The opinion
Paper No. 46
CEW
THIS DISPOSITION IS CITABLE AS
PRECEDENT OF THE TTAB JUNE 11,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Hard Rock Cafe Licensing Corporation
v.
Thomas D. Elsea
_______
Opposition No. 93,436
to application Serial No. 74/309,525
filed on August 31, 1992
_______
Gerald T. Shekleton and Steven E. Feldman of Welsh & Katz
for opposer
Franklin D. Ubell of Price, Gess & Ubell for applicant
_______
Before Sams, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Hard Rock Licensing Corporation filed its opposition to
the application of Thomas D. Elsea to register the mark
shown below for “jewelry” in International Class 14;
“beverage glassware” in International Class 21; “clothing,
namely, shirts, jackets and sweatshirts” in International
Opposition No. 93,436
Class 25; and “restaurant services and nightclub services”
in International Class 42.1
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods and
services, so resembles opposer’s previously used and
registered mark HARD ROCK CAFE for “T-shirts, sweatshirts,
polo shirts, sport shirts, jackets, hats, caps and belts”2
and marks shown below as to be likely to cause confusion
under Section 2(d) of the Trademark Act;3
1
Application Serial No. 74/309,525, filed August 31, 1992, based upon
an allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods. The application includes a
disclaimer of “COUNTRY ROCK CAFE” and “SALOON DANCE HALL” apart from the
mark as a whole and the statement that “the stippling in the drawing is
a feature of the mark and is not intended to indicate color.”
2
Registration No. 1,504,904, issued September 20, 1988, in
International Class 25. [Sections 8 and 15 affidavits accepted and
acknowledged, respectively.] While opposer asserted in its notice of
opposition that this registration includes “bolo ties” and “sun visors,”
the records of the PTO indicate that these goods have been deleted from
the identification of goods in the registration.
3
Opposer asserts, in its notice of opposition, Registration No.
1,521,050, for the mark HARD ROCK TIMES and design for “T-shirts.”
However, the records of the PTO indicate that this registration has been
canceled under Section 8 of the Trademark Act. Therefore, this
registration has been given no consideration herein. Additionally,
opposer asserts it “also owns numerous other registrations for different
goods in connection with the marks ‘HARD ROCK CAFE’ and ‘HARD ROCK CAFE’
and design.” As opposer was required to specifically plead any
registrations upon which it is basing its opposition, any such other
registrations have been given no consideration herein.
2
Opposition No. 93,436
for “T-shirts, sweatshirts, polo shirts, sport shirts,
jackets, hats, caps and belts”4; for “T-shirts”5; and for
“metal key rings” and “jewelry, namely decorative pins, tie
pins, lapel pins of non-precious metal”6; and
for “restaurant and prepared take out food services.”7
In its notice of opposition, opposer asserted, additionally,
that, in view of the extensive use thereof, opposer’s marks
4
Registration No. 1,504,905, issued September 20, 1988, in
International Class 25. [Sections 8 and 15 affidavits accepted and
acknowledged, respectively.] While opposer asserted in its notice of
opposition that this registration includes “bolo ties” and “sun visors,”
the records of the PTO indicate that these goods have been deleted from
the identification of goods in the registration.
5
Registration No. 1,408,637, issued September 9, 1986, in International
Class 25. [Sections 8 and 15 affidavits accepted and acknowledged,
respectively.]
6
Registration No. 1,492,907, issued June 21, 1988, in, respectively,
International Classes 6 and 14. [Sections 8 and 15 affidavits accepted
and acknowledged, respectively.]
7
Registration No. 1,398,940, issued June 24, 1986, in International
Class 42. [Sections 8 and 15 affidavits accepted and acknowledged,
respectively.] The registration includes a disclaimer of CAFE apart
from the mark as a whole and a statement that the mark is lined for the
colors brown and orange.
3
Opposition No. 93,436
have become well-known in connection with its goods and
services.
In his answer, applicant admitted opposer’s ownership
of its pleaded registrations and that opposer has been
engaged in the restaurant and clothing business in the
United States for many years,8 but denied the salient
allegations of the likelihood of confusion claim.
Additionally, applicant asserted that he has used his mark
in connection with the goods identified in the application;
that the classes of customers for the parties’ goods and
services are not identical; and that the theme and nature of
the goods and services of the parties are distinctly
different.
The Record
There is no dispute that the record includes the
pleadings and the file of the involved application.
However, beyond that, the exact nature of the record in this
case is strongly contested, with both parties having filed
objections to specified submissions of the other party.
Opposer took no testimony, but seeks to make of record, by
notice of reliance, 176 exhibits comprising excerpts from
periodic publications (Exhibits 1-138), press clippings and
8
Specifically, applicant “stipulat[ed] upon information and belief as
provided in the notice of opposition ground numbers 1 and 2 in their
entirety.” However, we do not consider this to be an admission with
respect to the “numerous registrations” asserted by opposer which are
not specifically identified, or with respect to the asserted
registration which has been canceled under Section 8.
4
Opposition No. 93,436
press releases (Exhibits 139-155), photocopies of its
registrations (Exhibits 156-164), a demographic analysis
prepared for opposer by a third party (Exhibit 165), two
declarations of Robert Brown, an officer of opposer
(Exhibits 166-167), and photocopies of various goods upon
which opposer’s marks appear (Exhibits 168-176). Applicant
submitted his own testimony, with accompanying exhibits,
and, by notice of reliance, excerpts from telephone
directories and from The Thomas Guide.
