Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE MUCKY DUCK MUSTARD CO., INC.
Serial No. 603,019
March 18, 1988
Krass & Young for Mucky Duck Mustard Co., Inc.
Robert J. Katz
Trademark Examining Attorney
Law Office 2
(John C. Demos, Managing Attorney)
Before Sams, Rice and Simms
Opinion by Rice
An application has been filed by Mucky Duck Mustard Co., Inc. to register the mark "MUCKY DUCK" and design, as shown below,
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for mustard, use since at least as early as May 26, 1983 being asserted. [FN1]
Registration has been refused under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. 1052(d), on the ground that applicant's mark, as applied to its goods, so resembles the mark "THE MUCKY DUCK" ("DUCK" disclaimed) and design, as shown below,
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registered to another for restaurant services, [FN2] as to be likely to cause confusion, mistake, or deception. In support of the refusal to register, the Examining Attorney has made of record copies of third-party applications and registrations showing that a number of third parties have registered or sought to register their marks for both food products, including mustard, and for certain services, including restaurant services, or have registered their marks for both restaurant services and certain food products, not including mustard, as specified below. [FN3]
Turning first to the marks, we are of the opinion that they create essentially similar commercial impressions, and that what purchasers are likely to remember about each mark is that it includes the words "MUCKY DUCK" and a design of a duck which serves to illustrate those words. While there are, to be sure, specific differences in the two designs, it is well established that the test to be applied in determining likelihood of confusion is not whether the marks are distinguishable upon side-by-side comparison but rather whether they so resemble one another as to be likely to cause confusion, and this necessarily requires us to consider both the fallibility of memory over a period of time, and also the fact that the average purchaser retains a general rather than a specific impression of the many trademarks he encounters. See: Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975), and cases cited therein. Considering the substantial similarities between the marks in this case, it seems to us that a purchaser who sees one mark and later encounters the other is likely to think, if the two marks are applied to the same or related goods and/or services, that the second mark is the same mark he had seen earlier, or, if he realizes that there are some differences in the marks, that the second is simply a slightly varied version of the first, with both serving to indicate origin in the same source. Cf. Dog House, Inc. v. Dawg House, Inc., 138 USPQ 466 (TTAB 1963).
Applicant argues, however, that the term "Mucky Duck" is a common British slang expression for the popular and abundant White Swan pubs and taverns in England; [FN4] that the strength of registrant's mark is weakened by this familiarized usage of the expression, so that the mark is not entitled to as great a scope of protection as the Examining Attorney argues; and that applicant's mustard is a pub-style mustard (and is so identified on applicant's label).
*2 We do not find this argument persuasive. Assuming, arguendo, that "Mucky Duck" is a common British slang expression for the White Swan pubs and taverns in England (we note that applicant has not submitted any evidence that this is, in fact, the case), there is no evidence whatsoever in the record, nor does applicant even assert, that this meaning of the term is commonly known in the United States. It is, of course, the significance of the term to purchasers in the United States which we must consider herein. Moreover, the Examining Attorney has indicated that he has been unable to find, in the records of the Patent and Trademark Office, any registration, other than the cited registration, for a mark containing the expression "Mucky Duck". Applicant does not argue that there are, in fact, other registrations of marks containing the expression, nor has it offered any evidence of third-party use of marks containing the expression. On the record before us, then, we fully agree with the Examining Attorney's contention that registrant's mark is a very unique, strong mark.
