This Opinion is not a
Precedent of the TTAB
Mailed: February 20, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
In re Lidl Stiftung & Co. KG
Serial No. 79171734
Scott Greenberg of Locke Lord LLP,
for Lidl Stiftung & Co. KG.
Keyla Gandara, Trademark Examining Attorney, Law Office 117,
Travis D. Wheatley, Managing Attorney.
Before Wellington, Kuczma and Greenbaum,
Administrative Trademark Judges.
Opinion by Kuczma, Administrative Trademark Judge:
Lidl Stiftung & Co. KG (Applicant) seeks registration on the Principal Register
of the mark for: Sushi in International Class 30.1 SELECT and
TO GO are disclaimed.
1 Application Serial No. 79171734 is a request for extension of protection of International
Registration No. 1263075 pursuant to the Madrid Protocol, Trademark Act § 60 et. seq., 15
U.S.C. § 1141 et seq. The USPTO was notified of the request for extension on February 6,
2015. The mark consists of the wording CHEF SELECT in gray with two gray lines around
Serial No. 79171734
The Trademark Examining Attorney refused registration of Applicants mark
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), due to a likelihood
of confusion with the mark CHEF SELECT (standard character mark, SELECT
disclaimed) in Registration No. 3873838 registered for sushi in International Class
30, owned by Fuji Food Products, Inc.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration,3 the appeal was resumed. We have considered the evidence and
arguments presented by Applicant and the Examining Attorney. For the reasons set
forth below, the refusal to register is affirmed.
I. Likelihood of Confusion
The sole issue to be decided is whether Applicants mark (chef select
to go & design) is confusingly similar to the mark CHEF SELECT in Registration
No. 3873838 and should therefore be refused registration under § 2(d) of the
Our determination of likelihood of confusion under § 2(d) is based on an analysis
the wording TO GO in green, with a white arrow in the middle of the O; all other white
in the drawing is not a feature of the mark and represents background. The colors gray and
green are claimed as a feature of the mark.
2 Registration No. 3873838 registered on November 9, 2010; §§8 and 15 declarations accepted.
3In the January 30, 2018 Request for Reconsideration Denied, the Examining Attorney
withdrew the refusal under § 2(d) of the Trademark Act based on Registration No. 4156570.
Serial No. 79171734
of all of the probative facts in evidence that are relevant to the factors bearing on the
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003).
We have considered all of the evidence as it pertains to the relevant du Pont
factors, as well as Applicants arguments (including any evidence and arguments not
specifically discussed in this opinion). Here, the key considerations are the
similarities between the marks, the identity of the goods, and the presumed similarity
of the customers and trade channels of the goods. To the extent any other du Pont
factors for which no evidence or argument were presented may nonetheless be
applicable, we treat them as neutral.
A. Similarity of the Goods, Channels of Trade, Classes of Customers
Applicants goods are identical to Registrants goods, i.e., sushi. When the goods
are identical and their identifications have no restrictions as to nature, type, channels
of trade, or classes of purchasers as is the case here the identified goods are
presumed to travel in the same channels of trade to the same class of purchasers. See
In re Viterra Inc., 671 F. 3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir.
2002) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983)
(absent restrictions in the application and registration, goods and services are
presumed to travel in the same channels of trade to the same class of purchasers.)).
Serial No. 79171734
Based on the identical goods set forth in the application and cited registration,
and the overlapping trade channels and customers, the du Pont factors of the
similarity of the goods, trade channels and customers strongly favor a finding of
likelihood of confusion.
B. Similarity of the Marks
We turn next to the du Pont factor focusing on the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, connotation and commercial
impression. In re Viterra, 101 USPQ2d at 1908; du Pont, 177 USPQ at 567. We keep
in mind that [w]hen marks would appear on virtually identical goods . . ., as is the
case here, the degree of similarity necessary to support a conclusion of likely
confusion declines. In re Viterra, 101 USPQ2d at 1908 (citing Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992));
In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1740-41 (TTAB 2016).
The proper test is not a side-by-side comparison of the marks, but instead
whether the marks are sufficiently similar in terms of their commercial impression
such that persons who encounter the marks would be likely to assume a connection
between the parties. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Our analysis cannot be predicated on
dissecting the marks into their various components; the marks must be viewed in
their entireties, and it is improper to dissect a mark when engaging in this analysis,
including when a mark contains both words and a design. Jack Wolfskin Ausrustung
Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363,
Serial No. 79171734
116 USPQ2d 1129, 1134 (Fed. Cir. 2015); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687 (Fed. Cir. 1993); In re Natl 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.).
