Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE EL TORITO RESTAURANTS, INC.
Serial No. 597,060
December 23, 1988
Charles H. Schwartz for applicant
David M. Soroka
Trademark Examining Attorney
Law Office 6
(Ronald E. Wolfington, Managing Attorney)
Before Krugman, Cissel and Hanak
Members
Opinion by Cissel
This is an appeal from the refusal to register "MACHO COMBOS" on the Principal Register for "multiple combination plates of food items as a part of restaurant services." [FN1] The word "COMBOS" has been disclaimed apart from the mark as a whole. The refusal to register is based on Sections 1, 3, and 45, of the Lanham Act, as well as Section 2(d). The Examining Attorney asserts that the specimens of record do not show the term sought to be registered used as a service mark for the designated services, and further that even if it were used as a mark in connection with the recited services, it is likely to cause confusion with the mark shown below,
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
which is registered for "specially prepared sandwich as a part of restaurant services." [FN2]
As to the issue of use of the term as a service mark, we note that this determination must be made based upon the specimens of record. In this case the specimens are "table tents," which applicant explains are paper advertisements placed on the tables in its restaurant. These advertisements show three plates with what appear to be different combination entrees on them above the words "Macho Means Mucho!" Below these words, in smaller letters, are the words "INTRODUCING OUR FIVE NEW MACHO COMBOS." The Examining Attorney contends that this use of "MACHO COMBOS" shows use of the term only to refer to the food items called "MACHO COMBOS", and not as a service mark for restaurant services.
There is no question but that a term may serve as a service mark was well as a trademark for goods. Amica Mutual Insurance Co. v. R.H. Cosmetics Corp., 204 USPQ 155 (TTAB 1979). The issue before us is not, therefore, whether goods are identified by the words sought to be registered, but rather whether the term is used as a service mark to identify and distinguish the source of applicant's restaurant services even if it does also identify the goods. Based on the specimens submitted with the application we agree with the Examining Attorney that the term "MACHO COMBOS" does not identify the restaurant services of opposer.
While the Examining Attorney cites as support for his position the Board's decision in In re McDonald's Corp., 230 USPQ 210 (TTAB 1986), that decision was reversed by the Court of Appeals for the Federal Circuit in an unpublished decision rendered January 13, 1987. That case and its precedential effect are discussed at length in In re Brown & Portillo, Inc., 5 USPQ2d 1381 (TTAB 1987), which was also cited by the Examining Attorney. The Board's opinion in that case provides a thorough statement of the law in this area and is directly on point with the case at hand. The term "HEARTY BASKET" was sought to be registered for restaurant services. The specimens showed use of the term on menu boards to identify a particular combination of food products sold in the applicant's restaurant. The Board found that, although the term identified these goods, the specimens did not show the term used to identify any services. Noting (at p. 1383) that "... it does not logically follow that any arbitrary designation used in a menu to identify a particular food or beverage available in that restaurant also necessarily performs a service mark function to identify the restaurant services," the Board found no evidence which demonstrated use of the mark as "anything other than a name for an entree available in applicant's restaurants." No use of the mark in advertising the restaurant services to identify and distinguish the restaurant services of the applicant from those of others was shown.
*2 In the instant case there is likewise no evidence that the mark is used in the promotion of applicant's services. In both the Brown & Portillo case and the case at hand there is no evidence, much less an extensive record which was present in In re McDonald's Corp., supra, that the activity of rendering restaurant services has ever been identified by the term sought to be registered. The only evidence of use shows the term used to identify the food items which applicant calls "MACHO COMBOS." This does not constitute use as a service mark.
Even if the mark were also used to identify applicant's restaurant services, confusion would be likely in light of the mark "MACHO," registered for a sandwich served as part of restaurant services. The mark of applicant consists of registrant's entire mark, to which a descriptive (and disclaimed) word has been added. The products identified by the two marks are closely related. Both are food items served by restaurants.
Applicant argues that there are differences between registrant's sandwiches and applicant's combination platters, and that its mark is readily distinguishable from the registered mark.
As to the first argument, the issue is not whether one can tell the difference between the goods. The issue is whether use of similar marks on them would lead prospective purchasers to mistakenly assume that they share a common source. Clearly the two food items offered by these restaurants meet this test, even if one or both marks were also used as service marks which identified menu items served as part of the restaurant services.
As to the argument that the marks are readily distinguishable, we simply disagree. There has been no showing that the word "MACHO" has any descriptive significance or is weak as a trademark in the field of foods or food services. Although applicant refers to third-party registrations as proof of the weakness of the word, applicant has failed to make these registrations of record. Moreover, there is no evidence of actual use of the cited marks in connection with food and food services, so we have no basis upon which to conclude that the consuming public is so familiar with the term as used in connection with such goods and services that other features of marks incorporating the word function to a greater extent than "MACHO" as source indicators.
Applicant's argument that the marks create different commercial impressions because of their different connotations is not supported by the record. Applicant apparently confuses "MACHO" with "MUCHO" when it suggests that its mark would be understood to mean "plenty" or "a great deal." The addition of the descriptive word "COMBO" does not alter the meaning of the word "MACHO", nor does it change the connotation of the mark from that of "MACHO" alone. The same word, "MACHO," used in connection with both applicant's restaurant entree and registrant's restaurant entree, has the same connotation.
The dominant part of both marks is the same word, "MACHO." The marks in their entireties sound alike, look alike, and have the same connotation as applied to the products of applicant and registrant. Because of this similarity of the marks and because the goods and services are virtually the same, confusion is quite likely.
*3 Accordingly, the refusal to register based on likelihood of confusion as well as the refusal on the ground that applicant's mark is not used to identify the service set forth in the application are both affirmed. [FN3]
G. D. Krugman
R. F. Cissel
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Serial No. 597,060, filed May 5, 1986.
FN2. Registration No. 1,095,533, issued to Grimes, Austin & Stark, Inc. on July 4, 1978.
FN3. Responsive to the offer at the conclusion of applicant's appeal brief to amend the application to claim trademark use rather than service mark use, applicant is advised that such an amendment is untimely. There is no provision for such amendments in either the statute or the rules. Moreover, even if a new application were to be filed claiming registrability of the mark for goods, Registration No. 1,095,533 would still present a bar to registration under Section 2(d).