Anthony Gaeto

Trademark Trial and Appeal Board

Aug 20, 2021

88831498 (T.T.A.B. Aug. 20, 2021)

Mailed: August 20, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Anthony Gaeto
————
Serial No. 88831498
————
Brent D. Sausser of Sausser Summers, PC,
for Anthony Gaeto.

Daniel F. Capshaw, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
————
Before Pologeorgis, Larkin, and Hudis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Anthony Gaeto (“Applicant”) seeks registration on the Principal Register of the
standard character mark BUONA MATTINA for “Coffee machines, electric; Electric
apparatus for making coffee; Electric espresso machines” in International Class 11.1

1 Application Serial No. 88831498 was filed on March 12, 2020, based on an allegation of use
in commerce under Section 1(a) of the Trademark Act, 15. U.S.C. 1051(a), claiming 2015 as
both the date of first use and the date of first use in commerce. The application includes the
following translation statement: “The English translation of BUONA MATTINA in the mark
is ‘good morning,’ ‘well this morning,’ or ‘early’.”
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Serial No. 88831498
2
The Trademark Examining Attorney applied the doctrine of foreign equivalents
to refuse registration of Applicant’s mark under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the standard
character mark GOOD MORNING registered on the Principal Register for goods
including “ground coffee; whole bean coffee” in International Class 30.2
When the refusal was made final, Applicant appealed and requested
reconsideration. When the request for reconsideration was denied, this appeal
resumed. Both Applicant and the Examining Attorney filed briefs. For the reasons
explained below, we affirm the refusal.3
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor for
which there is evidence and argument of record. See In re Guild Mortg. Co., 912 F.3d

2 Registration No. 4530333, issued on May 13, 2014; Section 8 and 15 affidavits accepted and
acknowledged, respectively, on July 30, 2020.
The cited registration identifies other goods, namely, “mixes in the nature of concentrates,
syrups or powders used in the preparation of coffee-based iced beverages; coffee-based
beverages; espresso-based beverages; coffee-based semi-frozen beverages not being dairy-
based or vegetable based; coffee-based beverages containing milk, or soy, or cocoa or whey.”
These goods, however, do not form the basis of the Examining Attorney’s Section 2(d) refusal
and, thus, are not relevant to this appeal.
3 The TTABVUE and Trademark Status & Document Retrieval (“TSDR”) citations refer to
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .pdf version of the documents.
Serial No. 88831498
3
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned
to each DuPont factor depending on the evidence presented. See Citigroup Inc. v.
Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011);
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he
various evidentiary factors may play more or less weighty roles in any particular
determination.”).
In any likelihood of confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. Relatedness of the Goods
We initially turn to the comparison of the goods under the second DuPont factor.
In making our determination regarding the relatedness of the goods, we must look to
the goods as identified in Applicant’s application and the cited registration. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918
Serial No. 88831498
4
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods, the particular channels of
trade or the class of purchasers to which the sales of goods are directed.”)); see also In
re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
Moreover, registration must be refused in a particular class if an applicant’s mark
for any of its identified goods in that class is likely to cause confusion with the
registrant’s mark for any of its identified goods. See SquirtCo v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983) (holding that a single good from among
several may sustain a finding of likelihood of confusion); Tuxedo Monopoly, Inc. v.
Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of
confusion must be found if there is likely to be confusion with respect to any item that
comes within the identification of goods or services in the application).
It is well-settled that the goods need not be identical or competitive to support a
holding of likelihood of confusion. It is sufficient that the respective goods are related
in some manner, or that the conditions and activities surrounding the marketing of
the goods are such that they would or could be encountered by the same persons
under circumstances that could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same source. See Coach Servs. Inc.,
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
(citation omitted); Hilson Research, Inc. v. Soc’y for Human Res. Mgmt., 27 USPQ2d
Serial No. 88831498
5
1423, 1432 (TTAB 1993). The issue here, of course, is not whether consumers would
confuse Applicant’s and Registrant’s goods, but rather whether there is a likelihood
of confusion as to the source of these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d
1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984).
Registrant’s goods include “ground coffee; whole bean coffee.” Applicant’s goods
are identified as “Coffee machines, electric; Electric apparatus for making coffee;
Electric espresso machines.” Applicant argues that Registrant’s goods are all
beverages and, therefore, are unrelated to its identified goods.4 While some of goods
listed in the cited registration are already-made beverages, as noted above, the
Examining Attorney’s Section 2(d) refusal is limited to Registrant’s goods identified
as “ground coffee; whole bean coffee.” Accordingly, Applicant’s argument that the
goods at issue are unrelated is unpersuasive.
To show that the involved goods are related, the Examining Attorney submitted
copies of 15 use-based third-party registrations showing that the same entity has
registered a single mark identifying both “electric coffee makers,” as identified in the
application, and “coffee beans” or “coffee,” as identified in the cited registration.5
Although such registrations are not evidence that the marks shown therein are in
use or that the public is familiar with them, they nonetheless have some probative
value to the extent that they serve to suggest that the goods listed therein are of a
kind which may emanate from a single source under a single mark. See In re Albert

