Never Give Up: How SIDECAR SLIDER BAR Proves Persistence Pays Off in Trademark Prosecution
Bucking the trend of recent Section(d) refusal affirmances, the Trademark Trial and Appeal Board (“TTAB”) delivered a surprising victory to the applicant in In re Restaurant Concept Management, LLC,[1] finding no likelihood of confusion between SIDECAR SLIDER BAR and the registered marks SIDECAR and SIDECAR SOCIAL for similar services.
Restaurant Concept Management, LLC (“Applicant”) sought to register the standard character mark SIDECAR SLIDER BAR (with “SLIDER BAR” disclaimed) (U.S. Serial No. 98/051,196) and SIDECAR SLIDER BAR & Design (U.S. Serial No. 66/818,36) for “Bar services; Catering services; Restaurant services; Restaurant services, including sit-down service of food and take-out restaurant services” in Class 43 (the “Applications”). The Examining Attorney refused registration of the Applications based on Section 2(d) of the Trademark Act, finding a likelihood of confusion with the registered mark SIDECAR (U.S. Reg. No. 4,795,362) for “Restaurant services; Coffee shop services” in Class 43, owned by Sidecar Doughnuts LLC, in addition to and SIDECAR SOCIAL (U.S. Reg. No. 6,681,837) and SIDECAR SOCIAL & Design (U.S. Reg. No. 6,681,836) for “Bar services ancillary to entertainment services, namely, providing facilities for video arcades, karaoke lounges, billiards, shuffle board, table tennis, foosball, bocce ball, darts, and basketball” in Class 43, owned by Tips License Co., LLC.
Despite the Board’s finding that the parties’ respective services were in part legally identical and presumed to travel through the same channels of trade to the same target consumers, the sixth DuPont factor—“[t]he number and nature of similar marks in use on similar goods”—proved dispositive and weighed heavily in favor of a finding of no likelihood of confusion. In particular, the Board found that the term SIDECAR is both conceptually and commercially weak. First, the term is highly suggestive when used in connection with restaurant and bar services because it references a popular cocktail served in bars and restaurants. Second, the Board pointed to Applicant’s Internet evidence showing thirty-three (33) third-party uses of marks containing SIDECAR in connection with restaurant, bar, or related services to conclude that “SIDECAR is widely used in connection with both restaurant and bar services” and thus “entitled to a narrower scope of protection[.]”
The Board also analyzed the similarity of the marks under the first DuPont factor while expressly relying on its findings with respect to the sixth DuPont factor. The Board found that while the marks would normally be considered similar, the extensive third-party use evidence rendered the term SIDECAR weak and thus, consumers would “look to the additional elements to distinguish the marks, even where the additional elements are descriptive or otherwise weak.” As a result, the addition of the terms SLIDER BAR to Applicant’s mark, though descriptive and disclaimed, was sufficient to render the marks distinguishable, even when used in connection with identical services.
This decision serves as a powerful reminder to practitioners and applicants alike to persist with well-founded weakness or “crowded field” arguments, even in the face of repeated rejections. The fact that Applicant prevailed only on appeal after maintaining the same core arguments throughout the prosecution process underscores a fundamental truth of trademark prosecution: sometimes you really do have to go all the way.
[1] In re Restaurant Concept Management, LLC, Docket No. 98051196, Serial Nos. 98051196 and 98051234 (August 15, 2025) [not precedential] (Opinion by Judge Mary Beth Myles).