The record shows that the word chef is defined as the chief . . . cook, especially
in a restaurant or hotel . . . , and select means chosen in preference to another or
others, or carefully chosen.4 Therefore, in connection with sushi, which is defined
as [a] Japanese dish consisting of small balls or rolls of vinegar-flavored cold cooked
rice served with a garnish of raw fish, vegetables or egg,5 chef select means that
the contents of the sushi dish were carefully or preferentially chosen by a cook or food
Looking at Applicants mark, because chef and select appear together in the
same larger-sized font and color, connected with a gray line, the term chef select
4 See the dictionary definitions of chef in the March 15, 2016 Response to Office Action at
TSDR 16, Dictionary.com, ; and select in the
September 11, 2015 Office Action at TSDR 72, COLLINS DICTIONARIES, , and March 15, 2016 Response to Office
Action at TSDR 20 Dictionary.com, .
Page references to the application record refer to the .pdf version of the USPTOs Trademark
Status & Document Retrieval (TSDR) system.
5 OXFORD DICTIONARIES (definition of sushi in US English) attached as Exhibit 1 to Applicants Request for
Reconsideration, TSDR 20.
Serial No. 79171734
appears as the dominant part of Applicants mark.6 Although it is improper to dissect
a mark because marks must be viewed in their entireties, there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. In re Viterra, 101 USPQ2d at 1908; In re Natl Data, 224
USPQ at 751; Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424,
1430 (TTAB 2013).
Turning to the to go wording in Applicants mark, the definition of to go
submitted by the Examining Attorney is 1. (US) to be taken out (said of food in a
restaurant), which confirms that it is descriptive of Applicants goods.7 Applicant
contends that even if to go is descriptive of its goods, it still adds a connotation to
the commercial impression of the mark that is not found in the cited mark.
The merely descriptive term to go, which Applicant disclaimed, is on the right-
hand side of chef select in smaller font and presented in a different color.8 The to
6 Although Applicant and Registrant have disclaimed select in their respective marks, the
filing of a disclaimer with the USPTO does not remove the disclaimed matter from the
purview of determination of likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Natl Data Corp., 753 F.2d 1056, 224 USPQ
749, 750-51 (Fed. Cir. 1985) (rejecting the tactical strategy of disclaimer filing in
determination of likelihood of confusion).
7 See the dictionary definition of to go in the September 11, 2015 Office Action at TSDR 75,
COLLINS DICTIONARIES, ,
and online ads referring to to go menu categories such as food-to-go and Grab & go.
September 11, 2015 Office Action at TSDR 62-64 (), and TSDR 68-71 (<http://www.timessupermarkets.com/taste-of-
8The wording to go in Applicants mark is distinguished from the chef select wording in
the mark by being presented in a green color and in a smaller sized font than chef select
which appears in a grey color. The colors gray and green are claimed as features of the mark.
Applicant argues that the word element of its word-and-design mark could just as easily be
Serial No. 79171734
go is additional wording that is commonly used to refer to prepared food products
that can be taken out of a restaurant or food retailer to be consumed elsewhere.
Moreover, in view of the descriptiveness of to go in Applicants mark, it would be
likely that Registrants customers when seeing Applicants mark used in connection
with sushi would believe that Registrant is offering its sushi to go. Therefore, in
light of the descriptiveness of to go it does little, if anything, to differentiate
Applicants mark from Registrants mark especially where both marks are for the
identical food product.
Applicants mark incorporates Registrants mark in its entirety adding the
descriptive terminology to go. Likelihood of confusion has frequently been found
where the entirety of one mark, such as the cited mark, is incorporated within
another, i.e., Applicants mark. See In re Integrated Embedded, 120 USPQ2d 1504,
1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re El
Torito Restaurants, Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO COMBO likely to
cause confusion with registered MACHO mark); In re Denisi, 225 USPQ 624, 626
(TTAB 1985) (PERRYS PIZZA for restaurant services specializing in pizza and
PERRYS for restaurant and bar services); In re Christian Dior, S.A., 225 USPQ 533,
535 (TTAB 1985) (addition of house mark in LE CACHET De DIOR does not avoid
likelihood of confusion with registered CACHET mark). The fact that consumers are
perceived as chef to go select as chef select to go, further distinguishing its applied-for
mark from the cited mark. However, the color scheme, size and styling of the font used for
the to go portion of Applicants mark distinguishes and differentiates it from the chef
select portion of the mark.