With his brief, applicant filed his objections to
certain of opposer’s exhibits submitted by notice of
reliance. The various grounds of objection included
relevancy, hearsay, violation of the best evidence rule, and
lack of foundation and/or authentication. Opposer
responded, arguing that applicant’s objections are untimely
because opposer could have cured the problems if the
objections had been raised during opposer’s testimony
period; and that there is no basis for any of applicant’s
objections. Opposer also objected to applicant’s exhibits
attached to his brief and to the alleged use by applicant of
his testimony exhibits in support of the merits of
applicant’s argument in his brief. Applicant followed this
with a motion to strike opposer’s assertions that
applicant’s objections are untimely, to which opposer
5
Opposition No. 93,436
responded with its opposition to applicant’s motion to
strike.
We begin by pointing out that both opposer and
applicant seem to have overlooked the fact that a
substantial number of opposer’s proffered exhibits are not
amenable to submission by notice of reliance. See,
Trademark Trial and Appeal Board Manual of Procedure (TBMP),
Sections 707 and 708, and 37 CFR 2.122(e). In particular,
printed publications, which may be placed in evidence by
notice of reliance, include books and periodicals available
to the general public in libraries or of general circulation
among members of the public or that segment of the public
which is relevant to an issue in a proceeding. Printed
publications do not include press releases by or on behalf
of a party; press clippings, which are essentially
compilations by or on behalf of a party of article titles or
abstracts of, or quotes from, articles; studies prepared for
a party; affidavits or declarations9; or product
information. Thus, opposer’s Exhibits 139-15510 (press
releases and clippings), Exhibit 165 (demographic analysis
9
Opposer’s attention is directed to 37 CFR 2.123(b) which provides, in
relevant part, that by agreement of the parties, the testimony of any
witness or witnesses of any party may be submitted in the form of an
affidavit by such witness or witnesses. Here it is clear that applicant
did not agree to the submission of testimony by opposer’s officer,
Robert Brown, in declaration form.
10
While not a press release or press clipping, Exhibit 146 is an
unidentified printout of a list of book titles and, as such, is not
amenable to introduction into the record by notice of reliance.
6
Opposition No. 93,436
prepared for opposer by a third party), Exhibits 166-167
(declarations of Robert Brown), and Exhibits 168-176
(photocopies of opposer’s goods) are not properly made of
record by opposer’s notice of reliance and will not be
considered herein.
In order to make of record by notice of reliance
registrations owned by a party, the party must submit a copy
of the registration prepared by the PTO showing both the
current status of and current title to the registration.
See, TBMP Section 703.02(a) and 37 CFR 2.122(d)(2).
Opposer’s Exhibits 156-164 are photocopies of registrations.
Ordinarily, evidence submitted in connection with a motion
for summary judgment is not considered in connection with
the final decision in a case. Levi Strauss & Co. v. R.
Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993);
Trademark Trial and Appeal Board Manual of Procedure (TBMP)
Section 528.05(a). However, the photocopies of Registration
Nos. 1,398,940; 1,492,907; 1,408,637; 1,504,904; and
1,504,905 (Exhibits 158-162) are considered to reference, by
notice of reliance filed during opposer’s testimony period,
the PTO status and title copies of those registrations
submitted in connection with the earlier summary judgment
motion in this case. In view thereof, and due to the fact
that applicant has effectively admitted opposer’s ownership
and the active status of these registrations, these
7
Opposition No. 93,436
registrations are considered to be of record herein.
Registration No. 1,521,050 (Exhibit 163) will not be
considered because, as noted herein, the records of the PTO
show that the registration has been canceled under Section 8
of the Act. Registration Nos. 1,397,180; 1,635,792; and
1,549,089 (Exhibits 156, 157 and 164) were not pleaded in
the notice of opposition; applicant has made no admissions
with respect to these registrations; and the record in
connection with the summary judgment motion in this case
contains no status and title copies of these registrations
issued by the PTO. Therefore, Exhibits 156, 157 and 164 are
not properly of record herein and have been given no
consideration.
Before considering applicant’s objections to the
remaining exhibits submitted by opposer’s notice of reliance
(Exhibit Nos. 1-138), we address applicant’s motion to
strike opposer’s assertions that applicant’s objections are
untimely. We deny applicant’s motion to strike because we
find it is reasonable to permit opposer to respond to
applicant’s objections. However, we consider applicant’s
objections to have been made in a timely manner.
Applicant’s objections to certain specified exhibits on
the ground that such exhibits are lacking in foundation
because they are illegible, unidentified as to source and/or
date, or in a language other than English are not considered
8
Opposition No. 93,436
untimely. It is reasonable to assume that it is opposer’s
responsibility to review the documents it submits as
evidence to ensure that such submissions meet certain basic
requirements, such as that they are legible and identified
as to source and date. Further, in preparing its
submissions in this proceeding, we must assume that opposer
is aware that it is submitting documents that are not in
English. It is immaterial that applicant made these
objections for the first time in his brief.
Applicant’s objections on the other stated grounds, for
example, hearsay and relevance, which were filed with his
brief, are also considered to be timely because such
objections are not of such a nature as to be curable if they
had been asserted earlier.
We turn, then, to applicant’s objections to opposer’s
remaining exhibits (Nos. 1-138), all of which are excerpts
from printed publications purported to be from newspapers
and periodicals, and which are proffered with opposer’s
notice of reliance to establish the fame of its marks.
