The USPTO refused to register the mark CITRUS CLUB for “cocktail lounge services” [CLUB disclaimed], finding confusion likely with the registered mark CITRUS KITCHEN, in standard character and design form, for “restaurant services” [KITCHEN disclaimed]. Applicant argued that it uses its mark at “a reservation-only rooftop cocktail lounge atop a five-star hotel in Charleston, South Carolina,” that “operates exclusively in the evenings, employs a dress code, and prohibits children under the age of 21 from entering,” whereas the registered mark is used at a “sole store-front physical location in Rancho Cucamonga, California . . . focused on hand-crafted, healthy meal options . . . [and] is also open during the day, closes at 8:00 pm on Monday through Saturday, does not feature a dress code, and allows children.” How do you think this came out? In re Citrus Club by Dewberry 334 Meeting Street, LLC. Serial No. 87860519 (October 14, 2020) [ not precedential] (Opinion by Judge Thomas W. Wellington).

The Services: Of course, in considering the second du Pont factor, the Board looks to the services recited in the the application and cited registration, not at the real marketplace conditions. See Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)The evidence showed “a close and intrinsic relationship between cocktail lounges and restaurants.” Examining Attorney Taylor Duenas submitted Internet evidence showing 6 different entities advertising bar or cocktail lounge services, as well as restaurant services, and he provided more than 20 use-based, third-party registrations, each registration covering cocktail lounge and restaurant services. That sufficed to show the relatedness of the involved services.

The evidence also showed that the involved services may be offered in the same location, e.g., a cocktail lounge may be either within a restaurant or within the same hotel as a restaurant. In the latter case, the hotel may advertise both be advertised on the hotel website. [Would they likely have the same name in the same hotel? – ed.] Again, the Board brushed aside the applicant’s irrelevant argument that the actual facilities of the parties are a continent apart, since applicant is seeking a nationwide registration and registrant’s rights are likewise nationwide.

The Marks:  The word CITRUS is the more distinctive term in each of the marks and, as the initial element, is more likely to be noticed or remembered by consumers. The primary connotation of each mark is dictated by the term CITRUS, rather than by the disclaimed terms, CLUB and KITCHEN. As to connotation, “[t]o the extent that the term CITRUS may be suggestive in the context of cocktail lounge and restaurant services, i.e., suggesting a citrus fruit ingredient in food or drinks being served, this same meaning would be conveyed by the two marks.”

In light of the the strong resemblance in sound and appearance due to the shared term CITRUS, and the overall similar connotations and commercial impressions, the Board found the marks to be similar, ans so the first du Pont factor weighed in favor of likely confusion.

Strength of the Cited Mark: Applicant argued that CITRUS and KITCHEN are weak formatives, and therefore that the cited marks are entitled to a limited scope of protection. The Board, however, found applicant’s third-party registration evidence to be “wholly inadequate” to show any weakness of CITRUS for restaurant services. Most of the registered marks were for unrelated goods and services, and none was for restaurant services. In some of the registered marks, the word CITRUS is used descriptively. Applicant did not submit any evidence of third-party marks containing the word CITRUS.

 

In sum, although there may be a suggestive meaning to the term CITRUS in connection with cocktail lounge and restaurant services, as discussed supra, we do not find this term to be commercially weak or so inherently weak as to allow the registration of Applicant’s mark. Accordingly, the DuPont factor regarding weakness is neutral in our likelihood of confusion analysis.

 

Conclusion: The Board found confusion likely, and so it affirmed the Section 2(d) refusal.

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Text Copyright John L. Welch 2020.