Serial No. 79171734
generally more inclined to focus on the first words in any trademark, further supports
the similarity of Applicants and Registrants marks. See In re Detroit Athletic Co.,
903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018); Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1692 (Fed. Cir. 2005).
Applicant argues that its applied-for mark is a stylized design mark which further
distinguishes it from the cited mark given the highly suggestive nature of the shared
term chef select, and the stylized to go.9 The design element deserves less weight
in our analysis because customers will use the wording of Applicants mark, CHEF
SELECT TO GO, in describing and requesting the goods. In re Viterra, 101 USPQ2d
at 1908 (In the case of a composite mark containing both words and a design, the
verbal portion of the mark is the one most likely to indicate the origin of the goods to
which it is affixed (internal quotation marks omitted)); In re Dakins Miniatures,
Inc., 59 USPQ2d 1593, 1596 (TTAB 1999) (In the case of marks which consist of
words and a design, the words are normally accorded greater weight because they
would be used by purchasers to request the goods.). Thus, the verbal portion of
Applicants mark is the dominant portion of the mark. In re Viterra, 101 USPQ2d at
1911 (the verbal portion of a word and design mark likely will be the dominant
portion); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987)
(holding that if one of the marks comprises both a word and a design, then the word
9Applicants Appeal Brief pp. 14-15 (12 TTABVUE 15-16). References to the briefs refer to
the Boards TTABVUE docket system.
Serial No. 79171734
is normally accorded greater weight because it would be used by purchasers to
request the goods or services).
Applicant also argues that its mark:
includes a white arrow in the middle of the letter o in go, resembling a stylized
version of a play button, itself a well-known cultural symbol connoting music,
particularly digital music, thereby adding an additional connotation to its mark that
is completely absent from the cited mark.10 However, the white arrow in the middle
of the o is of a relatively small size in comparison to the rest of the mark and
therefore may not be noticed. Moreover, to the extent that the arrow is noted, and is
associated with a play button, it would have no recognizable connotation with respect
Applicants goods. Thus, this design does not impact the overall commercial
impression of the mark.
The first part of Applicants mark is identical to Registrants standard character
mark which may be displayed in any manner including in lower case gray font with
the word chef above the word select as shown in Applicants mark. This is because
the rights associated with a standard character mark reside in the wording per se
and not in any particular font style, size, or color. Citigroup Inc. v. Capital City Bank
10Applicants Appeal Brief p. 15 (12 TTABVUE 16); Request for Reconsideration at TSDR 9,
17-18. Applicants application describes the wording to go as having a white arrow in the
middle of the O.
Serial No. 79171734
Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (registrant
entitled to depictions of the standard character mark regardless of font style, size,
or color); see also In re Viterra, 101 USPQ2d at 1909; In re RSI Systems LLC, 88
USPQ2d 1445, 1448 (TTAB 2008). Thus, Applicants mark is identical in part to
Registrants mark. While there is no explicit rule that we find marks to be similar
where Applicants mark contains in part the whole of the mark in the cited
registration, the fact that the cited registered mark is incorporated in full in
Applicants mark increases the similarity between the two because the additional to
go language in Applicants mark is a merely descriptive term that is a commonly
used term in the food and restaurant industries. See, e.g., In re Mr. Recipe, LLC, 118
USPQ2d 1084, 1090 (TTAB 2016); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266,
1271 (TTAB 2009).
When comparing the marks the test is not whether they can be distinguished in a
side-by-side comparison but rather whether they are sufficiently similar in terms of
their overall commercial impression that confusion as to the source of the goods
offered under the respective marks is likely to result. Midwestern Pet Foods, Inc. v.
Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir.
2012); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting
Coach Servs. v. Triumph Learning, 101 USPQ2d at 1721). Based upon the foregoing,
Applicants and Registrants marks when considered in their entireties have a very
similar commercial impression.
– 10 –
Serial No. 79171734
C. Number and Nature of Similar Marks in Use on Similar Goods
Under the sixth du Pont factor, the Board must consider evidence of [t]he number
and nature of similar marks in use on similar goods. du Pont, 177 USPQ at 567.