First, we overrule applicant’s objections on the ground of
hearsay, as opposer admits that the exhibits are not
submitted for the truth of the matters asserted therein, but
merely to demonstrate the alleged widespread exposure of the
public to opposer’s marks in the print media. Similarly, we
overrule applicant’s objections on the ground of relevance,
9
Opposition No. 93,436
as such evidence is relevant to the renown of opposer’s
marks, although the Board will determine the weight to be
given to such evidence.11
We overrule applicant’s objections on the ground of
authenticity to the extent that Fed. R. Evid. 902(6) clearly
states that printed materials purporting to be newspapers or
periodicals are self-authenticating. We agree with
applicant that excerpts from such publications must be
identified as to their source and date of publication, but
we find that it is sufficient that photocopies of excerpted
articles contain notations either on the copies or in the
notice of reliance as to the source and date of the copied
articles. However, a proffered excerpt from a newspaper or
periodical is lacking in foundation and, thus, is not
admissible as evidence to the extent that it is an
incomplete or illegible copy, is unintelligible because it
is in a language other than English, or is not fully
identified as to the name and date of the published source.
11
We also overrule applicant’s objection to opposer’s exhibits on the
ground that opposer has not been shown to be the owner of any Hard Rock
Cafe referenced in the exhibit articles and, thus, the references to the
Hard Rock Cafes in these articles cannot inure to opposer’s benefit. We
find this objection to be without merit. Applicant bases its objection
primarily on information contained in the articles about legal disputes
between the two original founders of the London Hard Rock Cafe.
However, opposer submitted the articles merely to show media references
to the Hard Rock Cafe in its attempt to establish the fame of its
pleaded marks, not to establish the truth of the matters asserted
therein. Applicant, on the other hand, would have us rely on the truth
of information contained in opposer’s proferred articles to raise
questions as to whether such articles do in fact refer to opposer’s
marks. The statements in these articles would, however, constitute
hearsay. And applicant has not otherwise established that the “Hard
10
Opposition No. 93,436
Thus, we sustain applicant’s objections to those exhibits
that are illegible or incomplete copies (Exhibit Nos. 2, 21-
22, 42, 50, 53, 55-56, 61, 65-67, 68, 71-72, 78, 81-83, 90,
96-97, 117); and/or are in a language other than English
(Exhibit Nos. 14-16, 23, 43, 49, 73-74, 84, 104); and/or do
not indicate the name and/or date of the publication in
which the excerpt appears (Exhibit Nos. 3, 6, 10, 25-27, 31-
34, 37, 52, 58, 59, 62, 76-77, 85-87, 91, 93-94, 99, 102,
105).
While the alleged fame of opposer’s mark is a factor to
consider in relation to opposer’s claim of likelihood of
confusion, only the fame of opposer’s mark among consumers
in the United States is of relevance to us. The renown of
opposer’s marks outside the United States or exposure of the
foreign public to opposer’s marks is irrelevant. Opposer
argues that foreign exposure is relevant because it is this
reputation that brings tourists to its restaurants in the
United States. We find this argument unpersuasive,
particularly as there is no evidence in the record regarding
the extent to which the customers of opposer’s restaurants
come from outside the United States. Therefore, we sustain
applicant’s objections on the ground of relevance to those
exhibits that are excerpts from foreign publications or do
not clearly indicate that the publications are U.S.
Rock Cafe” restaurants referred to in the articles are other than those
11
Opposition No. 93,436
publications (Exhibit Nos. 4, 5, 35, 44, 47-48, 112, 116,
118-138). On the other hand, there are several excerpts
from U.S. publications which discuss opposer’s restaurants
outside the United States (Exhibit Nos. 12-13, 38-41, 46,
75, 114). We find that these exhibits are relevant to the
alleged awareness of U.S. consumers that opposer’s services
and sale of goods are international in scope.
We overrule applicant’s objections to the remaining
exhibits (Exhibit Nos. 1, 7-9, 11-13, 17-20, 24, 28-30, 36,
38-41, 45-46, 51, 54, 57, 60, 63-64, 69-70, 75, 79-80, 88-
89, 92, 95, 98, 100-101, 103, 106-111, 113-115), which we
find to be sufficiently clearly identified, complete and
legible excerpts from publications generally available to
the public in the United States.
We turn, finally, to opposer’s objections, on the
ground of timeliness, to three of the four exhibits
applicant attached to his brief. Opposer objects also, on
the ground of hearsay, to the alleged use by applicant of
his testimony exhibits in support of the merits of the
arguments in his brief; and, on the ground of relevance, to
the phone directory listings submitted by way of applicant’s
notice of reliance.
Regarding the timeliness of the exhibits attached to
applicant’s brief, we agree with opposer that, generally,
owned by opposer or its related companies.
12
Opposition No. 93,436
evidence submitted with a party’s brief is untimely.
However, Exhibit A consists of dictionary definitions of
“rock,” “rock-‘n-roll,” “hard rock,” and “country music,”
which are amenable to judicial notice and, in this case, are
relevant to our analysis of the issue of likelihood of
confusion. Thus, we take judicial notice of these
definitions.12
With respect to opposer’s objections to applicant’s
evidence on the grounds of hearsay and relevance, we note
that these objections should have been raised, at the
latest, in opposer’s main brief. Opposer’s objections are,
therefore, overruled because they are untimely. However, we
have one comment with respect to opposer’s objection on the
ground of hearsay to applicant’s alleged use, in his brief,
of his exhibits in the nature of newspaper articles for the
truth of the material contained therein. The record
reflects that applicant’s exhibits, both in connection with
applicant’s testimony and his notice of reliance, were not
offered for the truth of their contents and, therefore, are
not objectionable on the ground of hearsay. Thus, to the
extent applicant’s brief may rely, improperly, on the truth
12
Applicant requests that we take judicial notice also of Exhibits B
and C, which consist of, respectively, the Board’s decision on the
summary judgment motion in this case and applicant’s memorandum in
support of its summary judgment motion in this case. Because these two
exhibits already form part of the history of this case, it is
unnecessary to take judicial notice of them. However, any evidence
submitted with applicant’s memorandum in support of its summary judgment
motion is not part of the trial evidence herein and has not been
considered.
