Carl

This Opinion is Not a
Precedent of the TTAB

Oral Hearing: April 11, 2019 Mailed: July 12, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Carl’s Jr. Restaurants LLC

v.

Burma Super Star, Inc.
_____

Opposition No. 91226465
_____

Steven J. Nataupsky, Michael K. Friedland and Gregory B. Phillips of Knobbe,
Martens, Olson & Bear, LLP
for Carl’s Jr. Restaurants LLC.

Janis Ing and Joseph V. Mauch of Shartsis Friese LLP
for Burma Super Star, Inc.
_____

Before Mermelstein, Wellington, and Adlin,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Burma Super Star, Inc. (“Applicant”) filed an application seeking registration on

the Principal Register of the mark BURMA SUPERSTAR in standard characters

(BURMA disclaimed) for the following goods and services:1

1 Application Serial No. 86585818 filed on April 2, 2015. For the goods in International
Classes 29 and 30, the application is based on Section 1(a) of the Trademark Act (“the Act”),
15 U.S.C. § 1051(a), alleging first use of the mark on the goods anywhere and in commerce
on November 24, 2014. For the Class 43 services, the application is also based on use,
Opposition No. 91226465

Tea leaf salads in the nature of vegetable salads; lotus chips in the nature
of vegetable chips; pre-cooked curry stew; packaged entrees consisting
primarily of meat, fish, poultry or vegetables; prepared entrees consisting
primarily of meat, fish, poultry or vegetables; frozen entrees consisting
primarily of meat, fish, poultry or vegetables; nut and seed snack mix;
prepared nut and seed mix for topping salads in International Class 29;

Salad dressing; tea leaf snack bars; coconut rice, namely, cooked rice
prepared with coconut milk; tea leaf-based snack foods, namely, tea leaf
clusters in International Class 30;

Non-alcoholic beverages, namely, carbonated beverages; ginger ale; ginger
beer; ginger lemonade; ginger flavored beverages in International Class 32;
and

Restaurants in International Class 43.

Carl’s Jr. Restaurants LLC (“Opposer”) opposes registration of the applied-for

mark on the following grounds: the application is void ab initio because Applicant

was not the owner of the mark at the time the application was filed; likelihood of

confusion; dilution; and abandonment.2 Applicant filed its Answer denying the salient

allegations in the notice of opposition.3

The parties have fully briefed this opposition proceeding4 and, on April 11, 2019,

both parties presented arguments during an oral hearing before the Board.

claiming a first use date of March 18, 1992. And, with respect to the Class 32 goods, the
application is based on an alleged bona fide intention to use the mark in commerce under
Section 1(b) of the Trademark Act (“the Act”), 15 U.S.C. § 1051(b).
2 31 TTABVUE (Notice of Opposition, as amended); the Board previously granted Opposer
leave to file an amended notice of opposition (28 TTABVUE).
3 32 TTABVUE (Answer, as amended).
4 52, 55 TTABVUE (Opposer’s main and rebuttal briefs); 53 TTABVUE (Applicant’s brief).

-2-
Opposition No. 91226465

I. Standing

A threshold issue in each inter partes case is the plaintiff’s standing to challenge

registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111

USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94

USPQ2d 1942, 1945 (TTAB 2010).

Opposer has established its standing by properly making of record under notice of

reliance several of its pleaded registrations, including Registration No. 1099039 for

the mark SUPER STAR for “preparing and serving hamburgers as part of restaurant

services,”5 and Registration No. 4704436 for the mark SUPER STAR REWARDS for

“arranging and conducting incentive programs to promote the sale of food and

beverage items for consumption on or off the premises” in Class 35.6 These

registrations serve as a basis for Opposer’s likelihood of confusion claim that is not

wholly without merit. Lipton Indus. Inc. v. Ralston Purina Co., 670 F.2d 1024, 213

USPQ 185, 189 (CCPA 1982). Because Opposer has established its standing to assert

its Section 2(d) claim, it has standing to pursue the other grounds for opposition. See,

e.g., Corporacion Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1877 (TTAB 2011).

5 Opposer’s First Notice of Reliance (33 TTABVUE 13-16).
6 Id. 44-51.

-3-
Opposition No. 91226465

II. Application is Void Ab Initio Because Applicant Was Not the
Owner of the Mark at the Time of Filing the Application
(Classes 29, 30, and 43)

a. Background

Desmond Tan is Applicant’s president and CEO and has provided key testimony

regarding the chain of title of the applied-for mark.7

In 1992, the Burma Superstar restaurant opened in San Francisco, California.8

In 2001, East-West Holdings (“EWH”) purchased the BURMA SUPERSTAR

restaurant in San Francisco.9

Today, there are currently three BURMA SUPERSTAR restaurants – the original

(in San Francisco), one in Alameda and one in Oakland.10

In 2007, EWH was granted a registration (Reg. No. 3429916) for the mark

BURMA SUPERSTAR in connection for restaurant services.11 Tan testified the

registration was cancelled on December 26, 2014, “due to inadvertent failure to file a

required document.”12

Tan testified that, in 2007 and 2008, EWH entered into oral non-exclusive license

agreements with two different entities owned by Tan, allowing them to use the

BURMA SUPERSTAR mark in connection with two additional restaurants in

740 TTABVUE 46-84 (Tan declaration) and 45-48 TTABVUE (Cross-examination testimonial
deposition of Tan, and exhibits).
8 40 TTABVUE 46.
9 Id.
10 45 TTABVUE 8.
11 Id. at 47.
12 Id.

