Bernatello's Pizza, Inc.v.Colmont Restaurant Group, LLC

Trademark Trial and Appeal Board

Dec 16, 2020

91241107 (T.T.A.B. Dec. 16, 2020)

Mailed: December 16, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Bernatello’s Pizza, Inc.
v.
Colmont Restaurant Group, LLC
___

Opposition No. 91241107
___

Laura M. Davis of DeWitt LLP and Anthony J. Bourget of Bourget Law, S.C.
for Bernatello’s Pizza, Inc.

Eric R. Harlan and William E. Carlson of Shapiro Sher Guinot & Sandler, P.A.
for Colmont Restaurant Group, LLC.
______
Before Kuhlke, Adlin and Dunn,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Colmont Restaurant Group, LLC seeks registration of LOTSA STONE
FIRED PIZZA, in standard characters (STONE FIRED PIZZA disclaimed), for
“restaurant services; restaurant carry out services; restaurants featuring delivery
services; fast casual restaurants” in International Class 43.1 In its notice of

1 Application Serial No. 87435377, filed May 3, 2017 under Section 1(a) of the Trademark Act
based on first use dates of May 5, 2016.
This Opinion is not a
Precedent of the TTAB
Opposition No. 91241107
2
opposition, Opposer Bernatello’s Pizza, Inc. alleges prior use and registration of
LOTZZA MOTZZA for “frozen pizza”2 and LOTZZA HOTZZA for “pizza.”3 Opposer’s
LOTZZA MOTZZA registration is over five years old. Opposer also alleges prior
common law use of, and ownership of a pending application to register, LOTZZA
MOTZZA in standard characters for “restaurant services; restaurant services,
namely, providing of food and beverages for consumption on and off the premises;
quick service restaurant services; restaurant services provided by mobile food kiosks;
concession stands.”4 As grounds for opposition, Opposer alleges that use of Applicant’s
mark would be likely to cause confusion with Opposer’s marks. In its answer,
Applicant denies the salient allegations in the notice of opposition, and asserts
affirmative defenses which it did not pursue or prove at trial, and which are therefore
waived. Miller v. Miller, 105 USPQ2d 1615, 1616 n.3 (TTAB 2013); Baroness Small
Estates Inc. v. Am. Wine Trade Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012).
I. The Record and Evidentiary Objections
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s involved application. In addition, Opposer
introduced:

2 Registration No. 4225275, issued October 16, 2012; Section 8 Affidavit accepted, Section 15
Affidavit acknowledged.
3 Registration No. 5073411, issued November 1, 2016.
4 Application Serial No. 87916171, filed May 10, 2018 under Section 1(a) of the Act, based on
first use dates of November 1, 2013.
Opposition No. 91241107
3
Notice of Reliance on third-party registrations, several of
Applicant’s uninvolved applications and Internet printouts
(“Opp. NOR 1”). 15 TTABVUE.5

NOR on portions of its discovery depositions of: Applicant
under Fed. R. Civ. P. 30(b)(6) (“DiGangi Disc. Tr.”), Michael
Salandra, Applicant’s founder (“Salandra Disc. Tr.”) and
Deborah Billings (“Billings Disc. Tr.”), and the exhibits
thereto; and portions of Applicant’s responses to Opposer’s
discovery requests (“Opp. NOR 2”).6 16 TTABVUE.

Testimony declaration of Chad D. Schultz, its Chief
Operating Officer (“COO”), and the exhibits thereto
(“Schultz Dec.”). 18 TTABVUE.

Rebuttal NOR on portions of Mr. Schultz’s discovery
deposition7 and an Internet printout (“Opp. Reb. NOR”).
28 TTABVUE.

Applicant introduced:
NOR on third-party registrations, Opposer’s and its
predecessor’s registrations, both pleaded and unpleaded,
and Internet printouts (“App. NOR 1”). 22 TTABVUE.

NOR on portions of its discovery deposition of Mr. Schultz
(“Schultz Disc. Tr.”), and portions of Opposer’s responses to
Applicant’s discovery requests (“App. NOR 2”). 23
TTABVUE.

Testimony declaration of Anthony DiGangi, Applicant’s
Chief Operating Officer, and the exhibits thereto (“DiGangi
Dec.”). 25 TTABVUE.

5 Citations to the record reference TTABVUE, the Board’s online docketing system. The
number preceding “TTABVUE” corresponds to the docket entry number(s), and any
number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the
cited materials appear.
6 Opp. NOR 2 includes documents Applicant produced in response to Opposer’s
interrogatories. See Trademark Rule 2.120(k)(3)(i).
7 Opposer introduced these portions of Mr. Schultz’s deposition “so that Applicant’s
designations [of other portions of the deposition] are not misleading.” 28 TTABVUE 2.
Opposition No. 91241107
4
Testimony declaration of Mr. Salandra, and the exhibits
thereto (“Salandra Dec.”). 27 TTABVUE.