13
Opposition No. 93,436
of the material contained in those articles, the Board has
given no consideration to such arguments.
To summarize, the record consists of the pleadings; the
file of the involved application; status and title copies of
opposer’s pleaded Registration Nos. 1,398,940; 1,492,907;
1,408,637; 1,504,904; and 1,504,905 (Opposer’s Exhibits 158-
162) and excerpts in the nature of articles and
advertisements from printed publications (Opposer’s Exhibit
Nos. 1, 7-9, 11-13, 17-20, 24, 28-30, 36, 38-41, 45-46, 51,
54, 57, 60, 63-64, 69-70, 75, 79-80, 88-89, 92, 95, 98, 100-
101, 103, 106-111, 113-115), all made of record by opposer’s
notice of reliance13; the testimony deposition of applicant,
with accompanying exhibits; and excerpts from printed
publications, made of record by applicant’s notice of
reliance. Both parties filed briefs on the case.14
13
In view of the substantial number of opposer’s exhibits that we have
deemed inadmissible (121 of 176 exhibits), we feel compelled to express
our dismay at opposer’s apparent disregard for the rules governing the
presentation of evidence in proceedings before the Board and at the
significant amount of time required by both parties and by the Board to
consider the admissibility of opposer’s 176 exhibits. We are
particularly disturbed by the fact that opposer submitted numerous
illegible and/or improperly identified copies of excerpts from
publications and then argued for the admissibility of these documents,
claiming that applicant’s objections were untimely. We question what
persuasive value opposer believed such documents would have to the
Board.
14
Opposer filed a timely request for an extension of time in which to
file its reply brief, alleging that it needed additional time to respond
to applicant’s brief and to respond to applicant’s objections to its
evidence. Opposer then filed its reply brief within the requested
extension period. Applicant opposed such an extension and moved to
strike opposer’s reply brief. We find that opposer has shown good cause
for the requested extension of time in which to file its reply brief.
Therefore, applicant’s motion to strike is denied and opposer’s reply
brief has been considered.
14
Opposition No. 93,436
The Parties
From the record before us, we know only that opposer
owns registrations for the mark HARD ROCK CAFE, both in
typed form and in two similar design formats; that the
registrations include, among them, restaurant and prepared
take out food services and various clothing and jewelry
items; and that articles appeared in newspapers and
periodicals throughout the United States in the late 1980’s
and early 1990’s that are about, or include references to,
Hard Rock Cafe restaurants in various locations and/or Hard
Rock Cafe clothing and other promotional items, especially,
T-shirts. Opposer has alleged that its marks are famous,
but since the articles are not presented for the truth of
the material contained therein, and the record includes no
other evidence bearing on the fame of opposer’s marks, we
cannot conclude from this record, as discussed infra, that
opposer’s marks are famous. Nor do we have a stipulation
that the HARD ROCK CAFE marks are famous, as was present in
Hard Rock Cafe Licensing Corp. v. Pacific Graphics, Inc.,
776 F.Supp. 1454, 21 USPQ2d 1368, 1370 (W.D.Wash. 1991).
Further, while applicant does not appear to dispute
opposer’s allegations of fame, he has not admitted that
opposer’s marks are famous and we will not take judicial
notice of fame.
15
Opposition No. 93,436
We know from applicant’s testimony that opposer
operates at least one restaurant named HARD ROCK CAFE in
Fashion Island, Newport Beach, California. It is
applicant’s opinion that this restaurant is a popular
tourist attraction.
Applicant, Thomas Elsea, is the president of Country
Rock Cafe, Inc. and he operates the Country Rock Cafe,
Saloon and Dance Hall, which has been operating in Lake
Forest, California, since October 1, 1993. The subject of
this application, the COUNTRY ROCK CAFE logo, appears above
the entrance to the restaurant, among other uses, and has
not changed in appearance since the restaurant’s opening.
Mr. Elsea testified that the restaurant has grossed $3.4
million and served approximately 475,000 customers since it
opened; that, since opening, $100,000 has been expended on
advertising; and that, of the total spent on advertising,
$75,000 has been spent on radio advertising which reaches
listeners throughout Orange County, California, and the
remaining $25,000 has been spent on print advertising
distributed locally through its restaurant. Mr. Elsea
stated that the Country Rock Cafe is advertised primarily on
country music radio stations, in particular, KIK-FM radio;
that during four months out of each year KIK-FM broadcasts
live from applicant’s restaurant on Saturday evenings; and
that the restaurant has been featured in various newspapers
16
Opposition No. 93,436
and magazines in the Orange County, California, area and in
nightclub trade publications. Mr. Elsea testified that the
Country Rock Cafe has a country music and dancing theme and
that its clientele is not tourist-based; rather, it consists
of many repeat local customers and attracts people
interested in a “country” lifestyle. Consistent with this
theme, in addition to offering nightly restaurant services
and dancing, the Country Rock Cafe sells clothing items with
the mark herein upon them, for example, T-shirts, hats,
satin jackets and jeans, offers country dancing lessons, and
has special family-oriented programs.
Analysis
Inasmuch as certified copies of opposer’s pleaded
registrations are of record, there is no issue with respect
to opposer’s priority. King Candy Co., Inc. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I.
duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973).
With respect to the goods and services of the parties,
we observe that there is a substantial overlap in the goods
17
Opposition No. 93,436
and services identified in the application and in the
pleaded registrations. Applicant’s identified “nightclub
services” are closely related to the “restaurant services”
identified in opposer’s Registration No. 1,398,940.
