2(d) Reversal, Identical Marks But The “Something More” Rule Not Satisfied

The Trademark Trial and Appeal Board (“TTAB” or “Board”) reversed the Examining Attorney’s refusal for likelihood of confusion based on identical trademarks, RAO’S for wine and restaurant services. See In re 1729 Investments LLC, Serial No. 90694523 (April 24, 2023) [not precedential]. This is not the first time, the Board reversed on this basis, see our blog post entitled, The TTAB Reverses a Refusal Relying On the Something More Standard (where the applicant applied for beer and the registration covered restaurant services). For more on the “something more” rule see our blog post entitled, The Origin Of The “Something More” Standard In Trademark Law.  The RAO’S case is an example where the TTAB holds the Examining Attorney accountable to its standard of proof. As mentioned above, the marks were identical, applicant was seeking to register RAO’S for wine and registrant was using RAO’S for restaurant and bar services.

The Board first compared the marks. The marks had some inherent conceptual weaknesses as it was a surname in one case and a middle name in the other case. Registrant in fact, sought registration under Section 2(f) of the Trademark Act. When a registration is issued based on acquired distinctiveness under Section 2(f), then it is an established fact the mark lacks inherent distinctiveness. Since the marks are conceptually weak, they are entitled to a narrower scope of protection. But of course, even weak marks must be protected against a similar or identical mark being registered for related goods and services. In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982). The marks are identical in their appearance, sound, meaning and commercial impression, thus the first Du Pont factor favors confusion.

The TTAB next assessed the relatedness of the goods and services. It is common knowledge that restaurants often serve alcoholic beverages such as wine, but it doesn’t necessarily follow that patrons and consumers expect wine to emanate from the same source as restaurants. In fact, there is no per se rule that food and beverage products and restaurant services are related. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2030 (Fed. Cir. 1993). The Trademark Office has to show “something more” than identical or similar trademarks used for wine and restaurant services. See In re Giovanni Food Co., Inc., 97 USPQ2d 1990, 1992 (TTAB 2011). See also, In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003).

To meet the something more burden, the Examining Attorney submitted 31 third-party registrations based on use, identifying “restaurant and bar services” and “wines” under the same mark. Of course, this type of evidence is relevant to show relatedness of the goods and services, to suggest the goods and services emanate from the same source. However, third-party registrations alone are not sufficient to establish “something more.” See In re Accelerate s.a.l., 101 USPQ2d 2047, 2050 (TTAB 2012). See also,  In re Giovanni Food Co., 97 USPQ2d at 1991, where it was held that “something more” not found for catering services and barbeque sauce where the evidence consisted of third-party registrations showing that a single mark has been registered for “restaurant and catering services” and “barbeque sauce” and third-party websites showed that barbeque restaurants and catering services and barbeque sauce are offered under the same mark from a single source.

The Examining Attorney also submitted Internet evidence showing the same party providing restaurant services and selling wine under the same mark, not merely serving wine to patrons along with dinner, but this evidence was scant. The requirement to show “something more” was not met. This case relied heavily on In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003), which held that the conclusion that restaurant services in general and beer are related, based on the fact that a tiny percentage of all restaurants also served as a source of beer was a very weak evidentiary basis for a finding of relatedness. To further support the decision to reverse, the Board noted the applicant’s restriction in its identification of goods, that stated that none of the wines are sold at restaurants. The Board held that this was a meaningful limitation. There was no evidence of record to conclude the trade channels overlapped for applicant’s wine (that is not sold in restaurants) and restaurants. Adding restrictions to an identification in a trademark application can be very effective under the right circumstances. If you have questions regarding the identification in your trademark application or likelihood of confusion, kindly feel free to contact the firm for a courtesy consultation.