Office Action Response for the Mark RESPECT THE MEAT

Applicant seeks to register the mark “RESPECT THE MEAT,” Application No.
77/778,855, in International Class 043 for “restaurant services.” The examiner refuses
registration of Applicant’s mark based on likelihood of confusion under 2(d). Specifically, the
examiner asserts that Applicant’s mark is likely to cause confusion with the mark “RESPECT
THE PIZZA,” in U.S. Registration No. 2,564,705. This registration claims “restaurant services”
in International Class 042. Applicant respectfully disagrees with the examiner’s refusal, and
responds as follows:

I. Section 2(d) Refusal: Likelihood of Confusion

In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973),
the Court of Customs and Patent Appeals stated the factors relevant to a determination of
likelihood of confusion. These factors include the following: (1) the relatedness of the goods or
services as described in an application or registration or in connection with which a prior mark is
in use, (2) the similarity or dissimilarity of established, likely-to-continue trade channels, (3) the
similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression, (4) the number and nature of similar marks in use on similar goods,
(5) the nature and extent of any actual confusion, (6) the conditions under which and the buyers
to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing, and (7) the length
of time during and conditions under which there has been concurrent use without evidence of
actual confusion.

Applicant asserts that its mark is entitled to registration despite the presence of the
aforementioned mark, “RESPECT THE PIZZA,” because: (1) the marks are dissimilar in their
entireties as to appearance, sound, connotation and commercial impression, (2) Applicant’s mark
is used in different channels of trade than the above-registered mark and with different types of
services, and (3) the common element of the marks is weak and/or diluted.

(1) Marks are Dissimilar in their Entireties

Applicant’s mark, “RESPECT THE MEAT” is different and distinguishable from
registrant’s mark, “RESPECT THE PIZZA,” with regard to sound, appearance, commercial
impression and connotation, the points of comparison for a word mark. Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005).

Notably, the similarity of the marks in one respect will not automatically result in a
finding of likelihood of confusion even if the goods or services are identical or closely related. In
re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987). Such marks may create sufficiently
different commercial impressions when applied to the respective parties’ goods or services such
that there is no likelihood of confusion. See, e.g., In re Sears, Roebuck and Co., 2 USPQ2d 1312
(TTAB 1987) (CROSS-OVER for bras held not likely to be confused with CROSSOVER for
ladies’ sportswear; held that the term was suggestive of the construction of the bras, but likely to
be perceived by purchasers either as an arbitrary designation or as suggestive of sportswear that
“crosses over” the line between informal and more formal wear when applied to ladies’
sportswear); In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (PLAYERS for men’s
underwear not likely to be confused with PLAYERS for shoes; held the term PLAYERS implies
a fit, style, color, and durability adapted to outdoor activities when applied to shoes, but “implies
something else, primarily indoors in nature” when applied to men’s underwear); In re Sydel
Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) (BOTTOMS UP for ladies’ and children’s
underwear held not likely to be confused with BOTTOMS UP for men’s clothing; held that the
term connotes the drinking phrase “Drink Up” when applied to men’s suits, coats, and trousers,
but does not have this connotation when applied to ladies’ and children’s underwear).

Furthermore, additions or deletions to otherwise similar marks that convey significantly
different commercial impressions can eliminate any potential for likelihood of confusion. See,
e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (RITZ
and THE RITZ KIDS create different commercial impressions); In re Farm Fresh Catfish Co.,
231 USPQ 495 (TTAB 1986) (CATFISH BOBBERS (with “CATFISH” disclaimed) for fish
held not likely to be confused with BOBBER for restaurant services); In re Shawnee Milling Co.,
225 USPQ 747 (TTAB 1985) (GOLDEN CRUST for flour held not likely to be confused with
ADOLPH’S GOLD’N CRUST and design (with “GOLD’N CRUST” disclaimed) for coating
and seasoning for food items); In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984)
(DESIGNERS/FABRIC (stylized) for retail fabric store services held not likely to be confused
with DAN RIVER DESIGNER FABRICS and design for textile fabrics).

