

International Class 25, but the Examining Attorney’s refusal relates only to the restaurant services.


standard characters;

Information for Registration No. 4,245,188 for the mark ;

Information for Registration No. 5,938,334 for the mark 4FINGERS;

Information for Registration No. 5,967,794 for the mark PHAT PHAT;

Information for Registration No. 5,520,466 for the mark WRAPTTITUDE;

Information for Registration No. 5,358,628 for the mark INNER CITY BLUES;

Information for Registration No. 5,710,500 for the mark OUR LADY OF

BARBECUE;

Information for Registration No. 5,474,573 for the mark RED TRACTON’S;


Information for Registration No. 5,732,707 for the mark PAPA CRISTO’S;

Information for Registration No. 5,881,662 for the mark HOMESTYLE

HAWAIIAN;


Google Search Results for “fridays sauces”;

Home page, TGI FRIDAYS, https://www.tgifridays.com/ (last visited Mar. 14,

2020);

Google Search Results for “o charleys sauces”; and

Home page, O’CHARLEY’S, https://www.ocharleys.com/ (last visited Mar. 14,

2020).

2. Final Office Action of October 23, 2020

Old vs Olde – What’s the difference?, WIKIDIFF, https://wikidiff.com/old/olde

(last visited Oct. 23, 2020);

Definition of “archaic,” MACMILLAN DICTIONARY,

https://www.macmillandictionary.com/us/dictionary/american/archaic (last visited

Oct. 23, 2020);

XSearch Report Screenshot for the text search “*old*[bi,ti] and *blind*[bi,ti] and

*dog*[bi,ti]”;

How Do I Bottle and Sell My Own Spicy Sauce?, ALIGNABLE,

https://www.alignable.com/forum/how-do-i-bottle-and-sell-my-own-spicy-sauce

(last visited Oct. 23, 2020);

Why Every Restaurant Needs A Private Label Line, PRIVATE LABEL FOODS (Apr.

13, 2018), https://www.privatelabelfoods.com/blog/private-label-

line#:~:text=Having%20your%20own%20line%2C%20whether,add%2Don%20s

ales%20during%20checkout.&text=Additionally%2C%20you'll%20have%20the,

you%20during%20a%20recent%20visit (last visited Oct. 23, 2020);


Jonathan Deutsch, Starting a Private Label Food Product, RESTAURANT

BUSINESS (Aug. 26, 2010), https://www.restaurantbusinessonline.com/advice-

guy/starting-private-label-food-product (last visited Oct. 23, 2020); and

Stephanie Ganz, How to Private Label Signature Menu Items, PERFORMANCE

FOODSERVICE, https://www.performancefoodservice.com/get-inspired/how-to-

private-label-signature-menu-items (last visited Oct. 23, 2020).

3. Reconsideration Letter of January 4, 2021

Bottled Flavors, BUFFALO WILD WINGS,

https://www.buffalowildwings.com/en/food/bottles/ (last visited Jan. 4, 2021);

Locations, BUFFALO WILD WINGS,

https://www.buffalowildwings.com/en/locations (last visited Jan. 4, 2021);

Home page, DINOSAUR BAR-B-QUE, https://www.dinosaurbarbque.com/ (last

visited Jan. 4, 2021);

Sauces and Rubs, DINOSAUR BAR-B-QUE, https://dinobbq.securetree.com/sauces-

and-rubs/ (last visited Jan. 4, 2021);

Full Moon Swag, FULL MOON BAR-B-QUE,

https://fullmoonbbq.com/merchandise.php (last visited Jan. 4, 2021);

Locations, FULL MOON BAR-B-QUE, https://fullmoonbbq.com/alabama-bbq-

restaurant-locations.php (last visited Jan. 4, 2021);

Home page, JOE’S KANSAS CITY BAR-B-QUE, https://www.joeskc.com/ (last


Peter Luger Steak House Old Fashioned Sauce, PETER LUGER,

https://peterluger.com/peter-luger-steak-house-old-fashioned-sauce/ (last visited

Jan. 4, 2021);

Home page, PETER LUGER, https://peterluger.com/ (last visited Jan. 4, 2021);

Home page, LEDO PIZZA, https://ledopizza.com/ (last visited Jan. 4, 2021);

Home page, PORK BARREL BBQ RESTAURANT, https://bbqdelray.com/ (last


Products – Pork Barrel BBQ Products, PORK BARREL BBQ,

https://porkbarrelbbq.com/collections/bbq-products (last visited Jan. 4, 2021);

Grocery, SKYLINE CHILI, https://www.skylinechili.com/grocery/ (last visited Jan.

