Decisions · 87075988
In re Inn at St. John's, LLC
Serial No. 87075988 · Decided 2018-06-06 · Section 2(d) Ex Parte Appeal
What happened
The Board found 5IVE STEAKHOUSE (with a fork-and-knife design) for restaurant and bar services too similar to the registered mark 5IVESTEAK for identical services, and blocked the newer application from registration.
The marks
Applicant
5IVE STEAKHOUSE and design (the wording "5ive" in stylized letters, set above the design of an intersecting fork and knife, all set above the word "Steakhouse"; "Steakhouse" disclaimed)
"Restaurant and bar services," in International Class 43
Cited registration
5IVESTEAK and design (wording 5IVESTEAK presented in the colors red and brown, with red in the number "5" and letters "IVE" and brown in the letters "STEAK"; colors red and brown claimed as a feature of the mark)
"Restaurant and bar services," in Class 43
How the marks compared
| Dimension | Finding | What the Board said |
|---|---|---|
| sound | Similar | Both marks are dominated by the identical term 5IVE, pronounced ‘five,’ followed by the descriptive steak-formative wording. |
| appearance | Somewhat Similar | The shared 5IVE lettering outweighed differences in the marks' stylization and the applicant’s fork-and-knife design. |
| meaning | Similar | Both marks convey the number five paired with steak-related dining. |
| commercial impression | Similar | The Board found the marks' overall commercial impressions more similar than dissimilar given the dominant shared element. |
The Board found the marks more similar than dissimilar overall, driven by the shared dominant term 5IVE.
du Pont factors that bore on the outcome
| # | Factor | Weight | What the Board found |
|---|---|---|---|
| 1 | Similarity of the marks | Dispositive — Favored Refusal | The marks are similar in appearance, sound, connotation, and commercial impression, with 5IVE the dominant element of both. |
| 2 | Relatedness of the goods or services | Dispositive — Favored Refusal | The restaurant and bar services are identical. |
| 6 | Number and nature of similar marks in use | Neutral | Twenty-one third-party registrations without use evidence were a ‘far cry’ from the Juice Generation/Jack Wolfskin showing, leaving this factor neutral. |
| 13 | Any other established fact probative of the effect of use | Neutral | The applicant’s earlier registration was a neutral consideration. |
Why this decision is significant
Useful template for why crowded-field arguments fail on a registrations-only record — twenty-one third-party registrations without use evidence were a ‘far cry’ from Juice Generation/Jack Wolfskin — and why a prior registration ‘moving closer’ to the cited mark defeats a Strategic Partners argument.
Research significance is Trademark Valet's editorial rating of how useful a decision is to practitioners. It is not a statement of precedential weight — that is the separate Precedential field, which comes from the Board.
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The original record
Read the opinion and every filing on the Board's own docket. The summary above is our paraphrase, not a quotation from the opinion. The opinion is the authority.
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