-4-
Opposition No. 91226465

Alameda and Oakland, California.13 At the time, Carl Velasco (“Velasco”) was the sole

shareholder of EWH.14

Tan was married to Joycelyn Lee (“Lee”) and Tan testified that Lee became the

sole owner of EWH in approximately 2007-2009.15

Tan originally testified that in “2007 and 2008” EWH “orally assigned the BURMA

SUPERSTAR mark and all related licenses to [Tan].”16 Tan further testified that in

2014, he assigned the mark to Applicant, Burma Super Star, Inc.17 On cross-

examination, however, Tan testified that EWH “transferred” ownership of the mark

to Tan in 2015 because Tan “wanted ownership” and “wanted to have it personally in

[his] name.”18 In other words, on cross-examination, Tan contradicted his earlier

testimony that he acquired the mark in “2007 and 2008.” Indeed, if EWH had

assigned the mark to Tan in 2007 or 2008, as Tan testified originally, EWH would

have been unable to assign it in 2015. Likewise, if EWH did not assign the mark to

Tan until 2015, Tan could not have assigned the mark to Applicant in 2014. Thus,

either Tan’s original testimony, or his testimony on cross-examination, was incorrect.

13 Id. at 46-47.
14 45 TTABVUE 12, 19-21.
15 Id. at 20.
16 40 TTABVUE 46-47.
17 Id.
18 45 TTABVUE 45.

-5-
Opposition No. 91226465

In any event, on April 2, 2015, Applicant filed the involved application asserting

that it is the owner of the BURMA SUPERSTAR mark for the goods and services

listed in Classes 29, 30, and 43 of the application.

On February 22, 2016, in what also seems to contradict Tan’s testimony regarding

the purported assignment of the mark from EWH to Tan in either “2007 and 2008”

or 2015, the involved application was opposed by Lee and EWH who alleged that

Applicant “and/or [Tan] is not the true owners or sole owners . . . of the mark” BURMA

SUPERSTAR.19

In his testimony, Tan acknowledged the opposition and noted that it was

withdrawn based on a settlement agreement that included an assignment of rights

in the BURMA SUPERSTAR mark – specifically, Tan testified:20

In March 2017, [Tan, Lee and EWH] entered into a settlement agreement.
A true and correct copy of that settlement agreement is attached as Exhibit
F. On June 5, 2017, Ms. Lee and [EWH] withdrew their opposition to
registration of the BURMA SUPERSTAR mark based on the settlement.
Among other terms in the settlement agreement, Ms. Lee and [EWH]
agreed to assign any and all purported rights in the BURMA SUPERSTAR
mark to Applicant, and Applicant agreed to grant an irrevocable,
unassignable license to Ms. Lee providing her the exclusive right to use the
BURMA SUPERSTAR mark in connection with the operation of the full-
service BURMA SUPERSTAR restaurant in San Francisco. Ms. Lee has
committed to maintain the nature and quality of the goods and services
provided in connection with the BURMA SUPERSTAR mark at the San
Francisco restaurant, and the parties are working to further document the
agreed-upon assignment and license.

19A copy of that notice of opposition was submitted by Opposer under Notice of Reliance (35
TTABVUE 54-56). A copy of a Notice of Withdrawal of Opposition, filed by joint opposers Lee
and EWH on June 5, 2017, was also submitted. Id. at 58.
20Id. at 51. A copy of the hand-written agreement is attached to the declaration as Exh. F
(40 TTABVUE 83-84).

-6-
Opposition No. 91226465

The actual terms of the referenced agreement include, “2. [Lee] gets the 3 SF

restaurants. 3. [Tan] gets the other restaurants and Burma Superstar trademark.”21

Tan also testified that later, in October 2017, he filed a declaration in a California

civil action involving Lee, wherein he averred that:22

I have a clear recollection of the negotiations relating to the Burma
SuperStar Trademark. It was important that I (or rather a corporation
owned and controlled by me) controlled the Burma SuperStar trademark
in order to protect it. In addition, I saw value in this trademark going
forward and the additional $ 700,000 I agreed to pay to Joycelyn Lee was
in large part a payment for my sole ownership of the trademark.

b. Analysis

Pursuant to Section 1(a)(1) of the Trademark Act, 15 U.S.C. § 1051(a)(1), only

“[t]he owner of a trademark used in commerce may request registration of its

trademark ….” Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630, 635

n.6 (CCPA 1976) (“One must be the owner of a mark before it can be registered.”); In

re Deister Concentrator Co., 289 F.2d 496, 129 USPQ 314, 320 (CCPA 1961) (“Under

section 1, only ‘The owner of a trademark’ can apply for registration.”). Therefore,

