TTAB - Trademark Trial and Appeal Board - *1 IN RE BROWN & PORTILLO, INC. Serial No. 432,723 August 12, 1987

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)



Serial No. 432,723

August 12, 1987


Robert V. Jambor, Gomer W. Walters and Jay G. Taylor for applicant



Mary E. Hannon



Trademark Examining Attorney



Law Office 6



(Ronald E. Wolfington, Managing Attorney)



Before Krugman, Cissel and Seeherman






Opinion by Krugman






 Brown & Portillo, Inc. has filed an application to register HEARTY BASKET as a service mark for restaurant services. [FN1]



 Registration has been refused under Sections 3 and 45 of the Trademark Act on the ground that HEARTY BASKET does not function as a service mark. Specifically, the Examining Attorney asserts that the subject matter for registration identifies a food item sold in applicant's restaurant but does not identify the restaurant services.



 Applicant has appealed, contending that it is in the business of providing restaurant services; that the goods delivered to the consumer are an integral part of those services and that it is impossible for a customer to purchase a particular tangible menu item so designated apart from the restaurant services rendered by applicant. Applicant further argues that the unpublished opinion of the U.S. Court of Appeals for the Federal Circuit in the case of In re McDonald's Corp., (January 13, 1987) reversing the Board's decision reported at 230 USPQ 210 (TTAB 1986) mandates reversal of the refusal of registration herein based on the doctrine of stare decisis. Finally, applicant maintains that during the prosecution of this case, the Examining Attorney, taking the position that the issue presented herein was identical to that presented in the McDonald's case, supra, suspended action on this case pending review of the Board's decision in the McDonald's case by the U.S. Court of Appeals for the Federal Circuit. Hence, applicant argues that since the Examining Attorney indicated that she would allow the instant application if the Board's decision in the McDonald's case were reversed, the Examining Attorney should be estopped from now changing her position.



 The specimens of record comprise menu boards. A photocopy of a menu board is reproduced below:





An advertising brochure incorporating the above-depicted menu board has also been submitted. No other evidence has been properly made of record. [FN2]



 As has often been stated, a term may serve as both a trademark and a service mark depending on how it is used as evidenced by the specimens of record. Amica Mutual Insurance Co. v. R.H. Cosmetics Corp., 204 USPQ 155 (TTAB 1979); In re Restonis Corp., 189 USPQ 248 (TTAB 1975); In re Heavenly Creations, Inc., 168 USPQ 317 (TTAB 1971).



 In the present case, the menu boards, submitted as evidence of use of the mark, show HEARTY BASKET used as a trademark to identify a particular combination of food products sold in applicant's restaurant. Specifically, one would order the HEARTY BASKET entree and receive a basket containing two pieces of chicken, french fried potatoes, cole slaw and a roll. However, while the mark clearly identifies the food products, Section 45 of the Trademark Act defines "service mark" as "a mark used in the sale or advertising of services to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown...." We are not persuaded from the record before us that HEARTY BASKET is used to identify the restaurant services of applicant. While it appears from the record that the mark BROWN'S serves to identify applicant's restaurant services, it does not logically follow that any arbitrary designation used in a menu to identify a particular food or beverage available in that restaurant also necessarily performs a service mark function to identify the restaurant services. We conclude that, on the record presented, HEARTY BASKET identifies no service but, rather, serves only to identify an entree available in the restaurant. Accordingly, we believe applicant has not met the statutory requirements for service mark registration.



  *2 With respect to applicant's assertion that the unpublished Court decision in the McDonald's case, supra, is nevertheless binding in this case, the Court's opinion appears with a specific notation that it "... will not be published in a printed volume because it does not add significantly to the body of law and is not of widespread legal interest. It is a public record. It is not citable as precedent ..." (emphasis added). While applicant concedes that the McDonald's case is not citable as precedent, it argues that this is not an absolute rule and does not apply where the decision is used "... in support of a claim of res judicata, collateral estoppel, or law of the case ..." [FN3] Applicant asserts that since the instant case is, in its view, factually indistinguishable from the McDonald's case, stare decisis compels reversal of the refusal of registration. The Board disagrees with this analysis.



