New York Trademark Attorney Blog
The Trademark Trial and Appeal Board (“Board”) recently reversed a Section 2(d) refusal to register the composite mark DAILY HARVEST CAFE (CAFE disclaimed) for “cafe and restaurant services” in International Class 43. The Board found that even though the marks were similar, the Examining Attorney failed to show that the applicant’s restaurant services were related to the registrant’s food and beverage products. See In re Daily Harvest Café, Serial No. 98269684 (TTAB April 2, 2026) [not precedential]. The decision is a helpful reminder that there is no per se rule that food products and restaurant services offered under similar marks are likely to cause confusion.
The Examining Attorney refused registration based on five registrations for the standard character mark DAILY HARVEST, all owned by Daily Harvest, Inc. Together, the registrations cover a broad range of food and beverage products, including smoothies, fruit and vegetable juices, soups, prepared meals, coffee, oatmeal, snack foods, pizza, flatbread and non-dairy frozen confections. One of the registrations also covers “on-line retail store services featuring pre-prepared meals, desserts and beverages” in Class 35. Applicant’s mark consists of an oval containing DAILY HARVEST at the top, CAFE in script at the bottom, and a design of wheat, bread, eggs, a steaming coffee cup and a coffee grinder set against a horizon.
Turning first to the marks, Applicant argued that the design was the dominant feature of its mark. The Board disagreed. When a mark consists of words and a design, the words are normally accorded greater weight because they are what consumers use to request the goods or services. This is especially true for restaurant services, which are often recommended by word of mouth. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407 (Fed. Cir. 1997). The disclaimed term CAFE is generic and adds little source-identifying significance, and the design of breakfast foods and coffee merely reinforces the fresh-food connotation of the words DAILY HARVEST. Because Applicant’s mark incorporates the entirety of the cited marks, the Board found the marks similar in sound, appearance, connotation and commercial impression. In my opinion, this finding was expected. Unfortunately, many applicants wrongly assume that adding a design element and generic wording to a registered mark will be enough to distinguish it.
The outcome of the appeal turned on the second DuPont factor, the relatedness of the goods and services. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). Although likelihood of confusion often has been found where similar marks are used for both food products and restaurant services, there is no per se rule to this effect. See Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 768 (Fed. Cir. 1993). Rather, the evidence “must show something more than that similar or even identical marks are used for food products and for restaurant services.” In re Coors Brewing Co., 343 F.3d 1340, 1345 (Fed. Cir. 2003) (quoting Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 1236 (CCPA 1982)). The Board noted that it has found the “something more” requirement met where, for example, the applicant’s mark made clear that its restaurant specialized in the registrant’s type of goods (Golden Griddle; Azteca), where the registrant’s goods were actually sold in the applicant’s restaurant (Opus One), or where the registered mark was “a very unique, strong mark” (Mucky Duck). None of those circumstances existed here.
The Examining Attorney’s evidence consisted primarily of the websites of a handful of restaurants that also sell pre-packaged foods, namely Amy’s, Bob Evans, Panera and Starbucks. The Board found that evidence of only three or four restaurants selling pre-packaged foods is far from numerous or substantial, and that the degree of overlap between the sources of restaurant services and the sources of pre-packaged foods is de minimis, a “far cry” from establishing the “something more” requirement. Evidence that the registrant sells curated meal boxes and places its products in grocery stores, and that Applicant’s menu includes items such as soups and smoothies, showed only a general similarity between some of the parties’ offerings. Nor was there anything in the record supporting a finding that DAILY HARVEST is a “very unique, strong mark.” As to the Class 35 online retail store services, four websites showing that restaurants offer online ordering fell short of demonstrating that the services were related. Accordingly, the Board found that the second DuPont factor weighed heavily against a finding of likelihood of confusion.
The Board found that the channels of trade and classes of consumers overlapped slightly. Applicant argued that supermarket shoppers buying packaged foods differ from café patrons seeking a dining experience, but that argument rested on attorney argument and evidence of Applicant’s actual use. Because neither the application nor the registrations contain any restrictions, the Board presumed the goods and services travel in all normal channels of trade to all normal classes of consumers. See Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 942 (Fed. Cir. 1990); Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1361 (Fed. Cir. 2000). This is another reminder that, in an ex parte appeal, arguments about how a mark is actually used in the marketplace carry little weight unless they are reflected in the identification.
In my opinion, the lesson for applicants is to closely scrutinize the evidence an Examining Attorney relies upon when a refusal is based on food products and restaurant services. A few national chains that also sell packaged goods do not necessarily establish that consumers expect restaurant services and food products to emanate from the same source. For owners of food and beverage brands, the decision shows that a registration for packaged goods will not automatically block a similar mark for restaurant services, absent evidence of the “something more” that the Federal Circuit requires.
In conclusion, although the marks were similar and the trade channels slightly overlapped, the Examining Attorney did not establish the “something more” required to relate restaurant services to pre-packaged foods, or to relate online retail store services to restaurant services. On balance, the Board was not persuaded that there was a likelihood of confusion and reversed the refusal. For more on how the Board weighs the DuPont factors, see our blog post entitled Precedential CAFC Opinion: TTAB Must Consistently Apply DuPont Factors.
Has your application for restaurant services been refused based on a registration for food products, or are you wondering whether your restaurant name can coexist with an existing food brand? Please feel free to contact the firm for a courtesy consultation.