Applicant’s mark, “RESPECT THE MEAT,” and Registrant’s mark, “RESPECT THE
PIZZA,” differ in sound and appearance. Applicant’s mark does not contain the word “PIZZA,”
which is present in the registered mark. Instead, Applicant’s mark contains the word “MEAT,”
which is not present in the registered mark. The deletion of the word “PIZZA” and the addition
of the word “MEAT,” readily distinguishes Applicant’s mark from registered mark, such that
Applicant’s mark is phonetically and visually dissimilar from the registered mark.

Additionally, Applicant’s mark, “RESPECT THE MEAT,” conveys a significantly
different commercial impression than that of “RESPECT THE PIZZA.” Registrant’s mark,
“RESPECT THE PIZZA,” refers to pizza and is used in a way that unmistakably evokes
thoughts of pizza. Applicant’s mark “RESPECT THE MEAT,” on the other hand, evokes
thoughts of meat and animals, and has nothing to do with pizza.

These two marks – “RESPECT THE MEAT” and “RESPECT THE PIZZA” – also have
divergent meanings or connotations. When determining similarity in meaning or connotation,
the focus is on the recollection of the average purchaser who normally retains a general, rather
than specific, impression of trademarks. See, e.g., In re M. Serman & Co., Inc., 223 USPQ 52
(TTAB 1984). The meaning or connotation of a mark must further be determined in relation to
the named goods or services. Here, as discussed, Applicant’s mark, “RESPECT THE MEAT,”
invokes images of meat and animals, while the registered mark “RESPECT THE PIZZA”
invokes images of pizza. The two marks have completely different meanings, and thus, there is
no likelihood of confusion between the two.
Thus, for the foregoing reasons, the marks are dissimilar in their entireties as to
appearance, sound, commercial impression and connotation and are not likely to cause
confusion. For this reason alone, Applicant’s trademark application is in condition for
registration.

(2) Different Services and Different Channels of Trade

Although both marks claim “restaurant services,” the services provided by Applicant are
different and distinguishable from the services associated and/or provided by the owner of the
registered mark. Specifically, the services provided by Applicant are not provided to the same
class of purchasers as those associated with the registered mark so as to create a likelihood of
confusion. In addition, the established and likely-to-continue channels of trade in which
Applicant and Registrant provide services are significantly different such that there is no
likelihood of confusion.

Case law indicates that “[g]oods may fall under the same general product category but
operate in distinct niches.” Checkpoint Sys., Inc. v. Check Point Software Tech., Inc., 269 F.3d
270, 287-88 (3d Cir. 2001) (“When two products are part of distinct sectors of a broad product
category, they can be sufficiently unrelated that consumers are not likely to assume the products
originate from the same mark”); see also Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc.,
718 F.2d 1201, 1207 (1st Cir. 1983) (finding no product similarity in medical technology sold to
different departments in hospital because “‘the hospital community’ is not a homogeneous
whole, but is composed of separate departments with diverse purchasing requirements, which, in
effect, constitute different markets for the parties’ respective products.”); Harlem Wizards
Entm’t Basketball, Inc., v. NBA Propos., Inc., 952 F. Supp. 1084, 1095 (D. N.J. 1997) (finding
no product similarity between professional competitive basketball team and “show basketball”
team).

The issue is not whether the goods will be confused with each other, but rather whether
the public will be confused about their source. See Safety-Kleen Corp. v. Dresser Indus., Inc.,
518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975). Likelihood of confusion may exist
where an applicant’s and registrant’s goods or services are so related that the circumstances
surrounding their marketing makes it likely for the goods or services to be encountered by the
same persons under circumstances that would give rise to the mistaken belief that the goods or
services originate from the same source. See, e.g., On-line Careline Inc. v. America Online Inc.,
229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000) (ON-LINE TODAY for Internet connection
services held likely to be confused with ONLINE TODAY for Internet content). On the other
hand, if the goods or services in question are not related or marketed in such a way that they
would be encountered by the same persons in situations that would create the incorrect
assumption that they originate from the same source, confusion is not likely even if the marks are
identical. See, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir.
2004) (cooking classes, kitchen textiles not related).

Here, Applicant provides restaurant services featuring a barbeque cuisine. Items on
Applicant’s menu include various meats and side items, including corn-on-the-cob, cole slaw,
potato salad, and banana pudding. See the webpage printouts from http://rudys.com/ attached
hereto and incorporated by reference herein as “Exhibit A.”

