American Italian Pasta Co.v.Homestead, Inc. and New World Pasta Co.

Trademark Trial and Appeal Board

Jul 24, 2003

No. 91110644 (T.T.A.B. Jul. 24, 2003)

Mailed: July 24, 2003
Paper No.13
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
American Italian Pasta Company, substituted for Gooch Foods,
Inc.1
v.
Homestead, Inc. and New World Pasta Company
_____
Opposition No. 107,599
to application Serial No. 75/194,595
filed on November 7, 1996
Opposition No. 110,644
to application Serial No. 75/368,367
filed on October 6, 1997
Cancellation No. 26,165
to Registration No. 1,818,079
issued January 25, 1994
_____
1 On April 23, 2003, the Board granted plaintiff's uncontested
motion to substitute. In footnote 3 of their trial brief filed
December 16, 2002, defendants specifically state that they did
not oppose the motion but noted that the documentation filed by
plaintiff in support of its motion made reference to a third
party, Archer-Daniels-Midland Company. Defendants invited
plaintiff to provide an explanation for this reference as part of
its reply brief, and further stated if that defendants "learn
that ADM had some interest in the pleaded registrations that was
not heretofore known, [defendants] reserve the right to seek to
reopen the record in this proceeding to take discovery from ADM."
Defendant cannot reserve a right to reopen discovery in this
manner, and the Board's April 23, 2003 order stands. In any
event, plaintiff has provided an explanation in its reply brief
that Gooch Foods, Inc. is a wholly-owned subsidiary of Archer-
Daniels-Midland Company.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition Nos. 107,599 and 110, 664
Canc. No. 26, 165
2
Thomas H. Van Hoozer of Hovey Williams LLP for American
Italian Pasta Company.
Cory M. Amron and William H. Oldach III of Vorys, Sater,
Seymour and Pease LLP for Homestead, Inc. and New World
Pasta Company.
______
Before Simms, Seeherman and Drost, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
This is a consolidated proceeding in which American
Italian Pasta Company seeks to prevent the registration of
two marks, LA BELLA ROSA depicted in a typed drawing, and LA
BELLA ROSA and design, and also seeks to cancel a
registration for LA BELLA ROSA BRAND and design. The
applications and the registration identify the goods as dry
pasta, and each includes the statement that "The English
translation of 'LA BELLA ROSA' is 'the beautiful rose'."
The registration was originally issued to, and the
applications were originally filed by, Homestead Inc., but
were subsequently assigned, and Office records now show
ownership in New World Pasta Company. Hereafter, these
entities will be referred to collectively and/or
individually as "New World."
The design marks for application serial no. 75/194,595
and registration no. 1,818,079, respectively, are shown
below:
Opposition Nos. 107,599 and 110, 664
Canc. No. 26, 165
3
The applications have been opposed, and the
registration is sought to be cancelled, on the ground of
priority and likelihood of confusion. Specifically,
American Italian Pasta Company (hereafter AIPC) has alleged
that it is the prior user of various LA ROSA marks for pasta
products, bread crumbs and other food products; that it is
the owner of the six registrations shown below, certified
copies of which were submitted as exhibits; and that New
World's marks and goods are so similar to AIPC's marks and
goods that confusion is likely.
Reg. No.
Mark
for Goods
1,396,0032
LA ROSA
for Alimentary pastes and bread crumbs
2 Issued June 3, 1986; Section 8 affidavit accepted; Section 15
affidavit received.
Opposition Nos. 107,599 and 110, 664
Canc. No. 26, 165
4
623,1933
for Alimentary pastes, pizza pie mix, and canned sauce
therefor, canned spaghetti sauces, with meat, without meat,
with mushrooms and marinara, ravioli with meat in sauce,
meat balls in sauce, and sausage links with sauce
389,8684
for Butter, macaroni products, noodles and pastina, a
macaroni product cut up in small fanciful shapes
313,4185
for Alimentary paste products
651,5416
for Alimentary pastes, pizza pie mix, and canned sauce
therefor, canned spaghetti sauces, with meat, without meat,
with mushrooms and marinara, ravioli with meat in sauce, and
cheese ravioli in sauce, meat balls in sauce, sausage links
with sauce, and canned soups
3 Issued March 13, 1956; Section 8 affidavit accepted; Section
15 affidavit received; renewed twice.
