American Italian Pasta Companyv.Barilla Alimentare S.p.A.

Trademark Trial and Appeal Board

May 13, 2008

No. 91161373 (T.T.A.B. May. 13, 2008)

Hearing: Mailed:
February 6, 2008 May 13, 2008
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

American Italian Pasta Company
v.
Barilla Alimentare S.p.A.
________

Opposition No. 91161373
against Serial No. 78136703
_______

Thomas H. Van Hoozer and Cheryl Burbach of Hovey Williams
LLP for American Italian Pasta Company.

G. Franklin Rothwell, Brian E. Banner and Carla C. Calcagno
of Rothwell Figg Ernst & Manbeck PC for Barilla
Alimentare S.p.A.
_______

Before Walters, Bucher and Bergsman, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Barilla Alimentare S.p.A. (applicant) seeks
registration on the Principal Register of the mark BARILLA –
AMERICA’S FAVORITE PASTA, in standard character format, for
goods identified in the application as “pasta, pasta
products, namely meals consisting primarily of pasta,
macaroni salad, pasta salad, [and] sauces for pasta” in
International Class 30.1

1 Application Serial No. 78136703 was filed on June 18, 2002
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce. No claim is made to the words “America’s
Favorite Pasta” apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91161373
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American Italian Pasta Company (opposer or AIPC) timely
filed its opposition to the application. As grounds for
opposition, opposer asserts that applicant’s mark, when
applied to applicant’s goods so resembles opposer’s
previously used marks which are the subjects of the
following applications pending before the United States
Patent and Trademark Office:
AMERICA’S FAVORITE PASTA (in standard character
format) for “pasta” in International Class 30;2 and

for “pasta” in International Class 30,3 as to be likely to
cause confusion, to cause mistake or to deceive, under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). In
particular, opposer alleges that the goods are the same and

2 Serial No. 76497489 was filed on March 14, 2003 based upon
claims of first use anywhere and first use in commerce at least as
early as September 1997. No claim is made to the word “Pasta”
apart from the mark as shown. Applicant claims acquired
distinctiveness for the entire mark.

3 Serial No. 76497190 was filed on March 14, 2003 based upon
claims of first use anywhere and first use in commerce at least as
early as May 2002. No claim is made to the word “Pasta” apart
from the mark as shown. Applicant claims acquired distinctiveness
for the words “America’s Favorite Pasta.” Both of these pending
applications have been suspended pending the disposition of the
instant Barilla application.

Opposition No. 91161373
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that applicant’s mark is confusingly similar to opposer’s
marks.
As a second ground for opposition, opposer alleges that
at the time applicant filed the opposed application, it did
not have a bona fide intention, under circumstances showing
the good faith of applicant, to use the mark in commerce.
Applicant, in its answer, denied all the salient
allegations of these claims. Applicant has asserted as
affirmative defenses that opposer’s claimed term, “America’s
Favorite Pasta,” is merely descriptive or deceptively
misdescriptive, is incapable of acquiring distinctiveness as
a trademark, and has not acquired distinctiveness as a
trademark.
Applicant’s earlier motion for summary judgment was
granted in part as to the affirmative defense that the term
“America’s Favorite Pasta” is merely descriptive, but was
denied in part as to the affirmative defenses that the term
“America’s Favorite Pasta” is incapable of acquiring
distinctiveness as a trademark and has not acquired
distinctiveness as a trademark. See Board order of July 11,
2006 at 10.
Opposition No. 91161373
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I. THE RECORD
By operation of Trademark Rule 2.122, 37 CFR § 2.122,
the record includes the pleadings and the file of the
involved application.
The record also includes the following testimony and
evidence:
A. Opposer’s Evidence