Opposer’s hearsay objections to paragraphs 5-7 and 9 of Mr. Salandra’s
declaration are overruled. As Opposer acknowledges, under Fed. R. Civ. P. 801(c),
hearsay is a statement “the declarant does not make while testifying at the current
trial or hearing.” Here, while Mr. Salandra mentions “discussions” he had with Mr.
Manarelli in paragraph 5, Mr. Salandra is the declarant, not Mr. Manarelli. Mr.
Salandra does not specify or quote any particular statements by Mr. Manarelli.
Elsewhere in paragraph 5 and the other passages Opposer objects to, Mr. Salandra
testifies about knowledge he acquired, and about Mr. Manarelli, Victor Corbi and Mr.
Corbi’s grandfather, but nowhere does Mr. Salandra state that he acquired the
knowledge from any particular statement(s) made by Manarelli or the Corbis. We
hasten to add that even if we had sustained Opposer’s hearsay objections, our
ultimate decision in this case would not change.
Opposer’s objection to a portion of paragraph 29 in Mr. DiGangi’s declaration is
also overruled, as Mr. DiGangi has the requisite “personal knowledge” under Fed. R.
Evid. 602. Indeed, in paragraph 1 of his declaration, Mr. DiGangi testifies that the
entire declaration is “based on my personal knowledge,” and in paragraph 2 Mr.
DiGangi testifies that he is Applicant’s Chief Operating Officer, and thus obviously
well-situated to personally know the origins of Applicant’s former name. For example,
Mr. DiGangi specifically testifies that he recalled “seeing a photograph of a young
Victor Corbi wearing a T-shirt with the phrase ‘Lotsa Mozza’ printed on it.” 25
Opposition No. 91241107
5
TTABVUE 7 (DiGangi Dec. ¶ 29). Again, even if we had sustained this objection, our
ultimate decision in this case would not change.
II. Relevant Facts
Opposer “is a family owned and operated business that manufacturers and
distributes frozen pizza brands ….” 18 TTABVUE 3 (Schultz Dec. ¶ 2). Its frozen pizza
is sold to “grocery stores, convenience stores, taverns, schools, club stores, food service
providers [and] fundraising organizations.” Id. at 4 (Schultz Dec. ¶ 5).
Opposer acquired Five Star Foods, Inc. (“Five Star”) in 2011 or 2012, “including
the business, goodwill and branding of LOTZZA MOTZZA frozen pizza.” Id. (Schultz
Dec. ¶ 7); 23 TTABVUE 135 (Opposer’s Response to Interrogatory No. 2).8 In 2012,
Opposer “launched a new variety of frozen pizza branded as LOTZA MOTZZA BREW
PUB. This product was designed with unique ingredients and packaging distinct from
its competitors to target consumers in the marketplace for a ‘super-premium’ frozen
pizza”:

8 Mr. Schultz testified that Opposer acquired Five Star in 2011, but Opposer’s interrogatory
response indicates that the acquisition was in 2012.
Opposition No. 91241107
6
18 TTABVUE 4, 17 (Schultz Dec. ¶ 10 and Ex. A).
One of LOTZA MOTZZA frozen pizza’s “features” is “over ½ lb. of award winning
real premium Wisconsin Mozzarella cheese.” Id. at 5 (Schultz Dec. ¶ 13). As Mr.
Schultz put it during his discovery deposition, “LOTZZA MOTZZA is our brand
that screams what it is, lots of Wisconsin cheese because we put over a half
pound of cheese on that product. So that’s positioned as our heavy premium, heavy
cheese branded pizza.” 23 TTABVUE 17 (Schultz Disc. Tr. at 11) (emphasis added).
Mr. Schultz described BREW PUB as one of Opposer’s “umbrella brands.” Id.
The product is successful, as production increased from 9.3 million units in 2016
to 14.7 million in 2019, leading to Opposer expanding its pizza manufacturing facility,
increasing capacity to approximately 35 million units (presumably per year). 18
TTABVUE 5-6 (Schultz Dec. ¶¶ 14-15). Opposer “launched its LOTZZA HOTZZA
brand of frozen pizza” in February 2016. Id. at 5 (Schultz Dec. ¶ 17).
Opposer’s promotional expenses for the LOTZZA MOTZZA brand are fairly
significant, totaling more than $9 million since 2012. 18 TTABVUE 13-14 (Schultz
Dec. ¶ 31). Perhaps not surprisingly, its sales are also fairly significant, increasing
steadily from $12.8 million in 2013 to $64.7 million in 2019, and totaling
“approximately $305 million.” Id. at 14 (Schultz Dec. ¶ 33).
Opposer has also provided what it refers to as “restaurant services” since October
2012.9 Id. at 7 (Schultz Dec. ¶ 20). However, Opposer does not operate a traditional

9 Mr. Schultz testified that Five Star began using LOTZZA MOTZZA for restaurant services
in 1996, and recalled “seeing cooked LOTZZA MOTZZA pizza on the menu at a tavern in
Opposition No. 91241107
7
restaurant and its “restaurant services” are at best atypical. Specifically, while
Opposer claims to provide “restaurant services” at stadiums, bars, fairs, festivals,
charity events and elsewhere, these locations offer LOTZZA MOTZZA pizzas “cooked
from frozen.” Id. at 8, 16 (Schultz Dec. ¶¶ 23, 37). For example, during his discovery
deposition Mr. Schultz testified that LOTZZA MOTZZA frozen pizzas are delivered
to bars and taverns frozen, and the bars and taverns heat the pizzas before serving
them. 23 TTABVUE 22 (Schultz Disc. Tr. 34) (stating “[t]hey always serve it fresh
and hot ….”). The following photos showing Opposer’s “restaurant services” at Target
Center in Minneapolis are typical of other venues where Opposer claims to provide
“restaurant services”:

Green Bay, Wisconsin, in approximately 2011.” 18 TTABVUE 7 (Schultz Dec. ¶ 21). The
record does not reveal whether Five Star continuously used the mark between 1996 and 2011,
or establish that the mark was not abandoned for “restaurant services” sometime before
2011. The specific nature of Five Star’s “restaurant services” is unclear from the record, other
than Mr. Schultz’s testimony about seeing “cooked from frozen” pizza on a tavern’s menu.
Opposition No. 91241107
8
18 TTABVUE 53, 56 (Schultz Dec. Ex. F-1, F-4). The Target Center or its food service
contractor provides the kiosk, not Opposer. 23 TTABVUE 40 (Schultz Disc. Tr. 59).
In describing one of Opposer’s “restaurants” in a stadium, perhaps the one depicted
above on the right or one like it, Mr. Schultz testified: “And we had a restaurant kiosk
looking decked out, you know, LOTZZA MOTZZA with the BREW PUB sub-brand to
it. You know, those are restaurants to us, also, so – To me, it’s a gray area a little bit
on – If you are serving fresh pizza hot, you know, is that a restaurant?” 23 TTABVUE
27 (Schultz Disc. Tr. 44).10
Sometimes, these types of venues may provide tables and chairs for customers
eating Opposer’s frozen pizza after it is heated:

18 TTABVUE 62 (Schultz Dec. Ex. G-6); 23 TTABVUE 30 (Schultz Disc. Tr. 47) (“The
tables are provided by the Resch Center. The logo’ing is provided by us.”). The pizza
is not heated by Opposer’s employees, however. Rather, “[t]he food service company

10 While Mr. Schultz sometimes uses the word “fresh,” his testimony and the record as a whole
make clear that he is using the term to describe Opposer’s frozen pizzas which are heated
before being served.
Opposition No. 91241107
9
would provide the people and operate it.” 23 TTABVUE 29 (Schultz Disc. Tr. 46).
Opposer believes that these types of “restaurants” are not open every day, or on a set
schedule, but rather only when there is an event at the venue. Id. at 30-32 (Schultz
Disc. Tr. 47-49). Sometimes tables and chairs are also provided for customers of
Opposer’s “restaurant trailers,” though it is not clear who provides the tables or
chairs:

Id. at 71 (Schultz Dec. Ex. L-2). Mr. Schultz conceded that Opposer does not operate
restaurants, but rather sells pizza to what it refers to as “restaurants”:
Opposition No. 91241107
10

Id. at 41-43 (Schultz Disc. Tr. 63-65).
Mr. Schultz explained that Opposer acquired the LOTZZA MOTZZA brand in part
because of “the way it rolls off your tongue. That’s why our owners in the acquisition
of Five Star loved that brand, really wanted to take it to another level, which we did.”
23 TTABVUE 24 (Schultz Disc. Tr. 41). Mr. Schultz continued: “LOTZZA HOTZZA
was just a little bit of a takeoff of that in a variety of offering of, just like it says –
LOTZZA HOTZZA means hot pizza … spicy hot.” Id. (emphasis added). All
LOTZZA HOTZZA pizza packages also bear the LOTZZA MOTZZA mark, and all
LOTZZA MOTZZA pizza packages also bear the BREW PUB mark. Id. at 25 (Schultz
Disc. Tr. 42).
Applicant was formed in early 2015, following years of discussions between its
founder Mr. Salandra, whose prior work experience was in professional staffing, and
Joe Manarelli, whose prior experience was in restaurants and food trucks. 27
TTABVUE 2 (Salandra Dec. ¶¶ 3-4). Mr. Manarelli owned an Italian restaurant, as
well as food trucks “outfitted to rapidly cook wood fired pizza,” and suggested that
Mr. Salandra consider “a restaurant venture that prepared and served fast-cooked
Opposition No. 91241107
11
fresh pizzas to its customers in a restaurant setting.” Id. at 2-3 (Salandra Dec. ¶¶ 4-
5). Mr. Manarelli also suggested that the business be called Lotsa Mozza, which was
an expression his friend Victor Corbi’s grandfather used “when describing how much
cheese the Corbi family business used.” Id. at 3 (Salandra Dec. ¶ 5).
In May 2015 Victor Corbi assigned to Applicant: the LOTSA MOZZA mark; the
domain name “lotsamozza.com;” social media accounts named LOTSA MOZZA with
Facebook, Twitter, Instagram, Pinterest, Tumblr and Vine; and several
LOTSA/LOTSA MOZZA hashtags. Id. at 3-4, 10-12 (Salandra Dec. ¶ 9 and Ex. B).
Applicant filed applications to register the LOTSA MOZZA mark about two months
later. Id. at 3 (Salandra Dec. ¶ 8). However, after the applications were opposed by a
third-party and Opposer objected to Applicant’s use of the mark, Mr. Salandra
“decided to abandon the use of the name ‘Lotsa Mozza.’” Id. at 4 (Salandra Dec. ¶ 11).
According to Mr. Salandra, “only the Morgantown, West Virginia location was ever
branded as ‘Lotsa Mozza,’ which branding was discontinued.” Id. (Salandra Dec.
¶ 12).
Applicant then began using its new, involved mark LOTSA STONE FIRED PIZZA
at its Morgantown restaurant in May 2016. 25 TTABVUE 5 (DiGangi Dec. ¶ 19).
Applicant currently operates a number of pizza restaurants under that name, most
or all of which are in “college towns” or locations, including: Annapolis and College
Park, Maryland; Pittsburgh (Oakland and Southside), Pennsylvania; Morgantown,
West Virginia; West Lafayette, Indiana; and Tallahassee, Florida. Id. at 2 (DiGangi
Dec. ¶ 5); 32 TTABVUE. Applicant previously operated several additional
Opposition No. 91241107
12
restaurants, including in the Midwest where Opposer is based, such as the Madison,
Wisconsin location. Some of Applicant’s restaurants are depicted below:

Id. at 20, 22, 23, 26 (DiGangi Dec. Exs. A, B).
Applicant’s restaurants offer both “signature pizzas” and “build-your-own” pizzas,
as shown in its menu:
Opposition No. 91241107
13

Id. at 17 (DiGangi Dec. Ex. A). LOTSA STONE FIRED PIZZA is a “fast casual”
concept – “build-your-own” customers line up at a counter, choose from among types
of dough, cheese and sauce, and pick toppings, and then wait while their pizza is “fast
cooked on a flame-heated rotating pizza stone,” in two and one-half minutes. 25
TTABVUE 3-5 (DiGangi Dec. ¶¶ 8-12, 20). Applicant’s pizza is only available at its
Opposition No. 91241107
14
restaurants (dine-in or carryout); it is not available through grocery stores or third-
parties, and is not sold frozen. Id. at 4 (DiGangi Dec. ¶¶ 14-15).
Like Opposer, Applicant has been fairly successful. It has spent over $700,000
promoting its restaurant services since May 2016, and its sales have exceeded $19
million since that time. Id. at 8 (DiGangi Dec. ¶¶ 33-34).
As indicated, Applicant’s predecessor used the mark LOTSA MOZZA, and
Applicant still owns the “lotsamozza.com” domain name, which currently redirects to
Applicant’s website at “lotsa.com.” Id. at 7 (DiGangi Dec. ¶¶ 29-30).
Opposer became aware of Applicant when Applicant opened its Madison location
“under Lotsa Motsa (sic).”11 23 TTABVUE 50 (Schultz Disc. Tr. 89). After Opposer
objected to Applicant’s use of the term, Applicant began using LOTSA alone or
LOTSA STONE FIRED PIZZA rather than LOTSA MOZZA. Id.
However, Opposer also objects to these uses of LOTSA. According to Mr. Schultz,
“[e]verything that we have seen in our dispute is because of the use of the word lotsa.
And the l-o-t-s-a versus the L-O-T-Z-Z-A – lotsa, l-o-t-s-a, LOTZZA, L-O-T-Z-Z-A, the
phonetics are identical, and that’s the issue we have.” Id.
III. Opposer’s Section 2(d) Claim
Before addressing whether the parties’ marks are likely to be confused, we must
first consider whether Opposer is entitled to bring this proceeding. If it is we must

