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February 2013

Cold Stone Creamery Steak Sauce? Trademark Relatedness of Restaurant Services to Retail Food

It is well known that the sword of trademark protection extends beyond those goods and services with which the mark is in use or registered. Likelihood of confusion can be found between similar marks where the goods/services are identical or competitive, but also where they are merely related. Determining whether a trademark owner’s goods/services are “related” to those associated with a similar mark can be critical when counseling on whether to enter a particular market, when assessing likelihood of success in an infringement action (either as plaintiff or defendant), or even when deciding whether a potential mark qualifies for federal registration.

One area in which this issue frequently arises is the food industry, specifically, whether restaurant services are related to foods sold at retail. As with any element of the likelihood of confusion analysis, there are no bright line rules here. Even in caseswhere similarly­branded retail foods can be found under the same roof at a grocery store, the Trademark Trial and Appeal Board (“Board”) has declined to announce any per serule.1

Logically, then there should be no per se rule when assessing the relatedness of retail foods and restaurant services. The courts have borne this out.2 In addressing the potential for confusion between “BOSTON TEA PARTY” for teas and “BOSTON SEA PARTY” for restaurant services, Jacobs rejected the argument that confusion must always be found “whenever food items are sold under the same or similar marks.”3 Jacobs went on to posit the oft-quoted standard in such cases: “To establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services.”4 Affirming the Board’s finding that there was no likelihood of confusion between the two marks, Jacobs did not expound upon its tautological “something more” standard. But subsequent decisions have explained and applied this standard, providing some guidance.

The Court of Appeals for the Federal Circuit took the opportunity to expound upon its predecessor’s Jacobs ruling in In re Coors Brewing Co.5 Discussing whether a registration for “BLUE MOON and design” for restaurant services precluded the registration of Coors’s application for “BLUE MOON and design” for beer, the Court explained:

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 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.6

The Coors Court reviewed evidence regarding the number of restaurants nationwide compared to the number of restaurants that brew their own beer. Finding that fewer than one in 500 restaurants do so, the Court assessed that “the evidence before the Board indicates. . . the degree of overlap between the sources of restaurant services and the sources of beer is de minimis. . . . The evidence of overlap between beer and restaurant services is so limited that to uphold the Board's finding of relatedness would effectively overturn the requirement of Jacobs that a finding of relatedness between food and restaurant services requires ‘something more’ than the fact that restaurants serve food.7 So at least to the Federal Circuit, Jacobs’ “something more” requires an analysis of the nature of the goods and the degree of their overlap.

A similar analysis had been applied by the Board a few years earlier. In In re Azteca Restaurant Ents. Inc., the Board addressed whether “AZTECA MEXICAN RESTAURANT” for restaurant services was confusingly similar to various “AZTEC” marks for tortillas, flour taco shells, flour tortillas, corn tortillas, and chunky salsa.8 With a deferential nod to Jacobs, the Board stated:

“we find that the record here satisfies the ‘something more’ evidentiary language . . . . As the evidence in the present case indicates, Mexican food items are often principal items or entrees served by restaurants, certainly by Mexican restaurants. The average consumer, therefore, would be likely to view Mexican food items and Mexican restaurant services as emanating from or sponsored by the same source if such goods and services are sold under the same or substantially similar marks.”9

Although the Board (perhaps impermissibly) looked beyond the expansive “restaurant services” in Azteca’s application, reading them as “Mexican restaurant services,” it applied a Coors-like analysis. It pointed out that the registered goods were just the type that are frequently found in many restaurants.

Thus, the “something more” standard begins to take shape. The Courts and the Board look to the nature of the retail foods and determine whether the restaurant is the type that serves that food. 10 The more frequently the restaurant serves the food, the more likely would consumers may believe that the source of the goods and restaurant services are related.

This is certainly a plausible line of reasoning where the junior user applies its mark to retail food and the senior user is a well-known the restaurant. It should be quite reasonable to a consumer that a large, successful chain of restaurants might begin to sell its condiments or even its entrees in retail stores.11 Indeed, Famous Dave’s or Buffalo Wild Wings—national chains whose success depends, at least in part, on their signature and varied sauces—might readily offer their sauces to the public in grocery stores, if they have not already.12 But is it as likely that a brand of entrée, sauce, or condiment would launch a restaurant based thereon?