Opposer’s recited “take out food services” are closely
related to the “restaurant services” identified in the
application. The other identified goods are common
promotional items in relation to the parties’ services15
and, in particular, the identified clothing items of the
parties are all closely related products. Thus, we conclude
that the goods and services of the parties are either
identical or closely related.
Further, both opposer’s and applicant’s identifications
of goods and services are broadly worded, without any
limitations as to channels of trade or classes of
purchasers. We must presume that the goods and services of
the applicant and opposer are sold in all of the normal
channels of trade to all of the normal purchasers for goods
and services of the type identified. See Canadian Imperial
Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
15
Identifying these items as common promotional items in connection
with the parties’ services does not in any way imply that the goods are
somehow ancillary or secondary to either party’s services. We are aware
that a party may receive more income from the sale of its promotional
items than from its services. We are simply recognizing that the marks
appearing on the goods are the names of opposer’s and applicant’s
restaurants; that, at least with respect to applicant, these goods are
sold only at applicant’s restaurant; and, thus, that the goods are
essentially souvenirs which promote the establishment that offers the
identified services and sells the goods.
18
Opposition No. 93,436
1987). In other words, we conclude that the channels of
trade and class of purchasers of the parties’ goods and
services are the same. Applicant argues, essentially, that
the parties’ services are rendered to different classes of
purchasers because opposer’s customers are tourists and
applicant’s customers are local residents; applicant’s and
opposer’s restaurants attract customers based on their
respective customers’ musical tastes; and hard rock music
fans and country music fans are mutually exclusive. Aside
from the fact that these asserted differences are not
reflected in the identifications of goods and services, we
find there is no evidence in the record either to support
any of these contentions or to indicate that such
distinctions, if established, would necessarily lead to the
conclusion that the classes of purchasers of the parties’
goods and services are different.
Applicant argues, additionally, that the goods and
services of the parties are “purchased with deliberation by
sophisticated and discriminating purchasers and are not
impulse purchases.” Applicant has presented no evidence on
this point. However, the evidence of record indicates that
the parties’ goods and services are likely to be purchased
by ordinary consumers without special training or expertise.
While ordinary consumers can be said to choose their
restaurants with a certain degree of care based on their own
19
Opposition No. 93,436
experience and the recommendations of others, we do not find
this fact to warrant the conclusion, with respect to
likelihood of confusion, that consumers exercise a high
degree of discrimination or sophistication with regard to
their decision to patronize certain eating establishments.
Turning to the marks, opposer contends that COUNTRY
ROCK CAFE is the dominant portion of applicant’s mark; that
the HARD ROCK portion of opposer’s marks and the COUNTRY
ROCK portion of applicant’s mark both “evoke forms of rock
music . . . which suggests a relationship between the two
marks in the minds of consumers”; and that the commercial
impressions of the parties’ marks are similar.
Applicant contends that the design element comprising
the steer skull in an inverted triangle (characterized by
applicant as an arrowhead) is the dominant portion of his
mark and that the overall commercial impressions of the
parties’ marks differ; that the significance and placement
of this design element highlight the word COUNTRY in
applicant’s mark; that the overall design of the mark also
serves to separate the word COUNTRY from the other words in
the mark and “contribute[s] to the commercial impression
that this is a country western establishment and not one
associated in any way with ‘Hard Rock’”; that the dominance
of the design portion of applicant’s mark is further
supported by the fact that applicant has disclaimed all of
20
Opposition No. 93,436
the wording in its mark; that the HARD ROCK portion of
opposer’s marks connotes a particular style of rock-‘n-roll
music, whereas the COUNTRY portion of applicant’s mark
connotes an entirely different style of music; and that the
words ROCK CAFE are descriptive and weak, which applicant
contends is confirmed by evidence of third-party use of ROCK
CAFE.
While we must base our determination on a comparison of
the marks in their entireties, we are guided, equally, by
the well-established principle that, in articulating reasons
for reaching a conclusion on the issue of confusion, “there
is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
We begin our consideration of the marks before us by
taking judicial notice of the following dictionary
definitions16:
rock - n. 3. rock-‘n-roll. [American Heritage
Dictionary]
rock-‘n-roll - 1. a style of popular music that
derives in part from blues and folk music and is
marked by a heavily accented beat and a simple,
repetitive phrase structure. [Random House
16
The Random House Dictionary of the English Language, unabridged (2d
ed. 1987); and The American Heritage Dictionary, Second College Edition.
21
Opposition No. 93,436
Dictionary] Popular music combining elements of
rhythm and blues with country and western music
and having a heavily accented beat. [American
Heritage Dictionary]
hard rock - the original form of rock-‘n-roll,
basically dependent on a consistently loud and
strong beat. [Random House Dictionary] A style
of rock-‘n-roll characterized by a harsh,
amplified sound and frequently employing
distortion, feedback, and other electronic
modulations. [American Heritage Dictionary]
country - n. 10. see country music - a style and
genre of largely string-accompanied American
popular music having roots in the folk music of
the Southeast and cowboy music of the West . . .
[Random House Dictionary]
country music - n. a style of popular music based
on folk music of the rural United States, esp. of
the southern or southwestern United States.
[American Heritage Dictionary]
country rock - a style of popular music combining
the features of rock-‘n-roll and country music.