1. Opposer’s Notice of Reliance filed on August
25, 2006, introducing into the record
certified copies of third-party registrations
containing the words “America’ Favorite …”
and copies of the file wrappers of the four
applications applicant filed on June 18,
2002;
2. Opposer’s Notice of Reliance filed on
November 13, 2006, introducing into the
record certified copies of the applications
and file histories of opposer’s two pending
applications [Ser. Nos. 76497489 and
76497190] discussed above; and a certified
copy of applicant’s U.S. Registration No.
2790465 for ITALY’s #1 PASTA.
3. Opposer’s Notice of Reliance filed on
November 13, 2006, pursuant to Rule
Opposition No. 91161373
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2.120(j)(5), introducing into the record
applicant’s complete responses to opposer’s
interrogatories and requests for admission;
4. the testimonial deposition of Andrew John
Lericos, vice president marketing, AIPC,
taken on November 3, 2006, and exhibits
thereto;
5. the testimonial deposition of Anne
Willoughby, President and CEO of Willoughby
Design Group, taken on November 3, 2006, and
exhibits thereto; and
6. the testimonial deposition of Timothy Scott
Webster, former president and CEO of AIPC
from 1992 to December 2005, taken on November
9, 2006, and exhibits thereto.
B. Applicant’s Evidence

1. Applicant’s notice of reliance filed on
January 12, 2006, introducing into the record
the following:
a. Opposer’s Answers to Applicant’s First
Requests for Admissions;
b. Opposer’s Answers to Applicant’s Second
Requests for Admissions;
c. Opposer’s Answers to Applicant’s Third
Set of Requests for Admissions Nos. 15—20;
d. Opposer’s Answers to Applicant’s Fourth
Set of Requests for Admissions Nos. 21—37;
Opposition No. 91161373
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e. Opposer’s Answers to Applicant’s Fifth
Set of Requests for Admissions Nos. 38—82;
f. Opposer’s Supplemental Answers to
Applicant’s Fifth Set of Requests for
Admissions Nos. 38—82;
g. Opposer’s Answers to Applicant’s First
Set of Interrogatories;
h. Opposer’s Answers to Applicant’s Second
Set of Interrogatories;
i. Opposer’s Answers to Applicant’s Third
Set of Interrogatories;
j. Opposer’s Answers to Applicant’s Fourth
Set of Interrogatories; and
k. Opposer’s Confidential Attorneys’ Eyes
Only Supplemental Answers to Applicant’s
Fourth Set of Interrogatories.