At least with wine, the Board has taken the position that this analysis runs both ways. “The fact that applicant’s restaurant serves the type of goods (indeed the actual goods) identified in the cited registration is certainly probative evidence which supports a finding under the second du Pont factor that applicant’s services and [registrant’s] goods are related.” In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).

In several decisions, the Board has, however, found that certain types of retail food are more likely to find their way from a restaurant into a retail setting. An application for restaurant services was denied in view of a registration for coffee.13 Pizza and pasta dishes, so often available via delivery or take out, have been found to be related to restaurant services.14 The Board also refused a registration for Mexican style prepared frozen enchiladas in view of a nearly identical mark for lodging and restaurant services.15 Meat, too, has been found sufficiently related to restaurant services to preclude registration of the latter.16

Condiments are frequently deemed related to restaurant services. An application for chili sauce and pepper sauce was refused in view of a nearly identical mark registered for restaurant services.17 The Board found that spices, seasonings, rubs, and sauces were likely the type of foods a restaurant would brand for retail sale.18 Similarly, pickles, jellies, jams, salad dressings, relishes, catsup, herbal teas, salsas, spices, processed herbs, and seasonings" were refused based on a similar mark registered for carry-out restaurant services, and catering services.19

The Board also considered the presence of a well-known brand of soft drink (“CRUSH”) to preclude registration of applications of “CRUSSH” for restaurant services.20 Also, where gelato was a “signature dish” of a restaurant, an application for gelato under a similar trademark was denied.21

At perhaps the outer bounds of these decisions, the Board found that cheese, processed peppers, canned whole tomatoes and crushed tomatoes in heavy puree, basil leaves, bay leaf, black pepper, processed garlic, MSG, oregano leaf, parsley flakes, red cayenne pepper, and vinegar were too closely related to restaurant services to allow registration of the former. This was based on the notion that the retail foods were the type used to make pizza sauce and pizza, which the owner of the registered mark “may” (but in fact did) sell at its restaurants.22

In sum, when analyzing likelihood of confusion between a mark for retail goods and one for restaurant services, the specific nature of the foods must be compared to those served by the restaurant. Where the specific foods are regularly sold by the restaurant, it can be expected that there will be deemed a close relationship between the goods and services. Conversely, even while some foods are more likely to be sold at retail by restaurant owners than others, consumers (hopefully) would not expect to see Cold Stone Creamery brand their own steak sauce, so no relationship would (hopefully) be found in such a case.

 