11 While the transcript of Mr. Schultz’s deposition spells the name “Lotsa Motsa,” we assume
this is a mistaken reference to the LOTSA MOZZA mark used by Applicant’s predecessor and
Applicant itself for a period of time. To the extent Mr. Schultz’s testimony that the Madison
location was “under Lotsa Motsa (sic)” may be inconsistent with Mr. Salandra’s testimony
that the Morgantown location was the only location “branded” as LOTSA MOZZA, that is
irrelevant to our ultimate decision.
Opposition No. 91241107
15
then consider whether priority is at issue and if it is which party has it. See 15 U.S.C.
§§ 1052(d) and 1063.
A. Opposer’s Entitlement to Bring a Statutory Cause of Action12
Entitlement to a statutory cause of action is a threshold issue in every inter partes
case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370,
2020 USPQ2d 10837 at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control
Components, Inc., 572 U.S. 118, 125-26 (2014)). A party in the position of plaintiff
may oppose registration of a mark when such opposition is within its zone of interests
and the plaintiff has a belief in damage that is proximately caused by registration of
the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *
6-7 (Fed. Cir. 2020) (holding that the test in Lexmark is met by demonstrating a real
interest in opposing or cancelling a registration of a mark, which satisfies the zone-
of-interests requirement, and demonstrating a reasonable belief in damage by the
registration of a mark, which demonstrates damage proximately caused by
registration of the mark). Here, Opposer’s pleaded registrations, which it properly
introduced into the record, 1 TTABVUE 8-12, establish that Opposer is entitled to
oppose registration of Applicant’s mark on the ground of likelihood of confusion.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000).

12 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13
and 14 remain equally applicable.
Opposition No. 91241107
16
B. Priority
Because Applicant has not counterclaimed to cancel Opposer’s pleaded
registrations, priority is not at issue with respect to the marks and goods identified
therein. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974). Furthermore, to the extent that Opposer’s distribution of frozen
pizza to stadiums, taverns and other venues for resale, and its pizza sales from
trailers, may constitute “restaurant services,” Opposer has established prior common
law use of its mark for those services. In fact, it has provided these services since
2012, and Applicant does not claim first use of its involved mark until 2016. 18
TTABVUE 7 (Schultz Dec. ¶ 20). Applicant does not dispute Opposer’s priority.
C. Will the Marks and Sources of the Goods Be Confused?
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services. See 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.”). Opposer bears the burden of establishing that there
is a likelihood of confusion by a preponderance of the evidence. Cunningham, 55
USPQ2d at 1848. We consider the likelihood of confusion factors about which there
Opposition No. 91241107
17
is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d
1160, 1162-63 (Fed. Cir. 2019).
We focus here on Opposer’s pleaded registration for the mark LOTZZA MOTZZA
in standard characters for frozen pizza, as well as Opposer’s common law rights in
LOTZZA MOTZZA for its “restaurant services.” If we find confusion likely between
Applicant’s involved mark and Opposer’s LOTZZA MOTZZA mark, we need not
consider the likelihood of confusion between Applicant’s mark and Opposer’s LOTZZA
HOTZZA mark. On the other hand, if we find no likelihood of confusion between
Applicant’s mark and LOTZZA MOTZZA, we would not find confusion likely between
Applicant’s mark and LOTZZA HOTZZA. In re Max Capital Grp., 93 USPQ2d 1243,
1245 (TTAB 2010).
1. The Goods and Services, Channels of Trade and Classes of
Consumers
Turning first to Opposer’s frozen pizza and Applicant’s restaurants, Opposer
“must show something more than that similar or even identical marks are used for
food products and for restaurant services.” Jacobs v. International Multifoods Corp.,
668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982). Opposer has met this burden and
therefore we find that there is a clear relationship between these goods and services.
In fact, the requirement for “something more” is satisfied because Opposer’s goods,
pizza, are the same type of food offered at Applicant’s restaurants, as announced by
Applicant’s involved mark LOTSA STONE FIRED PIZZA. Moreover, and as
explained in more detail below, Opposer’s mark is highly suggestive of pizza, or at
least pizza or other foods featuring lots of mozzarella. See e.g. In re Azteca Restaurant
Opposition No. 91241107
18
Enterprises Inc., 50 USPQ2d 1209, 1211 (TTAB 1999) (in affirming refusal to register
AZTECA MEXICAN RESTAURANT for restaurant services due to prior registration
of AZTECA for prepared Mexican foods, “something more” was found because
“Mexican food items are often principal items of entrees served by restaurants,
certainly by Mexican restaurants. The average consumer, therefore, would be likely
to view Mexican food items and Mexican restaurant services as emanating from or
sponsored by the same source if such goods and services are sold under the same or
substantially similar marks”); In re Golden Griddle Pancake House Ltd., 17 USPQ2d
1074, 1075 (TTAB 1990) (affirming refusal to register GOLDEN GRIDDLE
PANCAKE HOUSE for restaurant services based on registration of GOLDEN
GRIDDLE for table syrup, finding that “Applicant’s mark makes it clear that its
restaurant serves pancakes and, no doubt, pancake (or table) syrup, as well. There
is an undeniable connection between the goods of the registrant and the services of
applicant.”). Similarly, in this case the evidence reveals an “undeniable connection”
between the pizza which Opposer offers in frozen form and the signature and build-
your-own stone fired pizzas offered fresh in Applicant’s restaurants. Cf. In re Opus
One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001) (affirming refusal to register OPUS
ONE for restaurant services based on a likelihood of confusion with the same mark
for wine, and stating “[t]he fact that applicant’s restaurant serves the type of goods
(indeed the actual goods) identified in the cited registration is certainly probative
evidence which supports a finding under the second du Pont factor that applicant’s
services and opposer’s goods are related”).
Opposition No. 91241107
19
Furthermore, Opposer has established that the same sources use and have
registered identical marks for frozen pizza on the one hand and restaurant services
on the other. In fact, Opposer introduced more than 30 use-based third-party
registrations showing that the same marks are registered in connection with both
pizza/frozen pizza and restaurant services. 15 TTABVUE 13-88. “Third-party
registrations which cover a number of differing goods and/or services, and which are
based on use in commerce, although not evidence that the marks shown therein are
in use on a commercial scale or that the public is familiar with them, may
nevertheless have some probative value to the extent that they may serve to suggest
that such goods or services are of a type which may emanate from a single source.”
See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998).13 Opposer
also introduced evidence that many third parties use identical marks for frozen pizza
and restaurant services, including, California Pizza Kitchen, Uno, Gino’s East,
Sbarro and Mystic Pizza, among many others. Id. at 98-237. Thus, Opposer’s frozen
pizza is related to Applicant’s restaurant services.
As for Opposer’s “restaurant services,” the situation is less clear-cut. We take
judicial notice that a restaurant is “a place where meals are prepared and served to
customers.”14 Apparently, that does not describe Opposer’s services.

