IP Law Daily, TRADEMARK—TTAB: First DuPont factor alone sufficient to overcome other likelihood of confusion factors, (May 1, 2025)

By Robert Margolis, J.D.

Board finds dissimilarity of COUSABLANCA from CASABLANCA in meaning and commercial impression as enough to overturn likelihood of confusion refusal to register, even though it was the only factor favoring registration.

The Trademark Trial and Appeal Board has reversed a refusal to register the mark COUSABLANCA for restaurants and restaurant services, rejecting the Examining Attorney’s determination that the mark is likely to cause confusion with the registered mark CASABLANCA also for restaurant services. The Board found that the sound, meaning, and commercial impression of the two marks was sufficiently different that the first DuPont likelihood-of-confusion factor weighed against the refusal, which was enough to overcome every other factor considered weighing for likelihood of confusion or being neutral. As the Board noted, “a single DuPont factor may be dispositive, and when we compare the marks, we find that to be the case here.” The Board’s decision is not precedential (In re Couscous Maghrebi Grill LLC, No. 98085780 (T.T.A.B. Apr. 28, 2025)).

Couscous Maghrebi Grill LLC (“CMG”) sought registration on the Principal Register of COUSABLANCA in standard characters for restaurants and “[r]estaurant services featuring North African cuisine …” in International Class 43. The Examining Attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), finding COUSABLANCA was likely to cause confusion with the registered standard character mark CASABLANCA for “Hotel and restaurant services” also in International Class 43 (Reg. No. 3191159). After the Examining Attorney denied CMG’s request for reconsideration, CMG appealed to the Board.

“Pivotal” factor. In reversing the refusal to register, the Board found the first DuPont factor, the similarity or dissimilarity of the marks, to be the “pivotal” factor that outweighed all others it considered. This factor analyzes the marks in their entireties, including appearance, sound, connotation, and commercial impression. These characteristics all were different between the two marks, the Board found.

While similar in sound and appearance at first blush, it was “critical” to the Board that the first syllable of the two marks differed—the diphthong “ou” in CMG’s mark substituted for the letter “a” in the cited mark. Consumers were more likely to focus on the first syllable or prefix in a mark, and here the first syllable distinguished how the marks sound.

Next, the Board discussed how different the connotations of the two marks are. CASABLANCA connotes not only the city in Morocco, but also the famous movie of that name. Notably the specimen used in the application for registration for CASABLANCA included an image from the movie to show that the Registrant promotes its services in a way to associate with the film. By contrast, COUSABLANCA combined the words “couscous” and “Casablanca” to create an association with culinary dishes from the North African region. To the Board, the primary connotation and commercial impression resulting from COUSABLANCA in connection with restaurants was “that of a restaurant specializing in Moroccan dishes serving couscous from Casablanca.” Given these different connotations and commercial impressions, consumers were not likely to assume that the goods of CMG and the Registrant originate from the same source. Ultimately, the dissimilarity of the marks’ respective meanings and commercial impressions was “so great” that it outweighed the several factors that the Board found favored a likelihood-of-confusion finding.

Other factors. Both marks were for services including “restaurants” or their legal equivalents, and because the services were identical at least in part, the Board could presume the services traveled in the same channels of trade to the same classes of consumers. Therefore, the second and third DuPont factors favored finding a likelihood of confusion.

Likewise, the fourth factor, the degree of care consumers would use, favored likelihood of confusion because restaurant consumers likely exhibit only ordinary care in choosing a restaurant. This is particularly so in a case like this, where neither party indicated price restrictions in their identification of services.

The sixth DuPont factor, strength of the mark, was neutral, because CMG could not show CASABLANCA was either commercially or conceptually weak. Though CMG made thirty third-party registrations for CASABLANCA of record, none were for goods or services related to restaurants.

Ultimately, however, the significance of these factors paled in the face of the Board’s determination regarding the first DuPont factor.

The Case is Serial No. 98085780.

Judge: Lykos, A.

Attorneys: Mark C. Johnson (Johnson | Dalal) for Couscous Maghrebi Grill LLC. Lyal Fox for the USPTO.

Companies: Couscous Maghrebi Grill LLC

Cases: Trademark USPTO