[Random House Dictionary]
Considering, first, the commercial impression of
opposer’s marks, we find that the phrase HARD ROCK CAFE is
the dominant portion of opposer’s two design marks. While
lending a distinctive spare and modern appearance to
opposer’s marks, the design portion of opposer’s marks
consists principally of a background design of a circle upon
which the words are superimposed in a simple script. We
find, also, that in all three of opposer’s marks the words
are likely to be perceived as the phrase HARD ROCK modifying
the noun CAFE. Not only does HARD ROCK appear on a single
line in larger and darker script above the word CAFE in the
22
Opposition No. 93,436
two design marks, but HARD ROCK is a unitary phrase which
connotes a specific type of rock-‘n-roll music. Viewing
opposer’s marks in connection with the identified goods and
services, we conclude that the phrase HARD ROCK CAFE is
highly suggestive thereof, as consumers are likely to
understand HARD ROCK CAFE as identifying an eating
establishment, i.e., a cafe, that either features hard rock
music or has a theme pertaining to hard rock music.
Applicant contends that, in view of extensive third-
party use, the phrase ROCK CAFE in opposer’s marks is weak.
Opposer, in response, contends that the telephone directory
listings submitted by applicant give us insufficient
information from which to draw conclusions regarding third-
party use and, further, that opposer is suing at least one
of the third parties for trademark infringement. We agree
with applicant that the term CAFE, which is merely
descriptive in connection with the parties’ services, is a
weak component of both parties’ marks and, as evidenced by
the telephone directory listings, is extensively featured in
the names of third-party restaurants listed therein.
However, there is no evidence that consumers would view ROCK
CAFE as a unitary phrase to the exclusion of the word
preceding ROCK in either the parties’ marks herein or in the
names of the cafes identified in the submitted telephone
directories. We believe that the connotation of the term
23
Opposition No. 93,436
ROCK is determined in each of these cases by the word
preceding it. For example, RED ROCK, EAGLE ROCK and BLOWING
ROCK are all likely to connote a geographic location.
Whereas, VINTAGE ROCK and CLASSIC ROCK are likely to connote
a style or category of music. Thus, these marks cannot be
viewed simply as ROCK CAFE marks; rather, each mark, as with
the parties’ marks herein, must be viewed in its entirety.
Grouping all of these marks together as “ROCK CAFE marks”
ignores the sight, sound, meaning and overall commercial
impressions of the marks in their entireties and is not
useful to our analysis of likelihood of confusion.
Considering applicant’s mark, we find that, while the
words COUNTRY ROCK CAFE are prominent, the design element of
applicant’s mark is also a significant factor in the overall
commercial impression of the mark. The skull in a triangle
is prominently centered in the design and the words appear
in banners intricately woven into the design. The script in
which the words appear is old-fashioned in appearance. The
overall appearance of the mark evokes a country and
cowboy/western theme. This image is reinforced in
applicant’s mark by its individual elements. The words
SALOON DANCE HALL, which appear in small script on a banner
across the bottom of applicant’s design, are reminiscent of
such establishments in early towns in the western United
States and are merely descriptive in connection with
24
Opposition No. 93,436
applicant’s restaurant and nightclub services. The
prominent placement of the word COUNTRY centered above the
skull further reinforces the country and cowboy/western
theme of the mark and of applicant’s restaurant and
nightclub, and is likely to be perceived as merely
descriptive thereof.
At the same time, the words ROCK and CAFE, which appear
below and slightly larger than the word COUNTRY in
applicant’s mark, but in the same script, are likely to be
perceived with COUNTRY as a unitary phrase (i.e., COUNTRY
ROCK CAFE) with COUNTRY ROCK modifying the noun CAFE. As
music is an integral part of most nightclubs, the phrase
COUNTRY ROCK is likely to be perceived as merely descriptive
of the style of music featured at applicant’s restaurant and
nightclub. Thus, COUNTRY ROCK CAFE is at least highly
suggestive, if not merely descriptive, in connection
applicant’s identified goods and services as consumers are
likely to understand this mark as identifying an eating
establishment, i.e., a cafe, that either features country
and/or country rock music or has a theme pertaining thereto.
It is clear from the noted dictionary definitions that
country music and rock-‘n-roll music are distinct styles of
music that share overlapping roots in American folk music;
and that “country rock” and “hard rock” are distinct styles
of country music and rock-‘n-roll music, respectively.
25
Opposition No. 93,436
While not as far apart stylistically as classical music and
rock-‘n-roll music, we believe there is no question that
“country rock” and “hard rock” evoke quite different images
for consumers in view of the distinctions between these
styles of music. These distinctions in music styles are
mirrored in the differences in the designs of the parties’
respective marks, i.e., opposer’s design marks evoking a
spare and modern image and applicant’s mark evoking an old-
fashioned cowboy/western image.
We find that the parties’ marks are quite different in
sight, sound and meaning and create distinctly different
overall commercial impressions.
Turning to the remaining duPont factors, we find that
opposer has not established that its mark is famous as used
in connection with the identified goods and services and,
thus, is entitled to a broad scope of protection. In this
regard, opposer has offered a number of articles which are
about or refer to opposer and were published in newspapers
and periodicals over a several year period more than five
years ago. While the sheer number (55) of articles of
record indicates that opposer’s marks are of some renown,
this is insufficient to establish fame. Opposer failed to
properly introduce any specific evidence regarding the
nature and extent of its promotion of its mark in connection
with its products and services, U.S. sales figures,
26
Opposition No. 93,436
advertising and other promotional expenditures or evidence
regarding the reputation of opposer’s mark to the relevant
purchasing group. In addition, opposer has not shown in
even approximate terms its share of the relevant market.
Thus, in view of the suggestive nature of opposer’s marks,
as discussed herein, we do not accord to opposer’s marks a
broad scope of protection as would be warranted if fame had
been established in this record.17
Regarding other factors relevant to likelihood of
confusion which were addressed by the parties, we find no
evidence to support opposer’s apparent contention that
applicant adopted its mark with an intent to trade on
opposer’s reputation.