4 Applicant’s Appeal Brief, p. 8, 10 TTABVUE 9.
5 August 12, 2020 Final Office Action, at TSDR pp. 157-202.
Serial No. 88831498
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Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467 (TTAB 1988).
The Examining Attorney also submitted the following Internet evidence showing
third parties producing and offering for sale electric coffee makers and whole bean or
ground coffee under the same mark:6
 www.nespresso.com showing NESPRESSO brand electric coffee and
espresso machines and NESPRESSO brand ground coffee.

 www.illy.com showing ILLY brand electric coffee and espresso machines
and ILLY brand ground and whole bean coffee.

 www.williams-sonoma.com showing WILLIAMS SONOMA brand
electric coffee and espresso machines and WILLIAMS SONOMA brand
ground and whole bean coffee.

 www.lavazza.us showing LAVAZZA brand electric coffee and espresso
machines and LAVAZZA brand whole bean and ground coffee.

 www.delonghi.com showing DELONGHI brand electric coffee and
espresso machines and DELONGHI brand whole bean coffee.

 www.dualit.com showing DUALIT brand electric coffee and espresso
machines and DUALIT brand ground coffee.

 www.sonofabarista.com showing SON OF A BARISTA brand electric
coffee and espresso machines and SON OF A BARISTA brand ground
coffee.

 www.dolce-gusto.com showing NESCAFE DOLCE GUSTO brand
electric coffee machines and NESCAFE DOLCE GUSTO brand ground
coffee.

6 June 9, 2020 Office Action, at TSDR pp. 7-25 and August 12, 2020 Final Office Action, at
TSDR pp. 15-156 and 203-213.
Serial No. 88831498
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 www.espressioneusa.com, www.surlatable.com and www.amazon.com
showing ESPRESSIONE brand electric coffee and espresso machines
and ESPRESSIONE brand whole bean and ground coffee.

 www.drivecoffee.com showing DRIVE brand electric coffee machines
and DRIVE brand whole bean coffee.

 www.cafeviante.com showing CAFEE VIANTE brand electric espresso
machines and CAFEE VIANTE brand ground and whole bean coffee.

 www.shoponline.melitta.com showing MELITTA brand electric coffee
machines and MELITTA brand ground and whole bean coffee.

