Friday, November 16, 2007

Treasure Island Faces Opposition from New York Restaurant Chain over DISHES

I felt like writing about something different today, and found myself perusing some of the recently filed TTAB oppositions against Las Vegas-based companies.

Treasure Island Corp. (“TI”), the owner of the Treasure Island Hotel & Casino, is seeking to register the mark THE BUFFET AT TI AMERICA'S FAVORITE DISHES (stylized) (pictured above) for restaurant, bar, and lounges services.

On October 24, 2007, Uncommon Grounds Enterprises, Inc. (“UGE”) filed an opposition against the registration of TI’s mark on the grounds of likelihood of confusion over its registered mark, DISHES (for restaurant services). See Uncommon Grounds Enterprises, Inc. v. Treasure Island Corp., Opposition No. 91180307. UGE owns a chain of four “Dishes” restaurants in the New York City area. UGE’s mark was registered on January 18, 2000, and a §15 Declaration of Incontestability was acknowledged by the USPTO on September 22, 2005.

This is apparently not the first time that TI and UGE have crossed paths. According to UGE’s opposition, TI once used the name DISHES for TI’s buffet, but stopped after receiving a cease and desist from UGE. In addition, this is not the first time that UGE has sought to oppose TI in the registration of a mark. When TI previously sought to register the mark DELICIOUS DISHES (sylized), UGE filed an extension of time to oppose the mark. However, another party, Dish D'Lish, Inc., the owner of the mark DISH D’LISH, filed an opposition first. TI eventually withdrew the application and the opposition was dismissed.

While one can see why Dish D’Lish may have had reasonable grounds for opposing TI’s application for DELICIOUS DISHES, I question UGE’s current opposition of TI’s mark based on a likelihood of confusion.

Such likelihood of confusion is judged by the TTAB based on a consideration and balancing of the thirteen factors set forth In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973):
1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
2. The similarity or dissimilarity of and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
4. The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.
5. The fame of the prior mark (sales, advertising, length of use).
6. The number and nature of similar marks in use on similar goods.
7. The nature and extent of any actual confusion.
8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
9. The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).
10. The market interface between applicant and the owner of a prior mark: (a) a mere "consent" to register or use; (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party; (c) assignment of mark, application, registration and good will of the related business; (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
12. The extent of potential confusion, i.e., whether de minimis or substantial.
13. Any other established fact probative of the effect of use.

The TTAB is likely to find the first factor dispositive of the case. See, e.g., Truescents LLC v. Ride Skin Care, L.L.C., 81 USPQ2d 1334 (TTAB 2006) (TTAB determined no likelihood of confusion based on the obvious dissimilarities of the marks for identical goods). As such, I will save the first for last.

With respect to the second factor both marks are directed to identical goods (restaurant services), so the this factor favors UGE.

With respect to the third factor, neither party has any restriction or limitations on trade channels or classes of consumers in their respective descriptions of services. As such, the TTAB will presume that the services are offered in all normal channels of trade to all the normal classes of consumers for such services. Any argument about UGE’s restaurant services being limited only to the New York area is rebutted by the mark’s presumption of an exclusive right to nationwide use regardless of the actual extent of use. See Section 7(b) of the Trademark Act (15 U.S.C. §1057(b)). While TI’s restaurant services are likely to be limited to its Las Vegas location and UGE restaurant services are currently limited to the New York City metro area, the fact is that UGE could open a restaurant in the Las Vegas area. In such case, there would be overlap in the channels of trade.

With respect to the fourth factor, restaurant consumers could easily be prone to source confusion if the marks are sufficiently similar. As such, this factor depends on the outcome of the first factor (discussed below).

With respect to the fifth factor, UGE asserts in its opposition that its marks are “famous.” Of course, UGE does not cite any evidence to back up this claim. While “famous” for purposes of likelihood of confusion is not the same as “famous” for dilution (in which case UGE would have no claim of fame whatsoever), such claim to fame still requires a company to show a level of fame similar to what has been found to be “famous” with respect to other consumer products. See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); Kenner Parker Toys Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).

