Ana Rosa Neto Celestino Compina and Carlos Alberto Damiaõ Barroqueiro

Trademark Trial and Appeal Board

Apr 22, 2015

No. 85867859 (T.T.A.B. Apr. 22, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Ana Rosa Neto Celestino Compina
and Carlos Alberto Damiaõ Barroqueiro
_____

Serial No. 85867859
_____

Paulo A. de Almeida of Patel & Almeida PC,
for Ana Rosa Neto Celestino Compina and Carlos Alberto Damiaõ Barroquiero.
Zachry R. Sparer, Trademark Examining Attorney, Law Office115,
John Lincoski, Managing Attorney.
_____

Before Bergsman, Gorowitz and Hightower,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Ana Rosa Neto Celestino Compina and Carlos Alberto Damiaõ Barroquiero
(“Applicants”) seek registration on the Principal Register of the mark
for “hotel and restaurant services”in International Class 43.1

1 Application Serial No. 85867859 was filed on March 6, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Serial No. 85867859
- 2 -

The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered marks 2 and 3
for “restaurant services,” (both owned by the same party), as to be likely to cause
confusion.
After the Examining Attorney made the refusal final, Applicants appealed and
requested reconsideration. When the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Discussion
Our determination of the issue of likelihood of confusion is based on an analysis
of 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). See
also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 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 [or services] and differences in the marks.” See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24

2 Registration No. 2006347, issued October 8, 1996; renewed March 22, 2007.
3 Registration No. 2019165, issued November 26, 1996; renewed March 22, 2007.
Serial No. 85867859
- 3 -

(CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
A. Similarity of the Services and Channels of Trade.
We start by looking at the services at issue. Our evaluation of the services is
based on the services as identified in the registration and application. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F. 3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Further,
where the goods [and services] in a cited registration are
broadly described and there are no limitations in the
identification of [services] as to their nature, type,
channels of trade or classes of purchasers, it is presumed
that the scope of the registration encompasses all goods
[and services] of the nature and type described, that the
identified goods [and services] move in all channels of
trade that would be normal for such goods [and services],
and that the goods [and services] would be purchased by
all potential customers.
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Applicant does not contest the basis for our analysis. In fact, “Applicant does not
argue any difference between the ‘restaurant services’ recited in the application and
the registration; [and] Applicant recognizes that the restaurant services are
identical as recited and therefore presumed to travel in all normal channels of
trade, and are available to the same class of customers.” Appeal Brief, p. 9, 14
TTABVUE 10. Applicant attempts to distinguish the services based on the
purported differences in the meanings of the marks. Such distinction, if any, is
irrelevant to our determination of the relationship between the services, since as
Serial No. 85867859
- 4 -

Applicant admitted, we must determine the relationship between the services on
the basis of the identifications. Thus, Applicant’s and Registrant’s “restaurant
services” are identical.
It is settled that likelihood of confusion must be found if there is likely confusion
with respect to any item that comes within the identification of goods within a
particular class in the application and the registration. See Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)
(likelihood of confusion must be found as to the entire class if there is likely to be
confusion with respect to any item in the identification of goods or services for that
class).
B. Similarity of the marks.
The legally identical nature of Applicant’s and Registrant’s restaurant services
and their overlapping channels of trade not only weighs heavily in favor of a finding
of likelihood of confusion, but also reduces the degree of similarity of the marks
necessary to find a likelihood of confusion. In re Viterra, 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 94
USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Group Ltd., 93 USPQ2d
1243, 1248 (TTAB 2010).
Serial No. 85867859
- 5 -

With that in mind, we turn to the first du Pont factor, the similarity of the
marks. Applicant’s mark is and Registrant’s marks are
and .
Because the design element in one of the cited marks contains an additional
point of difference with Applicant’s mark, we confine our analysis to the issue of
likelihood of confusion between Applicant’s mark and the cited registration for the
mark in stylized form. If confusion is likely between those marks, there is no need
for us to consider the likelihood of confusion with the cited registration for the mark
with the design elements, while if there is no likelihood of confusion between
Applicant’s mark and the cited mark in stylized, then there would be no likelihood
of confusion with the mark with the design elements. See, e.g., In re Max Capital
Group Ltd., 93 USPQ2d at 1245.
We consider the similarity between the marks and
, and compare them “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc., 73 USPQ2d at
1691 (quoting du Pont, 177 USPQ at 567). To evaluate the similarities between
Serial No. 85867859
- 6 -