“[a]n application filed by one who is not the owner of the mark sought to be registered

is a void application.” In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690 (TTAB

1991) (citing In re Techsonic Indus., Inc., 216 USPQ 619 (TTAB 1982)); see also Huang

21 40 TTABVUE 83.
2245 TTABVUE 105-07, 48 TTABVUE 13-17 (Tan Dep. Ex. 107 copy of Tan declaration filed
in Superior Court of the State of California, County of San Francisco, Case No. CGC 15-
547404) on October 12, 2017. A copy of an unsigned “Trademark Assignment” (“Final
Execution Version”) was also submitted with the Tan deposition (Ex. 108, 48 TTABVUE 18-
20), but Tan testified that he did not recall this document. Because it is unclear whether this
version of the assignment was indeed final or whether it was ever executed, we have not
relied on it.

-7-
Opposition No. 91226465

v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988) (affirming

Board’s holding that an application was void ab initio because the applicant was not

the owner of the mark on the filing date); Great Seats Ltd. v. Great Seats Inc., 84

USPQ2d 1235, 1239 (TTAB 2007) (“In a use-based application under Trademark Act

Section 1(a), only the owner of the mark may file the application for registration of

the mark; if the entity filing the application is not the owner of the mark as of the

filing date, the application is void ab initio.”); Trademark Rule 2.71(d), 37 CFR

§ 2.71(d) (“An application filed in the name of an entity that did not own the mark as

of the filing date of the application is void.”).

The involved application, as filed, included a claim by Applicant that it was the

owner of the mark under Section 1(a) with respect to the goods and services in Classes

29, 30, and 43 (see Note 1).23 As to the goods identified in Class 32, Applicant did not

allege that it was the owner of the mark, but only that it had a bona fide intent to use

the mark and was “entitled” to do so under Section 1(b).24 Accordingly, Opposer’s non-

ownership claim is only applicable to Classes 29, 30, and 43.

23The standard declaration for a use-based application under Section 1(a) of the Act includes
an averment that “[t]he signatory believes that the applicant is the owner of the
trademark/service mark sought to be registered. The mark is in use in commerce on or in
connection with the goods/services in the application.”
24 In contrast to the Section 1(a) declaration (see previous note), there is no statutory
requirement that the filer of an intent-to-use application under Section 1(b) allege that the
applicant is the owner of the mark at the time of filing of the intent-to-use application.
Rather, the standard declaration for an intent-to-use filer includes an averment that “[t]he
signatory believes that the applicant is entitled to use the mark in commerce. The applicant
has a bona fide intention to use the mark in commerce on or in connection with the
goods/services in the application.”

-8-
Opposition No. 91226465

Based on the record, particularly the Tan testimony, we find that Applicant was

not the sole owner of the BURMA SUPERSTAR mark in April 2015 when it filed the

involved use-based application. As discussed, Tan’s two different versions of how the

mark was assigned to him (and then on to Applicant) before April 2015 are not only

inconsistent, but are also contradicted by other evidence showing that an assignment

was necessary and executed in 2017. With respect to the 2017 transaction, Tan stated

that he paid $700,000 to Lee, “in large part . . . for . . . sole ownership of the

trademark.”25 But if that is so, Tan did not have sole ownership which could have

been conveyed to Applicant prior to the April 2, 2015, filing date of the subject

application.

In order for testimony to be credible and probative, it “should not be characterized

by contradictions, inconsistencies, and indefiniteness but should carry with it

conviction of its accuracy and applicability.” B.R. Baker Co. v. Lebow Bros., 150 F.2d

580, 66 USPQ 232, 236 (CCPA 1945); see also, Cerveceria Centroamericana v.

Cerveceria India, 892 F.2d 1021, 13 USPQ2d 1307, 1312 (Fed. Cir. 1989) (the

testimony of the witness regarding use was afforded little weight because it was “to

say the least, vague.”) Tan’s testimony regarding purported assignments of the mark

prior to April 2015, as pointed out, is inconsistent and thus lacks sufficient credibility.

Rather, the preponderance of the evidence demonstrates that before and after April

2015, there were various ownership claims still being asserted by, at least, Tan, EWH

or Lee. Applicant’s principal, Tan, did not ultimately acquire sole ownership of the

25 45 TTABVUE 105-07, 48 TTABVUE 13-17 (Tan Dep. Ex. 107).

-9-
Opposition No. 91226465

mark until March 2017, when he reached a written settlement with Lee and EWH

and had all asserted rights in the mark assigned to him. In any event, the point is

that while the record does not clearly establish exactly who owned the mark or when,

it is clear that Applicant was not its sole owner on the application’s filing date.