2. the testimonial deposition of Sergio Pereira,
vice president of marketing for Barilla
America, taken on December 19, 2006, and
exhibits thereto;
3. the testimonial deposition of Prof. Kenneth
B. Germain, partner at Thompson Hine, LLP,
taken on December 20, 2006, and exhibits
thereto; and
4. the testimonial deposition of Joslyn Nicole
Poquette, client services account manager for
NameProtect, Inc., taken January 9, 2007, and
exhibits thereto.
Consistent with the parties’ protective agreement
executed by the parties during November and December 2004
and filed with the United States Patent and Trademark Office
Opposition No. 91161373
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on February 7, 2005, both parties have designated testimony
and evidence as confidential, and portions of some testimony
and evidence have been filed with the TTAB under seal.
II. PRELIMINARY MATTERS:
Opposer has asked that the reports and testimony of
Prof. Kenneth B. Germain be stricken from the record because
they have no probative value to us in this proceeding.
Prof. Germain proffered opinions related to the following
issues: whether opposer’s “America's Favorite Pasta” term
has acquired distinctiveness; the overall credibility of
opposer’s witnesses; and whether or not BestFoods conveyed
to opposer any interest it may have had in the “America’s
Favorite Pasta” term.
We do not look to the testimony of this highly-
qualified expert for ultimate questions of law, nor, on the
other hand, do we dismiss his judgments about the
distinctiveness of opposer’s claimed source-indicator
because he is a frequently-used “hired gun.” His testimony
is admissible and has been considered, as reflected in our
opinion herein.
Opposer has also asked that the testimony deposition of
Joslyn Poquette, an investigator with NameProtect, be
stricken from the record. Ms. Poquette was attempting to
refute the impact of almost a hundred trademark
Opposition No. 91161373
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registrations having marks beginning with "AMERICA'S
FAVORITE ….” Inasmuch as we find that such marks are
generally capable of acquiring distinctiveness, while we
have considered Ms. Poquette’s testimony, we find it to be
of limited probative value.
Conversely, applicant has asked that we give limited
weight to the testimony and report of opposer’s witness, Ann
Willoughby. We accord her testimony the weight of an expert
in the design aspects of product packaging and advertising.
While we find Ms. Willoughby’s timeline of Mueller’s history
to be useful as a context for the current dispute, we do not
place significance on any single piece of this timeline not
otherwise authenticated or corroborated in this record.
III. FACTUAL FINDINGS
The record establishes all of the following facts in
this case.
• Opposer is the current owner of the Mueller’s brand of
pasta. Mueller’s pasta products have been sold in the
U.S. for over 140 years.
• The term “America’s Favorite” first appeared on Mueller’s
pasta packaging in the mid-1950’s. Opposer’s predecessor-
in-interest began using the expression “America’s Favorite
Opposition No. 91161373
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Pasta” on promotional materials for the Mueller’s line of
pasta products at least as early as May 31, 1989.
• BestFoods, opposer’s predecessor-in-interest, used
“America’s Favorite Pasta” on the packaging of Mueller's
brand of dried pasta beginning in 1997. In September
1997, opposer became the exclusive producer of the
Mueller’s brand of pasta, and in November 2000, opposer
purchased the Mueller’s trademarks. In mid 2002, opposer
incorporated Mueller’s historic old “flag brand” symbol
into a new composite design on the packaging, further
emphasizing the “American-ness” of Mueller’s pasta:

• Sellers of pasta in the U.S. market have devoted limited
resources to media advertising.4 The focus for
AIPC/Mueller’s promotional efforts has been on the
packaging, on aggressive coupon campaigns in major
markets, and on the visual “brand block” on designing the
shelves of retail markets. [Lericos Declaration, ¶¶ 5 and
6].

4 A notable exception for opposer has been the print and radio
advertising campaigns featuring Rachel Ray, a famous television
personality, who offers cooking tips using Mueller’s pasta.
Opposition No. 91161373
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• Applicant filed the involved intent-to-use trademark
application for BARILLA — AMERICA'S FAVORITE PASTA on June 18,
2002, motivated by its express desire to mark the fact
that Barilla brand pasta products had become the highest
selling brand of pasta in the United States. Applicant
stated that it filed this application in order to “notify
consumers that contrary to Mueller’s false claim, Barilla
was the leading brand of pasta in terms of market share in
the United States.” [Barilla’s Response to Interrogatory
No. 2, Opposer’s Notice of Reliance, Ex. 219].
• At the insistence of the Trademark Examining Attorney,
applicant disclaimed the term “America’s Favorite Pasta”
during the prosecution of its application.
• On the same date that the current application was filed,
applicant filed three other intent-to-use applications
covering the same goods: BARILLA — AMERICA'S PREFERRED PASTA;
BARILLA — AMERICA'S #1 PASTA; and BARILLA — AMERICA'S BEST PASTA.5
IV. ANALYSIS
A. Standing
Opposer’s standing is a threshold inquiry made by the
Board in every inter partes case. In Ritchie v. Simpson,