Further, regarding actual confusion or lack thereof, as
the application herein is based on an allegation of a bona
fide intention to use the mark in commerce and, to the
extent use has actually occurred, any contemporaneous use by
the parties is of relatively short duration, any conclusions
drawn by the parties regarding actual confusion or lack
thereof are unpersuasive herein.
In conclusion, we find that in view of the
dissimilarities in the overall commercial impressions of
17
Fame is but one of the duPont factors considered in determining
whether a likelihood of confusion exists. In this case, even if opposer
had introduced evidence sufficient to establish the fame of its mark, we
would find that factor to be outweighed by the duPont factor regarding
the similarity of the marks at issue (see, supra).
27
Opposition No. 93,436
opposer’s and applicant’s marks, particularly in view of the
highly suggestive nature of both parties’ marks in
28
Opposition No. 93,436
connection with their respective goods and services, no
confusion is likely to exist herein.
Decision: The opposition is dismissed.
J. D. Sams
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board
29
Opposition No. 93,436
Quinn, Administrative Trademark Judge, dissenting:
I respectfully dissent from the finding of no
likelihood of confusion in this case.
Before turning to the merits, I would be remiss if I
did not state that I share my colleagues’ dismay at
opposer’s disregard of the Trademark Rules of Practice
pertaining to the introduction of evidence in Board inter
partes proceedings. Given the long-established trademark
rules of practice and the availability of the Board’s manual
of procedure (TBMP), there should be no excuse for a party
to have any of its evidence excluded for strictly procedural
deficiencies. For example, it is puzzling to me that
critical facts bearing on opposer’s claim of the fame of its
mark (sales, extent of use, etc.) were presented by way of
declarations when Trademark Rule 2.123(b) specifically
provides that testimony may be submitted by affidavit only
by agreement of the parties. See also TBMP § 716; and
Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423, 1425 at n. 8 (TTAB 1993). From
an evidentiary standpoint, even more puzzling are the
illegible photocopies of articles or articles which appear
in foreign languages, all of this evidence purportedly
bearing on the fame of opposer’s marks.
Opposer obviously is in a position to adduce a far
superior record to the one present in this case (especially
30
Opposition No. 93,436
as to fame) which failed to persuade a majority of the
Board’s panel. See: Hard Rock Cafe Licensing Corp. v.
Pacific Graphics Inc., 776 F.Supp. 1454, 21 USPQ2d 1368
(W.D.Wash. 1991)[In 1990 alone, over 3.5 million customers
ate at opposer’s restaurants and more than $39 million was
spent by customers for food and other restaurant services at
opposer’s restaurants; more than $47 million of merchandise
bearing the HARD ROCK CAFE mark and logo has been sold at
opposer’s restaurants]. Be that as it may, I now turn to
give my reasons why I believe, based even on the lean record
before us, that confusion between the parties’ marks is
likely to occur in the marketplace.
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. With
respect to the latter consideration, it is well established
that likelihood of confusion is determined based on the
goods and/or services as they are identified in the involved
registration(s) and application. Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987). Here, as acknowledged by the majority,
there is a substantial overlap in the goods and services
identified in the application and in the pleaded
registrations. In point of fact, the parties’ restaurant
services, jewelry, shirts, jackets and sweatshirts are, for
31
Opposition No. 93,436
purposes of the Board’s analysis, legally identical.
Moreover, it is clear in this case that the goods and/or
services, as identified, may be purchased on impulse with
nothing more than ordinary care. And, the goods and/or
services would be bought by the same classes of purchasers
who, because of the relatively inexpensive nature of the
goods and/or services, are held to a lesser standard of
purchasing care. Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed.
Cir. 1984). That the goods and services are, at least in
part, legally identical and are relatively inexpensive weigh
heavily in opposer’s favor here. When marks are applied to
identical goods and/or services, “the degree of similarity
[between the marks] necessary to support a conclusion of
likely confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
I find that the marks, when applied to the identical
goods and/or services, engender similar overall commercial
impressions. Although the marks must be compared in their
entireties, there is nothing improper in giving more weight
to a particular portion of a mark if it would be remembered
and relied upon to identify the goods and/or services. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). Thus, inasmuch as applicant’s mark comprises
32
Opposition No. 93,436
both words and a design, I would accord greater weight to
the words COUNTRY ROCK CAFE because the words are likely to
make an impression upon purchasers that would be remembered
by them and would be used by purchasers to request the goods
and/or services. In re Appetito Provisions Co., 3 USPQ2d
1553, 1554 (TTAB 1987); and Kabushiki Kaisha Hattori
Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). See
also: Giant Food, Inc. v. Nation’s Food Service, Inc., 710
F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). This is
especially the case here where the record shows that others
(Elsea dep., exs. 2, 3, 4 and 5) as well as applicant in its
own advertising (Elsea dep., ex. 6) refer to applicant’s
establishment simply as COUNTRY ROCK CAFE. Mr. Elsea also
testified that his main source of advertising has been on
the radio (Elsea dep., p. 8) and, of course, the listening
audience hears only the words COUNTRY ROCK CAFE.
In the present case, applicant’s mark is dominated by
the literal portion COUNTRY ROCK CAFE which, in my
considered opinion, is sufficiently close to opposer’s HARD
ROCK CAFE marks, that confusion is likely to occur when the
marks are applied to identical, relatively inexpensive goods
and/or services. In applicant’s mark, the words ROCK CAFE
are the ones most prominently displayed, and these words
happen to be the ones shared with opposer’s marks.