 While applicant has equated the Federal Circuit's reference to "law of the case" with the principle of stare decisis, Black's Law Dictionary (1979) defines "law of the case" as designating the principle that if an appellate court has passed on a legal question and remanded the cause to the court below for further proceedings, the legal question thus determined by the appellate court will not be differently determined on a subsequent appeal in the same case where the facts remain the same. This principle, therefore, appears to relate to questions of law governing a particular case throughout subsequent proceedings involving the same action. Stare decisis, by way of contrast, refers to the doctrine that, when a court has laid down a principle of law as applicable to a certain state of facts, it will adhere to that principle, and apply it to all future cases, where facts are substantially the same, regardless of whether the parties and property are the same. Under this doctrine, a decision of the court is a binding precedent in the same court, or in other courts of equal or lower rank in subsequent cases where the very point is again in controversy. See: Black's Law Dictionary, (1979). In our view, therefore, the specific disclaimer of the Federal Circuit in the McDonald's case that the decision therein is not citable as precedent precludes applicability of the doctrine of stare decisis. Moreover, as noted above, the "law of the case" exception to the Court's rule against citing unpublished decisions as precedent is not applicable herein.



 Further, even assuming, arguendo, that the decision in the McDonald's case was stare decisis in subsequent cases involving the same facts, we believe it is factually distinguishable from the present case. In the McDonald's case, the Court determined that the specimens and other materials submitted in the applications for EGG McMUFFIN and SAUSAGE McMUFFIN, in particular the television storyboards, showed use of the marks in the advertising of restaurant services to identify and distinguish McDonald's restaurant services from those of others. We note from the Board opinion in the McDonald's case that the record therein was extensive, consisting of a variety of advertisements, television storyboards and an affidavit of the vice president of McDonald's who indicated, in part, that the purpose of the advertising of McDonald's is to promote not only the sale of breakfast food sandwiches, but also to promote the restaurant services in order to increase sales and promote the image of McDonald's. The affidavit further stated that the advertising communicates the high quality and value of the products and services of McDonald's, and promotes the overall "McDonald's experience". The affidavit then indicated that this is the primary reason for the use of the "Mc" formative as the distinguishing feature of the mark since that formative immediately communicates the message of McDonald's to consumers. See: McDonalds' supra, at 230 USPQ 210, 211. In contrast to the extensive record in the McDonald's case, we find the record presented herein to be not only quantitatively different, but qualitatively as well. The only evidence of record, namely, menu boards and the advertising brochure incorporating a menu board, fail to demonstrate use of the mark sought to be registered as anything other than a name for an entree available in applicant's restaurants, and do not show use of the mark in the advertisement of restaurant services to identify and distinguish those services from those of others.



  *3 Finally, since the decision in the McDonald's case is not citable as precedent and since we find the factual situation presented herein to differ from that in the McDonald's case, we believe the Examining Attorney was justified in changing her position relative to withdrawal of the refusal of registration and we do not agree that the Examining Attorney is somehow estopped from maintaining her refusal. [FN4]



 Since we conclude that applicant has failed to show a direct association between the mark and the services, a test implicit in the statutory requirement that a service mark be used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others (See: In re Advertising & Marketing Development, Inc., ___ F.2d ___, ___ USPQ ___ (Fed.Cir.1987) (Appeal No. 87-1092 decided June 5, 1987)), the refusal of registration is believed proper.



 Decision: The refusal of registration is affirmed.



G. D. Krugman



R. F. Cissel



E. J. Seeherman



Members, Trademark Trial and Appeal Board



FN1. Application Serial No. 432,723 filed June 30, 1983.



FN2. Applicant, with its appeal brief, attached a newspaper advertisement showing the mark sought to be registered. This evidence, having been introduced after the appeal, is untimely and has not been given any consideration. See: Trademark Rule 2.142(d).



FN3. Fed.Cir.R. 18(c).



FN4. Moreover, we know of no authority for holding that an Examining Attorney is ever estopped from changing his or her stated position. While we certainly agree that changing positions on an issue is often irritating to an applicant and is frowned upon as a general practice, such a change in position will occasionally occur due to the Examining Attorney's reevaluation of his or her position.


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