Descriptive Additions and Overlapping Channels Fail Section 2(d) TTAB Appeal

Overview

The Trademark Trial and Appeal Board issued a decision affirming the refusal to register the mark TWISTED FORK BRUNCH COMPANY for restaurant services. The case centers on a Trademark Act Section 2(d) refusal based on a likelihood of confusion with the previously registered mark THE TWISTED FORK, which covers restaurant and bar services.

This decision serves as a reminder for practitioners that adding descriptive or generic terms to an existing mark rarely suffices to differentiate the commercial impression in the eyes of the Board.

Background

The Applicant filed an application seeking to register the mark TWISTED FORK BRUNCH COMPANY in standard characters for restaurant services in International Class 43. The words BRUNCH COMPANY were disclaimed.

The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, citing a likelihood of confusion with the registered mark THE TWISTED FORK for restaurant and bar services in Class 43.

Following a final refusal, the Applicant appealed to the Trademark Trial and Appeal Board.

How the Board Analyzed the DuPont Factors

DuPont #2 and #3: Identity of the Services and Channels of Trade

The Board began its analysis by examining the relatedness of the services and the trade channels through which they are offered. Under these factors, the Board must consider the services as identified in the application and cited registration. The Board noted that the Applicant’s identification of "restaurant services" is entirely encompassed by the Registrant’s "restaurant and bar services." Consequently, the services were found to be identical in part.

Because the identifications in both the application and cited registration lacked restrictions or limitations regarding the type of cuisine, price point, or atmosphere, the Board applied the legal presumption that the services would be offered to the same classes of consumers through the same channels of trade. Even in the absence of specific evidence regarding trade channels, the Board is entitled to rely on this legal presumption when the identified services overlap.

Therefore, the second and third DuPont factors weighed strongly in favor of finding a likelihood of confusion.

DuPont #6: Alleged Weakness of the Cited Mark

Under the sixth DuPont factor, the Board evaluated the number and nature of similar marks in use for similar services. The Applicant argued that the cited mark, THE TWISTED FORK, was relatively weak and entitled to only a narrow scope of protection due to widespread third-party use of the term "TWISTED." To support this, the Applicant submitted 20 registrations for marks containing "TWISTED" in Class 43, arguing that consumers are conditioned to distinguish between marks containing this element.

The Board, however, found this evidence unpersuasive. The Board noted that only one third-party registration incorporated the full phrase "TWISTED FORK" (specifically, a registration for TWISTED FORK RANCH for dude ranch services). Fourteen of the submitted registrations used "TWISTED" for restaurant services, while five others covered food or beverage services. The Board emphasized that the record contained no third-party registrations for marks containing "TWISTED FORK" for restaurant or related services.

The Board further explained that the probative value of this evidence was limited because the shared dominant feature between the marks was the combined wording "TWISTED FORK," not simply "TWISTED." The Board also reminded the Applicant that registrations alone do not demonstrate actual marketplace use under the sixth DuPont factor.

Finally, because the cited mark was registered on the Principal Register without a claim of acquired distinctiveness, the Board rejected the argument that it was weak and treated this factor as neutral.

DuPont #1: Similarity of the Marks

The first DuPont factor required the Board to compare the marks in their entireties regarding appearance, sound, connotation, and commercial impression. The Board found that TWISTED FORK BRUNCH COMPANY essentially incorporates the entirety of the cited mark, THE TWISTED FORK. The Board determined that "TWISTED FORK" is the dominant element in both marks because the additional wording in each mark lacks source-identifying significance.

In analyzing the cited mark, the Board found that the definite article "THE" played a subordinate role and did not add trademark significance. Regarding the Applicant’s mark, the Board found that the disclaimed wording "BRUNCH COMPANY" was merely descriptive of the services and therefore received less weight in the analysis.

The Applicant argued that the marks were phonetically different because consumers would pronounce "BRUNCH COMPANY," whereas "THE" appears only in the cited mark. The Board rejected this argument, noting that as the initial and only non-descriptive term, "TWISTED FORK" is the dominant source indicator. The Board also highlighted the "penchant of consumers to shorten marks" and noted that consumers would likely drop the highly descriptive terms when ordering or referring to the services.

Regarding connotation and commercial impression, the Applicant argued that its mark referred to an "unexpected path" of cuisine, while the cited mark referred to a "curved utensil" or an "emotionally unsound" utensil. The Applicant provided definitions of "twisted" as winding, spiral-shaped, or mentally disturbed. The Board disagreed, finding the meanings extremely similar. Both marks suggest a fork that has been distorted or turned. The addition of "BRUNCH COMPANY" did not alter this meaning, but merely emphasized a specific service offering.

The Board concluded the marks were overall very similar, weighing this factor in favor of a likelihood of confusion.

DuPont #4: Consumer Sophistication

The fourth DuPont factor concerns the conditions under which sales are made and the level of care exercised by consumers. The Applicant argued that restaurant consumers are highly sophisticated and exercise a great deal of care because they must consider cuisine, location, price, and online reviews. The Applicant specifically pointed to consumers with dietary restrictions, such as those with Celiac disease, who must carefully research restaurants to avoid allergic reactions.

The Board dismissed these arguments, stating that the determination must be based on the "least sophisticated consumer." While the Board acknowledged that some consumers might rely on reviews or have dietary restrictions, it noted that the relevant consumer for restaurant services is the general public. Because the identifications in the application and registration were unrestricted, the Board was required to assume that the services might involve "serving the same cuisine in an inexpensive environment and catering to consumers who will not exercise a higher degree of care." Consequently, the Board found this factor to be neutral.

Board’s Decision

The Board concluded that because the services, channels of trade, and classes of consumers are identical, and because the marks are overall very similar in appearance, sound, connotation, and commercial impression, confusion is likely.

Accordingly, the Board affirmed the Examining Attorney’s refusal to register the mark TWISTED FORK BRUNCH COMPANY under Section 2(d) of the Trademark Act.

The Board also analyzed and discussed third-party paired registrations. The Applicant submitted 25 pairs of third-party registrations owned by different entities for similar marks in the restaurant field, such as LIBERTY BAR and LIBERTY BURGER. The Applicant argued this demonstrated a USPTO practice of allowing similar marks to coexist.

Practitioners often see this strategy treated quickly and conclusively in TTAB opinions without deep analysis. (Like in In re Prim.)In this case, however, the Board explicitly detailed its reasoning for rejecting the argument:

• First, the Board was not privy to the prosecution histories or potential consent agreements behind those third-party registrations.
• Second, the coexistence of registrations on the register does not prove marketplace coexistence without consumer confusion.
• Third, unlike the third-party examples, the core services in the present case were identical.

Therefore, this evidence failed to persuade the Board that confusion was unlikely.