33
Opposition No. 93,436
As shown by the dictionary definitions cited by the
majority, country rock is a style of music combining country
music and rock-‘n-roll music; and, according to the same
dictionary, hard rock is a style of rock-‘n-roll. The
literal portions of both marks are identically constructed,
each comprising a term describing a somewhat similar type of
music (in that, according to the dictionary, both hard rock
and country rock utilize rock-‘n-roll) followed by the word
“cafe.” Given the rising popularity of country rock music,
consumers might well believe that opposer has branched out
into another music-based theme restaurant wherein collateral
merchandise is sold.
With respect to fame, I note the majority’s recognition
that “opposer’s marks are of some renown.” Indeed, the
evidence remaining in the record suggests that opposer and
its marks have enjoyed significant unsolicited publicity,
with wide exposure of the HARD ROCK CAFE marks to the
consuming public. Applicant does not appear to take issue
with opposer’s allegations of fame. However, given the
shortcomings of opposer’s evidence, I am constrained to
agree with the majority that a case of fame has not been
made in this particular instance. Cf. Kenner Parker Toys v.
Rose Art Industries, 963 F.2d 350, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992)[“[F]ame of the prior mark plays a dominant
role in cases featuring a famous or strong mark”]. As noted
34
Opposition No. 93,436
above, opposer is in a position to have put on a much
stronger showing with regards to fame. Hard Rock Cafe
Licensing Corp. v. Pacific Graphics Inc., supra.
Although a persuasive claim of fame certainly would
have made this a clearer case in opposer’s favor, I
nonetheless find that the renown of opposer’s marks, as
shown by the printed publication excerpts of record, weighs
in opposer’s favor. Further, applicant’s record is weak
relative to any third-party uses of similar marks in the
restaurant field.
I note the majority’s statement that “we find no
evidence to support opposer’s apparent contention that
applicant adopted its mark with an intent to trade on
opposer’s reputation.” I am troubled, however, by the
particular way applicant chose to depict the words in his
mark, and find that this presentation, coupled with
applicant’s knowledge of opposer’s marks prior to filing the
involved application, raises, at the very least, a question
in my mind about applicant’s good faith adoption of his
mark.
More specifically, Mr. Elsea testified that prior to
adopting the mark COUNTRY ROCK CAFE he was aware of, and had
in fact visited, opposer’s HARD ROCK CAFE located in Newport
Beach, California. (Elsea dep., pp. 16, 29-30). Applicant
acknowledges that applicant’s establishment “is located only
35
Opposition No. 93,436
a few miles from the Hard Rock Cafe in Newport Beach,
California.” (brief, p. 3) Further, applicant chose to
depict the literal portion of his mark by prominently
displaying the words ROCK CAFE with bordered letters in a
rectangle at the center of the mark. These words appear in
larger type than do the other words in the mark. The word
COUNTRY appears in smaller type above the words ROCK CAFE.
The words SALOON and DANCE HALL appear in even smaller type.
I think it is odd that applicant chose to separate the
unitary term “COUNTRY ROCK,” electing instead to place
“ROCK” on the same line with the word “CAFE” and then
highlighting this portion (“ROCK CAFE”) of the mark.
Applicant has stated that its mark “conveys the idea of a
country music dance hall with a saloon.” (brief, p. 6) In
response, I might point out that applicant’s mark emphasizes
the “ROCK” portion of “COUNTRY ROCK,” showing the word
“ROCK” in larger letters than the word “COUNTRY.” Also,
contrary to applicant’s statement, applicant chose to boldly
highlight the words “ROCK CAFE,” yet use the words “saloon”
and “dance hall” in subordinate fashion. I find the record
lacking in any credible explanation for this particular
depiction of the words in the mark. Roger & Gallet S.A. v.
Venice Trading Co. Inc., 1 USPQ2d 1829 (TTAB 1987)[“Where
there is evidence of an applicant’s intent to adopt a mark
that suggests to purchasers a successful mark already in use
36
Opposition No. 93,436
by another, the Board may, and ought to, take into account
that intent when resolving the issue of likelihood of
confusion when that issue is not free from doubt.”]
Applicant, as the intent-to-use newcomer, had both the
opportunity and the obligation to avoid confusion. Out of
an entire universe of trademarks/service marks to choose
from in naming his establishment, applicant chose, with full
knowledge of opposer’s marks, one which is similar to the
marks previously used by opposer in connection with its
establishments. As often stated, a party which knowingly
adopts a mark similar to one used by another for the same
goods and/or services does so at its peril. In such cases,
all doubt (and I have little in this case) on the issue of
likelihood of confusion must be resolved against the
newcomer. See, for example: In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687 (Fed. Cir. 1993); Nina Ricci S.A.R.L.
v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901
(Fed. Cir. 1989); Kimberly Clark Corp. v. H. Douglas
Enterprises, Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed. Cir.
1985); Planters Nut & Chocolate Company v. Crown Nut
Company, Inc. 305 F.2d 916, 134 USPQ 504 (CCPA 1962); and
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB
1992).
So as to be clear, this is not a case where someone
wanting to have a night out at the HARD ROCK CAFE will end
37
Opposition No. 93,436
up at the COUNTRY ROCK CAFE. Rather, this case presents the
situation where a consumer familiar with opposer’s
restaurant services and collateral products sold under the
HARD ROCK CAFE marks would be likely to believe, upon
encountering applicant’s mark COUNTRY ROCK CAFE for
identical services and products, that the goods and/or
services originated with or were somehow associated with or
sponsored by the same entity.
For the above reasons, I would sustain the opposition.
T. J. Quinn
Administrative Trademark
Judge, Trademark Trial
and Appeal Board
38