Opryland USA Inc.

Trademark Trial and Appeal Board

Sep 19, 1997

EX (T.T.A.B. Sep. 19, 1997)

THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB SEPT 19, 97
Paper No. 18
EWH/LCB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Opryland USA Inc.
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Serial No. 74/442,309
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L. Lawton Rogers, III of Rogers & Killeen for applicant.
Angela M. Micheli, Trademark Examining Attorney, Law Office
108 (David E. Shallant, Managing Attorney)
_______
Before Simms, Hanak and Hairston, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Opryland USA Inc. of Nashville, Tennessee seeks to
register MUSIC CITY EVENTS in typed capital letters for
“catering; contract food and beverage services.” The
intent-to-use application was filed on September 30, 1993.
The Examining Attorney refused registration pursuant to
Section 2(d) of the Lanham Trademark Act on the basis that
applicant’s mark, as applied to applicant’s services, is
likely to cause confusion with the previously registered
marks MUSIC CITY ROADHOUSE in typed form and MUSIC CITY
Ser. No. 74/442,309
2
ROADHOUSE and design (shown below). Registration Nos.
1,870,843 and 1,855,385. Both registrations are owned by
the same entity and the services of both registrations are
“restaurant services.” In each registration, registrant
disclaimed the exclusive right to use the word “roadhouse”
apart from the mark in its entirety.
When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs. Applicant did not request a hearing.
In any likelihood of confusion analysis, two key
considerations are the similarities of the goods or services
and the similarities of the marks. Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976) (“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
Ser. No. 74/442,309
3
essential characteristics of the goods [or services] and
differences in the marks.”).
In considering the marks, we will base our likelihood
of confusion analysis upon a comparison of applicant’s word
mark MUSIC CITY EVENTS and registrant’s word mark MUSIC CITY
ROADHOUSE. Registrant’s other mark contains a very
prominent design feature (i.e. a large guitar) and thus if
it is determined that there is no confusion between the two
word marks, there would be no confusion between applicant’s
word mark and registrant’s word and design mark.
Obviously, both word marks share the words MUSIC CITY.
During the examination process, applicant made of record
evidence demonstrating that Nashville, Tennessee is known as
MUSIC CITY. In her appeal brief, the Examining Attorney has
now conceded that “MUSIC CITY is a nickname for the city of
Nashville” and that Nashville “is known for its country
music.” (Examining Attorney’s brief p. 3). Thus, the only
element common to both word marks is the well known nickname
of a major American city. The other portion of applicant’s
word mark (EVENTS) is totally dissimilar from the other
portion of registrant’s word mark (ROADHOUSE) in terms of
visual appearance, pronunciation and meaning. The Examining
Attorney argues that in comparing the two word marks, less
weight should be given to the ROADHOUSE portion of
registrant’s word mark because it “is disclaimed as it is
Ser. No. 74/442,309
4
descriptive of registrant’s restaurant services.”
(Examining Attorney’s brief p. 3).
The record is silent as to why registrant disclaimed
the term ROADHOUSE. However, whether disclaimed or not, the
term ROADHOUSE is rarely used in connection with restaurant
services. The word “roadhouse” is defined either as “an inn
furnishing meals and lodging to travelers” or as “an inn or
tavern usually located outside city limits and setup for
serving liquor and usually meals, for dancing, and often for
gambling.” Webster’s Third New International Dictionary
Unabridged (1976). During the examination process, the
Examining Attorney made of record photocopies of fifteen
selected pages from the Yellow Pages for Philadelphia,
Atlanta, Miami, Beverly Hills and Northern Virginia. The
heading for these fifteen selected pages is in each case
“Restaurants.” These fifteen pages contain the names of
approximately 750 restaurants. Not one of the restaurant
names incorporates the word “roadhouse” in any way
whatsoever. Moreover, not one of the Yellow Pages
advertisements uses the word “roadhouse” in a descriptive
manner (i.e. BILL’S PLACE … a great roadhouse). Thus, as
shown by the Examining Attorney’s own evidence, the term
ROADHOUSE is rarely used in the name of a restaurant or
indeed to describe a restaurant. Given the highly unusual
nature of the term ROADHOUSE as applied to restaurant
Ser. No. 74/442,309
5
services, we find that the presence of this term in
registrant’s word mark would clearly be noticed by
consumers. Moreover, the highly unusual term ROADHOUSE
serves to readily distinguish registrant’s word mark MUSIC
CITY ROADHOUSE from applicant’s mark MUSIC CITY EVENTS.
Stated somewhat differently, we are not comparing the
hypothetical word mark MUSIC CITY RESTAURANT for restaurant
services with MUSIC CITY EVENTS for catering services.1
Considering next applicant’s services and registrant’s
services, the Examining Attorney argues that “the services
are related in that they both involve the provision of food
to paying customers.” (Examining Attorney’s brief p. 5).
Applicant, of course, has never disputed this point. By the
same token, the Examining Attorney has never disputed

