Trademark Review | July 2015

Applicant’s Application for Concurrent Use Registration of DELMONICO’S is Denied Due to Likelihood of Confusion with Other Restaurants

The Trademark Trial and Appeal Board (TTAB) refused Southwestern Management’s (Applicant) petition for concurrent use registration for the mark DELMONICO’S for restaurant services.

Applicant applied to register the mark DELMONICO’S for its restaurants, which are located in the states of New York and Florida. Ocinomled, Ltd. (OL) and Emeril’s Food of Love Productions, LLC (EFOL) each operate restaurants under the name DELMONICO’S and DELMONICO, respectively, and both companies opposed registration of the mark. In response, Applicant sought to amend its application to seek a concurrent use registration covering the entire U.S. except for the geographic areas in which the Opposers’ restaurants are located.

OL operates a steakhouse in New York under the name DELMONICO’S, in the same location as a prior historic restaurant under the same name. OL does not claim to own the goodwill associated with the prior restaurant, but invokes a cultural connection to the historic Delmonico’s restaurant.

EFOL operates two restaurants under the mark DELMONICO. One is EMERIL’S DELMONICO in New Orleans, and the other is DELMONICO STEAKHOUSE in Las Vegas. These restaurants benefit from the fame and reputation of Emeril Lagasse, the celebrity chef who owns the restaurants.

In its amended application, Applicant listed OL and EFOL as the exceptions to its otherwise exclusive right to use the mark in commerce and claimed the exclusive right to use DELMONICO’S throughout the United States other than within a forty-mile radius around each of the Opposers’ restaurants.

To qualify for concurrent use, the Applicant must show 1) that it is entitled to use the mark, notwithstanding concurrent use by others, and 2) that no likelihood of confusion results from the concurrent use of the mark. The TTAB found that Applicant satisfied the first condition, but determined the Applicant failed to prove that concurrent use of the mark does not result in a likelihood of confusion. The TTAB held that the marks are “essentially identical” and that the goods and services, as well as the channels of trade, are similar. The TTAB also noted the extreme fame of EFOL’s restaurants as a result of the fame of Emeril Lagasse and the “peculiar form of renown” of OL’s restaurant, which exists in spite of its lack of connection to the prior historic restaurant. Furthermore, the TTAB noted instances of actual confusion. Because the likelihood of confusion was high, the TTAB refused concurrent use registration, even if Applicant’s application was further limited to the specific geographic region in which Applicant’s restaurants were located.

Southwestern Management, Inc. v. Ocinomled, Ltd. and Emeril’s Food of Love Productions, LLC, 115 U.S.P.Q.2d 1007, Concurrent Use No. 944002242, (T.T.A.B. June 11, 2015) [precedential].

The Federal Circuit Confirms That Lack of Bona Fide Intent to Use is a Valid Ground of Attack

The United States Court of Appeals for the Federal Circuit affirmed the TTAB’s decision to sustain an opposition to registration of “iWatch” on the grounds that M.Z. Berger & Co., Inc. (Berger) lacked a bona fide intent to use the mark in commerce.

Berger filed an intent-to-use application to register the mark “iWatch” for use in connection with watches, clocks, and goods related to watches. Swatch filed an opposition on several grounds, including that Berger lacked a bona fide intent to use the mark.

Berger’s owner and CEO Bernard Mermelstein testified that Berger never intended for the mark to be used on any goods other than watches. Berger’s paralegal, who filed the application, testified that she was instructed to only register the mark for watches and clocks, but that she added the other related goods because they were part of a “standard” list used to “leave all doors open.” The TTAB found that other evidence proffered by Berger - a trademark search, internal emails, and images that were created for prosecution of the application - was solely related to the application and did not evidence plans to use the mark. Employees provided inconsistent testimony regarding the images, with some testifying the images were actual mockups of a future “iWatch” watch or clock, and Mr. Mermelstein testifying that no such mockups were ever made and that the pictures were intended solely to move the application forward.

Mr. Mermelstein also testified that Berger had “little more than an aspiration to reserve rights in the mark in case it later decided to develop an associated watch.” Furthermore, Berger did not take any steps towards developing technological features in a watch, something they had never offered. The TTAB concluded that, looking at the evidence as a whole, Berger lacked a bona fide intent to use the mark in commerce.

On appeal, the Federal Circuit for the first time held that a lack of a bona fide intent to use a mark is a proper statutory ground on which to challenge an application. The court added that “[a]lthough the evidentiary bar is not high, the circumstances must indicate that the applicant’s intent to use the mark was firm and not merely intent to reserve a right in the mark” and that whether an applicant had a bona fide intent is an objective inquiry based on a totality of the circumstances.

The court agreed with the TTAB that the evidence submitted by Berger related only to prosecution of the application and did not support a finding that Berger had a bona fide intent to use the mark with watches.

M.Z. Berger & Co. v. Swatch AG, Appeal No. 2014-1219 (Fed. Cir. June 4, 2015).