marks, the emphasis must be on the recollection of the average purchaser who
normally retains a general, rather than specific, impression of trademarks. In re
Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009) (citing Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975)). Since the services at issue are
restaurant services, the average purchaser is an ordinary consumer.
While “the similarity or dissimilarity of the marks is determined based on the
marks in their entireties … there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on a consideration of the marks in their
entireties.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985).
In this case, Applicant’s mark is a composite mark consisting of a verbal or
literal portion and a design. When evaluating a composite mark containing both
words and designs, the verbal portion of the mark is most likely to indicate the
origin of the goods to which it is affixed because it is the verbal portion of the mark
that consumers would use to refer to or request the goods. In re Viterra Inc., 101
USPQ2d at 1908, 1911. This principle is especially important in cases involving
restaurant services in view of the propensity of persons to try restaurants based
upon word-of-mouth recommendations. In re Appetito Provisions Co., Inc., 3
USPQ2d 1553, 1554 (TTAB 1987). Thus, although the design portion of Applicant’s
mark is larger than the literal portion, the most dominant portion of the mark is the
Serial No. 85867859
- 7 -

phrase CASA DO FADO. Moreover, it is the words that consumers are most likely
to remember.
With respect to this phrase, Applicant argues that “CASA DO” is the dominant
feature since it is the first part of the phrase. We disagree. “Casa” is defined in
Portuguese as “house.”4 Further, the meaning of the word “casa” as “house” has
become so well known in the United States that it is included in multiple
dictionaries, which suggests that it has become incorporated into American
English.5 Thus the phrase “CASA DO,” which means “house of,” modifies the word
FADO and is subordinate thereto. As discussed supra, the dominant feature of a
mark is given more weight than a subordinate feature. Moreover, dominant feature
of both marks is legally identical.6
The presence of an additional term in the mark does not necessarily eliminate
the likelihood of confusion if some terms are identical. In re Mighty Leaf Tea, 601
F3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010), and cases cited therein. This

4 “‘CASA DO’ … means ‘house of’ in Portuguese.” Appeal Brief, p. 8, 14 TTABVUE 9.
5 Definitions of “casa” include:
“A house.” casa.Dictionary.com. Dictionary.com Unabridged. Random House, Inc.
http://dictionary.reference.com/browse/casa (accessed: April 20, 2015).
“A house or mansion.” Webster's Revised Unabridged Dictionary. S.v. "casa."
http://www.thefreedictionary.com/Casa (accessed: April 20, 2015).
6 We acknowledge that the mark FADÓ in the cited registration has an accent mark over
the letter “O.” However, as discussed infra, any difference between this mark and the word
FADO is de minimus. See Conwood Corp. v. S.A. Bongrain-Gerard, 190 USPQ 155, 158
(TTAB 1976) (in considering applicant’s mark GÉRAMONT, “the average member of the
American purchasing public would not normally be aware of the significance of the accent
mark appearing over the letter ‘E’ of applicant's mark, and hence would not be apt to place
too much significance or reliance on this feature of the mark as a recognition factor. The
accent mark would, in any event, be lost when the mark is used orally to order applicant’s
cheese.”).
Serial No. 85867859
- 8 -

principle is specifically applicable in cases such as this, where the additional terms
are subordinate to the term in the cited mark.
Applicant also argues that the meanings of the marks differ because “FADO” is
a Portuguese word associated with a type of music and “FADÓ” is an Irish Gaelic
term. Appeal Brief, p. 9, 14 TTABVUE 10. With respect to this contention,
Applicant further argues that
the Examining Attorney should not assume that
consumers will fail to distinguish the meanings of CASO
DO FADO and FADO (with accent) – or at least notice
that they are from different languages and may have
different meanings when applied to restaurant services.
Id. Even if we accept Applicant’s argument, it applies to consumers familiar with
Portuguese and Irish Gaelic languages. The vast majority of ordinary consumers
are not familiar with either of these languages.
Moreover, there is no evidence that consumers will either know that these
terms are from different languages or that they will distinguish the meanings of
these terms. Punctuation, such as the accent mark over the letter “O” in the cited
mark does not per se change the character of the mark. See In re Champion
International Corp., 196 USPQ 48, 49 (TTAB 1977) (holding that no distinction can
be drawn between “CHECK MATE” with or without a hyphen between the words);
see also Black and Decker Manufacturing Co. v. Big Yank Corp., 231 USPQ 484, 486
(TTAB 1986); Winn’s Stores, Inc. v. Hi-Lo, Inc., 203 USPQ 140 (TTAB 1979).
Further, since there is no correct pronunciation of a trademark, one can assume
that the pronunciation of the dominant portion of Applicant’s mark could be
identical to the pronunciation of the cited mark. StonCor Grp., Inc. v. Specialty
Serial No. 85867859
- 9 -

Coatings, Inc., 111 USPQ2d 1649, 1651 (Fed. Cir. 2014) (“there is no correct
pronunciation of a trademark that is not a recognized word”).
Accordingly, we find that the similarity between the marks outweighs any
differences and thus we find that the marks are confusingly similar.
C. Conclusion
Having considered all the evidence and argument on the relevant du Pont
factors, we find that Applicant’s mark, used in connection with “hotel and
restaurant services” is likely to cause confusion with the cited mark for
“restaurant services.”
Decision: The refusal to register Applicants’ mark is
affirmed.