1 With regard to the highly unusual nature of the term ROADHOUSE
for restaurant services, we note that the dissent has elected to
consider evidence not in the record, namely, purported third-
party registrations of marks containing the term ROADHOUSE. The
action of the dissent is in clear violation of this Board’s
practice of not taking judicial notice of third-party
registrations. See Trademark Trial and Appeal Board Manual of
Procedure, Section 712.01 at page 700-45 (1st ed. 1995) and Cities
Service Co. v. WMF of America, Inc., 199 USPQ 493, 495 n. 4 (TTAB
1978). If the dissent insists upon going outside the evidentiary
record, it should at least provide to the readers of this opinion
an approximate total number of registrations for restaurant
services, night club services and “related goods” from which it
selected the purported 25 registrations containing the term
ROADHOUSE. Without this baseline, it is impossible to judge the
rarity of the term ROADHOUSE.
As for the dissent’s comment that the fifteen selected Yellow
Pages show no use of the expression “Fish Restaurant,” this is
very misleading. Many of the restaurants listed incorporate the
word “fish” in their names. As noted, none of the listed
restaurants incorporate the word “roadhouse” in their names, and
none of the restaurants use the word “roadhouse” in a descriptive
manner.
Ser. No. 74/442,309
6
applicant’s contention that “the services provided by
restaurants and caterers are significantly different” in
that “restaurant services are public place food services
provided to unrelated customers … whereas catering services
are private (not public) food services provided to related
(not unrelated) customers, i.e., sophisticated customers who
pre-plan a menu and the order and timing of food service to
their private invitees.” (Applicant’s brief pgs. 3 and 5).
While there is no separate dictionary listing for the term
“catering,” there is a dictionary listing for the term
“caterer” which supports applicant’s assertion that the
selection of a caterer is not made on a casual basis but
rather is made with considerable care. The term “caterer”
is defined as “one whose business is to arrange for and
supervise all the details as to food and service for any
social affair (as at club or private house).” Webster’s
Third New International Dictionary Unabridged (1976)
(emphasis added). Thus, the dictionary definition of the
word “caterer” supports the contention that catering does
not encompass the mere delivery of prepared, ready-to-eat
food. Stated somewhat differently, a restaurant that merely
delivers, for example, pizza or Chinese food to a home or
office is not providing catering services. In selecting a
caterer – that is someone who is responsible “to arrange for
and supervise all the details as to food and service” – we
Ser. No. 74/442,309
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believe that consumers would exercise great care and would,
by necessity, have to have a rather detailed discussion(s)
with the caterer and reach a formal understanding as to
precisely what services would be and would not be provided
by the caterer. At a minimum, an oral contract (if not a
written contract) would be entered into between the caterer
and its customer. In this regard, we note that applicant’s
entire identification of services reads as follows:
“catering; contract food and beverage services.”
Given the fact that the marks are by no means
identical; the fact that the services are not identical; and
the fact that catering services are purchased only with care
and after significant discussion with the prospective
caterer, we find that the contemporaneous use of MUSIC CITY
EVENTS for catering services and MUSIC CITY ROADHOUSE for
restaurant services is not likely to result in confusion.