5 On November 25, 2004, Barilla permitted its application for
BARILLA —AMERICA’S BEST PASTA to go abandoned.
Opposition No. 91161373
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170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999), the Federal
Circuit has enunciated a liberal threshold for determining
standing, i.e., whether one’s belief that one will be (is)
damaged by the registration is reasonable and reflects a
real interest in the case. See also Jewelers Vigilance
Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021, 2023 (Fed. Cir. 1987); and Lipton Industries, Inc. v.
Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA
1982). Opposer has submitted substantial evidence of its
use for years of the term “America’s Favorite Pasta.” We
consider this evidence as sufficient to establish opposer’s
interest and, therefore, standing in this proceeding.
B. Priority
The earliest date on which applicant can rely is the
filing date of its application, June 18, 2002.
Opposer is not relying on a registration, and has
admitted that the term “America’s Favorite Pasta,” is not
inherently distinctive. Based upon all of the evidence in
this record, we find that, at best, the term “America’s
Favorite Pasta,” in all three of the marks involved herein,
is merely descriptive when used in connection with pasta and
pasta products. Accordingly, with respect to opposer’s
pleaded common law use of the term “America’s Favorite
Pasta,” opposer’s claim of priority turns upon opposer’s
Opposition No. 91161373
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demonstrating that this term had acquired distinctiveness
prior to June 18, 2002, when applicant filed its intent-to-
use application for BARILLA – AMERICA’S FAVORITE PASTA.
Perma Ceram Enterprises Inc. v. Preco Industrial Ltd.,
23 USPQ2d 1134, 1136 (TTAB 1992).
C. Is the term “America’s Favorite Pasta” capable of
achieving trademark significance?

Applicant has taken the position that the term
“America’s Favorite Pasta” is incapable of acquiring
distinctiveness as a trademark. While opposer does not
dispute that this term is a generally laudatory phrase,
laudation does not per se prevent a mark from being
registrable. See In re Bush Brothers & Co., 884 F.2d 569,
12 USPQ2d 1058, 1060 (Fed. Cir. 1989).
In some cases, a phrase or slogan can be so highly
laudatory and descriptive as to be incapable of acquiring
distinctiveness as a trademark. In re Boston Beer Co.,
198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) [THE BEST BEER IN
AMERICA was a common claim of superiority used descriptively
by others before applicant’s claimed usage]. However, we do
not find “America’s Favorite Pasta” to be so highly
laudatory and descriptive of the qualities of opposer’s
product that the slogan could not function as a trademark to
distinguish AIPC’s goods and serve as an indication of
Opposition No. 91161373
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origin. Although the record contains a reference to a book
having a similar title, the record does not show that this
is a common phrase used descriptively by others. Moreover,
opposer’s use of the word “Favorite” in the context of this
phrase cannot be said to be a clear claim of superiority.
Unlike THE BEST BEER IN AMERICA, the phrase involved herein is a
bit more ambiguous, and could be perceived by some as
indicating that the involved manufacturer leads in sales, to
others that it is a national brand, and to yet others that
people prefer it because of its taste, or other positive
characteristics. See American Italian Pasta Co. v. New
World Pasta Co., 371 F.3d 387, 71 USPQ2d 1046 (8th Cir. 2004)
[in a false advertising claim under Section 43(a) of the
Trademark Act of 1946, the appellate court affirmed the
district court’s finding that the phrase “America’s Favorite
Pasta” standing alone is not a statement of fact].
In fact, opposer has demonstrated through dozens of
third-party registrations that the Supplemental Register is
home to a myriad of composite marks containing an identical
construction, i.e., “America’s Favorite ….”
Opposition No. 91161373
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D. Has opposer demonstrated acquired distinctiveness
as of June 18, 2002?