Turning then to the goods and services involved in this case, applicant's goods are identified as "mustard" while registrant's services are identified as "restaurant services." Although these goods and services obviously differ, mustard is, as the Examining Attorney has noted, a condiment which is commonly utilized in restaurants by their patrons, especially in such restaurants as delicatessens, fast food houses, steak houses, taverns, inns, and the like, and we think it is common knowledge that restaurants sometimes market their house specialties, including items such as salad dressings, through retail outlets. Moreover, it is well settled that goods and/or services need not be identical or even competitive in order to support a finding that confusion is likely to result from the use of similar marks thereon, it being sufficient for the purpose that the goods and/or services are related in some manner and/or that the circumstances surrounding their marketing are such that they would likely be encountered by the same persons under circumstances that could give rise to the mistaken belief that they emanate from or are in some way associated with the same source. See: Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590 (TTAB 1978), and cases cited therein. Further, it has been held that likelihood of confusion may inhere from the use by different parties of the same or similar marks in connection with goods, on the one hand, and services which deal with or are related to those goods, on the other. See: MSI Data Corp. v. Microprocessor Systems, Inc., 220 USPQ 655 (TTAB 1983); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983), and cases cited therein. Thus, likelihood of confusion has been found in a number of cases involving use of the same or similar marks for food services, such as restaurant services, on the one hand, and food products, on the other. See, for example: In re Best Western Family Steak House, Inc., 222 USPQ 827 (TTAB 1984); In re Pick-N-Pay Supermarkets, Inc., 185 USPQ 172 (TTAB 1974); In re Three Chefs Corp., 175 USPQ 177 (TTAB 1972); and Dog House, Inc. v. Dawg House, Inc., supra.
*3 In the present case, because of the substantial similarity in the marks and the unique and memorable nature of registrant's mark, [FN5] we are of the opinion that customers of registrant's restaurant who encounter applicant's "MUCKY DUCK" and design mustard in the grocery store or supermarket are likely to believe that the mustard originates with or is in some way associated with registrant, that is, that the restaurant is selling its own "special" mustard through retail outlets. Applicant's argument that its mustard is a "pub style" mustard is of no benefit to it in this regard since, in the absence of any restriction in registrant's identification of services, registrant's restaurants could well be "pub style" restaurants, a factor which would enhance the likelihood of confusion.
For the foregoing reasons, we conclude that there is, in this case, a likelihood of confusion. [FN6]
Decision: The refusal to register is affirmed.
J. D. Sams
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Serial No. 603,019, filed June 9, 1986. It is stated in the application that the stippling in the duck is for shading purposes only.
FN2. Registration No. 1,237,811, issued May 10, 1983.
FN3. The marks registered or sought to be registered for both restaurant services and mustard, inter alia, include the mark "KIRN" (for restaurant and catering services and for cooked dishes, bakery goods, meat, mustard, condiments, pepper, vinegar, sauces, spices, etc.); the mark "ARABESQUE" (for restaurant services, cafeterias, fast-food restaurants, and pizzerias and for meat, fish, poultry, ice milk, salad dressings, salt, pepper, mustard, vinegar, etc.); the mark "TARTE JULIE" and design ("TARTE" disclaimed) (for hotel, motel, restaurant, cafeteria, bar and club services and for fruit drinks, soft drinks, coffee, bread, cakes, fruit ices, honey, mustard, pepper, vinegar, etc.); the mark "LOVE-CREAM" (for bar services, cafeteria services, restaurant services, and kiosk ice cream stand services and for ice cream cones, waffles, pastries, yeast, baking powder, salt, mustard, vinegar, etc.); the mark "SPENDRUPS" (for hotel, restaurant and bar services and for yeast, baking powder, salt, mustard, pepper, vinegar, etc.); the mark "ANDRE DAGUIN" (for restaurant services and for salad dressings, yeast baking powder, salt, mustard, vinegar, spices, etc.); the mark "THE DAILY PLANET" (for restaurant services and for condiments, namely, chutneys, ketchups, relishes, mustard, spices and herbs, etc.); the mark "SAKS FIFTH AVENUE" (for restaurant services and for topping syrups, mustard, spices, etc.); the mark "PIZZACOTHEQUE DALLA'S" and design (for hotel and restaurant services, food and pizza carryout services and for yeast, baking powder, salt, mustard, pepper, vinegar, etc.); a design mark (for restaurant services and for mustard, catsup, steak sauce, horseradish, salt, pepper, vinegar, salad dressings, etc.); the mark "TROISGROS" (for cafe, bar restaurant and hotel services and for yeast, baking powder, salt, mustard, pepper, vinegar, etc.); the mark "DALLOYAU A PARIS DEPUIS 1802" ("A PARIS DEPUIS 1802" disclaimed) and design (for restaurant and catering services and for yeast, baking powder, salt, mustard, pepper, vinegar, etc.); the mark "ROGER VERGE RESTAURANT DU MOULIN DE MOUGINS FRANCE" ("RESTAURANT DU" and "FRANCE" disclaimed) and design (for hotel, motel, restaurant and bar services and for yeast, baking powder, salt, mustard, pepper, vinegar, etc.); the mark "KNOTT'S BERRY FARM" (for restaurant services, gift store services, mail order gift store services, bakery services, grocery store food sales services, and mail order food sales services and for mustard, tartar sauce, cocktail sauce, salad dressings, etc.), and the mark "A" & "W" and design (for restaurant services and for instant coffee creamer powder, salt, sugar, mustard, catsup, etc.). It should be noted that all but four of these were filed pursuant to the provisions of Section 44 of the Act, 15 U.S.C. 1126.