13 Opposer should be aware, however, that pending applications, cancelled registrations and
registrations which are not use-based are not probative on this question.
14 dictionary.cambridge.org/us/dictionary/english/restaurant. The Board may take judicial
notice of dictionary definitions, including online dictionaries that exist in printed format or
have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014),
aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold TV Inc. v. Metronome
Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010).
Opposition No. 91241107
20
Opposer does not own or even operate the places where it provides its services,
stadiums and other third parties do. Nor does it appear accurate to say that Opposer’s
pizza is “prepared” in these places. Opposer “prepares” the pizzas in its
manufacturing facility, and Opposer’s customers merely reheat the pizza for their
customers. In any event, we need not decide whether Opposer in fact provides
“restaurant services,” because, as explained in more detail below, even if it did, that
would not change our ultimate decision about the likelihood of confusion.15
As for the channels of trade and classes of consumers, Opposer’s evidence makes
clear that they overlap. Consumers buy lots of pizza, some frozen, some hot or “fresh,”
in stores, restaurants and at kiosks and other outlets such as “restaurant trailers.”
The record makes clear that the same pizza consumers sometimes buy frozen or
cooked pizza to eat at home or elsewhere, and at other times buy pizza in restaurants.
For example:
Uno’s website lists its many restaurants, and offers frozen
pizza, stating “Now you can get our original, legendary
pizza shipped straight to your home in 2 packs, 4 packs,
and 6 packs. We carefully freeze and ship our 10-inch deep
dish pizzas anywhere in the continental U.S.” 15
TTABVUE 98-103.

Gino’s East’s website lists its restaurant locations and
offers “nationwide shipping” of a variety of its pizzas. Id. at
104-108.

California Pizza Kitchen’s website lists its pizza
restaurants and Walmart’s website offers many different

15 Applicant argues that “[c]haracterizing [Opposer’s] bar, tavern and small format sales as
‘restaurant services’ is similar to claiming that Anheuser-Busch’s sales of beer to a bar which
then serves it cold to bar patrons constitutes ‘bar and taproom services.’” 31 TTABVUE 28
(Applicant’s Trial Brief at 20).
Opposition No. 91241107
21
types of frozen California Pizza Kitchen pizzas for sale. Id.
at 109-112.

Sbarro’s website lists its many restaurants and depicts
boxes of its frozen pizza. Id. at 113-130.

Opposer introduced a large number of additional similar or analogous examples. Id.
at 131-237.
In short, the goods and services are at least related, and travel in the same
channels of trade to the same consumers. These factors weigh in favor of finding a
likelihood of confusion.
2. The Strength of Opposer’s Mark
Before comparing the marks, we consider the strength of Opposer’s mark, as that
impacts the scope of protection to which it is entitled. There are two types of strength:
conceptual and commercial. In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d
1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual
strength (distinctiveness) and its marketplace strength (secondary meaning).”).
Turning first to conceptual strength, because Opposer’s mark is registered, we
must presume that it is inherently distinctive, i.e. that it is at worst suggestive of
Opposer’s services. 15 U.S.C. § 1057(b) (registration is “prima facie evidence of the
validity of the registered mark”); In re Fiesta Palms, LLC, 85 USPQ2d 1360, 1363
(TTAB 2007) (when mark is registered on the Principal Register, “we must assume
that it is at least suggestive”). While Opposer’s mark is valid and inherently
distinctive, the record reveals that it is highly suggestive.
Opposition No. 91241107
22
Opposer itself effectively conceded the point when Mr. Schultz testified that
“LOTZZA MOTZZA is our brand that screams what it is, lots of Wisconsin
cheese because we put over a half pound of cheese on that product.” 23 TTABVUE
17 (Schultz Disc. Tr. at 11) (emphasis added). In other words, LOTZZA, the phonetic
equivalent of “lotsa,” also has the same meaning, which the Oxford University Press
Online Dictionary defines as “lots of”:

22 TTABVUE 110 (https://www.lexico.com/en/definition/lotsa). Thus, LOTZZA is
highly suggestive of the quantity of “Wisconsin cheese” in Opposer’s frozen pizza
(there is “lots of” it).
Applicant also relies on the following third-party registrations, only one of which
is used for clearly related goods:
Opposition No. 91241107
23
Mark/Reg. No. Goods/Services
LOTSA BUBBLES (BUBBLES dis-
claimed)
Reg. No. 5979344
bubble making wand and solution sets;
novelty toy items in the nature of toys
that produce soap-film bubbles
LOTSA CHICKEN (CHICKEN dis-
claimed)
Reg. No. 4485374
cat food; consumable pet chews; dog
food; edible food for animals for chewing;
food for animals; pet food; pet treats

Reg. No. 1659958
Candies
LOTSA HEART ELEPHANT
(ELEPHANT disclaimed)

Reg. No. 5291119
Plush toys

Reg. No. 3290334
organizing community members
through online calendar services,
namely, providing calendar services for
others via a global computer network for
the purpose of assisting those in need

providing online electronic bulletin
boards for transmission of messages
among computer users for the purpose of
organizing community members to as-
sist those in need
LOTSA LOVE

Reg. No. 3113413
live flower floral arrangements and bou-
quets sold with or without plush toy, bal-
loons, or candy
LOTSA MEAT PIZZA (MEAT PIZZA
disclaimed)

Reg. No. 4559789
Pizza
LOTSA’ NOODLES (NOODLES
disclaimed)
Soup
Opposition No. 91241107
24

Reg. No. 3400163
LOTSA SLOTS (SLOTS disclaimed)

Reg. No. 5855613
… downloadable computer software for
providing casino games, slot games …

entertainment in the nature of provid-
ing, though any computerized platform
… slot games …

22 TTABVUE 11-95.16 Sometimes, third-party registrations may function as a
dictionary, by showing “the sense in which a mark is used in ordinary parlance.” Juice
Generation, Inc. v. GS Enterprises, LLC, 794 F.2d 1334, 115 USPQ2d 1671, 1675 (Fed.
Cir. 2015). Here, however, only the third-party registration for LOTSA MEAT PIZZA
is directly probative, because it is used for goods which are on their face related to
those at issue here. At the same time, it is perhaps not surprising, given the definition
of LOTSA, that third parties have registered marks such as LOTSA CHICKEN for
pet food and LOTSA NOODLES for soup.
In any event, based on the dictionary definition of LOTSA and Mr. Schultz’s
testimony that the term “screams” that Opposer’s pizza has “lots of” Wisconsin
cheese,” we find that LOTSA strongly suggests that Opposer’s frozen pizza features
“lots of” Wisconsin mozzarella cheese. Indeed, MOTZZA sounds the same as the first
two syllables of the word “mozzarella.”17 In the context of Opposer’s frozen pizza

16 Applicant should be aware that cancelled registrations and pending applications are not
probative, and we have only listed active registrations here.
17 By the same token, LOTZZA HOTZZA refers to Opposer’s pizza being “spicy hot.” 23
TTABVUE 24 (Schultz Disc. Tr. 41)
Opposition No. 91241107
25
goods, the meaning of MOTZZA is obvious, and reinforced by Opposer’s see-through
packaging which draws attention to how much mozzarella Opposer puts on its pizza:

18 TTABVUE 4, 17 (Schultz Dec. ¶ 10 and Ex. A).18
Third-party uses of similar terms further reveal that LOTZZA MOTZZA is highly
suggestive.19 Indeed, a Utah pizza restaurant uses an essentially identical mark and
trade name, also for pizza:

18 When a mark identifies a product’s ingredient(s), it may be considered merely descriptive.
In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1576 (Fed. Cir. 2015) (“The Board found
that the relevant consumer, knowing that the goods are supplements containing nopal cactus
juice, would understand the mark NOPALEA to convey information that the goods contain
ingredients from the Nopalea cactus …Substantial evidence supports the Board’s findings,
and its conclusion that ‘nopalea’ is merely descriptive of TriVita’s goods.”).
19 While third-party uses of similar marks for similar goods or services are typically
considered in evaluating a term’s commercial weakness, as discussed infra, in this case we
also find them probative of conceptual weakness.
Opposition No. 91241107
26

22 TTABVUE 111. While this mark, LOTSA MOTSA PIZZA, differs slightly from
Opposer’s mark by replacing the “zz”s in Opposer’s LOTZZA MOTZZA with “s”s, this
mark conveys the same exact meaning as Opposer’s mark for the same exact goods,
and thus is highly probative in further establishing the strongly suggestive nature of
LOTZZA MOTZZA.
In addition, Mr. Schultz admitted that there is a separate, unrelated company
using the mark LOTSA MEAT PIZZA, which is reflected in the table of third-party
registrations above. 28 TTABVUE 16. Thus, Opposer’s marks coexist with LOTSA
MOTSA PIZZA and LOTSA MEAT PIZZA, among other similar marks.
We also find the trade name/service mark LOTSA PASTA & THAT’ZA PIZZA for
a Colorado restaurant to be probative of the suggestiveness of Opposer’s mark:
Opposition No. 91241107
27

22 TTABVUE 113. This restaurant uses LOTSA in the exact same way as Opposer,
to suggest a large quantity of food, in this case pasta. Furthermore, this mark
includes THAT’ZA PIZZA, which reveals another way in which Opposer’s mark is
suggestive – it is used for Italian food. That is, combining LOTSA (or LOTZZA) with
generic terms for types of Italian food that also end with “A” and rhyme with the “A”
sound in LOTSA/LOTZZA results in a composite that calls to mind an Italian accent,
perhaps that of the chef or a consumer who is particularly appreciative of good pizza
or pasta. In other words, it is not just the meaning of the word LOTSA which strongly
suggests a large quantity of Italian food, but also the term’s pronunciation, at least
when, as here, it is used in conjunction with rhyming words which also call to mind
(or are generic for) Italian food. Another third-party uses LOTSA PASTA in the exact
same way, for a Kentucky international food shop which offers pizza and other Italian
food:
Opposition No. 91241107
28