4, 2021);

Locations, SKYLINE CHILI, https://www.skylinechili.com/grocery/ (last visited

Jan. 4, 2021);

Home page, NANDO’S, https://www.nandosperiperi.com/ (last visited Jan. 4,

2021); and

Nando’s Peri-Peri Sauces, NANDO’S, https://www.nandosperiperi.com/peri-

products/sauces (last visited Jan. 4, 2021).


Applicant’s Evidence

1. Office Action Response of September 3, 2020

Exhibit A: Restaurant Industry Facts at a Glance Fact Sheet, NATIONAL

RESTAURANT ASSOCIATION, https://restaurant.org/research/restaurant-

statistics/restaurant-industry-facts-at-a-glance.

Exhibit B: TESS Search Results for “(“sauce” or “sauces” or “bbq sauce”)[GS]

and (live)[ld] not (0)[rn]” (last visited Sept. 1, 2020).

Exhibit C: TESS Search Results for “("030")[ic] and (live)[ld] not (0)[rn]” (last

visited Sept. 1, 2020).

Exhibit D: Shop, OLDE BLIND DOG, https://www.oldeblinddog.com/shop (last


Exhibit E: Menu, OLDE BLIND DOG, https://www.oldeblinddog.com/menu (last


Exhibit F: Definition of “olde,” LEXICO,

https://www.lexico.com/en/definition/olde (last visited Sept. 1, 2020).

Exhibit G: Definition of “olde,” COLLINS DICTIONARY<

https://www.collinsdictionary.com/us/dictionary/english/olde (last visited Sept. 1,

2020).

2. Request for Reconsideration of December 15, 2020

Exhibit H: Definition of “olde,” MACMILLAN DICTIONARY,

https://www.macmillandictionary.com/us/dictionary/american/olde (last visited

Dec. 10, 2020).

Exhibit I: Definition of “olde,” THE FREE DICTIONARY,

https://www.thefreedictionary.com/olde (last visited Dec. 10, 2020).

Exhibit J: oldeblinddog, INSTAGRAM, https://www.instagram.com/oldeblinddog/

(last visited Dec. 10, 2020).

Exhibit K: Brewery, MOLLY’S BICYCLE SHOP,

http://www.mollysbicycleshop.com/brewery.html (last visited Dec. 10, 2020).

Exhibit L: Home page, BLIND DOG COFFEE ROASTERS,

https://blinddogcoffee.com/ (last visited Dec. 10, 2020).

Exhibit M: Home page, BLIND DOG PARK CITY, https://www.blinddogpc.com/

(last visited Dec. 10, 2020).

Exhibit N: Home page, BLIND DOG TAVERN, https://www.bdtreno.com/ (last

visited Dec. 10, 2020).

Exhibit O: Third-Party Registration Certificates for Registration Nos. 4904619,

2721434, 5199223, 1733373, 4894070, 1128391, 5861912, 5892978, 2963574,

5020810, 1430451, 4096614, 2625310, 3888774, 4111596, 5602753, 5145012,

5302031, 3976914, 3689181, 2850220, and 4722900.


ARGUMENT

The Examining Attorney has refused registration pursuant to Trademark Act Section

2(d), 15 U.S.C. § 1052(d), on grounds that Applicant’s OLD BLIND DOG BBQ mark for sauces

and BBQ sauces is likely to be confused with the OLDE BLIND DOG and

registered marks for restaurant services. Applicant’s mark is not likely to be confused with

Registrant’s OLDE BLIND DOG Marks; Registrant offers restaurant services, whereas

Applicant manufactures and sells sauces. The Examining Attorney has not met the burden of

establishing that Applicant’s goods and Registrant’s services are related. Further, the marks

create different commercial impressions when considered in relation to the goods and services

offered in connection with the respective marks. For the following reasons, Applicant

respectfully disagrees with the Examining Attorney’s finding and requests that the Board reverse

the statutory refusal and allow publication of the Application.