Applicant argues that Tan, “though he was not formally listed ‘on paper with the

company, for all intents and purposes he acted as and was treated as the ‘actual

owner’ of EWH and the operator of the BURMA SUPERSTAR restaurant.”26

Applicant states that, regardless of whether Tan had control over EWH, the Board

may “still find that the [oral] assignment from EWH to Mr. Tan was valid” because

“EWH could and did assign the mark to whomever it wanted.”27 Applicant also plays

down the allegations of Lee and EWH in their opposition to the involved application

(which was later withdrawn) asserting that the opposition was filed “years after the

assignment as part of her larger dispute with Mr. Tan over the separation of assets”

and it “does not prove that the earlier assignment to Mr. Tan was improper, that Ms.

Lee or EWH disapproved of the assignment at the time it was made.”28 With respect

to the 2017 settlement agreement, Applicant characterizes it as a “settlement

agreement between Mr. Tan (and his entities) and Ms. Lee (and her entities)

resolving their asset separation dispute” and notes that Tan testified that the reason

for the assignment of trademark rights provision was not because he believed Lee

26 53 TTABVUE 46.
27 Id.
28 Id.

– 10 –
Opposition No. 91226465

had an ownership interest but because Tan wanted a “global settlement” that would

end any dispute about the trademark.”29

Applicant’s arguments do not persuade us that Applicant was the sole owner of

the BURMA SUPERSTAR mark in 2015. In order for Applicant to own the mark, Tan

must have possessed sole rights in the mark when, as Applicant argues, Tan assigned

the mark to Applicant in 2014. There are two critical flaws in this purported chain of

title.

First, there is no testimony that anyone with authority to act on behalf of EWH

assigned the mark to Tan in 2007 or 2008. Tan acknowledges that he was not the

owner of EWH when the mark was purportedly orally assigned in 2007 or 2008. Thus,

Tan, himself, did not have any authority to orally assign rights to the mark. Tan does

not identify either of the previous owners, Lee or Velasco, who actually had authority

to act on behalf of EWH, as making the purported oral assignment. There is no

testimony from EWH that an oral assignment took place. Tan’s testimony regarding

the oral assignment has not been corroborated, and is contradicted by other evidence.

The record, discussed supra, persuades us that Applicant, or Tan, at best received

full ownership of the mark, if ever, by way of an assignment nearly two years after

the application was filed.

Applicant’s assertion that it was the owner of the mark by April 2015 is also

contradicted by the fact that, at that time and at least up to 2017, EWH was using

the BURMA SUPERSTAR mark in connection with its San Francisco restaurant. By

29 Id. at 47, citing to Tan Dep. at 45 TTABVUE 107.

– 11 –
Opposition No. 91226465

2013, by Tan’s own admission, he (and Applicant) had no control over EWH or Lee

because his “romantic partnership” with Lee had ended by 2013 and there “was not

a formal business relationship” between the two or their respectively-owned business

entities.30 Thus, whether an oral assignment of the mark took place in 2007/2008, by

one account of Tan’s, or there was an assignment 2015, by the other account of Tan,

we find that EWH retained at least some ownership rights in the BURMA

SUPERSTAR mark because it continued to use BURMA SUPERSTAR for the San

Francisco restaurant at least until 2017, without any license or transfer of rights back

to EWH. To this point, on cross-examination and in response to questioning whether

Applicant has licensed the mark to anyone else for use, Tan testified Applicant

granted EWH such a license but not until 2017.31 Because EWH or others, perhaps

including Lee or Tan, were a partial, if not exclusive, owner(s) of the mark as of April

2015 when the application was filed, Applicant was not the sole owner of the mark.

As discussed, supra, we acknowledge Tan’s testimony, on cross-examination, that

EWH transferred all rights in the mark to Tan personally in 2015 and, in the same

year, he transferred those rights to Applicant – we find, however, this testimony in

not entirely credible. As pointed out, it contradicts his earlier written declaration that

an oral assignment from EWH to Tan occurred in 2007/2008 and he assigned the

mark to Applicant in 2014. Moreover, with respect to the more recent purported

assignment in 2015, Tan could not recall whether there was a written assignment or

30 40 TTABVUE 51.
31 Id. at 49.

– 12 –
Opposition No. 91226465

if any consideration was paid, nor did he testify who on behalf of EWH signed or

authorized the assignment.32 The existence of any 2015 assignment is further drawn

into question, if not rebutted, by EWH’s filing the opposition to registration of the

involved application on the basis of ownership approximately one year after EWH

purportedly assigned the mark. Perhaps the most telling with respect to Tan (or

Applicant’s) lack of full ownership of the mark, as of April 2015, was Tan’s statement

made in a separate civil action involving Tan and Lee, that he paid Lee $700,000.00

in 2017 “in large part . . . for my sole ownership of the mark.”

We have considered the fact that Tan has been intimately involved with the

BURMA SUPERSTAR restaurant businesses since 2001 when EWH purchased the

first restaurant. However, we are also mindful that regardless of a single individual’s

efforts or own beliefs regarding ownership, the use-based application must be filed in

the name of the owner or owners of the mark. See, e.g., Tzu Wei Chen Food Co., 7

USPQ2d 1335 (application was void when signed by an individual in his own name

because his separate application for incorporation in the state of Iowa was granted,

and ownership of the mark passed to the corporation, albeit only two days before the

USPTO received the trademark application for filing).

c. Lack of Ownership – Conclusion

Applicant was not the exclusive or sole owner of the BURMA SUPERSTAR mark

when it filed the application in April 2015, as required under Section 1(a) of the

Trademark Act. “Neither the Board nor the courts can waive this statutory

32 45 TTABVUE 46.