Applicant argues that the wording chef select found in both marks is highly
suggestive and frequently used by numerous parties and therefore very weak as a
trademark and thus, is only entitled to a very limited scope of protection.11 In support,
Applicant submits evidence of third-party use and registrations for marks containing
the wording chef select or variations thereof.
[E]vidence of third-party use of similar marks on similar goods can show that
customers have been educated to distinguish between different marks on the basis of
minute distinctions. Jack Wolfskin v. New Millennium Sports, 116 USPQ2d at 1136
(quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,
1674 (Fed. Cir. 2015)). The weaker [a registrants] mark, the closer an applicants
mark can come without causing a likelihood of confusion and thereby invading what
amounts to its comparatively narrower range of protection. Juice Generation, 115
USPQ2d at 1674. Thus, evidence of widespread third-party use of similar marks with
similar goods is relevant to show that a mark is relatively weak and entitled only a
narrow scope of protection in that particular industry or field. Palm Bay Imps. v.
Veuve Clicquot, 73 USPQ2d at 1693; see also In re Coors Brewing Co., 343 F.3d 1340,
68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003).
11 Applicants Appeal Brief p. 12 (12 TTABVUE 13).
– 11 –
Serial No. 79171734
Applicant introduces thirty third-party uses on the Internet by restaurants using
chef select in connection with menu items featuring sushi, and related food items12
concluding that [t]hese third party uses, appearing in both product designations and
product descriptions, indicate widespread usage and understanding of Chef Select
as indicating that the contents of these sushi products of numerous parties have been
carefully or preferentially selected by the preparer.13
Looking more closely at those third-party uses, they show use of the terms Chefs
select, chefs select, Chef Select and chef select in connection with sushi, nigiri14,
fish platters, sushi rolls, veggie rolls, and sashimi, in product designation and product
descriptions; rice and soy sauce, as well as use of chefs select the freshest fishes of
12See April 14, 2017 Response to Letter of Suspension, Exhibit 1 (TSDR 44), January 8, 2018
Request for Reconsideration, Exhibit 2 (TSDR 21-48, 66), and April 2, 2018 Request for
Suspension, Remand and Reconsideration, Exhibits 1 and 2 (7 TTABVUE 11-55), showing
various uses of the terms Chefs select, chefs select, Chef Select and chef select in
connection with sushi dishes offered by restaurants.
Applicant also submitted evidence showing use of chef select, chefs select, and chefs
selection, in connection with other food products. See April 14, 2017 Response to Letter of
Suspension, Exhibit 1 (TSDR 40, 45-88) for example in connection with cinnamon sticks;
catfish and loins; Buffalo style chicken dip and chili pepper con queso; oil; lemons; mesclun;
gourmet food store; meal plans; wedding buffet meal packages; restaurant menu items;
desserts, and January 8, 2018 Request for Reconsideration, Exhibit 3 (TSDR 49-66) showing
uses in connection with flavor blends; baby back pork ribs, pork tenderloin medallions and
black angus eye round of beef menu items; Indian and Chinese cuisine menu items with
seasonings; crab mac n cheese with spices and vegetables, and tenderloin with seasonings
offered by a catering company.
13Applicants Appeal Brief pp. 7-11 (12 TTABVUE 8-12) citing to April 14, 2017 Response to
Letter of Suspension, Exhibit 2 (TSDR 50-51, 61-62); January 8, 2018 Request for
Reconsideration, Exhibit 2 (TSDR 21-48); and April 2, 2018 Request for Suspension, Remand
and Reconsideration, Exhibits 1 and 2 (7 TTABVUE 11-55).
14Nigiri is [a] type of sushi that consists of a lump of cooked, vinegar-seasoned rice rounded
and pressed by hand into a loaflike shape and then topped with a thin slice of usually raw
seafood, sometimes seasoned with wasabi and bound together by a strip of seaweed.
AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, Fifth Edition published
on The Free Dictionary by Farlex, Inc. at https://www.thefreedictionary.com/nigiri.
– 12 –
Serial No. 79171734
the day! and All of fish are chefs select. None of the restaurant advertisements or
menus show chef select used as a trademark, i.e., identifying and distinguishing the
menu items. Applicant contends that they show the chef select formatives used to
indicate that the contents of the sushi-related products of the various restaurants
have been carefully or preferentially selected by the preparer. Such uses of the
various chef select terms by the restaurants are in the nature of advertising puffery,
suggesting a desirable characteristic or quality of the menu items. See In re Ralston
Purina Co., 191 USPQ 237, 238 (TTAB 1976) (SUPER in RALSTON SUPER
SLUSH (slush disclaimed) held suggestive of a concentrate used to make a slush
type soft drink because word is used as mere previous puffery to connote a vague
desirable characteristic or quality). Therefore, based on the evidence of record, chef
select is highly suggestive of Applicants and Registrants sushi products.