I. The Examining Attorney Has Not Established Relatedness.

The Examining Attorney has not met her burden of showing that the goods identified in

Applicant’s involved application are related to Registrant’s services or that purchasers would

generally expect such goods and services to emanate from the same source. The Examining

Attorney has the burden to “provide evidence showing that the [goods and] services are related

to support a finding of likelihood of confusion.” TMEP 1207.01(a)(vi). Here, Registrant’s

identification of services is “restaurants” and Applicant’s applied-for goods include “sauces;

BBQ sauces.” The Examining Attorney’s evidence does not demonstrate that Applicant’s sauces

and BBQ sauces are likely to be sold at Registrant’s restaurants or that Registrant separately

manufactures and sells any of its sauces at its restaurants or third-party distributors. Further, a


large number of unrelated restaurants and condiment companies coexist with identical or nearly

identical trademarks in the United States. Given that “each case must be decided on its own facts

and the differences are often subtle ones,” the facts here do not demonstrate relatedness. Indus.

Nucleonics Corp. v. Hinde, 177 USPQ 386, 387 (CCPA 1973) (internal citations removed).

A. The Examining Attorney’s evidence fails to demonstrate that Applicant’s

sauces are related to Registrant’s restaurant services.

Applicant’s mark is intended for use in connection with food products – sauces and BBQ

sauces – while Registrant’s OLDE BLIND DOG Marks are used in connection with restaurant

services. In Coors Brewing, the Federal Circuit held that the Board’s reliance on (i) evidence

from several references discussing the practice of some restaurants do offer private label or

house brands of beer, (ii) articles showing that brewpubs, which brew their own beer, often

feature restaurant services, and (iii) evidence of several third-party registrations showing that a

single mark has been registered for beer and restaurant services to find that beer and restaurant

services are related was not sufficient “substantial evidence.” In re Coors Brewing, 68 USPQ2d

1059, 1063 (Fed. Cir. 2003). The Federal Circuit explained why more evidence than just

showing restaurants sell beer is required to prove that those goods and services are related:

It is not unusual for restaurants to be identified with particular food or beverage

items that are produced by the same entity that provides the restaurant services or

are sold by the same entity under a private label. Thus, for example, some

restaurants sell their own private label ice cream, while others sell their own

private label coffee. But that does not mean that any time a brand of ice cream or

coffee has a trademark that is similar to the registered trademark of some

restaurant, consumers are likely to assume that the coffee or ice cream is

associated with that restaurant. The Jacobs case [Jacobs v. International

Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA 1982)] stands for the

contrary proposition, and in light of the very large number of restaurants in this

country and the great variety in the names associated with those restaurants, the

potential consequences of adopting such a principle would be to limit

dramatically the number of marks that could be used by producers of foods and

beverages.


Coors Brewing, 68 USPQ2d at 1063. In other words, there is no per se rule that certain goods

and services are related. Lloyd’s Food Products, Inc. v. Eli’s, Inc., 25 USPQ2d 2027 (Fed. Cir.

1993) (concluding that there is no per se rule about confusion, where similar marks are used in

connection with restaurant services and food products). “While we have applied the ‘something

more’ standard in the past in the context of restaurant services, the rule is not so limited and has

application whenever the relatedness of the goods and services is not evident, well-known or

generally recognized.” In re St. Helena Hospital, 113 USPQ2d 1082, 1087 (Fed. Cir. 2014).

Therefore, when it comes to restaurant services and food or beverages, including sauces and

condiments, “something more” is required (over and above a showing that the goods and

services are offered together) because the relatedness of the parties’ respective goods and

services is not evident. In re Opus One Inc., 60 USPQ2d 1812, 1813 (TTAB 2001). As a result,

the Examining Attorney must show “something more” to conclude that a connection exists

between Applicant’s sauces and BBQ sauces and Registrant’s restaurant services.

The evidence submitted by the Examining Attorney, here, is precisely the type of

evidence rejected by the Federal Circuit in In re Coors as being insufficient to satisfy the

“something more” requirement. The Examining Attorney submitted 10 third-party registrations

showing the same entity has registered a single mark for food items and restaurant services. In

addition, the Examining Attorney attached screenshots belonging to several third-party dining

establishments purportedly demonstrating that these eateries use a single mark as a source

indicator not only for sauces that they offer at their restaurants (or for purchase on their websites)

but also for the dining services they provide to consumers. This evidence, however, is minor

compared to the number of restaurants that operate in the United States.