– 13 –
Opposition No. 91226465

requirement,” Tzu Wei Chen, 7 USPQ2d at 1336, even if Applicant later acquired full

rights in the mark. Accordingly, the application was void ab initio, and we sustain

the opposition on this ground, with respect to Classes 29, 30, and 43.

We now turn our attention to the remaining pleaded grounds of likelihood of

confusion and dilution – solely with respect to Applicant’s Class 32 goods.33

III. Likelihood of Confusion

In support of its likelihood of confusion claim, Opposer pleaded use since 1975 and

registration of marks “including the words ‘SUPER STAR’ . . . in connection with food

items, restaurant services, and other goods and services.” Specifically, as previously

discussed, Opposer pleaded ownership of Reg. No. 1099039 for the mark SUPER

STAR for “preparing and serving hamburgers as part of restaurant services.” Opposer

also pleaded ownership of Reg. No. 4704436 for the mark SUPER STAR REWARDS

for “arranging and conducting incentive programs to promote the sale of food and

beverage items for consumption on or off the premises” in Class 35.34

For purposes of our likelihood of confusion analysis, we focus on the two pleaded

registered marks, SUPER STAR, and SUPER STAR REWARDS, because they bear

the closest resemblance to Applicant’s mark, BURMA SUPERSTAR. Although

33The ground of abandonment is not available with respect to the Class 32 goods because
this class is based on a bona fide intent to use in commerce (see Notes 1 and 21). Qualcomm
Inc. v. FLO Corp., 93 USPQ2d 1768, 1770 (TTAB 2010).
34 A copy of Reg. No. 4704436 was properly introduced through Opposer’s notice of reliance
(33 TTABVUE 44-51). The registration also covers “computer application software for mobile
devices, namely, software for use with incentive programs to promote the sale of food and
beverage items for consumption on or off the premises.” However, these goods are less related
(than the Class 35 services) to Applicant’s class 32 goods.

– 14 –
Opposition No. 91226465

Opposer asserted ownership and registration of other marks, we find all of the other

pleaded marks, containing the term STAR or a star design, are so different from

Applicant’s proposed mark that the dissimilarity of the marks would dictate a finding

that confusion would not be likely between those marks, even if all other factors

weighed in Opposer’s favor. Kellogg Co. v. Pack-Em Enters., Inc., 951 F.2d 330, 21

USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular case,

a single du Pont factor may not be dispositive.”).

Our determination of the issue of likelihood of confusion is based on an analysis

of all probative facts in evidence that are relevant to the factors set forth in In re E.I.

du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). Cai v.

Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (du

Pont “articulated thirteen factors to consider when determining likelihood of

confusion”). Similarity of the marks and relatedness of the goods or services tend to

be the two key determinants of likelihood of confusion. Federated Foods, Inc. v. Fort

Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental

inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential

characteristics of the goods and differences in the marks.”). Finally, priority is not an

issue because Opposer’s registrations are of record and Applicant has not

counterclaimed to cancel either. See Top Tobacco LP v. N. Atl. Operating Co., 101

USPQ2d 1163, 1169 (TTAB 2011) (citing King Candy Co. v. Eunice King’s Kitchen,

Inc., 496 F.2d 1400, 82 USPQ 108 (CCPA 1974)).

– 15 –
Opposition No. 91226465

A. Similarity of the Marks

The first du Pont factor involves a determination as to “the similarity or

dissimilarity of the marks in their entireties as to appearance, sound, connotation

and commercial impression.” Palm Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison

Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du

Pont, 177 USPQ at 567).

Here, the obvious similarity is that Applicant’s mark, BURMA SUPERSTAR,

incorporates Opposer’s entire SUPER STAR mark and shares the wording with

Opposer’s other mark SUPER STAR REWARDS. The fact that the same wording

“superstar” or “super star” is in the marks makes them similar in appearance and

sound.

Although Applicant has disclaimed the term BURMA in the involved application,

this is a point of dissimilarity between the involved marks. While it may be

descriptive of Applicant’s goods and services, the similarity or dissimilarity of the

marks is determined based on the entire marks, not just part of the marks. In re Nat’l

Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin

Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It

is axiomatic that a mark should not be dissected and considered piecemeal; rather, it

must be considered as a whole in determining likelihood of confusion.”). Thus, while

BURMA is conceptually weak, it remains part of Applicant’s mark and contributes to

its appearance, pronunciation, and meaning. Likewise, while the term REWARDS is

– 16 –
Opposition No. 91226465

clearly descriptive in the context of Opposer’s “incentive programs” and thus does not

have source-identifying significance, it is a point of dissimilarity between the marks.