The marks registered by their owners for both restaurant services and various food products (not including mustard) are "DUTCH PANTRY" (for restaurant services and for bacon salad dressing, potato salad, macaroni salad, etc.); a number of marks featuring the term "ARTHUR TREACHER'S" (for restaurant services and for prepared fish, shrimp, and chicken; seafood chowder; cole slaw; malt vinegar; coffee; etc.); a number of marks featuring the term "BOB EVANS" (for restaurant services and for salad dressing, pork sausage and smoked pork sausage); a number of marks featuring the term "MR. STEAK" ("STEAK" disclaimed) (for restaurant services and for whole milk, frozen meats, prepared vegetable salads, coffee, tea, cakes, etc.); a number of marks featuring the term "ROY ROGERS" (for restaurant services and for roast beef sandwiches, french fried potatoes, barbecue sauce, horseradish sauce, milk shakes, etc.); and the mark "HOWARD JOHNSON'S" (for restaurant and ice cream stand services and for ice cream, frozen prepared foods, cole slaw dressing, cocktail sauce, barbecue sauce, spaghetti sauce, etc.)
FN4. The record includes a copy of the file of a prior application filed by applicant to register the same mark as that involved herein (except that the word "MUSTARD" was included beneath the words "MUCKY DUCK") for mustard, namely, application Serial No. 452,992 filed November 16, 1983. That application was refused under Section 2(d) in view of the registration cited herein, and was eventually abandoned by applicant. In that application, applicant stated that affixed to the back of the container for its goods is a legend (no copy or photocopy of the back label or panel was submitted in either application) which reads:
Visitors to England soon discover that the countryside abounds with pubs and taverns bearing the name "White Swan." With typical British humour, "Mucky Duck" soon became the accepted slang expression for these popular hostelries.
FN5. The particularly unique and strong nature of this mark distinguishes this case from the case of Steve's Ice Cream v. Steve's Famous Hot Dogs, 3 USPQ2d 1477 (TTAB 1987), a case heavily relied on by applicant. Moreover, the marks in that case (where one mark had a design which conveyed a meaning different from that conveyed by the word portion of the mark, while the other mark had no design) differed more than do the marks herein (where the marks include very similar designs which serve to illustrate, and thus to simply reinforce the meaning of, their similar word portions).
FN6. In arriving at this conclusion, we have given little weight to the majority of the third-party applications and registrations which cover both restaurant services and mustard. Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may nevertheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source. See: In re Great Lakes Canning, Inc., 227 USPQ 483, 484 (TTAB 1985), and In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986). In the instant case, however, 11 of the 15 third-party applications and registrations which cover both restaurant services and mustard were filed under the provisions of Section 44 of the Act, that is, they are based on foreign registration rather than on use in commerce, and most of their owners appear to have simply copied large parts of the title (including, in some cases, even the punctuation used therein) of International Class 30. Such registrations and applications are not even necessarily evidence of a serious intent to use the marks shown therein in the United States on all of the listed goods and services, and they have very little, if any, persuasive value on the point for which they were offered. Moreover, two of the four registrations which were based on use were issued to Saks & Company and to Knott's Berry Farm, owners of a large department store and an amusement or theme center, respectively, where a wide variety of goods and services are sold.