Last week we had olive oil and restaurant services. Now it’s restaurant services and beef. The USPTO refused registration of the mark BLACK BARK for restaurant services, finding it likely to cause confusion with the registered mark BLACK BARK BRISKET for “Meat; Prepared meat.” The marks are similar, but are the goods and services related? How do you think this came out? In re DLMW-BBQ, LLC, Serial No. 86457938 (April 25, 2016) [not precedential].

BLACK-BARK

The marks: The Board found the marks to be substantially similar in appearance and sound. As to meaning, in the field of barbecued meats, “BARK is understood to mean the desirable crust that develops on meat that has been properly cooked.” “Bark” may be black in color, and in fact that color is desirable to some.

In overall commercial impression, Registrant’s mark, as applied to meat, describes a brisket meat that is cooked or barbecued in such a way that it has a black-colored crust; and Applicant’s mark, as applied to restaurant services suggests the availability of meat that is cooked or barbecued so as to have a black-colored crust. We find these commercial impressions to be similar, although not identical.

The Board found that the first du Pont factor, the similarity or dissimilarity of the marks weighed in favor of a finding of likelihood of confusion.

Goods/Services: “To establish likelihood of confusion a party must show 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, 1236, 212 USPQ 641, 642 (CCPA 1982).

In an attempt to show relatedness, the Examining Attorney submitted several website excerpts from restaurants or food trucks that specialize in barbecue and offered meat by the pound, as well as six third-party registrations covering restaurant services and meat products. Only two of the websites excerpts were probative.

The Board, however, wanted to see the “something more.” It noted that the cited mark is a relatively weak source indicator for most products because of its descriptiveness, and it found the two websites and the relatively small number of registrations to be insufficient under the “something more” standard.

The Board concluded that the USPTO failed to prove that confusion is likely, and it therefore reversed the refusal.