Conversely, Registrant provides restaurant services featuring pizza, subs and salads. See
the website printouts from http://www.donatos.com attached hereto and incorporated by
reference herein as “Exhibit B.”

No reasonable consumer will confuse Applicant for Registrant, or vice versa, regarding
the source of their respective services. While the services listed for each mark are identical, each
mark owner operates in distinct niche markets as described above. Therefore, the services
associated with Applicant’s mark are sufficiently distinguishable from the services associated
with the registered mark so as not to cause a likelihood of confusion by customers.

Furthermore, Registrant operates its pizza locations in three (3) states, North Carolina,
South Carolina and Ohio. See the website printouts from
http://www.donatos.com/about_donatos/news_detail.asp?ID=34 attached hereto and
incorporated by reference herein as “Exhibit C.” Conversely, Applicant has eighteen (18)
locations throughout Texas, Oklahoma and New Mexico. See the website printouts from
http://rudys.com/locations.aspx attached hereto and incorporated by reference herein as “Exhibit
D.” Applicant and Registrant do not operate their restaurants in the same states further
evidencing that Applicant’s mark is not likely to cause confusion with Registrant’s mark.

The circumstances surrounding the marketing of the services associated with each mark
are such that the services will not likely be encountered by the same person under circumstances
that would cause a mistaken belief as to the source of the services. No reasonable consumer
could reasonably mistake the Applicant’s barbeque cuisine for Registrant’s pizza cuisine. For
this reason alone, Applicant’s trademark application is in condition for registration.

(3) The Common Element of the Marks, “RESPECT,” is Weak and/or Diluted

Additionally, a finding against likelihood of confusion is further supported by the fact
that the common element of the mark “RESPECT,” is not likely to be perceived by consumers as
distinguishing a source because it is weak, entitled to a narrow scope of protection, and/or is
diluted. See e.g., In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986)
(BED & BREAKFAST REGISTRY for making lodging reservations for others in private homes
held not likely to be confused with BED & BREAKFAST INTERNATIONAL for room booking
agency services). Evidence of third-party use of similar marks on similar goods is relevant to
show that a mark is weak and entitled to only a narrow scope of protection. General Mills, Inc. v.
Kellogg Co., 824 F.2d 622, 626-27 (8th Cir. 1987).

A search of the U.S. Patent and Trademark Office database using the Trademark
Electronic Search System indicates that there are 14 applications and registrations for trademarks
that include the common element of the mark, “RESPECT” (counting only live marks), and
which claim food, beverages or restaurant services. Print outs of each of these applications and
registrations are attached hereto and incorporated by reference herein “Exhibit E.” This
evidence supports a finding that the common element of the marks, “RESPECT,” is weak,
entitled to a narrow scope of protection, and/or that this word is diluted. Because of the weak
and/or diluted nature of the word “RESPECT,” consumers will look to the more dominate
portions of the marks, e.g., “PIZZA” and “MEAT.” See e.g., Matrix Motor Co. v. Toyota
Jidosha Kabushiki Kaisha, 290 F. Supp. 2d 1083, 1091-92 (C.D. Cal. 2003) (due to the evidence
of at least twenty undisputed uses of the mark “Matrix” in the automotive field, i.e., the
“crowded field” evidence, the Court stated that the at-issue mark “Matrix” was commercially
weak and diluted and thus, entitled only to a narrow scope of protection); Alpha Indus., Inc. v.
Alpha Steel Tube & Shapes, Inc., 616 F.2d 440, 445 (9th Cir. 1980) (finding that the term
“Alpha” for steel tubing products was weak because “Alpha” is a very common term, and is used
in numerous trademarks and trade names).

Accordingly, the fact that the common element of the marks is weak and/or diluted
mitigates against a finding of likelihood of confusion.

(4) Conclusion

In light of the dissimilarity of the marks, the distinct trade channels in which Applicant
and Registrant operate, and the weakness and/or diluted nature of the common element of the
marks “RESPECT,” Applicant’s trademark application is in condition for registration.

RBBQ/1060832/7525138v.1