Certainly, no opposition based upon Section 2(d) of the
Lanham Act can be sustained unless the opposer has proven
that the allegedly conflicting trademark actually identifies
it as the source of the goods. Otto Roth & Co. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40, 44-45 (CCPA 1981).
Accordingly, the most critical and hotly-contested issue
before us is whether or not opposer has demonstrated that
the term “America’s Favorite Pasta” had acquired
distinctiveness as a source indicator prior to the time
applicant filed the involved application. Having found that
this term is indeed capable of acquiring distinctiveness as
a trademark, we turn, then, to take a closer look at all of
the evidence in the record bearing on this question.
In order to place the voluminous evidence making up
this record into context, we search for the historical and
marketing background of these pasta-makers. The record
shows that applicant and opposer are industry leaders in the
retail pasta market in the United States. This litigation
represents the latest chapter in the “pasta wars” in this
country dating back at least to the early 1980’s. Employing
martial language, opposer AIPC/Mueller cites to applicant
Barilla’s “calculated attack on AIPC’s trademark rights,”
while applicant Barilla points to opposer AIPC’s/Mueller’s
Opposition No. 91161373
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continuing “false claim” of being the leading pasta brand in
the U.S.
Opposer is a vertically-integrated U.S. firm having
several decades in the domestic pasta-making business. In
late-2000, opposer became the owner of the Mueller’s
trademarks. Its “Muellerland” area of retail sales is
largely in the portion of the country located east of the
Mississippi River.
In the mid-1990’s, Barilla, a leading Italian pasta-
making company, entered the U.S. market in a big way,
including establishing a large manufacturing plant in the
Midwest. Unlike Mueller’s, Barilla sells pasta in the U.S.
from coast-to-coast.
Over the past dozen years, the competition between the
parties for market share has been intense. Before the dawn
of the new century, Barilla appears to have passed Mueller’s
earlier share as market-leader in the U.S., and it was
several years after achieving this level of market
penetration that Barilla submitted four different intent-to-
use trademark applications on the same day in June 2002:
BARILLA — AMERICA'S PREFERRED PASTA, BARILLA — AMERICA'S #1 PASTA,
BARILLA — AMERICA'S BEST PASTA and BARILLA – AMERICA’S FAVORITE PASTA.
When the involved application was published for opposition,
opposer brought the current action.
Opposition No. 91161373
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Having been imbued with the “American-ness” of the
Mueller’s tradition, opposer stresses the marketing gestalt
into which its posture in June 2002 should be viewed. Its
branding expert points out the continuity from a flag design
on Mueller’s pasta (1914) to the present stars-and-stripes
design; the decades of continuous red-white-and-blue
packaging (since the 1930’s); packaging from the 1940’s
touting “FACTORY – Modern, Clean, American”; the promotional
uses of “America’s favorite” on product packaging in
conjunction with the Mueller’s brand in the mid-1950’s; the
fact that generations of family members responsible for food
preparation have known of Mueller’s as an “American” brand;
that opposer’s predecessor-in-interest began using
“America’s Favorite Pasta” on promotional materials in 1989,
and on packaging in 1997; and since 1997, the packaging of
more than a billion pounds of Mueller’s pasta has been
prominently marked with this term. In fact, the record
shows that in the years immediately before applicant filed
the involved applications, opposer was selling annually over
100 million pounds of Mueller’s pasta in its signature
packaging, containing in a prominent manner the term
“America’s Favorite Pasta.” Opposer’s Confidential
Attorneys’ Eyes Only Supplemental Answers to Applicant’s
Opposition No. 91161373
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Fourth Set of Interrogatories (filed under seal),
Interrogatory No. 35.
While the involved phrase is certainly viewed as a tag-
line that is consistently part of opposer’s branding image,
opposer has to concede that it has not demonstrated any
usage of the term “America’s Favorite Pasta” as a stand-
alone brand, or shown usage of the term on packaging apart
from opposer’s house mark, Mueller’s.
A specific, long-used sentence on the back of the
product packaging was highlighted by both parties for
conflicting propositions. Prof. Germain critiques opposer’s
ending a paragraph of prose with “Taste why Mueller’s is
America’s favorite pasta!” as detracting from the source-
indicating capability of the term “America’s Favorite Pasta”
located elsewhere on the packaging. By contrast, opposer
seems to spin this into something akin to “look for”
advertising, not unlike “Ask your grocer for ‘America’s
Favorite Pasta’.”
Certainly, there is no testimony or polling evidence
suggesting that any consumers ask for “America’s Favorite
Pasta.” On the other hand, in consumer preference and brand
awareness polling done over the years by opposer for
business reasons (i.e., not in preparation for litigation),
the term “America’s favorite” scores higher for pasta
Opposition No. 91161373
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products from opposer than for the competing products from
applicant. By contrast, applicant’s Barilla brand scores
significantly higher on “Italy’s #1” and “Authentic
Italian.” This is consistent with the way these respective
products have been branded (packaged and promoted) over the
years. Nonetheless, amidst the twenty-five or more
characteristics of pasta products evaluated by consumers,
the “America’s favorite” attribute is clearly not one of the
strongest attributes of opposer’s/Mueller’s brand pasta
revealed in these surveys. See Synovate study “AIPC Brand
Health Tracking Study, March 2004, Opposer’s Ex. 79,
Applicant’s Ex. 17B, Bates No. A011351, Confidential,
Attorneys’ Eyes Only. One proposed packaging re-design
emphasizing a patriotic flag design (NB: in the wake of