4 Issued August 26, 1941; Section 8 affidavit accepted; Section
15 affidavit received; renewed twice.
5 Issued May 29, 1934; Section 8 affidavit accepted; Section 15
affidavit received; renewed three times.
6 Issued September 10, 1957; Section 8 affidavit accepted;
Section 15 affidavit received; renewed twice.
Opposition Nos. 107,599 and 110, 664
Canc. No. 26, 165
5
1,390,1177
for Spaghetti, lasagna, macaroni, noodles and bread crumbs.
Each of the registrations states that "LA ROSA" translates
into English as "The Rose."
New World denied the salient allegations of the notices
of opposition and petition for cancellation, and asserted
certain affirmative defenses. New World did not submit any
evidence in support of these defenses, and acknowledged, at
footnote 10 of its reply brief, that it does "not rely on
any affirmative defenses." Therefore, we will not list
these affirmative claims, nor have we given them any further
consideration.
New World also counterclaimed to cancel AIPC's pleaded
registrations Nos. 313,418 and 651,541 in their entirety; to
partially cancel Registration No. 389,868 with respect to
"butter"; and to partially cancel Registration No. 623,193
with respect to "pizza pie mix, and canned sauce therefor,
canned spaghetti sauces, with meat, without meat, with
mushrooms and marinara, ravioli with meat in sauce,
meatballs in sauce, and sausage links with sauce." It
7 Issued April 15, 1986; Section 8 affidavit accepted; Section
15 affidavit received.
Opposition Nos. 107,599 and 110, 664
Canc. No. 26, 165
6
should be noted that New World has not attempted to cancel
AIPC's pleaded registrations Nos. 1,390,117 and 1,396,003.
AIPC has filed its brief as plaintiff in the
oppositions and cancellations; New World has filed its brief
as defendant in the oppositions and cancellation and as
plaintiff in the counterclaims; and AIPC has filed a
combined brief as defendant in the counterclaims and reply
brief as plaintiff in the oppositions/cancellation. An oral
hearing was not requested.
The record includes the pleadings; the files of the
applications opposed and the registration sought to be
cancelled by AIPC; and the files of the four registrations
owned by AIPC which New World has counterclaimed to cancel.
Because AIPC submitted, with its pleadings, certified copies
of its pleaded registrations, these registrations are of
record. See Trademark Rule 2.122(d)(1).8 AIPC did not make
any additional evidence of record, and New World did not
submit any evidence whatsoever.
Turning first to New World's counterclaims to cancel
AIPC's registrations, as noted, New World has not submitted
any evidence in support of its counterclaims. However, in
its answer to the counterclaims for partial cancellation,
8 The registrations which are the subject of the counterclaims
are also of record because the registration files are of record
as a result of the counterclaims. See Trademark Rule
2.122(b)(1).
Opposition Nos. 107,599 and 110, 664
Canc. No. 26, 165
7
AIPC has admitted that, with respect to Registration No.
389,868, it has abandoned its rights with respect to butter
for failure to use the mark for these goods for a period in
excess of three years, and that the registration should be
partially cancelled. Similarly, AIPC has admitted that it
has abandoned its rights in Registration No. 623,193 with
respect to "pizza pie mix, and canned sauce therefor, canned
spaghetti sauces, with meat, without meat, with mushrooms
and marinara, ravioli with meat in sauce, meatballs in
sauce, and sausage links with sauce," and that the
registration should be partially cancelled. AIPC in its
brief filed January 21, 2003, "concedes to the partial
cancellation of Registration No. 623,193 on the basis of the
non-use of [these goods]" and "concedes to the partial
cancellation of" Registration No. 389,868 with respect to
butter on the ground of non-use. Accordingly, the
counterclaims to partially cancel these registrations are
granted.
With respect to the counterclaims to cancel
Registration Nos. 313,418 and 651,541 in their entireties,
New World has not submitted any evidence in support of these
counterclaims, and has acknowledged, at footnote 8 of its
brief, that it does not rely on such counterclaims.
Therefore, the counterclaims with respect to these
registrations are dismissed.
