Cappuccino’s Cafe, Ltd.

Trademark Trial and Appeal Board

Dec 12, 2006

No. 76586779 (T.T.A.B. Dec. 12, 2006)

Mailed
December 12, 2006
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cappuccino’s Cafe, Ltd.
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Serial No. 76586779
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Anthony F. Spina of Spina, McGuire & Okal, P.C. for
Cappuccino’s Cafe, Ltd.

James A. Rauen, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Drost, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Cappuccino’s Cafe, Ltd. (applicant) filed an
application on April 12, 2004 to register Tiramisu by
Isabella in standard-character form on the Principal
Register for “bakery desserts, namely, tiramisu.” The
application claims first use of the mark and first use of
the mark in commerce on January 1, 1992. Applicant has
disclaimed “tiramisu.”
The Examining Attorney has refused registration under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76586779
2
likelihood of confusion with Reg. No. 1887351 for the mark
ISABELLA’S in standard-character form for goods identified
as “Bakery products; namely, muffins, scones, cookies,
bread, teacakes and muffin batter.” The registration
claims first use of the mark anywhere and first use of the
mark in commerce on February 13, 1992. The registration
issued on April 4, 1995; it has been renewed and is active.
Applicant argued against the refusal. The Examining
Attorney made the refusal final, and applicant appealed.
Applicant and the Examining Attorney have filed briefs. We
affirm.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion…” Id. The opinion in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1977) sets forth the factors we may consider
in determining likelihood of confusion. Here, as is often
the case, the crucial factors are the similarity of the
marks and the similarity of the goods of the applicant and
registrant. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)(“The
fundamental inquiry mandated by Section 2(d) goes to the
Ser No. 76586779
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cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks.”).
Applicant has focused its arguments on points other
those ordinarily raised related to likelihood of confusion.
In particular, applicant argues that there would not be
confusion because, applicant alleges, applicant and
registrant operate in distinct geographical territories.
Applicant also argues that the registered mark is not
entitled to protection because it is a “personal name.”
Before addressing applicant’s specific arguments, we will
address the general question of likelihood of confusion.
The Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
both marks. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
While we must consider the marks in their entireties,
and we have, it is entirely appropriate to accord greater
importance to the more distinctive elements in the marks,
here ISABELLA and ISABELLA’S, than to the less distinctive
elements in determining whether the marks are similar. As
the Court of Appeals for the Federal Circuit observed,
Ser No. 76586779
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“… in articulating reasons for reaching a conclusion on the
issue of confusion, 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 consideration of the marks in
their entireties. Indeed, this type of analysis appears to
be unavoidable.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
In this case applicant’s mark includes “tiramisu” in
addition to ISABELLA. Applicant identifies its goods as
“tiramisu” and applicant has disclaimed “tiramisu.”
Applicant has not attempted to argue that “tiramisu” is
anything other than a generic term, the name of its goods.
Consequently, we conclude that ISABELLA and ISABELLA’S are
the dominant elements in each of the marks and that
“tiramisu” is not distinctive and, as such, is insufficient
to distinguish applicant’s mark from the registered mark.
In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1534 (Fed. Cir. 1997).
For completeness we note that the difference in form
in the marks, the possessive, ISABELLA’S, in the registered
mark versus the “… by Isabella” form in applicant’s mark,
in no way diminishes the similarity. Each form conveys the
Ser No. 76586779
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very same commercial impression, that is, identifying
“Isabella” as the source of the goods.
Accordingly, we conclude that applicant’s mark is
highly similar to the cited registered mark in appearance,
sound, connotation and commercial impression.
The Goods
Applicant’s goods are identified as “bakery desserts,
namely, tiramisu.” The goods in the cited registration are
identified as “Bakery products; namely, muffins, scones,
cookies, bread, teacakes and muffin batter.” Applicant has
not argued directly that the goods are unrelated or
otherwise distinct.
The goods need not be identical to find that the goods
are related under Section 2(d) of the Trademark Act. The
goods need only be related in such a way that the
circumstances surrounding their marketing would result in
relevant consumers mistakenly believing that the goods
originate from the same source. On-Line Careline Inc. v.
America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed.
Cir. 2000).
Furthermore, in comparing the goods and the channels
of trade for the goods, we must consider the goods as
identified in the application and registrations. CBS Inc.
v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
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1983); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB
1991).
Applicant’s goods and the goods in the cited
registration are both baked goods. More specifically,
applicant’s goods are identified as desserts. Likewise,
several of the items in the cited registration are also
often served as desserts, for example, scones and cookies.
Also, the Court of Appeals for the Federal Circuit and this
Board have often found the types of goods at issue here
related. See, e.g., In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984);
In re Pan-O-Gold Baking Co., 20 USPQ2d 1761, 1765 (TTAB
1991); Robert A. Johnston Co. v. Ward Foods, Inc., 157 USPQ
204, 206 (TTAB 1968).
Accordingly, we conclude that applicant’s goods and
the goods in the cited registration are closely related.
As we indicated above, applicant has argued that
confusion is not likely because applicant and the
registrant operate in distinct geographical territories.
Specifically, applicant states, “Applicant fails to see how
the average purchaser who normally retains a general rather
than a specific impression of trademarks can be confused,
mistake (sic) or deceived when the registered mark, to the
best of Applicant’s knowledge, operates solely in Ohio and
Ser No. 76586779
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the Applicant operates solely in Illinois. The average
purchaser in Ohio would not travel to Illinois just buy
(sic) bakery goods specifically Tiramisu and the average
purchaser in Illinois would not travel to Ohio for their
bakery goods or Tiramisu.”
The cited registration is unrestricted and, as such,
entitled to the presumption of nationwide rights. In
particular, Trademark Act Sections 7(b) and (c), 15 U.S.C.
§§ 1057(b) and (c) provide,
(b) A certificate of registration of a mark upon the
principal register provided by this Act shall be prima
facie evidence of the validity of the registered mark,
and of the registration of the mark, of the
registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the registered
mark in commerce on or in connection with the goods or
services specified in the certificate, subject to any
conditions or limitations stated in the certificate.