As this evidence demonstrates, multiple third parties offer both electric coffee
makers and coffee, whether ground or whole bean, under the same mark. This
constitutes further evidence that consumers may expect to find both Applicant’s and
Registrant’s goods as identified in the involved application and cited registration as
emanating from a common source and, as such, the goods are closely related.
Further, electric coffee and espresso machines require coffee to operate and indeed
have as their raison d’etre the production of coffee drinks from ground coffee beans.
Where evidence shows that the goods at issue have complementary uses, and thus
are often used together or otherwise purchased by the same purchasers for the same
or related purposes, such goods have generally been found to be sufficiently related
such that confusion would be likely if they are marketed under the same or similar
marks. See, e.g., In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223
USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because
they are often used in combination and noting that “[s]uch complementary use has
long been recognized as a relevant consideration in determining a likelihood of
confusion”); In re Hester Indus., Inc., 231 USPQ 881, 882-83 (TTAB 1986) (holding
Serial No. 88831498
8
bread and frozen chicken parts to be related because they are complementary goods
that are appropriate for use together in sandwiches and may otherwise be sold to the
same purchasers for use in a single meal). Here, the third-party web pages submitted
the Examining Attorney show that the involved goods are inherently used together
and may be purchased by the same purchasers for making coffee drinks. Thus, the
goods are complementary and, therefore, related.
Accordingly, the second DuPont factor weighs in favor of finding a likelihood of
confusion.
B. Similarities of Trade Channels/Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third du
Pont factor. Because the identifications in the application and registration for the
involved marks have no restrictions on channels of trade, we must presume that the
goods travel in all channels of trade appropriate for such goods, and to all of their
usual customers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (citing Kalart Co.,
Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958)).
Applicant maintains that the target consumers for his goods are adults seeking
products that make coffee, while the Registrant’s goods are offered to those who drink
coffee and that the trade channels of the parties’ respective goods are dissimilar.7
We disagree. Coffee and coffee makers can be purchased at brick-and-mortar
coffee specialty retailers, as well as via online coffee specialty retailers (as

7 Applicant’s Appeal Brief, p. 8, 10 TTABVUE 9.
Serial No. 88831498
9
demonstrated by the evidence of record).8 Moreover, the classes of purchasers of
Registrant’s coffee and Applicant’s electric coffee makers overlap to the extent that
people who desire to purchase and make coffee by home brewing would necessarily
be the same consumers who desire to purchase coffee makers. Thus, at a minimum,
the parties’ respective trade channels and classes of purchasers overlap.
Accordingly, the third DuPont factor also favors a finding of likelihood of
confusion.
C. Comparison of the Marks under the Doctrine of Foreign
Equivalents
Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567. “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Inn at St. John's, LLC, 126 USPQ2d 1742, 1746 (TTAB
2018), aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019) (citing In re Davia, 110
USPQ2d 1810, 1812 (TTAB 2014)).
We compare the Italian phrase BUONA MATTINA with the English wording
GOOD MORNING under the doctrine of foreign equivalents, under which “foreign
words from common languages are translated into English to determine ... similarity
of connotation in order to ascertain confusing similarity with English word marks.”
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d

8 June 9, 2020 Office Action, at TSDR pp. 7-25 and August 12, 2020 Final Office Action, at
TSDR pp. 15-156 and 203-213.
Serial No. 88831498
10
1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). The doctrine is applied only when it is
likely that the ordinary American purchaser would stop and translate the word into
its English equivalent. Id. The “ordinary American purchaser” “includes all American
purchasers, including those proficient in a non-English language who would
ordinarily be expected to translate words into English.” In re Spirits Int'l, N.V., 563
F.3d 1347, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009).
As the Board has observed:
The purpose of the Trademark Act is two-fold: to protect business and to
protect the consumer. … The doctrine of foreign equivalents is
fundamental to this protection. It extends the protection of the Act to
those consumers in this country who speak other languages in addition
to English.
…
At least one significant group of “ordinary American purchasers” is the
purchaser who is knowledgeable in English as well as the pertinent
foreign language.