“September 11”) did not appeal to consumers as much as did
the traditional Mueller’s design or a proposed “plate
design.”
There are admittedly no bright lines to guide our
decision-making on this complex, factual issue.
Nonetheless, our finding of acquired distinctiveness is
supported by substantial evidence, including testimony,
sales figures, surveys and other evidence.
For good or for ill, at the time applicant filed this
application, opposer and its predecessors in interest had
Opposition No. 91161373
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spent more than 135 years building the goodwill of a
branding image tied to the “American-ness” of the Mueller’s
brand of pasta. Evidence of this fact is not tied to
extensive media advertising, but is tied first and foremost
to the packaging on more than a hundred million pounds of
pasta a year, and supported by aggressive coupon campaigns
distributing many millions of coupons to markets throughout
Muellerland.
By contrast, applicant’s branding image has been linked
to the continuing perception that truly authentic pasta is
associated with its Italian roots. Applicant/Barilla, since
arriving here in 1995, through its pasta promotion and pasta
product packaging – adorned in red, white and green, the
colors of the Italian flag - has unapologetically embraced
its Italian heritage. In fact, applicant has a federal
trademark registration for its own long-used tag-line, ITALY'S
#1 PASTA. [Webster Dep. at 73].
Accordingly, applicant’s/Barilla’s brand identity is
connected to Italy in much the same way opposer’s/Mueller’s
brand identity has been tied to the U.S. To the extent that
these parties are such fierce competitors in a field of
basic food commodities where price/value is a primary factor
in consumers’ purchasing decisions, product differentiation
may well turn on subtle nuances. We are convinced by this
Opposition No. 91161373
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record that opposer has strengthened an American-themed
brand identity that Mueller’s owners has been building for
more than 130 years, and which should not be subject to
taking by the new market leader – whose success in this
market has been built on a very different brand-identity.
As to applicant’s arguments that whatever rights
opposer’s predecessor-in-interest may have had in this
phrase was not conveyed to opposer, it is true that the
listing of trademarks named in the agreement’s schedule of
marks is most abbreviated, and certainly does not include
this phrase. Nonetheless, the entire agreement makes clear
the intentions of the parties, and we are satisfied that
whatever rights opposer’s predecessor had in this phrase –
along with the explicitly-named terms like “Mueller’s,” and
including the other reputation-based components of Mueller’s
trade dress and overall branding image – conveyed to
opposer, along with the goodwill that passed to opposer as a
result of this agreement.
E. Likelihood of Confusion
Having found that opposer has demonstrated that the
term “America’s Favorite Pasta” had acquired distinctiveness
as a source indicator prior to the time applicant filed the
involved application, we turn our attention to the question
of whether or not there is a likelihood of confusion herein.
Opposition No. 91161373
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Specifically, the focus of our determination is on the
issue of whether or not applicant’s mark, BARILLA – AMERICA’S
FAVORITE PASTA, when used in connection with “pasta, pasta
products, namely meals consisting primarily of pasta,
macaroni salad, pasta salad, sauces for pasta,” so resemble
opposer’s AMERICA’S FAVORITE PASTA mark for pasta, as to be
likely to cause confusion, to cause mistake or to deceive as
to source or sponsorship.
Our determination must be based upon our analysis of
all of the probative facts in evidence that are relevant to
the factors bearing on the issue of likelihood of confusion.
See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We examine first the du Pont factor focusing on the
relatedness of the goods as described in applicant’s
Opposition No. 91161373
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application and the goods on which opposer has demonstrated
use of the term “America’s Favorite Pasta.” Both parties
are selling pasta, and applicant does not argue otherwise.
Hence, we conclude that the respective goods are legally
identical, and this factor heavily favors opposer.
As to channels of trade and classes of consumers, both
are selling pasta at retail to ordinary consumers, so these
related du Pont factors also favor opposer.
Finally, we turn to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial
impression. See Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). We also begin this discussion
of the similarity of the marks mindful of black letter
trademark case law that where, as here, the marks are
applied to “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 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992) [finding CENTURY LIFE OF AMERICA for insurance
underwriting services confusingly similar to opposer's
CENTURY 21 mark for insurance brokerage services]; and
Centraz Industries Inc. v. Spartan Chemical Co., 77 USPQ2d
Opposition No. 91161373
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1698, 1700 (TTAB 2006) [finding and ICE SHINE
confusingly similar for floor-refinishing preparations].
Applicant has essentially taken opposer’s tag-line in
its entirety and simply added its house mark to the front of
it. As a general rule, likelihood of confusion is not
obviated between identical marks merely by adding one’s
house mark. To the contrary, the purchaser of Mueller’s
brand pasta products who associates “America’s Favorite
Pasta” with opposer, upon seeing “Barilla – America’s
Favorite Pasta,” will likely assume incorrectly that there
is some relationship, sponsorship or affiliation between
Mueller’s and Barilla. See e.g., In re The U.S. Shoe Corp.,
229 USPQ 707 (TTAB 1985) [CAREER IMAGE for clothing likely
to be confused with CREST CAREER IMAGES for uniforms]
;
In re Apparel Ventures, Inc., 229 USPQ 225 (TTAB 1986)

