Carl's Jr. Restaurants opposed an application for registration of the mark THE GREEN PEPPER, in standard character form, for restaurant services, alleging a likelihood of confusion with the registered mark GREEN BURRITO, also in standard character form and also for restaurant services [BURRITO disclaimed]. So the services are identical, but what about the marks? How do you think this came out? Carl’s Jr. Restaurants LLC v. AKM Food Svcs. LLC, Opposition No. 91204459 (March 2, 2017) [not precedential].
Because the services are identical, the Board must presume that they are offered through the same channels of trade to the same classes of consumers. Furthermore, when the services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.
Opposer claimed that its mark GREEN BURRITO is famous, but its proofs fell short. Carl's pointed to use of the mark for more than 30 years, and widespread advertising and promotion. However, it did not place its sales under the mark in a context that would establish fame. Nonetheless, the Board found that the mark has achieved "at least some degree of recognition and strength in the restaurant market, and ... is therefore entitled to a broader scope of protection than might be accorded a mark with less recognition." [I think that means that the mark has some strength - ed.].
As to the marks, the Board found that the word GREEN is the dominant feature of both marks.
This is because a burrito is a common menu item in Mexican restaurants, served by Opposer and Applicant. As such, the term BURRITO is, at best, highly suggestive of Opposer's services. In addition, the term GREEN modifies the term that follows and denotes a green pepper, an ingredient in may types of foods including Mexican food.
The significance of the word GREEN in the involved marks is reinforced "by its location as the first portion thereof." [What THE? - ed.].
The Board concluded that the similarities between the marks, particularly in appearance, outweigh the differences, and that the marks convey similar commercial impressions. Consumers viewing applicant' s mark would believe that opposer had "established this mark to denote another restaurant, but nonetheless pointing to the same source as its GREEN BURRITO mark."
Balancing the relevant du Pont factors, the Board found confusion likely and it sustained Carl's Section 2(d) claim. The Board dismissed opposer's dilution claim, however, pointing out that since opposer failed to prove fame for Section 2(d) purposes, it could not satisfy the higher standard for fame in the dilution context.