Id. at 126-127. And another third-party uses LOTSA BALLS for meatballs intended
to call to mind meatballs made by “Jersey Italians” based on family recipes:

Id. at 133-139. These examples further reinforce that LOTSA is highly suggestive
when used in connection with food, especially Italian food, including pizza. Of course,
while LOTSA may be particularly appropriate for and suggestive of Italian food, it
may also be used more generally by restaurants and food providers to signify a large
Opposition No. 91241107
29
quantity of any type of food, such as the trade name/service mark LOTSA LOBSTER
for a seafood market. Id. at 130.
Turning to the evidence of commercial strength, Opposer has shown that its pizza
is successful, based on sales totaling “approximately $305 million,” and promotional
expenses totaling more than $9 million 18 TTABVIE 13-14 (Schultz Dec. ¶¶ 31, 33).
In addition, the LOTZZA MOTZZA mark is displayed in venues which host sports
and other events, such as Target Center, where we would expect relatively large
numbers of potential consumers to encounter the mark. On the other hand, there is
no direct evidence that consumers recognize the mark or that it has received
significant media attention. “Opposer does not contend that Opposer’s Marks are
famous.” 23 TTABVUE 141 (Opposer’s response to Interrogatory No. 17). Overall, we
find that Opposer’s mark is commercially somewhat strong.
We must balance this evidence of commercial success and a moderate level of
advertising against the third-party uses of LOTSA MOTSA PIZZA, LOTSA MEAT
PIZZA, LOTSA PASTA INTERNATIONAL FOOD SHOP and LOTSA BALLS
meatballs. Four third-party uses is not quantitatively sufficient to establish that a
significant portion of United States pizza consumers have been conditioned to
distinguish between LOTSA marks for food or even Italian food. However, these
third-party uses do show consumer exposure to use of the term LOTSA by third party
food providers.
All of the evidence of conceptual weakness, including the dictionary definition and
Mr. Schultz’s testimony discussed above highlights the conceptual weakness of
Opposition No. 91241107
30
LOTSA and highly similar terms such as LOTZZA. We keep all of this evidence in
mind as we turn to comparing the parties’ marks.
3. The Marks
Opposer argues that “LOTSA/LOTZZA is the dominant term of the parties’
marks.” 30 TTABVUE 43. We agree at least with respect to Applicant’s mark, for two
reasons. First, LOTSA appears and will be read and spoken first. In re Detroit Athletic
Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (“The identity of the
marks’ initial two words is particularly significant because consumers typically notice
those words first.”); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”). Second, the rest of Applicant’s
mark, STONE FIRED PIZZA, is at best descriptive of Applicant’s restaurants, and
disclaimed, so it is entitled to less weight in our analysis. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive
terms, this court has noted that the ‘descriptive component of a mark may be given
little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); see also In re
Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (DELTA,
not the disclaimed term CAFÉ, is the dominant portion of the mark THE DELTA
CAFÉ).
This is not enough to find confusion, however, even if we agreed that LOTZZA is
the dominant portion of Opposer’s mark. In fact, while STONE FIRED PIZZA is
entitled to less weight in our analysis of Applicant’s mark, we may not ignore it, even
Opposition No. 91241107
31
though it is disclaimed. Shen Mfg. v. Ritz Hotel, Ltd., 393 F.3d 1238, 73 USPQ2d
1350, 1355 (Fed. Cir. 2004) (“The disclaimed elements of a mark, however, are
relevant to the assessment of similarity … This is so because confusion is evaluated
from the perspective of the purchasing public, which is not aware that certain words
or phrases have been disclaimed.”); Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978,
144 USPQ 433 (CCPA 1965). Similarly, even if we considered LOTZZA to be the
dominant portion of Opposer’s mark, we could not ignore MOTZZA. Stated
differently, we must consider the marks “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567).
When we do so, we find that the marks are different in appearance and sound. To
state the obvious, Applicant’s mark does not contain MOTZZA, MOTSA, MOZZA
MOZZARELLA or any similar words or terms, and Opposer’s mark does not contain
STONE, FIRED or PIZZA. The differences in how LOTZZA MOTZZA and LOTSA
STONE FIRED PIZZA look and sound are thus readily apparent.20
The marks convey somewhat similar meanings, however, because Opposer’s mark
is highly suggestive of pizza and perhaps Italian food generally, while Applicant’s
mark itself makes clear that it is for pizza that is stone fired. On the other hand, the

20 To the extent Opposer argues that confusion is unlikely because Applicant often displays
the term LOTSA in much larger font than STONE FIRED PIZZA, this is irrelevant. Applicant
seeks registration in standard characters, and therefore could display the mark in any font
or size. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012).
Opposition No. 91241107
32
meanings are dissimilar because Opposer’s mark focuses on the quantity of a
particular ingredient, while Applicant’s focuses on the quantity of pizza itself.
Ultimately, we find that even though the marks convey somewhat similar
meanings, and begin with terms which sound the same and look somewhat similar,
they are not likely to result in consumer confusion due to the conceptual weakness of
Opposer’s mark and the shared term LOTSA/LOTZZA. That term is simply too weak
to result in a finding of confusing similarity here, even when the marks are used for
pizza on the one hand and pizza restaurants on the other, and even if we assume that
Opposer’s alleged “restaurant services” are in fact identical to Applicant’s traditional
restaurant services. In fact, consumers will perceive the marks’ first terms as merely
laudatory, strongly suggesting that Opposer provides lots of mozzarella with its pizza
and that Applicant’s restaurants serve lots of pizza. Some consumers are also aware
that LOTSA and variations thereof is used by unrelated food providers, perhaps
especially those which offer Italian food, including pizza.
The bottom line is that because the only thing the marks have in common is the
demonstrably weak term LOTZZA/LOTSA, confusion is unlikely. See e.g. Sure-Fit
Prods. Co. v. Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295, 297 (CCPA 1958)
(finding no likelihood of confusion between SURE-FIT and RITE-FIT, both for slip
covers, because the term “fit” is “eminently suitable for use in connection with goods
such as ready-made slip covers … [u]nder these circumstances, we do not feel that
appellant is entitled to the broad protection which it seeks”); Couch/Braunsdorf
Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476-78 (TTAB 2014) (finding
Opposition No. 91241107
33
“that the mark PERKSPOT is sufficiently different from the marks PERKS and
PERKSCARD to avoid a likelihood of confusion” even though the marks were used
for legally identical services); Plus Prods. v. Natural Organics, Inc., 204 USPQ 773,
779-80 (TTAB 1979) (allowing registration of NATURE’S PLUS for vitamins despite
prior registration of PLUS for vitamins given coexistence of a number of registrations
containing PLUS for similar goods).
The involved mark is LOTSA STONE FIRED PIZZA, not LOTSA MOZZA (or
LOTSA MOTSA). Opposer should not be able to prevent others from registering
marks which share with Opposer’s mark only the term LOTSA or variations thereof,
even for pizza. Indeed, as the record demonstrates, companies which offer large
quantities of pizza or its ingredients, or other food products, may have a need or desire
to use the same highly suggestive term. As the Federal Circuit’s predecessor court
stated in Sure-Fit:
It seems both logical and obvious to us that where a party
chooses a trademark which is inherently weak, he will not
enjoy the wide latitude of protection afforded the owners of
strong trademarks. Where a party uses a weak mark, his
competitors may come closer to his mark than would be the
case with a strong mark without violating his rights. The
essence of all we have said is that in the former case there
is not the possibility of confusion that exists in the latter
case.

