Home Nike items TTABlog test: Can “CALI BANH MI” be confused with “BÁNH MÌ & CHÈ CALI” for catering services? – Trademark

TTABlog test: Can “CALI BANH MI” be confused with “BÁNH MÌ & CHÈ CALI” for catering services? – Trademark


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The USPTO refused to register the proposed trademark CALI BANH MI for “Catering services offering banh mi chopsticks, banh mi sandwiches, pastries, noodle bowls, rice bowls, salad bowls, soups, boba tea drinks and mixed drinks” [BANH
MI disclaimed]noting probable confusion with the registered trademark BÁNH MÌ & CHÈ CALI for “Catering services; Take-out catering services” [BANH MI AND CHI] denied. Services overlap, but what about brands? How do you think that came out? In re Cali Banh Mi Inc.serial number 90000386 (July 29, 2022) [not precedential] (Review by Cynthia C. Lynch).


The broad reference to “restaurant services” in the cited registration encompasses the narrower services cited in the subject application. The Commission must assume that these legally identical services travel through the same commercial channels to the same categories of consumers.

Moreover, since the services concerned are partly legally identical, a lesser degree of similarity between the marks is necessary to support the finding of a likelihood of confusion.

Comparing the marks in their entirety, the board concluded that they were “similar in appearance, sound and commercial impression. The identical terms CALI and BANH MI appear in both marks, and the only additional wording of the cited mark , “& CHÈ”, simply refers to the menu items presented by the restaurant(s).” Despite the different word order, the appearance of identical words in each mark makes the marks look and sound similar overall.

[B]Both marks convey the meaning and feel of California Vietnamese cuisine or, as the plaintiff claims, California-style Vietnamese cuisine. CALI dominates both brands because all other wordings of each brand simply refer to menu items and were rejected”

The plaintiff argued that its mark “suggests a fresh and new type of Vietnamese cuisine that is popping up all over the country” and that CALI (allegedly referring to “California food culture”) means a “CALI-style interpretation[] of asian style food. “The applicant submitted 13 statements claiming that CALI” carries a supposedly different meaning, as a descriptor only of chè. Some of the statements use the same language from a Wikipedia entry. The Council was not impressed.

First, the fact that all of the registrants are from the same city and that the claimant’s CEO identifies them as having “a similar ethnic and cultural background[]” suggests that they are not representative of the unlimited commercial circuits and of the categories of consumers of the catering services cited. The applicant has not demonstrated that the general consumer public, which does not necessarily share the “good knowledge of the Vietnamese language ” and Vietnamese foods, would likely attach the same alleged linguistic meaning to the location of CALI at the beginning or end of the respective marks.

Second, the declarations were pre-printed forms where the declarant filled in their personal information. And third, there was no evidence of a recognized drink or dish named “chè Cali”, and the statements’ references to “some kind of sweet drink, dessert soup, or California-style pudding” were simply too vague to be conclusive.

The Board concluded that these statements tend to show that “both marks refer to Vietnamese foods and beverages that are ‘Cali-style’, and we believe this confirms the similarity of the meanings and commercial impressions of the marks”.

And so, the Board upheld the denial of registration.

Read comments and post your comment here.

Comment from TTABlogger: How did you do? Is it a WHY? Incidentally, the applicant had amended its application to the Supplementary Registry to overcome a denial of geographical descriptiveness.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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