In reaching our determination, we have taken into
account the Examining Attorney’s argument “that restaurants
provide catering services.” (Examining Attorney’s brief p.
5). A review of the fifteen Yellow Pages having the heading
“Restaurants” made of record by the Examining Attorney
reveals that fewer than five percent of the restaurants also
offer catering services. Moreover, in reviewing these
fifteen Yellow Pages, as well as the twelve Yellow Pages
having the heading “Caterers” also made of record by the
Ser. No. 74/442,309
8
Examining Attorney, we note that for that small percentage
of restaurants which also offer catering services, they do
so under the same service mark or trade name. In other
words, there is nothing in the record to indicate that when
a restaurant also offers catering services, it does so under
a somewhat different service mark or trade name. Based upon
the Examining Attorney’s own evidence, we have every reason
to believe that if registrant were to offer catering
services, it would do so under the service mark MUSIC CITY
ROADHOUSE. A patron familiar with MUSIC CITY ROADHOUSE
restaurant would, if she later had an occasion to employ a
caterer, have no reason to believe that registrant, if it
offered catering services, would do so under a somewhat
different service mark such as MUSIC CITY CATERING.
To cut to the quick, a consumer familiar with and
favorably impressed by MUSIC CITY ROADHOUSE as a restaurant
would not assume, in looking for a caterer, that MUSIC CITY
EVENTS was in some way associated with the former. The
absence of the highly unusual and distinctive term ROADHOUSE
(for restaurant or catering services) in the service mark
MUSIC CITY EVENTS would cause most consumers either to
assume there was no association or, at a minimum, to inquire
further as to whether there was association. It must be
remembered that mere inquiry as to possible association or
affiliation does not by itself demonstrate a likelihood of
Ser. No. 74/442,309
9
confusion. 3 J. McCarthy, McCarthy on Trademarks and Unfair
Competition Section 23:16 at page 23-39 (4th ed. 1996).
Ser. No. 74/442,309
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Decision: The refusal to register is reversed.
E. W. Hanak
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial and Appeal Board
Ser. No. 74/442,309
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Simms, Administrative Trademark Judge, dissenting:
Because I believe that applicant’s mark MUSIC CITY
EVENTS for catering and contract food and beverage services
so resembles the registered marks for restaurant services
that confusion is likely, I would affirm the refusal.
With respect to the marks, the Examining Attorney has
admitted that “Music City” is the nickname for the city of
Nashville, Tennessee. The Examining Attorney argues that
because the term “ROADHOUSE” is descriptive and disclaimed,
the dominant part of the registered mark MUSIC CITY
ROADHOUSE is the term “MUSIC CITY”. It is not clear that
the majority disputes this contention. With respect to
applicant’s mark, “MUSIC CITY EVENTS,” I agree with the
Examining Attorney, that, as applied to catering services,
the term “EVENTS” suggests a social occasion or activity
which may be catered.2 I agree, therefore, with the
Examining Attorney’s position, brief, 3:
The marks are similar in appearance as
they all contain the wording MUSIC CITY
that is the dominant feature of the two
marks. The EVENTS portion in
applicant’s mark is weaker, as it
suggests a social occasion or activity.
The ROADHOUSE portion in registrant’s
marks is disclaimed as it is descriptive
of registrant’s restaurant services.
While the examining attorney cannot
ignore a disclaimed portion of a mark
and must view marks in their entireties,

