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
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.
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 5
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.
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 6
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. 5,785,128 for the mark ;
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;
Information for Registration No. 5,928,346 for the mark ;
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);
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 7
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
visited Jan. 4, 2021);
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
visited Jan. 4, 2021);
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 Brief | Ex Parte Appeal: SN 88/727,621 8
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
visited Sept. 1, 2020).
Exhibit E: Menu, OLDE BLIND DOG, https://www.oldeblinddog.com/menu (last
visited Sept. 1, 2020).
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.
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 9
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
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 10
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.
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 11
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.
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 12
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
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 13
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.
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 14
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
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 15
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,
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 16
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
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 17
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
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 18
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
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 19
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.
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 20
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
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 21
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,
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 22
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
Applicant’s Brief | Ex Parte Appeal: SN 88/727,621 23
“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
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