TTAB finds catering services and barbeque sauce not sufficiently related

United States of America

In In re Giovanni Food Co Inc (Serial No 77796257, February 18 2011), in a precdential opinion, the Trademark Trial and Appeal Board (TTAB) has reversed the trademark examining attorney’s refusal to register under Section 2(d) of the Lanham Act (15 USC §1052(d)) the mark JUMPIN’ JACKS for barbeque sauce in view of the registration for JUMPIN JACK’S for catering services. The TTAB’s determination that there was no likelihood of confusion was based on an analysis of the factors set forth in In re EI du Pont de Nemours & Co (476 F2d 1357 (CCPA 1973)), particularly the similarities between the marks and the degree of similarity between barbeque sauce and catering services.

As a preliminary evidentiary matter, the TTAB noted that an applicant may not rely on the file wrapper of a cited registration during an opposition proceeding, unless the file wrapper is made part of the record during prosecution.

Turning to the likelihood of confusion analysis, the TTAB first found that the marks, in the context of the goods and services with which they were used, created similar impressions, a conclusion that the applicant did not contest. In making this determination, the TTAB compared the appearance, sound, connotation and commercial impression of the marks in their entireties. It found that the sound and appearance of the marks, other than the placement of the apostrophe, were identical, and that the connotation and commercial impression of the marks were similar.

Next, the TTAB found that the applicant’s barbeque sauce was not sufficiently similar to the registrant’s catering services to establish a likelihood of confusion. Even where marks used for food products and services are identical, the examining attorney bears the burden of submitting evidence showing “something more” to establish likelihood of confusion (Jacobs v International Multifoods Corp (668 F2d 1234 (CCPA 1982))). There is no per se rule that food products and services are necessarily related such that there must be a likelihood of confusion.

In the past, the “something more” standard has been met in the following situations:

  • where it was clear from its mark that the provider of food services specialised in the other party’s type of goods (see In re Golden Griddle Pancake House Ltd (17 USPQ2d 1074 (TTAB 1990)), comparing similar marks for a pancake house and table syrup; In re Azteca Restaurant Enterprises Inc (50 USPQ2d 1209 (TTAB 1999)), comparing similar marks for a Mexican restaurant and Mexican food products);
  • where the applicant’s restaurant actually sold the registrant’s product (In re Opus One Inc (60 USPQ2d 1812 (TTAB 2001))); and
  • where the mark at issue was “a very unique, strong mark” (In re Mucky Duck Mustard Co Inc (6 USPQ2d 1467, 1469 (TTAB 1988)), comparing the mark MUCKY DUCK for mustard and restaurant services).

In the present case, there was no evidence to show that catering services generally specialise in barbeque. While some catering services may do so, and may even sell barbeque sauce, there is no general relationship between the two that would satisfy the “something more” requirement. Moreover, there was no evidence that the registrant’s catering service specialised in barbeque, or used the applicant’s barbeque sauce. Finally, there was no evidence the JUMPIN JACK’S mark was so strong and unique that it met the “something more” standard by itself.

In light of these findings, the TTAB concluded that the “something more” requirement was not met in this situation, and that a likelihood of confusion between the marks was not established.

Susan Progoff and Jennifer Kwon, Ropes & Gray LLP, New York

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