Opposition Nos. 107,599 and 110, 664
Canc. No. 26, 165
8
Thus, in determining the oppositions and petition to
cancel brought by AIPC, AIPC may rely on its registrations
for LA ROSA for alimentary pastes and bread crumbs; LA ROSA
in script form (Registration No. 623,193) for alimentary
pastes; LA ROSA and "left rose" design for "macaroni
products, noodles and pastina, a macaroni product cut up in
small fanciful shapes" (Registration No. 389,868) and for
alimentary paste products (Registration No. 313,418); LA
ROSA and "right rose" design for, inter alia, alimentary
pastes, canned spaghetti sauces, and ravioli with meat in
sauce and cheese ravioli in sauce; and LA ROSA with "upper
rose" design for spaghetti, lasagna, macaroni, noodles and
bread crumbs.
First, with respect to the oppositions, priority is not
in issue in view of AIPC's registrations. King Candy
Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). With respect to the cancellation
proceeding, the earliest date on which New World can rely is
the October 28, 1992 filing date of the application which
eventually issued into its registration. See, e.g., Hilson
Research Inc. v. Society for Human Resource Management, 27
USPQ2d 1423, 1428-29 (TTAB 1993) at n. 13. However, the
application filing dates of all of AIPC's pleaded
registrations all precede this date, most having issued
decades earlier.
Opposition Nos. 107,599 and 110, 664
Canc. No. 26, 165
9
In determining the issue of likelihood of confusion, we
must analyze all of the probative facts in evidence that are
relevant to the factors set forth in In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
any likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities
between the goods. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
With respect to the goods, they are, in part,
identical. New World's goods are identified as "dry pasta."
"Pasta," of course, is "paste or dough made of flour and
water, used dried, as in macaroni, or fresh, as in
ravioli."9 These goods are, thus, legally identical to the
alimentary pastes, spaghetti, lasagna, macaroni, noodles,
and pastina identified in AIPC's various registrations. As
such, they must be deemed to be sold through the same
channels of trade to the same classes of consumers.
We turn next to a consideration of the marks, keeping
in mind that "when marks would appear on virtually identical
goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines." Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d
9 The American Heritage Dictionary of the English Language,
©1970. The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition Nos. 107,599 and 110, 664
Canc. No. 26, 165
10
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). New World's
marks all consist of the words LA BELLA ROSA; in one
application, there is also a rose design which reinforces
the meaning of the word ROSA, which means "rose" in Italian.
The registered mark also includes the word BRAND, but this
word, the equivalent of "trademark", has no source-
identifying significance. Neither does the rather ordinary
script or type style in which the stylized marks are
depicted. Thus, the dominant portion of New World's marks
is the phrase LA BELLA ROSA. LA ROSA is also the dominant
portion of AIPC's marks. As with New World's mark, the
design of the rose merely reinforces the meaning of LA ROSA.
Although marks must be compared in their entireties, it is
well established that there is nothing improper in stating
that, for rational reasons, more or less weight has been
given to a particular feature of a mark. See In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Although New World's marks contain the word BELLA, and
AIPC's do not, we do not find this difference sufficient to
distinguish the marks. The words LA ROSA in both marks
still have the same appearance and pronunciation, and New
World's design mark has a rose design, as do four of AIPC's
marks. The marks are also virtually identical in meaning,
with AIPC's mark meaning THE ROSE, and New World's mark
meaning THE BEAUTIFUL ROSE. For those people who are
Opposition Nos. 107,599 and 110, 664
Canc. No. 26, 165
11
familiar with Italian, the similarity in meaning will be
clear. Those who are not familiar with Italian may still,
because BELLA is a simple Italian word, and because ROSA
sounds like "rose" and the meaning is emphasized by the
design element, understand that the marks are similar in
connotation. As for those who will not recognize the
meaning at all, the additional term BELLA, placed between
the identical elements LA and ROSA, will not distinguish the
marks. The marks still appear to be in the same foreign
language, even if the consumer cannot identify that language
as Italian, and have the same beginning and ending words.
Accordingly, we find that the commercial impression of
AIPC's and New World's marks are the same.