for clothing
likely to be
confused with
for footwear;

Opposition No. 91161373
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In re Riddle, 225 USPQ 630 (TTAB 1985)
[RICHARD PETTY’S ACCU-TUNE for automotive
service stations likely to be confused with
ACCUTUNE for automotive testing equipment];
and In re C. F. Hathaway Co., 190 UPSQ 343 (TTAB 1976)
[HATHAWAY GOLF CLASSIC for men’s knitted sport shirts likely
to be confused with GOLF CLASSIC for men’s hats; e.g., the
addition of the house mark is an “aggravation rather than a
justification”]. Because we have found that the phrase
“America’s Favorite Pasta” has acquired distinctiveness,
it functions as a trademark indicating that opposer’s phrase
is uniquely associated with a single source. Therefore, the
addition of applicant’s house mark, BARILLA, to the beginning
of opposer’s phrase only adds to the likelihood of source
confusion, were applicant to use this mark.
Accordingly, based upon all of the relevant du Pont
factors, we find that there is a likelihood of confusion
herein.
F. Applicant’s bona fide intention to use this phrase
Finally, we note that opposer also charges that
applicant lacked the requisite bona fide intention to use
this phrase in commerce at the time the application was
filed. However, given our determination that opposer has
Opposition No. 91161373
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priority of use and that there is a likelihood of confusion
herein, we find it unnecessary to reach a determination on
the question of whether or not applicant has demonstrated
during this proceeding its bona fide intention to use the
involved mark in the ordinary course of trade, consistent
with the definitional language of § 45 of the Lanham Act.
Decision: The opposition is sustained on the basis of
opposer’s priority and a likelihood of confusion with
opposer’s marks, and registration to applicant is hereby
refused.