Under the second DuPont factor for likelihood of confusion, there is no per se rule that restaurant services are related to food and beverage products. Lloyd's Food Prods., Inc. v. Eli's, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2030 (Fed. Cir. 1993) (no per se rule about confusion, where similar marks are used in connection with restaurant services and food products).

“Something More”

To establish likelihood of confusion, “something more than that similar or even identical marks are used for food products and for restaurant services.” Jacobs v. Int'l Multifoods Corp., 668 F.2d 1234, 212 USPQ2d 641, 642 (CCPA 1982); In re Giovanni Food Co., Inc., 97 USPQ2d 1990, 1992 (TTAB 2011) (“relatedness of food services and food items is not to be assumed and that evidence sufficient to meet the ‘something more' standard is necessary”) (citing In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)).

That “something more” could be where an applicant's mark makes clear that its restaurant specialized in registrant's type of goods. See In re Golden Griddle Pancake House Ltd., 17 USPQ2d 1074-1075 (TTAB 1990) (GOLDEN GRIDDLE PANCAKE HOUSE for restaurant services confusingly similar to GOLDEN GRIDDLE for table syrup; “pancakes” in the mark denotes the fare to be served at the restaurant, and “no doubt pancake (or table) syrup, as well”); In re Azteca Restaurant Enters., Inc., 50 USPQ2d 1209, 1211 (TTAB 1999) (AZTECA MEXICAN RESTAURANT for restaurant services confusingly similar to AZTECA for Mexican food items); In re Accelerate s.a.l., 101 USPQ2d 2047, 2050 (TTAB 2012) (finding “something more” shown for COLOMBIANO COFFEE HOUSE mark where applicant's own website indicated it is in the business of rendering coffee house services).

That “something more” also could be where the registrant's mark was “a very unique, strong mark” and there was a commercial relationship between the goods (mustard) and restaurants. In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1469 (TTAB 1988) (the food item served in the restaurant is of the type which may typically be packaged for retail sale by the restaurant under the same name, such as house specialty products). See also In re Opus One Inc., 60 USPQ2d 1812, 1813-5 (TTAB 2001) (finding “something more” based on “strong and arbitrary character of registrant's OPUS ONE mark” and the fact that the record showed that registrant's wines were actually sold in applicant's restaurant).

As the Federal Circuit noted in In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1064 (Fed. Cir. 2003):

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

That “something more” is a fact-specific inquiry based on the record. Compare In re Coors Brewing Co., 68 USPQ2d at 1061 (“something more” not established where record included evidence that brewpubs, which brew and serve their own beer, often provide restaurant services and that some restaurants serve their own private label beer, that third-party registrations of marks covering beer and restaurant services were in the record, but no evidence or suggestion registrant's restaurant was a brewpub or offered its own private label beer, and that there were 1,450 brewpubs, microbreweries, and regional specialty breweries in the United States in contrast to approximately 815,000 restaurants) with In re Giovanni Food Co., 97 USPQ2d at 1991 (“something more” not found for catering services and barbeque sauce where the record 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).

RAO'S

More recently, the TTAB reversed a refusal of RAO'S for “Wine produced from grapes grown in a single designated vineyard in the Atlas Peak American Viticultural Area, labeled and advertised in compliance with U.S. laws for the Atlas Peak American Viticultural Area appellation of origin; all of the foregoing sold at the vineyard, wine specialty stores, and direct to consumers; none of the foregoing sold in restaurants,” in view of RAO'S for “bar services; restaurant services.” In re 1729 Investments LLC, Ser. No. 90694523 (TTAB Apr. 24, 2023).

          It is common knowledge that restaurants often serve alcoholic beverages such as wine and beer. However, it does not necessarily follow that consumers commonly expect wine to emanate from the same source as restaurants. “[T]he test is not that goods and services must be related if used together, but merely that that finding is part of the underlying factual inquiry as to whether the goods and services at issue . . . can be related in the mind of the consuming public as to the origin of the goods.” Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1355 (Fed. Cir. 2000). See also Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004) (“[A]lthough a student of RHL's cooking classes would undoubtedly use kitchen textiles, it does not necessarily follow that the consuming public would understand those products to have originated from the same source.”).

The TTAB found that “only a tiny percentage of restaurants sell house brands of wine.” But see In re Opus One Inc., 60 USPQ2d at 1815 (finding sufficient evidence of record to show that “it is an increasingly common practice in the industry for restaurants to offer and serve their patrons ‘private label' wines which are named after the restaurant, i.e., wine which is specially-made for the restaurant and served in bottles labeled with the restaurant's service mark”).

In light of the large number of restaurants in the United States (1 million), the facts that a single mark is sometimes used to identify wine and restaurant services as shown by the third-party registrations, that some wineries have on-site restaurants and a small number of them show on-site restaurants having the same name as the wine produced at the winery, and that restaurants serve wine, is not sufficient to establish that it is generally recognized by consumers that wine and restaurant services have a common source of origin for purposes of likelihood of confusion. See In re Coors Brewing Co, 68 USPQ2d at 1064 (noting that the Board's conclusion that restaurant services in general and beer are related “is based on the fact that a tiny percentage of all restaurants also serve as a source of beer, which is a very weak evidentiary basis for a finding of relatedness.”).

No meaningful trade channel overlap was found by the TTAB in view of the trade channel restriction in Applicant's identification excluding the sale of its wine in restaurants.

The TTAB also found that, unlike ordinary consumers who are patrons of restaurants and bars, “Applicant's purchasers are sophisticated and that the overlapping consumers will exercise a high degree of care because of the specificity in Applicant's description of goods, which weighs against a finding of likelihood of confusion.”

Although the marks are identical in their appearance, sound, meaning and commercial impression, which weighs in favor of finding a likelihood of confusion, the term RAO's has some conceptual weakness because it may be a given name or surname.

The TTAB found there was no likelihood of confusion and reversed the Section 2(d) refusal.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.