Honeyhole Sandwiches, Inc. filed a service mark application to register the mark HONEYHOLE SANDWICHES “restaurant with bar specializing in serving proprietary unique sandwiches, local beers and alcohol in a vibrant, eclectic environment.” This is a very detailed description to begin with when filing a trademark application, and usually you do not see much detail in a goods or services description until the trademark application examination requires it to overcome a registration refusal from the Trademark Office. Unfortunately, the detail voluntarily provided by Honeyhole Sandwiches at the beginning of the registration process did not prevent a registration refusal. The Trademark Office refused registration of the HONEYHOLE SANDWICHES mark on the ground that it was likely to cause confusion with previously registered mark HONEY HOLE for “alcoholic beverages except beers.”
In In re Honeyhole Sandwiches Inc., as it has stated so many times in the past, the Trademark Trial and Appeal Board said that the relatedness of the goods or services determination is based on the goods and services descriptions in the application and registrations at issue. The goods and services need not be identical to find likelihood of confusion. Rather, they need only be related in such a way that the circumstances surrounding their marketing would result in relevant consumers mistakenly believing that the goods and services originate from or are associated with the same source. In the case of food or beverage items and restaurant services, the TTAB looks for evidence of a specific commercial relationship between the goods and restaurant services that indicates consumers would be likely to believe an association exists between the specific food or beverage items and restaurant services.
Honeyhole Sandwiches argued that its identification of services specifically states that it specializes in sandwiches not alcoholic beverages. However, the Board pointed out that the services description, that Honeyhole Sandwiches voluntarily chose, also indicates that it serves “local beers and alcohol.” And to compound the problem for Honeyhole Sandwiches, its menu contains the label “Honeyhole Cocktails.” There was also evidence offered that showed restaurants private labeling their own alcoholic beverages. Even though Honeyhole Sandwiches does not specialize in alcoholic beverages, the Board found consumers were likely to mistakenly believe there was a connection between HONEY HOLE whiskey and Honeyhole Sandwiches restaurant.
What can we learn from this case as trademark searchers? First, it is another example of how our intuition can lead us astray when it comes to assessing the critically important relatedness of goods factor. Second, it is a reminder that we must search broadly during the search process. If we search with a too narrow description, we are setting ourselves up to miss something important. Third, we can add value to our search results by helping our clients with their risk tolerance. Clients appreciate not only identifying landmines, but also how to potentially diffuse or avoid them.