It must be remembered that pasta is an inexpensive food
item, bought by the general public. Its purchase is not
likely to be the subject of great deliberation, and
consumers will not spend much time examining trademarks for
subtle differences. Under actual marketing conditions
consumers do not generally have the opportunity to make
side-by-side comparisons of marks, so they must rely upon
hazy past recollections. Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255 (TTAB 1980). Given the
fallibility of memory, consumers are not likely to remember
the differences between the parties' marks. Thus, a
consumer who is familiar with AIPC's LA ROSA trademarks for
Opposition Nos. 107,599 and 110, 664
Canc. No. 26, 165
12
pasta products, seeing New World's LA BELLA ROSA products
for the identical goods, is likely to not even notice the
differences between the marks or, if he or she does notice,
is likely to assume that the marks are variants of each
other.
New World has argued that AIPC's marks are weak, and
entitled to a limited scope of protection, because LA ROSA
is both a surname and because ROSA is descriptive of pasta
sauce. There are many problems with this position. With
respect to the surname claim, New World has presented no
evidence that "La Rosa" is a surname. To remedy this
oversight, it asks the Board to take judicial notice that La
Rosa is a surname. However, this is not the type of fact
that is not subject to reasonable dispute. See FRE 201.
New World has not pointed to any authority to support our
taking judicial notice of this adjudicative "fact." This is
not the type of fact that is set forth in TBMP § 712.01, or
the cases discussed in that section.
As for the so-called descriptiveness of "Rosa" for
pasta sauce, we note preliminarily that the goods at issue
are, in general, pasta rather than pasta sauce, and
therefore "rosa" would not be descriptive and entitled to a
limited scope of protection for such goods. More
importantly, New World has submitted no evidence to show
that "rosa" is descriptive of pasta sauce. Again, New World
Opposition Nos. 107,599 and 110, 664
Canc. No. 26, 165
13
seeks to remedy this failure by asking us to take judicial
notice of its statement that "a simple internet search for
the term 'rosa sauce' produces hundreds of recipes and menus
featuring a rosa sauce (comprising cream with tomatoes or
tomato sauce) to be served with pasta." Brief, footnote 6.
An internet search would not normally be an appropriate
subject for judicial notice; certainly we could not take
judicial statement of New World's one sentence general
comment about what its search revealed.
In any event, even if there were evidence to support a
finding that AIPC's registrations were entitled to a limited
scope of protection, that protection would still extend to
the use of a very similar mark (similar even to the extent
of being in the same foreign language) on identical goods.
In reaching our conclusion that confusion is likely, we
have not given any weight to the factor of fame. As
previously discussed, AIPC has not submitted any evidence
except for its registrations. Thus, we have no information
about the amount of its sales and promotion of its goods
from which to find that its marks are famous.
The fact that AIPC has not submitted any evidence of
actual confusion, however, does not require us to find that
confusion is not likely. Evidence of actual confusion is
notoriously difficult to obtain. Further, because there is
no evidence in this record as to either AIPC's or New
Opposition Nos. 107,599 and 110, 664
Canc. No. 26, 165
14
World's areas of geographic distribution, we cannot
determine whether there has been an opportunity for
confusion to occur, such that a lack of actual confusion
would indicate no likelihood of confusion.
The parties have argued about the effect to be given
New World's intent in adopting its marks. However, because
there is no evidence whatsoever on this factor, we must
regard it as neutral.
In conclusion, we find that the duPont factors either
favor AIPC (e.g., similarity of the marks, similarity of the
goods, similarity in channels in trade and customers, lack
of care in purchasing) or are neutral (e.g., lack of actual
confusion, intent of New World). We further find that New
World's applied-for LA BELLA ROSA marks and its registered
LA BELLA ROSA BRAND mark, all for dry pasta, are likely to
cause confusion with AIPC's six registered marks.
Decision: AIPC's oppositions to Serial Nos. 75/194,595
and 75/368,367 are sustained, and its petition to cancel
Registration No. 1,818,079 is granted. New World's
counterclaims to partially cancel Registration No. 389,868
with respect to "butter" and to partially cancel
Registration No. 623,193 with respect to "pizza pie mix, and
canned sauce therefor, canned spaghetti sauces, with meat,
without meat, with mushrooms and marinara, ravioli with meat
in sauce, meatballs in sauce, and sausage links with sauce"
Opposition Nos. 107,599 and 110, 664
Canc. No. 26, 165
15
are granted, and these items will be cancelled from the
respective registrations in due course. New World's
counterclaims to cancel Registration Nos. 313,418 and
651,541 are denied.