The Trademark Trial and Appeal Board recently denied an ex parte appeal from a refusal to register the trademark ON Q SMOKEHOUSE GRILL and Design based on a likelihood of confusion with a preexisting registration of the mark ON Q CLUB® in the name of On Q Billiards, Inc.
Flo Enterprise LLC (“Applicant”) sought registration of its On Q Smokehouse Grill trademark for restaurant services with the words “smokehouse grill” disclaimed. Registrant is the owner of two ON Q CLUB® registrations (in both word and design format) for “restaurant and cocktail lounge services.” On appeal, the Applicant argued that its On Q Smokehouse Grill mark was distinguishable from Registrant’s On Q Club® marks so as to make confusion unlikely.
Applicant’s Identification of Services Not Sufficiently Limited in Scope
In deciding against registration of Applicant’s Mark, the Trademark Board viewed all relevant factors and probative evidence bearing on a likelihood of confusion pursuant to section 2(d) of the Trademark Act. It went on to state that that in any likelihood of confusion analysis, two key considerations are the similarities between the trademarks and the similarities between the services. In trying to make a distinction between the parties’ services, Applicant argued that its restaurant services are for “barbecued and grilled meats and side dishes,” while Registrant’s trademark is for “an upscale eatery featuring a bar and dancing.” The Board rejected Applicant’s argument, stating that because Applicant failed to limit its channels of trade for its goods in its application, it is presumed that the applied for goods encompass all services of the type described, move it all normal channels of trade for the services, and are available to all classes of consumers (trademark attorneys should take note of this very important distinction when faced with a pre-existing registration for goods or services in the same class as those of an applicant/client).
In comparing the similarities of the parties’ respective trademarks, the Trademark Board took notice of the examining attorney’s evidence that the term “smokehouse grill” is merely descriptive of a type of restaurant. Therefore, the primary element of the parties’ trademarks for comparison purposes was “on Q.” The Board also rejected Applicant’s argument that Registrant was not using its trademarks in commerce and therefore Registrant’s marks should be deemed abandoned. The Board correctly stated that having failed to bring a petition to cancel the Registrant’s trademark registrations, Applicant was barred from making the arguments of trademark abandonment in the ex parte appeal of the refusal to register Applicant’s trademark. Finally, the Board also observed that when it comes to a design element in a mark, the word element will always be the most important factor for determining a likelihood of confusion, since customers often ask for a product by name, in the absence of any visual mark or the impression that it may convey.
Trademark Attorney Notes
This case, while not precedential, cites important distinctions of United States trademark law as it relates to the refusal to register a trademark on Section 2(d) grounds. Trademark attorneys may find the findings contained therein useful when representing clients in future proceedings before the Trademark Board.