Likelihood of Confusion Case: CITRUS CLUB vs. CITRUS KITCHEN

In a 2020 non-precedential case, the Trademark Trial and Appeal Board affirmed a §2(d) likelihood of confusion refusal of registration for the mark CITRUS CLUB (CLUB disclaimed). The Board found that Applicant’s mark, CITRUS CLUB, for “cocktail lounge services” would be confusable with the registered mark, CITRUS KITCHEN (KITCHEN disclaimed), for “restaurant services.”

The Applicant argued that its mark CITRUS CLUB was used for a “reservation-only rooftop cocktail lounge atop a five-star hotel in Charleston, South Carolina,” and it “operates exclusively in the evenings, employs a dress code and prohibits children under the age of 21 from entering.” Whereas the registered mark, CITRUS KITCHEN, was used for a “sole store-front physical location in Rancho Cucamonga, California…” and it was focused on “hand-crafted, healthy meal options.” Moreover, it is “open during the day, closes at 8 p.m. on Monday through Saturday, does not feature a dress code and allows children.” The Board used the relevant DuPont factors to determine whether or not the two marks were confusable. “[L]ikelihood of confusion can be found ‘if the respective [services] are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.”’ See Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)

Starting with the second DuPont Factor, the Board analyzed the services cited in both the registrations and applications of the marks. The Applicant argued that its mark CITRUS CLUB was different than the registered mark CITRUS KITCHEN because it was a cocktail lounge and not a restaurant, however, the Examining Attorney submitted evidence which defined “cocktail lounge” as a bar, and as “a public room (as in a hotel, club or restaurant) where cocktails and other drinks are served.” This shows that the two services are closely related and that a cocktail lounge may even be within a restaurant. The Examining Attorney further submitted evidence which cited six separate entities that advertised as both a restaurant and cocktail lounge, furthering the argument that the two services are fairly intertwined. Aside from the evidence showing that cocktail lounges may be found in restaurants, the Examining Attorney also cited third-party registrations which showed restaurants that offered high-end cocktails much like a cocktail lounge would. In sum, not only can restaurants and cocktail lounges coexist in one place, but they can offer similar services as well. Therefore, the Board determined that the second DuPont factor weighed in favor of finding confusion likely.

Turning briefly to the third DuPont factor, the similarity of the trade channels and classes of consumers, the Board dismissed the Applicant’s argument that the two marks were used in separate states. As it previously found, cocktail lounges and restaurants can exist in the same place, therefore, that is already one similar trade channel. Further, it deemed that the services cited for the two marks could be offered to the same class of consumers, same type of patron and similar times of the evening. The Applicant further argued that the consumer classes were not the same since there were restrictions in place to enter its establishment, such as a dress code and prohibition of children under 21. However, the Board nullified the argument by stating that those specific restrictions were not reflected in the identification of the services in the registration or application. A likelihood of confusion analysis is based solely on the goods and services listed in the registration and application, not upon restrictions later set forth. “[We] “have no authority to read any restrictions or limitation into the registrant’s description.” Further, an applicant cannot “restrict [their] scope . . . by argument or extrinsic evidence.” See In re I-Coat Co., 126 USPQ2d 1730, 1739 (TTAB 2018) (quoting In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009)) Again, the Board found that the third DuPont factor weighed in favor of finding confusion likely.

The Board then focused its attention on the first DuPont factor, the similarity of the marks. Looking at the two marks side by side, the Board deemed the Applicant’s mark CITRUS CLUB similar to the registered mark CITRUS KITCHEN since CITRUS is the first term in each and is followed by a highly descriptive or generic term in each (both CLUB and KITCHEN were previously disclaimed). Further, the marks were visually and aurally similar, and the Board decided that as the initial element, the term CITRUS would be more likely to be noticed or remembered by consumers. See Palm Bay, 73 USPQ2d at 1692 “Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label.  Further, see Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) in stating, “[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.” Looking then at the connotation of the two marks, the Board found that the term CITRUS, to the extent it suggested the use of citrus being used in food or drinks, would convey the same meaning to consumers in both marks. Ultimately, given the similarity of the marks’ sound, appearance and similar connotation and commercial impression of the shared term “citrus,” the Board found that the first DuPont factor weighed heavily in finding confusion likely.

In a final argument, the Applicant attempted to argue that CITRUS and KITCHEN are both common and frequently used terms, and therefore, the registered mark should be afforded only a limited scope of protection. The Applicant submitted third-party evidence that demonstrated the term CITRUS in connection with food, however, the Board found the evidence to be wholly inadequate due to the fact that while the submissions linked the term CITRUS to food, none of them linked the term to restaurant services. The Board ended the argument by saying that it did not find the mark CITRUS KITCHEN inherently weak or commercially weak to a point that it would allow registration of the Applicant’s mark CITRUS CLUB.

In conclusion, the Board found the marks to be similar in trade channels, consumer classes, sound, appearance and commercial impression. The relevant DuPont factors, in this case, the first, second and third, all weighed in favor of finding confusion likely, therefore, the Board affirmed the refusal to register the mark CITRUS CLUB under §2(d) likelihood of confusion.

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