Double Entendre Prevails Against Likelihood of Confusion Refusal

Overview

This case is yet another example of how the first DuPont factor (the similarity or dissimilarity of the marks) can become the dispositive element in a Section 2(d) analysis, even when the underlying services are identical. The Examining Attorney maintained that the marks were too similar in sound and appearance, particularly given the overlapping services, shared channels of trade and the ordinary degree of care exercised by restaurant patrons. However, the Board ultimately reversed the refusal, finding that the unique commercial impression created by the applied-for mark's double entendre created a sufficient distinction to prevent a likelihood of confusion.

Background

The Applicant, Couscous Maghrebi Grill LLC, filed an application seeking to register the mark COUSABLANCA in standard characters for various restaurants services; including restaurant services featuring North African cuisine in International Class 43.

The Trademark Examining Attorney refused registration under Section 2(d) based on a likelihood of confusion with the registered standard character mark CASABLANCA. This cited mark is registered on the Principal Register for "Hotel and restaurant services" in International Class 43.

After the final refusal and the request for reconsideration were denied, the Applicant appealed to the Trademark Trial and Appeal Board.

How the Board Analyzed the DuPont Factors

DuPont #2 & #3: Similarity of the Services and Channels of Trade

The Board began by addressing the relationship between the services and their movement in the marketplace. It is undisputed that both the Applicant’s application and the cited registration include "restaurant services" or their legal equivalent. Because the services in this case are identical in part, the Board applied the legal presumption that these services travel in the same channels of trade and are available to the same classes of consumers.

Consequently, the Board found that the second and third DuPont factors weigh heavily in favor of finding a likelihood of confusion.

DuPont #4: Conditions of Sale and Nature of Consumers

The Board determined that ordinary consumers of restaurant services are likely to exercise only "ordinary care." This conclusion was bolstered by the fact that the identifications of services in both the application and the registration are unrestricted, lacking any price limitations or specialized consumer designations. Given that choosing a restaurant is often a routine consumer decision, this factor weighs in favor of a likelihood of confusion.

DuPont #6: Strength of the Cited Mark

The sixth DuPont factor examines the number and nature of similar marks in use on similar goods or services. The Applicant attempted to show that the cited mark CASABLANCA is commercially or conceptually weak by making thirty third-party registrations of record that comprised or consisted of the word CASABLANCA.

However, the Board found this evidence unpersuasive. Upon review, the Board noted that none of these third-party registrations were for goods or services identical or similar to restaurant services. Furthermore, two of the registrations submitted were actually owned by the Registrant of the cited mark. Because the Applicant failed to provide evidence of third-party use or registration related to restaurant services, the Board deemed the sixth DuPont factor to be neutral.

DuPont #1: Similarity of the Marks

In analyzing sound and appearance, the Board admitted that COUSABLANCA and CASABLANCA are similar. The primary distinction is the substitution of the diphthong "ou" in the Applicant’s mark for the letter "a" in the cited mark. While the Board acknowledged the general rule is that consumers often focus on the first syllable or prefix, it found that this specific phonetic change led to a profound shift in connotation and commercial impression.

The Board analyzed the connotation of the cited mark CASABLANCA, noting it refers to the "city and port on the Atlantic in Western Morocco" and the iconic 1942 Warner Brothers film. The Board looked at the Registrant's own specimen of use, which featured an advertising brochure with a photo of Humphrey Bogart and Ingrid Bergman, the famous quote "I think this is the beginning of a beautiful friendship," and a direct credit to the film. This evidence confirmed that the Registrant promotes its services to specifically evoke the romance and cinematic history of the movie.

In contrast, the Board found that the Applicant’s mark COUSABLANCA is a portmanteau of the words "couscous" and "Casablanca." The Board referenced the Merriam-Webster dictionary definition of "couscous" as "a North African dish of steamed semolina usually served with meat or vegetables." By using this unique spelling in connection with restaurant services featuring North African cuisine, the Applicant created a "clever double entendre." The Board observed: "The primary connotation and commercial impression reflect that of a restaurant specializing in Moroccan dishes serving couscous from Casablanca."

The Board concluded that this humorous play on words projects a separate meaning and commercial impression distinct from the film-centric impression of the cited mark.

Board’s Decision

The Board reversed the Section 2(d) refusal to register the mark COUSABLANCA. While acknowledging that the services were identical, the channels of trade were presumed the same, and the consumers exercised only an ordinary degree of care, the Board held that the dissimilarity in the marks' commercial impressions was the controlling factor. The Board found that the Applicant’s mark created a distinct, culinary-based double entendre that sufficiently distinguished it from the cinematic and geographical connotations of the registered mark CASABLANCA. Because the first DuPont factor was found to be dispositive, the Board concluded that confusion was not likely.

I’ve always loved double entendre cases. There is something incredibly rewarding when the cleverness built into a mark actually prevails. I particularly like this case because of how the Applicant used the Registrant's own specimen to anchor the connotation of the mark, which I thought was a brilliant tactical move.