(c) Contingent on registration of a mark on the
principal register provided by this Act, the filing of
the application to register such mark shall constitute
constructive use of the mark, conferring a right of
priority, nationwide in effect…

In fact, one of the principal points of federal
registration is to secure nationwide rights. Also, as the
Examining Attorney pointed out, the application is not
restricted to any geographical territory either.
Therefore, any registration resulting from the application
would also carry with it all of the normal presumptions
Ser No. 76586779
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federal registration affords, including nationwide rights.
Accordingly, we reject applicant’s arguments based on the
alleged use of the respective marks in distinct
geographical territories.
For completeness, we note that applicant has not even
alleged that it has any knowledge of the registrant’s
activities with respect to the mark, whether in Ohio or
beyond, nor could we consider such extrinsic evidence in
this proceeding. See In re Bercut-Vandervoort & Co., 229
USPQ 763, 764 (TTAB 1986)(extrinsic evidence and argument
suggesting trade-channel restrictions not specified in
application rejected).1
Applicant also argues that we should reverse the
refusal because the registered mark consists of a “personal
name” which is not entitled to protection. Applicant
states, “… a personal name is not subject to exclusive
appropriation as a trademark even though registered as
such. Borden Ice Cream Co. v. Borden’s Condensed Milk Co.,
1912, 201 F. 510, 121 C.C.A. 200.”

1 Here and elsewhere in its brief we note that applicant has both
cited and discussed numerous cases from the district courts.
These cases involve infringement and similar claims where the
focus is the actual use of marks. These cases are of limited
relevance here due to our focus in this proceeding on the
application and registration, not actual use. In re Bercut-
Vandervoort & Co., 229 USPQ at 764.
Ser No. 76586779
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As the Examining Attorney pointed out, applicant’s
reliance on the 1912 Borden case is misplaced. It predates
the Lanham Act of 1946 which modernized, and substantially
“rewrote” U.S. trademark law. See generally J. Thomas
McCarthy, 1 McCarthy on Trademarks and Unfair Competition
§ 5:4 (4th ed. 2006). While the current law accords
surnames special treatment under Trademark Act Section
2(e)(4), 15 U.S.C. 1052(e)(4), it nonetheless does permit
registration of surnames under certain conditions.
McCarthy, supra, § 13:27 et seq. However, the Trademark
Act in no way restricts the ability of trademark owners to
secure rights in and registration for given names, such as
ISABELLA, provided the mark meets the requirements which
apply generally. Id.
More importantly, applicant’s argument that the
registered mark is not subject to protection, viewed
properly, is an attack on the validity of a registration
which is not permitted in an ex parte proceeding. In re
Dixie Restaurants, Inc., 41 USPQ2d at 1534. We must accord
the cited registration the presumption of validity provided
for in Trademark Act Section 7 discussed above.
Accordingly, we reject applicant’s argument challenging the
validity of the registered mark.
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Finally, we conclude that there is a likelihood of
confusion between applicant’s mark and the mark in the
cited registration principally because the marks are highly
similar and the goods are closely related.
Decision: The refusal under Trademark Act Section
2(d) is affirmed.