2 It is noted that the Examining Attorney had earlier required a
disclaimer of the term “EVENTS.” The Examining Attorney later
withdrew that requirement.
Ser. No. 74/442,309
12
one feature of a mark may be more
significant in creating a commercial
impression. Disclaimed matter is
typically less significant or less
dominant. Thus, the MUSIC CITY portion
is the dominant feature in both
registrant’s and applicant’s marks.
While we may accept the fact that “MUSIC CITY” is known
by a substantial number of people as the nickname for
Nashville,3 and while applicant has submitted evidence that
a number of businesses in the Nashville Yellow Pages have
this term in their business names -– Music City Drain
Cleaning, Music City Plumbing, Music City Sewer & Drain,
Music City Dodge, Music City Truck & Equipment, etc. -– the
Examining Attorney argues that this record does not show
“widespread use”, which I take to mean nationwide use or at
least use outside of the Nashville area, of this term with
respect to food and beverage providers. Applicant admits
that there are no other registrations including the words
“MUSIC CITY” for restaurant or food services.
Nevertheless, applicant contends that the term “MUSIC
CITY” is primarily geographically descriptive (or

3 There is simply no evidence or admission that MUSIC CITY is a
“well known nickname”. I think this statement is certainly
debatable. In fact, in comparison to such other city nicknames
as “The Big Apple” or “The Windy City,” the expression “MUSIC
CITY” would undoubtedly be recognized by fewer people as the
nickname of Nashville than would recognize those other nicknames
of New York City and Chicago. Indeed, I would not be surprised
if a significant number of people did not associate “MUSIC CITY”
with Nashville. Of course, to the extent that the words “MUSIC
CITY” in the registered marks are not recognized by potential
customers as the nickname of Nashville, the marks would appear to
Ser. No. 74/442,309
13
misdescriptive) and is thus a subordinate part of each mark.
According to applicant, the remainder of the respective
marks –- the words “ROADHOUSE” and “EVENTS” –- are
dominant.4 I cannot agree. When considered in the context
of the average member of the general public, either in a
geographic area which is near or which is remote from
Nashville, Tennessee, it seems to me that the dominant part
of the registered marks would be the words “MUSIC CITY.” In
this regard, I note that the registrant’s business address
is in Falls Church, Virginia. A consumer encountering the
mark MUSIC CITY ROADHOUSE in connection with restaurant
services in the Northern Virginia area, for example, who
then encounters MUSIC CITY EVENTS catering is likely, in my
opinion, to believe that the latter service is sponsored by
or otherwise emanates from the same source as the restaurant
service.
I also find fault with the majority’s conclusion that
the term “ROADHOUSE” is a “highly unusual term” as applied
to restaurant services. The majority’s statement concerning
the “rarity” of this term lacks persuasive support in this
record. By way of example, the fact that none of the
hundreds of restaurants in the copies of the Yellow Pages of
record appears to use the expression “Fish Restaurant” in

those individuals as less geographically suggestive of, and
therefore more arbitrarily associated with, restaurant services.
Ser. No. 74/442,309
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their names does not make this expression “highly unusual”
or serve to readily distinguish restaurants with these words
in their names from those that do not contain these words.
With regard to the word “roadhouse,” a quick check of the
register reveals over 25 registrations for restaurant and
night club services (as well as related goods) wherein this
term has been disclaimed-—BOOTS TEXAS ROADHOUSE, BROWN DERBY
ROADHOUSE, BUCKEYE ROADHOUSE, BUCKHEAD ROADHOUSE, CAROLINA
ROADHOUSE, CHESTER’S ROAD HOUSE, EARTHQUAKE ETHEL’S
ROADHOUSE, LOGAN’S ROADHOUSE, O’TOOLE’S ROADHOUSE,
WRANGLER’S ROADHOUSE, etc.
With respect to the services, the Examining Attorney
argues, Office Action issued March 30, 1995:
Applicant’s services are catering and
contract food and beverage services.
The registrant’s services are operating
restaurants. The services are related
because they are both involve [sic] the
provision of food. The person who ate
at registrant’s restaurant could believe
on seeing applicant’s mark on catering
services that the registrant provides
catering services as well. Also it
appears common in the food industry for
restaurants to provide catering. The
examining attorney submitted in the
Office Action No. 2 registrations which
showed restaurant and catering services
sold under the same mark. As a
consequence a confusion as to the
identity of the source of the services
could occur.