1 See In re August Storck KG, 218 USPQ 823 (TTAB 1983) (reiterating the “well-established and frequently articulated doctrine... that there exists no ‘per se’ rule that all food products are to be deemed related goods by nature or by virtue of their capability of being sold in the same food markets). See also Interstate Brands Corporation v. Celestial Seasonings, Inc., 198 U.S.P.Q. 151 (CCPA 1978); and Hi-Country Foods Corporation vs. Hi Country BeefJerky, 4 U.S.P.Q.2D (BNA) 1169.
2 “Concerning the relatedness of applicant’s goods and registrant’s services, the Board has noted that there is no per se rule that confusion is likely when the same or similar mark is applied to food products on the one hand and to restaurant services on the other. As we observed in In re Azteca and as the Examining Attorney has argued, of all food products[,] sauces and dressings are perhaps the ones most likely to be marketed by the restaurants in which those items are served. Thus, the nature of the particular food items here is significant.” In re Comexa Ltda., 60 USPQ2d 1118 (TTAB 2001). See also In re Envoys U.S.A., Inc., 221 U.S.P.Q. (BNA) 646; 1984 TTAB LEXIS 212 (TTAB 1984) (“As in cases involving foods and restaurant services. . . each case must be decided on its own facts.) (citing Jacobs v. International Multifoods Corp., 212 U.S.P.Q. 641, 642 (CCPA 1982) and Interstate Brands Corp. v. Celestial Seasonings, Inc., 198 U.S.P.Q. 151, 152 (CCPA 1978)).
3 Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 1236 (C.C.P.A. 1982).\
4 Id.
5 In re Coors Brewing Co., 343 F.3d 1340, 1346 (Fed. Cir. 2003).
6 Id. at 1346.
7 Id.
8 In re Azteca Restaurant Ents. Inc., 50 USPQ2d 1209, 1211 (TTAB 1999),
9 Id.
10 “Our case law has recognized that the ‘something more’ requirement of Jacobs is met in situations where the specific food or beverage items of one entity are of the type that is likely to be sold in the other's type of restaurant.” Pssghetti’s, Inc. v. Howard Finkelstein, 2011 TTAB LEXIS 402 (TTAB 2011) (Unpublished).
11 “While it may not be likely that purchasers of registrant's meat products would expect registrant to be the source of restaurant services, restaurant customers who encounter registrant's BEEF MASTER meat products in the market may well believe they originate with, are produced by or are in some way associated with the same source as the restaurant services.” In re Best Western Family Steak House, Inc., 222 U.S.P.Q. (BNA) 827; 1984 TTAB LEXIS 173 (TTAB 1984).
12 See In re Golden Griddle Pancake House Ltd., 17 USPQ2d 1074 (TTAB 1990) (GOLDEN GRIDDLE PANCAKE HOUSE for restaurant services and GOLDEN GRIDDLE for table syrup is likely to cause confusion; undeniable connection between pancake syrup and a restaurant that serves pancakes and syrup, especially since “restaurants frequently package certain of their products for retail sale”).
13 In re Accelerate s.a.l., 101 U.S.P.Q.2D (BNA) 2047; 2012 TTAB LEXIS 43 (TTAB 2012).
14 [T]here is a sufficient relationship between opposer’s restaurant services and applicant’s ‘combination of pizza and pasta’ food product such that when a very similar mark is used on or in connection with the goods and services, a likelihood of confusion exists. Specifically, although opposer’s registration for the mark PSSGHETTI’S covers general ‘restaurant services,’ the record shows that its restaurant, as well as its take-out food service, is focused primarily on Italian cuisine with a special emphasis on pasta dishes. This is certainly reinforced by opposer’s mark under which the services are rendered, i.e., the mark is suggestive of spaghetti pasta. This is sufficient for purposes of showing the requisite ‘something more’ and that there is a relationship between opposer’s restaurant services and applicant’s ‘combination of pizza and pasta’ food product.” Pssghetti’s, Inc., supra note 5.
15 In re Central Soya Company, Inc., 220 U.S.P.Q. (BNA) 914 1984; TTAB LEXIS 202 (TTAB 1984).
16 In re Best Western Family Steak House, Inc., 222 U.S.P.Q. (BNA) 827; 1984 TTAB LEXIS 173 (TTAB 1984).
17 In re Comexa Ltda., 60 U.S.P.Q.2D (BNA) 1118; 2001 TTAB LEXIS 274 (TTAB 2001).
18 “[T]he examining attorney submitted ample website evidence of advertisements for restaurant services and food items such as sauces, spice rubs, seasonings, etc. under the same mark by a single entity. . . . Taken together, the evidence satisfies the “something more” requirement by . . . showing. . . that specific food items identified in the application are of the type, e.g., spices, seasonings, rubs, sauces, etc., that restaurants sell. We therefore find that applicant’s goods and registrant’s restaurant services are related, and that this du Pont factor favors a finding of likelihood of confusion.” In re SKP and Associates, Inc., 2010 TTAB LEXIS 59 (TTAB 2010) (Unpublished).
19 In re Heartland Design Assocs., LLC, 2009 TTAB LEXIS 34 (Trademark Trial & App. Bd. Jan. 13, 2009) (Unpublished).
20 Dr Pepper/Seven Up, Inc. v. Krush Global Ltd., 2010 TTAB LEXIS 391 (TTAB 2010) (Unpublished).
21 Lightman Barnes, Inc. v. Gelato Mio, LLC, 2009 TTAB LEXIS 124 (TTAB 2009) (Unpublished).
22 In re Rykoff-Sexton, Inc., 1998 TTAB LEXIS 364 (TTAB 1998).

Intellectual Property



Intellectual Property

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