Without seeing any figures regarding UGE’s advertising and sales, UGE likely can, at most, maintain that its mark is strong. How strong though is questionable. A Google search did not reveal much about this restaurant. Surprisingly, it does not appear to even have its own website. Of course, not having a website does not mean the mark identifying the restaurant can’t be famous – but one would expect a “famous” restaurant would be one that is at least talked about by others on the Internet. All I could find were a few sites reviewing the restaurant (here and here). So, with all due respect to UGE, the DISHES mark seems “weak” (but not “very weak”) and as such, is entitled to a restricted range of protection, especially given its merely suggestive nature in light of the services described in the mark’s registration.

With respect to the sixth factor, there does appear to be other restaurants using a name similar to UGE’s mark for restaurant services. A quick Google search showed at least two other restaurants using a name similar to UGE’s mark for restaurant services: Dishes Restaurant (in Hartford, CT) and Little Dishes. While this is not a large amount, it does show that there are other restaurants out there using a mark that more closely resembles UGE’s mark than does TI’s proposed mark. This factor slightly favors TI.

With respect to the seventh and eighth factors, UGE does not cite any evidence of actual confusion. Of course, such absence of evidence of actual confusion could be due to scope of use of both UGE’s mark and TI’s mark – the former being concentrated mostly in the New York area while the latter is primarily in the Las Vegas area. Because of the lack of any significant opportunity for actual confusion to occur, the absence of actual confusion is typically considered of little probative value.

Of all the factors, however, the one that is probably most significant to this case is the very first factor – similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. On the one hand, UGE’s mark is not very strong, which normally requires the registrant to show a strong similarity between the two marks to support a finding of likelihood of confusion. See Westward Coach Manufacturing Co. v. Ford Motor Co., 388 F.2d 627, 634 (7th Cir. 1968), cert. denied, 392 U.S. 927 (1968). However, where the goods and services at issue are identical (as is the case with UGE and TI), the degree of similarity between the marks necessary to support a finding of likelihood of confusion is less than it would be if the goods were not identical. See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).

The test for similarity is whether the marks are sufficiently similar in terms of their overall commercial impression that confusion by the average consumer (who normally retains general impressions of trademarks) as to the source of the services offered is likely to result. Most importantly, however, is that while the marks are considered in their entireties, one feature of a mark may be more significant than another, and courts may give more weight to such dominant feature in determining the commercial impression of a mark. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).

Because UGE’s mark is only a single word, it has no specific dominant feature – the word DISHES in association with a restaurant gives off the commercial impression of a restaurant that serves “food dishes.” TI’s mark, on the other hand, has the word “buffet” as its dominant feature along with the words “the” and “at TI” on the opposite sides. Furthermore, the word “dishes” is part of the phrase “America’s Favorite Dishes” appearing below the stylized “Buffet.”

In terms of appearance, sound, and meaning, the two marks are very dissimilar. The overall commercial impression of TI’s mark in association with restaurant services is that of a buffet which serves popular American “food dishes.” While UGE notes that the PTO required TI to disclaim the words “America’s Favorite” and “Buffet” apart from the mark as shown, this does not change the overall commercial impression that the mark, as used by TI, gives to the average consumer. Accordingly, I say that this factor favors TI.

While there is still enough ambiguity surrounding UGE’s opposition that some surprise evidence might come to light which changes the balance of the aforementioned likelihood of confusion analysis, a consideration of all the relevant factors, particularly the “weakness” of UGE’s mark and the dissimilarity between the two marks, tends to favor a finding of no likelihood of confusion.

All that remains to be seen is whether TI will go forth with this battle – or just change the name of its buffet (which is not uncommon amongst Las Vegas hotels).

Now I know where I'm going to be eating Thanksgiving Day.

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