Relying on evidence introduced in Coors Brewing, at the time there were about 1,450

brewpubs, microbreweries, and regional specialty breweries in the United States and

approximately 815,000 restaurants. The Federal Circuit reasoned that “even if all brewpubs,

microbreweries, and regional specialty breweries featured restaurant services, those

establishments would constitute only about 18 one-hundredths of one percent of all restaurants,

or fewer than one in 500.” Coors Brewing, 68 USPQ2d at 1063. Those numbers, however, have

not changed significantly since the 2003 Coors Brewing case. According to the National

Restaurant Association, there are currently more than 1,000,000 restaurants in the United States

(see Applicant’s Office Action Response (“OAR”) of Sept. 3, 2020, Exhibit A), while there are

only approximately 93,000 marks registered in Class 30 (see id. at Exhibit C) and about 19,600

marks registered for “sauce, sauces, or bbq sauce” goods. Id. at Exhibit B. Even though there is

no exact measurement for the number of sauce brands on the market, the USPTO records for the

number of marks registered in Class 30 and/or for “sauces or BBQ sauces” is a relatively good

approximation. There is a large discrepancy in the number of operating eateries and the number

of sauce brands – more than 1 million restaurants to 100,000 sauce brands/companies –

highlighting that the number of companies that provide both BBQ sauces and restaurant services

under the same source is small.

The Examining Attorney’s third-party Internet evidence of marks that are used in

connection with both sauces and restaurant services does not establish relatedness, especially in

light of the number of restaurants operating in the United States. In re Coors, 68 USPQ2d at

1064 (noting that the Board’s conclusion that restaurant services and beer are related “is based

on the fact that a tiny percentage of all restaurants also serve as a source of beer, which is a very

weak evidentiary basis for a finding of relatedness.”); see also In re Giovanni Food Co., 97


USPQ2d 1990, 1992 (TTAB 2011) (finding JUMPIN’ JACKS for “barbeque sauce” not likely to

cause confusion with JUMPIN JACK’S for “coffee-house services; and catering services”

because the “something more” requirement has not been met). Most of the Examining Attorney’s

third-party use evidence consists of well-recognized restaurants such as, Buffalo Wild Wings,

Nando’s, Ledo Pizza, Skyline Chili, TGI Fridays, and O-Charley’s. See Office Action of Mar.

14, 2020; Reconsideration Letter of Jan. 4, 2021. “Internet marketplace evidence derived from

websites of [such] well-known” restaurants and fast-food chains “has limited probative value.”

Destileria Serralles, Inc. v. Kabushiki Kaisha Donq DBA Donq Co., Ltd., TTAB LEXIS 473, at

*1, *60 (TTAB 2017). The fact that well-known restaurants use highly recognized marks on a

wide range of products, including sauces, does not mean that all of the products sold under the

marks are related. See Destileria Serralles, TTAB LEXIS 473 at *65 (“To allow [a Registrant] or

other lesser-known alcoholic beverage distillers to reserve their marks for a wide range of goods

and services would be tantamount to a grant of a right in gross to the mark.”). As such, the

evidence from the above-referenced seven third-party websites has little probative value in

demonstrating relatedness between Applicant’s goods and Registrant’s services.

Further, many of the 10 third-party registrations submitted by the Examining Attorney

are for goods and services unrelated to those identified in Applicant’s application. For example,

Registration No. 5,358,628 for the mark INNER CITY BLUES is registered for clothing goods,

sauces, and restaurant and café services. See Office Action of Mar. 14, 2020. Registration Nos.

5,732,707; 5,967,794; 5,938,334; and 5,710,500 are registered for numerous different food

products, which does not show any direct relationship between any specific food product with

restaurant services. See id. Finally, of the remaining five third-party registrations submitted by

Opposer that do have probative value, two are owned by the same registrant (Registration Nos.


5,881,662 and 5,928,346), and thus are insufficient to demonstrate that sauces and restaurant

services or the provision of food and beverages are related goods and services.

The additional articles submitted by the Examining Attorney, namely “How to Private

Label Signature Menu Items” and “Every Restaurant Needs A Private Label Line” do not

establish “something more” to show that restaurant services and condiments, such as BBQ sauce

are related. Final Office Action of Oct. 23, 2020, pp. 17-27. Simply because such articles exist

does not indicate that food products and restaurant services are related. There is no case law to

support such an argument. Rather, the Federal Circuit recognizes that the diversity and expansion

of businesses in a modern economy is not, in and of itself, sufficient to support an inference that

purchasers are apt to believe that disparate products or services emanate from the same source.