In terms of commercial impression or connotation and in the context of both

parties’ goods and services, we take judicial notice of the following definition for the

word “Super Star”:35

1. : a star (as in sports or the movies) who is considered extremely talented, has great
public appeal, and can usually command a high salary

“But last year, when people started posting hits from superstars like Madonna and
Puff Daddy on the Web, where anyone could download them for free, the record
companies went ballistic.”
— N’Gai Croal et al.

“The notion that superstars are protected by NBA refs is neither a new nor a
particularly farfetched one.”
— Jack McCallum

2. : one that is very prominent or is a prime attraction

“From Wolfgang Puck to Alice Waters, America’s leading chefs have become
superstars.”
— Marian Burros

“With that the judge sentenced the one time superstar investor to three years in prison
for his role in the largest insider-trading scandal in history.”
— Time Magazine

“Chardonnay is the superstar among white-wine grapes …”
— Barbara Ensrud

35“SUPER STAR” Merriam-Webster.com. 2019 (www.merriam-webster.com). The Board may
take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet
Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983), including online dictionaries that exist in printed format or regular fixed editions. In
re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

– 17 –
Opposition No. 91226465

In other words, the term is suggestive of success or high quality – whether it is an

individual such as a chef, or a product like chardonnay. In the context of Opposer’s

services the term will likely be understood as self-congratulatory or puffery,

suggesting a high degree of popularity or quality of the services.

With respect to Applicant’s carbonated and ginger-flavored beverages, the term

BURMA will likely be understood as describing or suggesting an affiliation with the

country Burma (or Myanmar), such as the beverages deriving from a Burmese recipe

or style of drink, or being imported from Myanmar (formerly known as Burma). It

thus adds an additional exotic connotation, not present in Opposer’s marks, to the

same wording, SUPER STAR.

In sum, while there are some differences in the marks, we find that overall they

are more similar than not. This factor therefore weighs in favor of finding a likelihood

of confusion.

B. Purported Fame of Opposer’s Marks; Alleged Weakness of
Shared Wording SUPER STAR

In support of its likelihood of confusion claim, Opposer has pleaded:36

Opposer, through substantial use and promotion, has acquired significant
goodwill and consumer recognition in Opposer’s Marks. In addition, by
virtue of substantial use and promotion, Opposer’s Marks have become
famous in the minds of consumers. Opposer’s Marks became famous in the
minds of consumers long before Applicant filed the Application.

Under the fifth du Pont factor, 177 USPQ at 567, the fame of a mark plays a

“dominant” role in the du Pont analysis, as famous marks “enjoy a wide latitude of

36 31 TTABVUE 7 (Notice of Opposition ¶ 2).

– 18 –
Opposition No. 91226465

legal protection.” Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897

(Fed. Cir. 2000); see also Palm Bay Ims., 73 USPQ2d at 1694 (“[A] strong mark …

casts a long shadow which competitors must avoid.”). A famous mark is one that has

“extensive public recognition and renown.” Fame for purposes of likelihood of

confusion is a matter of degree that varies along a spectrum from very strong to very

weak. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122

USPQ2d 1733, 1734 (Fed. Cir. 2017). Relevant factors include sales, advertising,

length of use of the mark, market share, brand awareness, licensing activities, and

variety of goods bearing the mark. Coach Servs. Inc. v. Triumph Learning LLC, 668

F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012).

Much of the record that Opposer relies upon to support its allegation of fame for

the SUPER STAR and SUPER STAR REWARDS marks involves the general success

and popularity of its national chain of CARL’S JR. restaurants. Nevertheless, there

is sufficient circumstantial evidence to show that Opposer’s SUPER STAR mark has

achieved an elevated degree of recognition. Specifically, Opposer has been using the

SUPER STAR mark in connection with its burgers served at its restaurants for a long

time, since 1975, and there is evidence showing that one of Opposer’s signature

hamburgers is called the “Super Star,” with an impressive number of these burgers

having been sold between 2012-2018, and Opposer has spent a significant amount on

advertising the “Super Star” burger during these same years.37 This evidence, alone,

3750 TTABVUE 88-110; 43 TTABVUE (Morrow Exs. 28-29). We do divulge the amounts
sold and advertising expenses because this information has been designated “confidential.”

– 19 –
Opposition No. 91226465

leads us to conclude that a large number of consumers in the United States are

familiar with Opposer’s “Super Star” burger being offered in Opposer’s Carl’s Jr.

restaurants.

In sum, a substantial number of U.S. consumers have been exposed to Opposer’s

SUPER STAR mark in connection with hamburgers served in Opposer’s restaurants.

Opposer’s mark is commercially strong thus expanding its scope of protection.