4 Elsewhere, applicant concedes that “roadhouse” is a descriptive
term for a nightclub or tavern.
Ser. No. 74/442,309
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I agree. Of course, for confusion to be found, the
respective services need not be identical or directly
competitive so long as they are related in such a manner
that they could be encountered by the same purchaser under
circumstances that could give rise to the mistaken belief
that the services come from the same source. In this
regard, this record includes numerous third-party
registrations (not mentioned by the majority) which show
that the same entity has registered the same mark for both
restaurant services and catering services. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). The
Examining Attorney has also made of record copies of pages
from several Yellow Pages directories showing that
restaurants provide catering services and so advertise in
their listings. It is also clear that the same class of
customers –- the general public -– who dine in restaurants
are also potential customers for catering services.
Applicant also admits that the services “overlap somewhat”
(brief, 2) and that some restaurants also provide catering
services and so advertise in their Yellow Pages
advertisement (reply brief, 5; Response, 2, filed April 29,
1996).
Undoubtedly, many catering companies do not operate
restaurants and many restaurants do not offer catering
services. However, I believe it to be true that in almost
Ser. No. 74/442,309
16
any community in this country a significant number of
restaurants offer catering services. In the Washington,
D.C. area, for example, that is the case. The point is not
that most people, if they even thought about it, would say
that most restaurants do not offer catering services, as the
majority seems to imply, but that the general public is
certainly aware that many restaurants do offer catering
services and that, if the average purchaser encounters the
same or similar mark in connection with a restaurant and
then in connection with a catering service, that person
would be likely to assume that the respective services come
from the same source.
I also cannot agree that the dictionary definition of
“caterer” provides support for the proposition that catering
services are selected with “great care.” There is simply no
evidence that catering services would be selected with any
higher degree of care than restaurant services. For
example, there is no evidence that a couple planning a small
catered event on a Saturday night at their home would
exercise any more care in selecting this service than if
they were taking a group of friends out to a restaurant.5
The majority also seems to make a point about the
difference between mere delivery of food and the catering

5 Indeed, it may well be that the catered event would be less
expensive than the equivalent meal for the same number of people
in a restaurant.
Ser. No. 74/442,309
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thereof. First, the difference between the two is certainly
not explained in this record. What the record does contain,
however, is listings of numerous restaurants of all types
(Chinese, Italian, Mexican, Thai, Indian, etc.) offering
“catering,” as well as such other restaurants as barbecue,
deli, luncheonette, sandwich (Subway), pizza (Armand’s
Chicago Pizzeria) and fast food restaurants (Boston Market,
Kentucky Fried Chicken) offering both “catering” in addition
to their restaurant services. Any difference there may be
in the level of service between mere food delivery and
catering services, does not, in my opinion, dispel any
likelihood of confusion, especially when such similar marks
as MUSIC CITY ROADHOUSE and MUSIC CITY EVENTS are used on
restaurant and catering services.6 We should also keep in
mind that catering services may include the full gamut of
events from the most elaborate of weddings to a simple
backyard picnic or birthday party. While undoubtedly more
care will be used in the selection of a caterer for an
elaborate wedding or other event, less care may be presumed
in the selection of catering services for less elaborate and
less expensive events, such as a child’s birthday party.
I would also point out that we are not here presented
with a situation where the respective marks convey clearly

6 If the majority is suggesting that one might be confused, by
the similarities of the marks, if a restaurant were offering mere
Ser. No. 74/442,309
18
different commercial impressions. If the marks involved
herein were, for example, MUSIC CITY BUCKAROO for restaurant
services and applicant’s mark were, say, MUSIC CITY GALAXY
for catering services, then we would be presented with a
situation where the respective marks would clearly have
significantly different commercial impressions – one a
western motif and the other perhaps an astronomical
connotation. Here, not only is the word “ROADHOUSE”
disclaimed in the registration, but applicant admits that it
is descriptive with respect to a tavern or a nightclub and
suggestive with respect to restaurant services. Similarly,
the term “EVENTS” is suggestive, as indicated above. Under
these circumstances, where the third word in each mark is
either descriptive or suggestive of the respective services
to which the mark applies and is thus of less distinguishing
nature, it is not unreasonable for one to believe that the
average person would believe that MUSIC CITY EVENTS is the
catering arm of the MUSIC CITY ROADHOUSE.
R. L. Simms
Administrative Trademark Judge,
Trademark Trial and Appeal Board

delivery of its food but not if the establishment were offering
catering, I find this hard to believe.