Sure-Fit Prods., 117 USPQ at 297.
4. Actual Confusion
Opposer alleges that there have been “at least two examples of actual confusion.”
30 TTABVUE 48 (Opposer’s Trial Brief at 39-40). The supporting evidence is
quantitatively and qualitatively insufficient to support a finding of actual confusion.
Opposition No. 91241107
34
In the first “example,” Twitter user Mac Wilson was poking fun at Opposer in a
tweet, but misspelled Opposer’s mark as LOTSA MOZZA, thereby mistakenly
“tagging” Applicant. 25 TTABVUE 6-7, 76 (DiGangi Dec. ¶ 28 and Ex. O). This was
not actual confusion between the sources of the parties’ goods, the goods themselves
or the parties’ marks. It was a spelling or tweeting error. Moreover, it was a short-
lived error, because three days later Mr. Wilson e-mailed Applicant explaining that
“[m]y intended (and non-serious!) target was Lotzza Motzza … As it turns out, this
wound up tagging you ….” 16 TTABVUE 169. In any event, in the absence of Mr.
Wilson’s testimony, this evidence is not probative of actual confusion. See Corporate
Fitness Programs, Inc. v. Weider Health and Fitness, Inc., 2 USPQ2d 1682, 1691
(TTAB 1987) (“we agree with applicant’s contention that the testimony is of little
probative value in the absence of testimony from the third persons themselves as to
whether they were confused and, if so, what caused their confusion”) and Toys “R”
Us, Inc. v. Lamps R Us, 219 USPQ 340, 346 (TTAB 1983) (“One important defect,
which might have been revealed had the involved customers been available for cross-
examination, is that there is nothing to indicate whether the reason for the question
as to affiliation was the result of the similarity of the marks.”).
In the second “example,” Jodi Koepp e-mailed Applicant with a complaint about
Opposer’s pizza fries. 25 TTABVUE 7-8 (DiGangi Dec. ¶¶ 31-32); 16 TTABVUE 548.
The mistake appears to be the result of Ms. Koepp contacting Applicant through its
“lotsa.com” website. While this contact may tend to suggest that Ms. Koepp could
have been confused in some manner about the parties or their products, Applicant
Opposition No. 91241107
35
quickly dispelled any confusion. 16 TTABVUE 548. Furthermore, to the extent Ms.
Koepp was confused, that confusion does not appear to be the result of the involved
mark LOTSA STONE FIRED PIZZA, but rather the domain name “lotsa.com.” This
proceeding is not about the domain name, and the Board is not the proper venue for
domain name disputes. In any event, even if this incident qualified as actual
confusion based on the parties’ marks and goods or the sources thereof, it is de
minimis. Syndicat Des Proprietaires Viticulteurs De Chateaneuf-Du-Pape v. Pasquier
DesVignes, 107 USPQ2d 1930, 1942 (TTAB 2012); Leading Jewelers Guild, Inc. v.
LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007). This factor is neutral.
5. Whether the Goods and Services are Subject to Impulse Purchase
We accept Opposer’s argument that “[s]ince pizza is a relatively inexpensive
product frequently purchased by consumers without detailed scrutiny of the goods,
an average frozen pizza consumer will not exercise a high degree of care when
purchasing frozen pizza.” 30 TTABVUE 51-52 (Opposer’s Trial Brief at 42-43). The
same is true of dining on pizza at a “fast casual” restaurant, kiosk or “restaurant
trailer.” This factor weighs in favor of finding of likelihood of confusion.
6. Applicant’s Intent
Opposer points out that Applicant was aware of Opposer and its goods and
services prior to applying for registration of LOTSA STONE FIRED PIZZA. 30
TTABVUE 52-53 (Opposer’s Trial Brief at 43-44). This is not sufficient to establish
bad faith and therefore this factor is neutral. Action Temporary Services, Inc. v. Labor
Force, Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1310 (Fed. Cir. 1989) ("mere knowledge
of the existence of the prior user should not, by itself, constitute bad faith").
Opposition No. 91241107
36
IV. Conclusion
Even if we assume that the parties’ goods and services are identical and that all
channels of trade and classes of consumers overlap, confusion is unlikely despite
those goods and services being subject to impulse purchase. The parties’ marks are
simply too different, given that their shared component is conceptually weak and
used by third-parties for the same or similar goods, for confusion to be likely. See
Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir.
1991) (“We know of no reason why, in a particular case, a single duPont factor may
not be dispositive.”).

Decision: The opposition is dismissed.