In re Spirits Int’l N.V., 86 USPQ2d 1078, 1083-85 (TTAB 2008), rev’d on other
grounds, 90 USPQ2d 1489 (Fed. Cir. 2009), quoted in 2 MCCARTHY ON TRADEMARKS
AND UNFAIR COMPETITION § 11:34 (5th ed. June 2021 update) (“[t]he rationale of the
doctrine is to protect the perceptions of ordinary American consumers who are
multilingual.”).
The doctrine of foreign equivalents has been applied to Italian words that have
English equivalents. In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (finding
similarity and likelihood of confusion between the Italian term “LUPO” and its
English equivalent “WOLF” for items of clothing). In Ithaca Indus., the Board held
that “it does not require any authority to conclude that Italian is a common, major
Serial No. 88831498
11
language in the world and is spoken by many people in the United States.” Id. at 704-
705.
In this regard, the Examining Attorney submitted evidence demonstrating that
Italian is spoken by a sizeable population in the United States.9 Additionally, the
Examining Attorney submitted the following evidence to demonstrate that the
English translation of the Italian term “buona mattina” is “good morning”:

 Applicant’s statement in the March 12, 2020 application that “The
English translation of BUONA MATTINA in the mark is good
morning.”

 Statement from the USPTO translation department showing
BUONA MATTINA translating directly to GOOD MORNING and
stating “The English translation of the non-English wording in the
mark is “good morning (Not a greeting. The greeting for ‘Good
Morning!’ is BUONGIORNO!.)” and “For a greeting, the expression
BUONGIORNO [=Good day!/Good morning!] is used when one sees
for the first time a person in the morning, and all the way until noon
and very early p.m. hours. . . .buona mattina would be more or less
[“Uh, a good morning].”10

 Online translation from Google Translate showing BUONA
MATTINA translating directly to GOOD MORNING.11

 Online translation from Bing.com/Microsoft showing BUONA
MATTINA translating directly to GOOD MORNING.12

 Online translation from www.deepl.com showing BUONA MATTINA
translating directly to GOOD MORNING.13

9 August 12, 2020 Final Office Action, at TSDR pp. 9-14.
10 Id., at TSDR pp. 231-233.
11 June 9, 2020 Office Action, at TSDR p. 4.
12 August 12, 2020 Final Office Action, at TSDR p. 214.
13 Id., at TSDR p. 225.
Serial No. 88831498
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 Online translation from Systran Translate showing BUONA
MATTINA translating directly to GOOD MORNING.14

 Online translation from Reverso Translation showing BUONA
MATTINA translating directly to GOOD MORNING.15

Further, Applicant’s own product description of his identified goods provided on
third-party retailer websites, such as Amazon.com and Easilycaried.com,
demonstrate that the English translation of BUONA MATTINA is “good morning,”
as shown below:16
Applicant’s Product Description on www.amazon.com

14 Id., at TSDR p. 227.
15 Id., at TSDR p. 229.
16 Id., at TSDR pp. 215-224.
Serial No. 88831498
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Portion of Applicant’s Product Description on www.easilycarried.com

