A divided Board panel reversed a Section 2(d) refusal to register the mark THE RAIL & Design (shown below) for "restaurant and bar services," finding the mark not likely to cause confusion with the registered mark RAILS STEAKHOUSE for "bar and cocktail lounge services, restaurant" [STEAKHOUSE disclaimed]. In re Mariola Burgers, LLC, Serial No. 85131831 (September 6, 2016) [not precedential].
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The marks: The panel majority found applicant's mark to be dominated by the unique upside-down cow design. The only similarity between the marks is one word, but "[f]ocusing on that one small similarity ... to the exclusion of all else, would be a dissection of the marks." Taken in their entireties, the marks look and sound different: the word STEAKHOUSE in the cited mark must be sounded out, even though disclaimed.
While the upside-down cow design might be taken as an irreverent depiction of a dead cow—the stuff of which steaks and other beef dishes are made—it is nonetheless consistent with Applicant’s butcher rail theme and distinguishable from Registrant’s word mark (unlike a right-side-up cow, which would be more on all fours with the Examining Attorney’s theory).
Applicant asserted that it uses RAIL in the sense of "meat rails, which are ceiling mounted trolley systems used to hang sides of beef," and it provided photographs of its restaurant decor featuring such rails. It also pointed out that registrant's use of the term RAILS evokes a railroad connotation, a common theme in restaurants. The Board noted that registrant's use of its standard character mark is not limited by this extrinsic evidence, but the evidence does show that the term RAIL admits of multiple meanings.
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The panel majority concluded that the first du Pont factor favored opposer.
Third-party Marks: Evidence of third-party use and registration of RAIL-formative marks convinced the majority that "the RAIL formative is so commonly registered and used as to be distinguished based on slight differences in marks." In fact, registrant raised that same point during prosecution of the application that yielded its registration. Of course, statements made in ex parte prosecution are not binding admissions, but they do "illuminate the shade and tone of the total picture."
The scope of registrant's mark is "hemmed in" by these third party uses and registrations, and is therefore entitled only to protection against marks that bear a "striking" resemblance to it.
The Services: Applicant feebly contended that the involved services are distinguishable because it runs a "burger joint," whereas registrant runs a "steakhouse." [Steakhouses don't serve burgers? - ed.]. Of course, that contention was irrelevant, since the Board's determination must be made based on the goods identified in the application and cited registration, regardless of actual usage of the mark. The majority concluded, not surprisingly, that the involved services are legally identical.
Conclusion: Balancing the relevant du Pont factors, the panel majority found confusion not likely.
Dissent: In an eight-page dissenting opinion, Judge Seehermann opined that the majority did not give enough weight to the fact that the services involved are legally identical. Moreover, the consumers of the services are ordinary consumers who may visit a restaurant or bar on impulse, without exercising a great deal of care.
As to the differences in the marks, Judge Seehermann maintained that restaurant and bar services are frequently recommended by word of mouth, and so applicant's cow design would not be mentioned. Similarity in sound may be enough to find similarity of the marks under the first du Pont factor.
Judge Seehermann furthermore was not so dismissive of the similarity of the impressions created by the marks. STEAKHOUSE and a depiction of an upside-down cow are connected in meaning and therefore similar. Consumers who are familiar with registrant's mark may think that applicant's mark is a variation thereof.
The suggestion that the meanings of THE RAILS and RAILS is different based on a specimen of use for the cited mark and a photograph of applicant's restaurant is not appropriate. The protection to be accorded to the registered mark should not be limited by extrinsic evidence.
Moreover, Judge Seehermann railed against the idea that consumers would recognize the "rails" in applicant's restaurant as meat rails. "[I]t is sides of beef that are hung on meat hooks that are suspended from rails, rather than entire cows that are hung upside down on rails."
In any case, what the consumer thinks after entering the restaurant is irrelevant here. The question is whether a consumer, familiar with the registered mark, would be likely to believe, upon encountering applicant's mark, that applicant's restaurant is associated with registrant's restaurant.
Judge Seehermann also disagreed with the majority as to the impact of the six third-party registrations, noting that one has been cancelled, two are owned by the same entity, and in four the term RAIL makes reference to a railroad or a place located on a railroad (RAILROAD PASS, RAIL CITY, RAIL CITY ALE HOUSE, and RAILHEAD SMOKEHOUSE BBQ). Only one (OLD RAIL BREWING COMPANY) has an ambiguous meaning for RAIL.
As to the evidence of third-party use, eight of the thirteen listed marks are for the term BRASS RAIL, signifying a bar rail. The remaining five are not enough to conclude that consumers will be so accustomed to such usage that they will distinguish the two marks at issue.
In sum, Judge Seehermann would find that the limited third-party evidence does not outweigh the identity of the services, the lack of purchaser care, and the fact that restaurant recommendations are often given by word of mouth.