Applicant, on the other hand, argues that there is a “crowded field” of STAR-

formative marks and that this “diminishes the strength” of Opposer’s marks.38 In

support, Applicant points to:39

over one hundred . . . [registered] marks in Classes 29, 30, 32, and 43
incorporating the word STAR, including numerous SUPER STAR MARKS.
These registrations include ROADSTAR (hamburgers), ALL STAR
(cheese), GOLDEN STAR (lunch meats), and SICILIAN STAR (Italian food
30 products) in Class 29; DELTA STAR (rice), SUPER STAR PROOF
(dough developers), (SUPER STARS) (bakery products), TROPIC STAR
(tea), BIG STAR (coffee), and CORN STAR (relish) in Class 30; BLUE
STAR (beer), FIVE STAR (beer), and TEXAS STAR (soft drinks) in Class
32; and ALLSTARBURGERS (restaurant services not in the nature of
quick service restaurants), STARS DRIVE-IN (restaurant services,
specifically fast food drive in services), BURGER STAR (restaurant and
bar services), ALL STAR WINGS (restaurant services not in the nature of
quick service restaurants), EVENING STAR (restaurant and bar services),
FIVE STAR BURGERS (restaurant services not in the nature of quick
service restaurants), and CHINA STAR (restaurant services).

The sixth du Pont factor requires us to consider the number and nature of similar

marks in use on similar services. du Pont, 177 USPQ at 567. In this regard, the

Federal Circuit has stated that evidence of the extensive registration and use of a

38 53 TTABVUE 36.
Id. 36-37; copies of the registrations were submitted under notice of reliance at 38
39

TTABVUE.

– 20 –
Opposition No. 91226465

term by others can be “powerful” evidence of weakness. Jack Wolfskin Ausrustung

Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363,

116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC,

794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).

In this case, Applicant’s third-party registration evidence has little probative

value. Nearly all of the registered marks merely contain the term STAR and they

have additional wording that makes them dissimilar to Opposer’s SUPER STAR

marks. Cf. In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed.

Cir. 2017) (extensive use of similar marks by third parties for the same or similar

goods or services also is relevant to a mark’s commercial strength) (emphasis added).

Only four of the registrations include the term SUPER STAR and they are for

unrelated goods: fish;40 “dough developers and conditioner;”41 bakery products;42 and

distilled spirits, teas, wine and rum.43 Finally, Applicant has not submitted any

evidence of third-party use of relevant STAR-formative marks. “The existence of

[third party] registrations is not evidence of what happens in the market place or that

customers are familiar with them. . . .” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d

1403, 1406, 177 USPQ 268, 269 (CCPA 1973), quoted in Olde Tyme Foods Inc. v.

Roundy’s Inc., 22 USPQ2d 1542, 1545 (Fed. Cir. 1992). While, as noted, evidence of

extensive registration and use may have evidentiary value, Jack Wolfskin, 116

40 Registration No. 2114138; 38 TTABVUE 72-75.
41 Registration No. 1272031 (SUPER STAR PROOF); Id. 263-265.
42 Registration No. 4375883 (SUPER STARS); Id. 287-290.
43 Registration No. 1272031 (SUPER STAR BRAND and design); Id. 326-330.

– 21 –
Opposition No. 91226465

USPQ2d at 1136, Applicant here has supplied only registrations — most of which are

of little relevance — and no evidence of use.

Ultimately, although Applicant has submitted numerous third-party

registrations, they have little relevance for purposes of showing that the strength of

Opposer’s SUPER STAR marks is diminished due to extensive third-party use of

similar marks in connection with similar goods or services.

C. Similarity or Dissimilarity of the Goods and Services; Trade
Channels; Sophistication and Classes of Consumers

The second du Pont factor “considers ‘[t]he similarity or dissimilarity and nature

of the goods or services as described in an application or registration.’” In re Detroit

Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (quoting du

Pont, 177 USPQ at 567); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746

F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014). “[L]ikelihood of confusion can

be found ‘if the respective products are related in some manner and/or if the

circumstances surrounding their marketing are such that they could give rise to the

mistaken belief that they emanate from the same source.’” Coach Servs., Inc. v.

Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)

(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).

Here, we looking to determine the relationship, if any, between Opposer’s

“preparing and serving hamburgers as part of restaurant services” and its “arranging

and conducting incentive programs to promote the sale of food and beverage items for

consumption on or off the premises,” with Applicant’s Class 32 goods, namely,

carbonated and ginger-flavored beverages.

– 22 –
Opposition No. 91226465

At the outset, we point out that in cases where restaurant services are being

compared to actual food or drink items, there is no per se rule that certain goods and

services are related. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d

2027, 2030 (Fed. Cir. 1993) (no per se confusion, where similar marks are used in

connection with restaurant services and food products). Rather, often when it comes

to restaurant services and food or beverages, “something more” is required (over and

above a showing that the goods and services are offered together) because the

relatedness of the parties’ respective goods and services is not evident. In re Opus

One Inc., 60 USPQ2d 1812, 1813 (TTAB 2001).44 In In re Coors Brewing Co., 343 F.3d

1340, 68 USPQ2d 1059, 1063-64 (Fed. Cir. 2003), the Federal Circuit assessed

whether “something more” showed the relatedness of beer and restaurant services.

The court explained why more evidence than just showing restaurants sell beer is

required to prove that those beer and restaurant services are related:

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 [Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 212 USPQ 641
(CCPA 1982)] 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.

44 4 TTABVUE 8.

– 23 –
Opposition No. 91226465

Id. at 1063.

