United States: TTAB Finds "CREPES BONAPARTE" For Food Trucks Confusable With CAFÉ BONAPARTE & Design For Restaurants

Last Updated: December 8 2017
Article by John L. Welch

The Board affirmed this Section 2(d) refusal to register CREPES BONAPARTE for "food truck services; mobile catering services" [CREPES disclaimed], finding it likely to cause confusion with the registered mark CAFÉ BONAPARTE & Design for "restaurant services" [CAFÉ disclaimed]. Applicant creatively argued that because the cited mark is primarily merely a surname, it is entitled to a limited scope of protection. The Board agreed to some extent, but not enough to overcome the refusal. In re Brats Berlin, Inc., Serial No. 87055289 (December 1, 2017) [not precedential] (Opinion by Judge Peter W. Cataldo].

Applicant provided a printout of surnames from the 2016 census showing more that more than 2,000 individuals have the surname BONAPARTE. The Board agreed that BONAPARTE has surname significance, but noted that such a term may not be primarily merely a surname if the term also identifies an historical person or place: for example, DA VINCI, SOUSA, ESCHER, but not BELUSHI. The Board took judicial notice that the famed general and emperor of France, Napoleon I, was named Napoleon Bonaparte. "Thus, the term BONAPARTE denotes both a surname and famous historical figure, and while not primarily merely a surname, is conceptually a slightly weaker source indicator than a fanciful term."

Applicant also provided evidence of three third-party uses of marks comprising the term BONAPARTE but they were not similar to the marks involved here, and in any case a mere three uses is not enough to have probative value.

The Board concluded that the totality of the evidence failed to show that the term BONAPARTE is  significantly weakened or diluted. The Board did agree that BONAPARTE may be afforded a "slightly narrower scope of protection than that afforded a fanciful term," but the scope was not so narrow as to allow registration of applicant's mark.

As to the marks, applicant contended that because of certain naming conventions in the food and restaurant industries, each of the two marks at issue are likely to be considered as a unitary whole, rather than consumers focusing on individual terms. The Board agreed that the marks must be viewed in their entireties. However, there is nothing improper in stating, for rational reasons, that more or less weight should be given as to a particular feature of a mark. Here, both marks include the word BONAPARTE as the most prominent feature. Nothing in the record suggested that BONAPARTE would have a different meaning in one mark than the other.

The Board concluded that the marks are "similar in appearance and sound, and similar in connotation, respectively suggesting French cuisine feature crepes of a French-themed cafe." Considered as a whole, the marks are more similar than dissimilar.

Applicant pointed out that the involved services are not identical, but the evidence submitted by Examining Attorney Samuel R. Paquin showed that food truck and mobile catering services may emanate from the same source as restaurant services, and under the same mark.

Finally, Applicant argued that out of more than 50,000 federal registrations for restaurants, only 36 also identified "food truck" services, and as a result "the relationship between food trucks and restaurants is not so obvious that consumer would believe that food truck services and restaurant services originate from the same source without something more." The Board was unmoved. "[T]he overall number of extant registrations does not compel or even suggest that the relatedness between food trucks and mobile catering services and restaurants is somehow obscure or remote." As the Board noted with respect to goods, "[t]here is no requirement for goods to be found related that all or even a majority of the sources of one product must also be the sources of the other product."

And so the Board affirmed a refusal to register.

TTABlog comment: I think the differences in the marks coupled with the difference in the services makes confusion unlikely. I would not think that a food truck called CREPES NAPOLEON had anything to do with a CAFE NAPOLEON restaurant. If Cafe NAPOLEON had a food truck, why wouldn't it call the truck CAFE NAPOLEON? BTW: The third-party registrations show that an entity named XYZ uses the same mark for a food truck, not that it would use some variation thereof.

The TTABlog

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