Applicant also presents third-party registrations for marks it contends are similar
to Registrants mark in support of its argument that Registrants mark is weak,
diluted or so widely used that it is not entitled to a broad scope of protection.15 There
15See March 15, 2016 Response to Office Action and April 14, 2017 Response to Suspension
Inquiry submitting copies of: Reg. No. 4282252 for CHEF SELECT (select disclaimed) for
beef in Class 29; Reg. No. 3769435 for CHEFS SELECT (select disclaimed) for egg
products in Class 29; Reg. No. 4156570 for CHEFS SELECT (select disclaimed) for spices
and seasonings in Class 30; and Reg. No. 2196641 for CHEFS SELECTION (selection
disclaimed) for rice in Class 30 together with a copy of on-line evidence showing use of the
Several of the other registrations Applicant cites namely, Reg. No. 4542285 for J.T.M.
CHEFS SELECTIONS (selections disclaimed) for cheese sauce with meat and cheese
sauce with peppers; Reg. No. 5050375 for OLIVARI CHEFS SELECTION (chefs selection
disclaimed) for edible oils for use in the commercial food service industry; Reg. No. 4464017
for BUTTERBALL EVERY DAY CHEF SELECTS (selects disclaimed) for various food
products including meats and poultry products, along with a copy of on-line evidence showing
use of the mark; Reg. No. 4597905 for PREGEL 5-STAR CHEF PASTRY SELECT (chef
– 13 –
Serial No. 79171734
are four registered marks, CHEF SELECT, CHEFS SELECT, CHEFS SELECT and
CHEFS SELECTION, for food products or ingredients of products that could be
served with sushi and are thus arguably related to sushi.16 These four registrations,
only one of which is for an identical mark to Registrants mark, are consistent with
pastry select disclaimed) for flavorings, powders, fillings and pastes for use in making
pastries, along with a copy of on-line evidence showing use of the mark; are for less similar
food products and more importantly, are for marks which are very different from Applicants
mark beginning with a distinct first word followed by a variation of chef select, i.e., CHEFS
SELECTIONS, CHEFS SELECTION, CHEF SELECTS and CHEF PASTRY SELECT.
Lastly, Reg. Nos. 5139376 for QUORN CHEFS SELECTION for numerous food products in
Classes 29 and 30 including meat substitutes, egg substitutes, seasoning mixes for sauces,
and cooking sauces; 4766292 for CHEF SELECT for food products in Classes 29 and 30
including sausage, poultry, game, processed vegetables, ready-to-serve and frozen meals,
pasts, rice and ready-to-serve meals consisting primarily of rice or pasta [we note that
Applicant is the owner of this Registration]; and 4228429 for LA SELECTION DU CHEF and
Design for grain seeds, natural plants and flowers; live plants; seedlings in Class 31, are
based on requests for extension of protection of international registrations granted under the
Madrid Protocol under § 66(a) of the Trademark Act, 15 U.S.C. § 1141f, (additionally, for Reg.
No. 4228429, a § 71 affidavit was due to be filed by October 23, 2018, or within a 6 month
grace period ending on April 23, 2019. To date, a § 71 affidavit has not been filed). We consider
only those marks which are registered and based on actual use. Marks that have been
registered under the provisions of the Madrid Protocol for which no maintenance documents
evincing use have been filed possess very little, if any, probative value because they do not
require use in commerce to be registered and therefore are not evidence that the marks
therein have ever been encountered by consumers in the marketplace, so as to expose
consumers to a number of Chef Select formative terms as marks. See In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), affd, 864 F.2d 149 (Fed. Cir. 1988); In
re 1st USA Realty Profls, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Applicants March 15, 2016 Response to Office Action (Exhibit 3, TSDR 30) and April 14,
2017 Response to Suspension Inquiry (Exhibit 2, TSDR 18-19, 29, 36), also included evidence
of Registrants cited Reg. No. 3873838 for CHEF SELECT (select disclaimed) for sushi in
Class 30; and Reg. No. 3905492 for CHEF SELECTS (selects disclaimed) for services
including the preparation and serving of food in Class 43 which was cancelled on August 18,
2017 and therefore, was not considered.