In this case, Opposer argues that it has demonstrated “something more” because

“the evidence shows that [Opposer’s SUPER STAR marks] are arbitrary and strong

marks,” citing the Board’s decision in In re Opus One, Inc., 60 USPQ2d 1812 (TTAB

2001).45 Opposer also asserts that the “non-alcoholic carbonated beverages, which

Opposer sells . . . are included in the food and beverages identified in the SUPER

STAR REWARDS registration.”46 Opposer concludes that Applicant’s goods “include,

or are at least highly related to, the services listed in Opposer’s SUPER STAR and

SUPER STAR REWARDS registrations.”47

The relevant evidence here is significantly different from that in In re Opus One.

In that decision, the applicant was seeking to register an identical mark, OPUS ONE

for restaurant services, as the cited registered mark for wine. The Board also relied

on evidence showing that “it is an increasingly common practice in the industry for

restaurants to offer and serve to 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.” Id. at 1815. Furthermore, the

Board noted that the applicant’s OPUS ONE restaurant was actually selling the cited

registrant’s OPUS ONE wine.

45 55 TTABVUE 9.
46 55 TTABVUE 9.
47 Id.

– 24 –
Opposition No. 91226465

Opposer’s argument regarding the strength of its mark and our finding that

Opposer’s SUPER STAR mark does have an elevated level of recognition in

connection with fast food, and the service of hamburgers in particular, do not

persuade us that consumers would associate its services of preparing hamburgers as

a part of restaurant services with Applicant’s carbonated and ginger flavored

beverages. While it is well-known that restaurants serve beverages with meals, this

alone is insufficient to show a relationship that likely leads to confusion. To borrow

words and reasoning from In re Coors Brewing, restaurants can be known for a

particular food or beverage product and sell these products under the same name as

the restaurant, but “that does not mean that any time a brand of [food or beverage]

has a trademark that is similar to the registered trademark of some restaurant,

consumers are likely to assume that the [food or beverage] is associated with that

restaurant.” In re Coors Brewing, 68 USPQ2d at 1063. The evidence does not

establish the “something more” required to find a relationship between Applicant’s

goods and Opposer’s services.

With respect to Opposer’s “arranging and conducting incentive programs to

promote the sale of food and beverage items for consumption on or off the premises,”

these are even further removed from Applicant’s carbonated and ginger flavored

beverages. That is, Opposer’s services are promotional in nature and only

tangentially involve beverages. Again, there is no evidence showing consumers are

accustomed to encountering the respective services and goods under the same mark

from a single source.

– 25 –
Opposition No. 91226465

As to the third du Pont factor, involving the established, likely-to-continue

channels of trade, the identifications in the application and Opposer’s registrations

have no restrictions on channels of trade. Thus we must presume that the goods and

services travel in all channels of trade appropriate for such goods and services. In re

Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting

Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005

(Fed. Cir. 2002)). It is well-known that restaurants serve carbonated beverages and

the record shows that Opposer’s restaurants do indeed serve soft drinks, like Coca-

Cola and Sprite. Accordingly, we must assume that Applicant’s goods would be served

in restaurants, like Opposer’s. Additionally, Opposer’s services and Applicant’s goods

would be offered to all usual consumers for the goods and services, including the

general public.

D. Likelihood of Confusion — Conclusion

We have carefully considered all of the evidence of record, including any evidence

not specifically discussed herein. As discussed, several du Pont factors support a

finding of a likelihood of confusion. Nevertheless, we ultimately find that Opposer

has not proven by a preponderance of the evidence that consumers familiar with

Opposer’s SUPER STAR or SUPER STAR REWARDS marks for the identified

services who encounter Applicant’s BURMA SUPERSTAR mark for carbonated and

ginger-flavored beverages are likely to believe mistakenly that the goods and services

originate with, or are sponsored or authorized by the same source. We base our

conclusion primarily on the dissimilarity between Applicant’s carbonated and ginger-

– 26 –
Opposition No. 91226465

flavored beverages and Opposer’s restaurant and incentive program services; we also

bear in mind that the initial term, BURMA, in Applicant’s mark helps distinguish

the marks and the shared term, SUPER STAR, suggests a higher quality of goods or

services.

Accordingly, the likelihood of confusion claim is dismissed as to Applicant’s Class

32 goods.

IV. Likelihood of Dilution

Opposer’s pleaded claim of dilution requires proof of fame of the mark SUPER

STAR. As discussed in the context of the likelihood of confusion analysis, the record

indicates an elevated level of exposure to this mark, mainly in connection with

hamburgers, but the evidence falls far short of demonstrating that Opposer’s mark is

famous for purposes of likelihood of confusion, and thus cannot be famous for

purposes of dilution. Fame for dilution purposes requires a more stringent showing.

Palm Bay Imps., 73 USPQ2d 1694; Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1170

(TTAB 2001). Accordingly, the claim of dilution is dismissed.

Decision: The opposition is sustained as to Classes 29, 30, and 43. The opposition

is dismissed with respect to Class 32.

– 27 –