See Lloyd's Food Products, 25 USPQ2d 2027 (Fed. Cir. 1993) (concluding that there is no per se

rule about confusion, where similar marks are used in connection with restaurant services and

food products); see also In re American Olean Tile Co., 1 USPQ2d 1823, 1826 (TTAB 1986).

Other than the above-referenced articles providing restaurant owners with information on how to

private label and sell popular items on their menus, the articles do not articulate any pattern of

restaurants creating and selling private label sauces or BBQ sauces.

As a whole the Examining Attorney’s evidence fails to establish that sauces and

restaurant services are related.

B. The facts here are distinguishable from situations where the Board found

relatedness between food products and restaurant services.

The record evidence here is distinguishable from cases where the Board and/or Federal

Circuit have found relatedness between goods and services. The Federal Circuit decision in

Coors Brewing acknowledges that the diversity and expansion of businesses in a modern,

dynamic and evolving economy is not, in and of itself, enough to support an inference that


consumers are apt to believe that disparate products and services emanate from a single source.

The Board, however, has found the “something more” requirement to be met under the following

circumstances:

Applicant's mark clearly indicated that its restaurant specialized in registrant's type of

goods. See In re Golden Griddle Pancake House Ltd., 17 USPQ2d 1074 (TTAB 1990)

(finding GOLDEN GRIDDLE PANCAKE HOUSE for restaurant services confusingly

similar to GOLDEN GRIDDLE for table syrup); In re Azteca Restaurant Enterprises,

Inc., 50 USPQ2d 1209 (TTAB 1999) (concluding that AZTECA MEXICAN

RESTAURANT for restaurant services is confusingly similar to AZTECA for Mexican

food items);

The record showed that registrant's wines were actually sold in applicant's restaurant. See

In re Opus One Inc., 60 USPQ2d at 1815 (“[T]he record in this case reveals that

registrant's OPUS ONE wine is offered and served by applicant at its OPUS ONE

restaurant.”); and

Registrant’s mark was found to be “a very unique, strong mark.” See In re Mucky Duck

Mustard Co. Inc., 6 USPQ2d 1467, 1469 (TTAB 1988) (“[T]he Examining Attorney has

indicated that he has been unable to find, in the records of the Patent and Trademark

Office, any registration, other than the cited registration, for a mark containing the

expression ‘Mucky Duck,’” nor has applicant offered any evidence of third-party use of

marks containing the expression.).

None of the above-referenced circumstances are present in this case. Applicant’s mark does not

indicate that it specializes in the type of cuisine offered at Registrant’s restaurant; there is no

evidence that Applicant’s BBQ sauces are sold at Registrant’s restaurant; and Registrant’s mark

is not so strong as to be granted such broad protection.

There is no evidence of record that Applicant’s sauces will be offered at Registrant’s

restaurant. In fact, the only products offered for sale at Registrant’s online marketplace are t-

shirts, hats, and gift-cards for dining at Registrant’s restaurant. See Applicant’s OAR of Sept. 3,

2020, Exhibit D. There is, therefore, no evidence that Registrant’s restaurant services feature

BBQ sauce. The word “BBQ” or “BARBEQUE” does not appear in Registrant’s menu; rather,

Registrant operates an Irish Pub, with Irish inspired cuisine. See Applicant’s OAR of Sept. 3,


Exhibit E. Consequently, there is nothing in the record to suggest that Registrant sells private

label sauces.

In addition, Registrant’s OLDE BLIND DOG Marks are not extremely strong, such that

Registrant is entitled to broad protection. To distinguish the present case from Mucky Duck,

Applicant submitted evidence of several other third-party marks in commerce that contain the

phrase “BLIND DOG” and offer restaurant, eatery, and/or pub services. 6 USPQ2d 1467.

Specifically, BLIND DOG COFFEE ROASTERS, BLIND DOG BREWERY, BLIND DOG

PARK CITY, and BLIND DOG TAVERN all coexist in commerce and offer restaurant services.

