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TTAB Affirms 2(d) Refusal Relying On “Something More” Standard

Applicant was seeking to register the mark HONEYHOLE SANDWICHES in standard characters with a disclaimer on “sandwiches” for “restaurant with bar specializing in serving proprietary unique sandwiches, local beers, and alcohol in a vibrant eclectic environment”. The Examining Attorney refused the application due to a likelihood of confusion with the registered mark HONEYHOLE for alcoholic beverages except beer. The applicant appealed the refusal, the Board affirmed and required a “something more” showing to prove relatedness between restaurant services and alcoholic beverages. See In re Honeyhole Sandwiches Inc.,¬†Serial No. 87138294 (May 22, 2018) [not precedential].

When considering the similarities of the marks, the Board found them very similar in sight, sound, connotation, and commercial impression. This factor weighs in favor of confusion. There was no evidence of record to show the mark was commercially weak, therefore the sixth du Pont¬†factor (the number and nature of similar marks on similar goods) also weighs in favor of confusion. Next the Board considered if the goods and services were commercially related. This evaluation must be based on the identifications in the application and registration. The Board noted that the “something more standard” cited by the Federal Circuit court had to be kept in mind. For more information on the “something more” rule imposed by the Federal Circuit, see our blog posts entitled, The Origin of the Something More Standard In Trademark Law, and The Federal Circuit Expands The Application Of Its Something More Standard. It has long been held that when analyzing one party’s services for providing food, i.e. a restaurant, and another party’s food and/or drink products, the fact that a restaurant may offer particular food or beverages doesn’t mean the parties’ goods and services are related.

Evidence must be produced that demonstrates something in addition to either similar or identical marks used for restaurant services and another’s food or beverage product. See In re Coors Beers Brewing Company, 343 F.3d 1340, 68 USPQ2d 1059 Fed. Cir. (2003), where there was no showing of “something more” sufficient to justify a relatedness between beer and restaurant services. Often, “something more” will be found if the restaurant specializes in the other party’s food or beverages. Moreover, if the Board finds that the mark is strong and of an arbitrary nature, this will be a factor weighing in favor of finding “something more”. In the case at bar, the mark HONEYHOLE was found to be commercially strong for alcoholic beverages. Moreover, the applicant’ identification states it serves alcohol and its menu demonstrates use of the mark HONEYHOLE for cocktails.

In addition, the Examining Attorney submitted copies of 45 use based registrations for marks covering restaurant services, as well as alcoholic beverages, into the record. This type of evidence is probative of the fact that the goods and services can emanate from one source. It is important to keep in mind that typically, evidence of third party registrations alone showing the same mark used for applicant’s goods and registrant’s services is insufficient to satisfy the “something more” standard. Here, the Examining Attorney also submitted news articles and evidence of e-commerce advertising showing a trend where restaurants are using its trademark for services, and for private label alcoholic beverages. The second du Pont factor, therefore favors finding confusion as well.

One interesting evidentiary point in this case was that the applicant submitted a “ThorCheck” report (listing pairs of registrations showing one company registering the same mark for restaurant services, and an unrelated company using that mark for alcoholic beverages), but only listed registrations. The applicant did not adhere to the rules for proper submission of trademark registrations. Therefore, the Board held that the registrations were not technically part of the record. In order to ensure trademark registrations become part of the record, copies of them or the complete electronic equivalent must be submitted prior to appeal. However, the Board considered the report for what it showed on its face because the Examining Attorney did discuss the “ThorCheck” information, and submitted fifteen copies of the registrations mentioned in the report. This case serves as a good example of how to prove there is “something more” commercially relating restaurant services and alcoholic beverages. If you have a question regarding a likelihood of confusion refusal, or a trademark registration inquiry, please do not hesitate to contact the firm for a courtesy consultation.