Based on the foregoing evidence, we find that relevant consumers would likely
stop and translate BUONA MATTINA into its English equivalent “GOOD
MORNING.” To be sure, exceptions have arisen from time to time in which relevant
consumers would not “stop and translate” words from common, modern languages.
See, e.g., Cont'l Nut Co. v. Cordon Bleu, 494 F.2d 1397, 181 USPQ 647 (CCPA 1974)
(finding that the French term CORDON BLEU had such a well-established meaning
that even French speakers would not translate it to “blue ribbon.”); In re Tia Maria,
Inc., 188 USPQ 524 (TTAB 1975) (holding confusion unlikely between AUNT MARY's
for canned fruits and vegetables and TIA MARIA, as the Spanish mark named a
particular person in the context of restaurant services).
Those exceptions are inapplicable here. There is no evidence that BUONA
MATTINA is so commonly used among English speakers, like CORDON BLEU, that
translation becomes unnecessary. See In re Thomas, 79 USPQ2d 1021, 1025 (TTAB
2006) (“This situation ... differs from those cases in which it was found that the mark
would not be translated because of the inherent nature of the mark.”). Also, there are
no personal names, like TIA MARIA and AUNT MARY, to differentiate the marks.
Serial No. 88831498
14
See Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *7
(TTAB 2019) (RICARDO distinguishable from RICHARD).
Applicant argues that BUONA MATTINA has multiple meanings.17 In support of
his position, Applicant submitted a screenshot from the website www.reverso.net
which Applicant claims translates the wording BUONA MATTINA to mean “well this
morning” or “early.”18 However, the evidence of record, including Applicant’s own
product descriptions, overwhelmingly demonstrates that the wording BUONA
MATTINA translates directly to GOOD MORNING. Additionally, Applicant contends
that use of the salutation GOOD MORNING is weak when used in association with
coffee or coffee-related products and services.19 In support of his position, Applicant
submitted various third-party registrations and third-party pending applications.20
With regard to the third-party pending applications, we note that they have no
probative value other than as evidence that the applications were filed. In re Toshiba
Med. Sys. Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009); In re Fiesta Palms LLC, 85
USPQ2d 1360, 1366 n.7 (TTAB 2007); TRADEMARK TRIAL AND APPEAL BOARD MANUAL
OF PROCEDURE (TBMP) § 1208.02 (June 2021). Further, the third-party registrations
submitted by Applicant for related goods are for marks different from those at issue.
None of the third-party registered marks referred to, for related goods, include the

17 Applicant’s Appeal Brief, p. 7, 10 TTABVUE 8.
18 July 22, 2020 Response to Office Action, Exhibit A, at TSDR p.16.
19 Applicant’s Appeal Brief, pp. 8-13, 10 TTABVUE 9-14.
20 December 10, 2020 Request for Reconsideration, Exhibit B, at TSDR pp. 20-131.
Serial No. 88831498
15
wording GOOD MORNING or foreign wording which translates directly to GOOD
MORNING. Moreover, several of the third-party registrations list goods or services
unrelated to electric coffee makers and ground and whole bean coffee. As an example,
Applicant references the mark GREAT MORNING.21 This mark is for restaurant and
bar services and is not identical to the cited mark. Notwithstanding, there is no
evidence in the record that such services are related to the goods at issue.
Accordingly, Applicant’s third-party applications and registrations do not
demonstrate that the wording GOOD MORNING or its foreign language equivalent
is weak or diluted when used in association with coffee or coffee-related goods or
services.
In sum, under the doctrine of foreign equivalents, we find that although the
marks BUOANA MATTINA and GOOD MORNING are visually and aurally
dissimilar, they are nonetheless similar, if not identical, in connotation and
commercial impression. As noted above, similarity of the marks in any one of the
elements of appearance, sound, meaning or commercial impression may be sufficient
to find that they are confusingly similar. Here, we find that the similarity of
BUOANA MATTINA and GOOD MORNING in meaning and overall commercial
impression outweighs the marks’ dissimilarity in appearance and pronunciation. The
first DuPont factor thus weighs in favor of finding a likelihood of confusion.
II. Conclusion
We have considered all of the arguments and evidence of record and have found

21 December 10, 2020 Request for Reconsideration, Exhibit B, at TSDR pp. 126-131.
Serial No. 88831498
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that: (1) the marks, while not similar in appearance or pronunciation, are nonetheless
quite similar if not identical in meaning and commercial impression; (2) Applicant’s
“Coffee machines, electric; Electric apparatus for making coffee; Electric espresso
machines” are related and complimentary in nature to Registrant’s “ground coffee;
whole bean coffee;” and (3) the parties’ respective goods move in overlapping trade
channels and would be offered to the same or overlapping classes of purchasers. In
view thereof, we conclude that Applicant’s BUONA MATTINA mark, as used in
connection with the goods identified in his involved application, so resembles the cited
standard character mark GOOD MORNING for Registrant’s listed “ground coffee;
whole bean coffee” as to be likely to cause confusion or mistake, or to deceive under
Section 2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s BUONA MATTINA mark under
Section 2(d) of the Trademark Act is affirmed.