See Applicant’s Request for Reconsideration (“RFR”) of Dec. 15, 2020, Exhibits K-N. As such,

there is third-party use of marks containing the phrase “BLIND DOG” for restaurant services,

indicating that unlike the “MUCKY DUCK” mark, the phrase “BLIND DOG” is a not a “unique,

strong mark” upon which the Examining Attorney may support a finding of “something more.”

Based on the rationale espoused by the Federal Circuit in In re Coors, the Examining

Attorney’s evidence of 10 third-party registrations and 11 third-party use in commerce marks

purporting to show relatedness of the goods and services is insufficient to satisfy the “something

more” requirement, particularly with the lack of evidence that Registrant sells private label

sauces or that Applicant’s sauce will be offered at Registrant’s establishment. “This is a critical

shortcoming in the evidence, because even identical marks will not cause confusion unless there

is at least some degree of relatedness of the goods and services at issue.” In re Parallel World

Brewing Company LLC, 2020 TTAB LEXIS 297 at *20-21 (TTAB 2020) (citing In re Opus,

Inc., 60 USPQ2d at 1815 (“[T]he requisite ‘viable’ relationship between registrant's goods and

applicant’s services, even if they are sold under identical marks, must consist of ‘something


more’ than the fact that registrant uses the mark on a food or beverage item (wine) and applicant

uses the mark in connection with restaurant services.”) (emphasis in original)).

C. Applicant’s Evidence of Coexisting Pairs of Third-Party Marks Registered

Separately for Class 43 Services and Class 30 Goods by Different Owners

Weighs in Favor of Registration of Applicant’s Mark.

Applicant has provided evidence of several coexisting pairs of registered marks for

restaurant services and food or beverage products, indicating different owners with nearly

identical or identical marks. Specifically, Applicant included more than 10 pairs of overlapping

sets of third-party registrations. See Applicant’s RFR of Dec. 15, 2020, Exhibit O. These pairs of

registrations demonstrate that, much like here, there was not sufficient evidence to establish

“something more” necessary to show that such goods and services are related. Because there is

no rule barring the Board from considering such third-party registration evidence, this evidence

shows that restaurant services and food and/or beverage goods are not per se related. Given that

there are differences between Applicant’s OLD BLIND DOG BBQ mark and Registrant’s OLDE

BLIND DOG Marks, the marks should similarly be permitted to coexist since the Examining

Attorney did not meet the burden of showing “something more.”

Table 1. Overlapping Marks for Food/Beverage Goods and Restaurant Services

Restaurant Services Food Goods

Reg. No. 4904619

Owner: The Blind Pig

BLIND PIG Reg. No. 2721434

Owner: 23 BOTTLES OF BEER, LLC

Goods: Beer

Reg. No. 5199223

Owner: LUCKY RABBIT HOLDINGS LLC

Reg. No. 1733373

Owner: SHANGHAI GUAN SHENG YUAN

FOOD LTD.

Goods: cereal based snacks, candy, chocolate


Reg. No. 4894070

Owner: Marcus Samuelsson Group LLC

Reg. No. 1128391

Owner: SOUTHEASTERN MILLS, INC.

Goods: Hot Sauce

Reg. No. 5861912

Owner: HEIRLOOM HOSPITALITY, LLC

Reg. No. 5892978

Owner: Nicholas Marckwald

Goods: potato chips and vegetable based snack

foods

Reg. No. 2963574

Owner: Lost Dog Cafe Corporation

Reg. No. 5020810

Owner: Laurel Ave. Cafe Corp.

Goods: Sauces, namely, hot sauce and pasta

sauce; and salad dressings

LUCKY DOGS Reg. No. 1430451

Owner: LUCKY DOGS, INC.

Reg. No. 4096614

Owner: Scott Zalkind

Goods: Condiment, namely, pepper sauce; Hot

sauce

MAD DOGS Reg. No. 2625310

Owner: MD PROPERTYCO, LLC

Reg. No. 3888774

Owner: Ashley Food Co., Inc.

Goods: Hot sauce, mustard sauce, wing sauce,

pepper extract for use in flavoring foods, BBQ

sauce, teriyaki sauce, salsa, steak sauce,

marinade, jerk sauce

Reg. No. 4111596

Owner: Watson, Juston

Reg. No. 5602753

Owner: Red Monkey Foods, Inc.