16As listed in greater detail above, Reg. No. 4282252 for CHEF SELECT for beef; Reg. No.
3769435 for CHEFS SELECT for egg products; Reg. No. 4156570 for CHEFS SELECT for
spices and seasonings and Reg. No. 2196641 for CHEFS SELECTION for rice.
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Serial No. 79171734
the third-party evidence of use showing that CHEF SELECT is weak or diluted for
sushi and related goods.
Applicant argues that when the evidence shows that a given mark is very weak
with respect to a particular type of product, that mark has a limited scope of
protection with respect to marks that add significant other matter to the weak term
for use in connection with the identical type of product.17 In support, Applicant cites
five cases which found no likelihood of confusion where in addition to the two marks
having a common element that was proven weak through relevant third-party usage,
one of the two marks contained matter that was completely absent from and
unlike anything in the other mark, rendering the two marks not confusingly
similar, notwithstanding that the goods or services were identical and the
additional matter in one of the marks was itself a suggestive or descriptive
term and/or a design element.18 (emphasis original). However, Applicants mark,
unlike the marks involved in Applicants cited cases, begins with Registrants exact
17Applicants Appeal Brief p. 13 (12 TTABVUE 14). Where, as in the present case, the
evidence shows that a given term is highly suggestive and frequently used by numerous
parties with respect to a given type of product, and therefore very weak as a trademark for
such goods, the mark is only entitled to a very limited scope of protection. Applicants Appeal
Brief p. 12 (12 TTABVUE 13).
18 April 2, 2018 Request for Suspension and Remand to Examining Attorney pp. 5-6 (7
TTABVUE 6-7) and Applicants Appeal Brief p. 13 (12 TTABVUE 14) citing: Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015)
(PEACE & LOVE for restaurant services and PEACE LOVE AND JUICE and Design for
juice bar services), Coach/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458
(TTAB 2014) (PERKS and PERKSPOT both for discount buying services), In re Hartz Hotel
Servs., Inc., 102 USPQ2d 1150 (TTAB 2012) (GRAND HOTEL and GRAND HOTELS NYC,
both for hotel services), In re Hamilton Bank, 222 USPQ 174 (TTAB 1984) (KEY (stylized)
and KEYCHECK, both for banking services), Plus Products v. Natural Organics, Inc., 204
USPQ 773 (TTAB 1979) (PLUS and NATURES PLUS both for vitamins).
– 15 –
Serial No. 79171734
mark in its entirety followed by additional descriptive wording that does not
distinguish its mark from Registrants mark, especially when it is used on identical
We are mindful that extensive evidence of third-party use and registrations is
powerful on its face, even where the specific extent and impact of the usage has not
been established. Jack Wolfskin v. New Millennium Sports, 116 USPQ2d at 1136
(citing Juice Generation, Inc. v. GS Enters. LLC, 115 USPQ2d at 1674-5). The third-
party evidence of use and registrations introduced by Applicant shows that Chef
Select has a highly suggestive meaning and therefore, the cited Registration is not
entitled to a broad scope of protection. However, the scope of protection afforded to
the cited mark, although weak, is sufficient to find Applicants mark used on identical
goods likely to be confused with the cited mark. Even weak marks are entitled to
protection under § 2(d) against registration of Applicants mark which is identical in-
part to Registrants mark and used on identical goods. See King Candy Co. v. Eunice
Kings Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974); In re Max
Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010); In re Colonial Stores, Inc.,
216 USPQ 793, 795 (TTAB 1982).
Having considered all of the evidence and arguments pertaining to the du Pont
likelihood of confusion factors, including those portions we have not specifically cited,
we find that Applicants mark is likely to cause confusion with the cited mark.
Applicants goods are identical to the goods in the cited Registration, and in view of
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Serial No. 79171734
the absence of any restrictions, are presumed to travel in the same trade channels as
Registrants goods. Although there are slight differences between Applicants applied-
for mark and Registrants mark CHEF SELECT, the marks when
considered in their entireties are highly similar in appearance, sound and meaning,
creating a very similar overall commercial impression. Even considering the narrow
scope of protection to which the term chef select is entitled, the additional words in
Applicants mark, i.e., to go, are descriptive, and do not add a different connotation
to Applicants mark sufficient to distinguish it from the registered mark.
Decision: The refusal to register Applicants mark under § 2(d) of the
Trademark Act is affirmed.
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