Goods: spices; seasoning mixes; dip mixes

Reg. No. 5145012

Owner: DAE GEE HOLDINGS, LLC

Reg. No. 5302031


Owner: Pig Out BBQ

Composed of: Randell Lewis Howell Jr. (USA) and

Randell Lewis Howell Sr. (USA)

Goods: Barbecue sauce; Dry spice rub for meats

and fish

Reg. No. 3976914

Owner: Mr. Pig Stuff LLC

Reg. No. 3689181

Owner: Everson Spice Company, Inc.

Goods: Barbecue dry rub; Barbeque sauce;

Food seasonings; Marinades; Meat cures; Mixes

for making breading; Seasoning mixes;

Seasonings; Spices

Reg. No. 2850220

Owner: BIG PIG, INC.

Reg. No. 4722900

Owner: Meats & More, LLC

Goods: Barbecue sauce

Taken as a whole, these coexisting pairs of third-party registrations are powerful

evidence of past treatment of marks for food products and restaurant services, indicating that

there is no per se relatedness of such goods and services. This evidence also counters the

Examining Attorney’s third-party registration evidence, as it shows the opposite – similar marks

registered on the trademark register by different owners for food goods and restaurant services.

II. Applicant’s Mark and Registrant’s OLDE BLIND DOG Marks Create Distinct

Commercial Impressions.

Applicant’s OLD BLIND DOG BBQ mark creates a distinct commercial impression

when considered in connection with sauces and BBQ sauces. When determining whether marks

are similar, it is important to compare the marks in their entireties “as to appearance, sound,

connotation and commercial impression.” In re E.I. Du Pont de Nemours & Co., 177 USPQ 563,

567 (CCPA 1973). The meaning or connotation of a mark must be determined in relation to the

named goods or services. Even when marks share a common portion, confusion is unlikely if

they create different commercial impressions. See generally Long John Distilleries, Ltd. v.


Sazerac, 166 USPQ 30 (CCPA 1970) (holding that although LONG JOHN and FRIAR JOHN

shared a common portion, they conveyed different commercial impressions); see also In re

Hunke & Jochheim, 185 USPQ 188, 189 (TTAB 1975) (HIGH DURABLE for stationery

articles, including folders, binders and paper, not confusingly similar to DURABUL for record

books). When material added to a registered mark creates a different overall commercial

impression, the additions are sufficient to avoid a finding of a likelihood of confusion. See

Citigroup Inc. v. Capital City Bank Group, Inc., 98 USPQ2d 1253, 1261 (Fed. Cir. 2011).

Although the marks begin with an identical first sound, the terms “OLDE” and “OLD”

have different meanings, particularly with respect to the goods and services of the parties. The

term “OLDE” is defined as “in or relating to an old-fashioned style that is intended to be quaint

and attractive” or “an archaic spelling of ‘old’ that is now used in the names of places and in

advertising to suggest traditional charm and quaintness.” See Applicant’s OAR of Sept. 3, 2020,

Exhibits F and G. Based on the Macmillan Dictionary, the term “OLDE” is “sometimes used in

the names of places to make them seem traditional.” See Applicant’s RFR of Dec. 15, 2020,

Exhibit H; see also Exhibit I (defining the word “OLDE” as “an archaic spelling of ‘old’ that is

now used in the names of places and in advertising to suggest traditional charm and quaintness”).

With respect to Registrant’s restaurant services, the OLDE BLIND DOG Marks suggest that

Registrant’s establishment has traditional charm and quaintness of an eatery from Great Britain

that likely features British cuisine, especially as the term “OLDE” originated in Great Britain.

Such a commercial impression is quite probable as Registrant is an Irish pub. See Applicant’s

RFR of Dec. 15, 2020, Exhibit J (showing Registrant’s Instagram page where Registrant notes

that OLDE BLIND DOG offers an “[a]uthentic Irish pub experience”). No such authenticity


and/or tradition is conveyed by Applicant’s OLD BLIND DOG BBQ mark, particularly as

Applicant’s mark is used in connection with BBQ sauces.

Rather, the term “OLD” in Applicant’s OLD BLIND DOG BBQ suggests that

Applicant’s sauces have existed from many years due to years of being passed down from

previous generations (i.e., the recipes were created a long time ago). No association to quaintness

or charm is present in Applicant’s mark, particularly as it is not a place or a service, but a good.

In fact, the Examining Attorney conceded that the terms “OLD” and “OLDE” have different

meanings, stating “the wording OLD describes something that has existed for a relatively long

period of time while OLDE describes something that is archaic (i.e., old and no longer used, very

old-fashioned and needs to be changed, relating to ancient times).” Final Office Action of Oct.

23, 2020, p. 3. The contexts of Applicant’s and Registrant’s marks, therefore, are so different as

to create completely distinct commercial impressions, particularly in light of the meaning of the

terms “OLDE” and “OLD.” See In re Sears, Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987)

(finding that “the two marks create different commercial impressions, notwithstanding the fact

that they are legally identical in sound and appearance”).

Further, a disclaimed term must be taken into consideration when viewing a mark in its

entirety. See Opryland USA Inc. v. Great Am. Music Show, Inc., 970 F.2d 847, 851 (Fed. Cir.

1992) (finding the Board erred by giving no weight to the generic term); see also Shen Mfg. Co.

v. Ritz Hotel, Ltd., 393 F.3d 1238, 1243 (Fed. Cir. 2004) (noting that the disclaimed elements of

a mark are relevant to the assessment of similarity because “confusion is evaluated from the

perspective of the purchasing public, which is not aware that certain words or phrases have been

disclaimed”). Here, the additional, unshared term “BBQ” in Applicant’s mark suggests that

Applicant’s sauces are intended to be used when barbequing and/or for barbequed vegetables,


fruit, and proteins. Given that no such term exists in Registrant’s marks, no such commercial

impression exists.

In prior decisions, the Board and the Federal Circuit have held that less significant

differences were sufficient to prevent confusion, even when used on identical goods. See, e.g., In

re Hearst Corporation, 982 F.2d 493, 494 (Fed. Cir. 1992) (finding the mark VARGA GIRL is

sufficiently different from the mark VARGAS to avoid confusion even though both are used on

identical calendar goods); see also Consolidated Artists BV v. Camille Beckman Corporation,

Opp. No. 91188863 (Feb. 16, 2012) (finding MANGO BEACH not likely to be confused with

MANGO for identical goods). As such, the unshared term “BBQ” and the different spelling of

“OLD/OLDE” in the respective marks are sufficient to differentiate the marks, as the words

lends to different commercial impressions.

It is, therefore, unlikely that consumers would receive the same commercial impression

from Registrant’s and Applicant’s marks, and “a single DuPont factor may be dispositive in a

likelihood of confusion analysis, especially when that single factor is the dissimilarity of the

marks.” Odom’s Tenn. Pride Sausage, Inc. v. FF Acquisition, L.L.C., 600 F.3d 1343, 1346–47

(Fed. Cir. 2010) (citation and internal quotation marks omitted); see also Kellogg Co. v. Pack’em

Enters., Inc., 951 F.2d 330, 333 (Fed. Cir. 1991) (“We know of no reason why, in a particular

case, a single DuPont factor may not be dispositive.”). As a result of the marks’ differences in

meaning and commercial impression, this factor weighs against a likelihood of confusion.

CONCLUSION

Based on the evidence of record, the Examining Attorney failed to establish that

restaurant services are sufficiently related to any of the applied-for goods identified in

Applicant’s application, and thus the Examining Attorney has not met the burden of showing


“something more.” Given the large number of restaurants and providers of various cuisines in the

United States, the fact that a single mark is occasionally used to identify restaurant services and

sauces, or the fact that some well-known restaurants sell private label sauces, is not sufficient to

establish a relationship between restaurant services and sauces. This du Pont factor, therefore,

weighs against finding that there is a likelihood of confusion between Applicant’s Class 30

goods and Registrant’s restaurant services.

Further, Applicant’s OLD BLIND DOG BBQ mark also creates a different meaning and

commercial impression with respect to Applicant’s goods that is not present in Registrant’s

OLDE BLIND DOG Marks. As such, there is no likelihood of confusion between Applicant’s

and Registrant’s marks. Kellogg Co., 21 USPQ2d at 1145 (concluding that a single du Pont

factor may be dispositive).

WHEREFORE, Applicant respectfully requests that the Board REVERSE the statutory

refusal pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), and allow the Application

to proceed to publication.

Dated this 8th day of March, 2021.

Respectfully submitted,

/JulieSShursky/

Julie S. Shursky

ESTTA Tracking number: ESTTA1118774 03/08/2021

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