Crème Glacee Ital Gelati Inc.v.Italgel Inc.

Trademark Trial and Appeal Board

Aug 11, 2004

No. 91151290 (T.T.A.B. Aug. 11, 2004)

Mailed: August 11, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Crème Glacee Ital Gelati Inc.
v.
Italgel Incorporated
_____
Opposition No. 91151290
_____
James R. Hastings of Collen IP for Crème Glacee Ital Gelati Inc.
Robert Harrison of Harrison & Harrison for Italgel Incorporated.
______
Before Hairston, Holtzman and Drost, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by Italgel Incorporated
(applicant) to register the mark shown below on the Principal
Register for the following goods (as amended):1
"Electric ice cream makers for restaurant use and
refrigerated display cases for ice cream and pastries"
in Class 11
1 Application Serial No. 75776886 filed on August 16, 1999, based on an
assertion of a bona fide intent to use the mark in commerce. Applicant
has disclaimed "INCORPORATED" and "GELATO SYSTEMS" apart from the mark
as shown. Applicant has translated the Italian word "gelato" as
"frozen" and also as "the common name for Italian ices and ice creams."
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91151290
2
"Ice cream" in Class 30.
Registration has been opposed by Crème Glacee Ital Gelati Inc.
(opposer). As grounds for opposition, opposer asserts that it
"has been engaged in the sale and marketing of goods under its
trademarks" since at least as early as 1996; that applicant
"intends to apply its confusingly similar mark to goods,
including electric ice cream makers for restaurant use"; that
"the intended use by the Applicant for goods in International
Class 11 will cause confusion, mistake and deception with respect
to those goods, by virtue of the Opposer's prior use of its marks
and by virtue of the Opposer's renown as a purveyor of frozen
culinary confections"; and that applicant's mark "when used in
conjunction with the goods offered by the applicant" so resembles
opposer’s previously used and registered marks as to be likely to
cause confusion mistake or deception under Section 2(d) of the
Trademark Act. Opposer requests that "this application...be
refused, [and] that no registration be issued" to applicant.2
2 Applicant has not only applied for registration in Class 11 for ice
cream makers and refrigerated display cases, but also in Class 30 for
ice cream. However, at no time during the course of this proceeding
has opposer acknowledged that the application is also for ice cream.
Opposer only paid a fee for opposing a single class of goods.
Opposition No. 91151290
3
Opposer alleges that it is the owner of the following two
registrations: Registration No. 2024902 for the typed mark ITAL
GELATI for "ice cream, flavored ices, frozen yogurt, sherbet,
tofu based ice cream substitutes and soy based ice cream
substitutes" in Class 30;3 and Registration No. 2336383 for the
mark shown below for "ice cream, ice milk, frozen yogurt, ices,
sherbet, soy based ice cream substitute and frozen tofu" in Class
30.4
Moreover, opposer did not specifically plead likelihood of confusion
with respect to ice cream; did not raise the issue at trial; and did
not argue the issue, or even mention it, in its trial brief. Nor did
applicant make any attempt to defend its right to registration for ice
cream. Under the circumstances, we construe the notice of opposition
as having been filed solely against the Class 11 goods. We also note
that applicant's president, Augusto Bisani, when asked during his
testimony deposition, "Do you have any intentions to sell other
products under the Italgel mark other than the ones you have testified
to [i.e., ice cream making machines and refrigerated display cases]?"
Mr. Bisani replied "At this time I don't see any reason for. [sic] I'm
an equipment company. I'm not a product company." Dep. p. 30.
3 Issued December 24, 1996. The word "gelati" is disclaimed. The
registration contains a translation of "GELATI" as "Italian ice cream."
4 Issued March 28, 2000. The word "gelati" is disclaimed. The
registration contains a translation of "LA BELLA ITALIANA" as "the
beautiful Italian" and a translation of "GELATI" as "ice cream."
Opposition No. 91151290
4
Applicant, in its answer, has denied the allegations in the
opposition.
The record includes the pleadings; the file of the involved
application; opposer's notice of reliance on materials including
plain copies of its pleaded registrations and applicant's
responses to certain discovery requests;5 opposer's testimony,
with exhibits, of Dominic Acuri, opposer's "representative"; and
applicant's testimony, with exhibits, of Augusto Bisani,
applicant's president.6
Both parties have filed briefs. An oral hearing was not
requested.
Opposer, a corporation of Canada, has been in the business
of producing frozen and nonfrozen dairy desserts since 1983.
These products include ice cream and gelati (the plural of
"gelato") which is described by Mr. Acuri as a "specified
category of ice cream." Dep., p. 8. Opposer manufactures the
ice cream itself or sells the dry product to "co-packers" that
mix it for opposer on machines approved by opposer. Opposer then
sells the "finished" ice cream under the ITAL GELATI mark in bulk
either directly or through distributors to establishments such as
restaurants, hotels and ice cream parlors, which in turn sell the
5 However, opposer did not make copies of the questions of record as
required by Trademark Rule 2.120(j)(3)(i).
6 The parties stipulated to the taking of Mr. Acuri's deposition in
Montreal, Canada. By agreement of the parties, each party appeared at
the other's deposition by telephone.
Opposition No. 91151290
5
products to the public. The record shows that opposer has been
selling ice cream products under the ITAL GELATI mark in the U.S.
since at least as early as 1996. As shown by one of opposer's
recent price lists, a single three-gallon container of ice cream
may cost $40.00. Dep. exh. 6.
Mr. Acuri testified that he has been "approached" by
"clients that have chains, franchises" (Dep., p. 43) to offer ice
cream makers where opposer's dry product could be mixed and made
fresh on the premises, and that opposer has been "asked to
supply" ice cream freezer display cases. Dep., p. 28. However,
opposer does not manufacture or distribute ice cream makers,
display cases, or any other restaurant equipment at this time.
Opposer advertises and markets its products under the ITAL
GELATI mark in the U.S. over the Internet, at trade shows and
through brochures distributed to its actual and potential
customers. Opposer also advertises its products under the ITAL
GELATI mark in trade publications directed to restaurants, hotels
and other food service establishments as well as on table tents
and on posters displayed in the windows of the establishments
where its products are served.
Applicant, Italgel Inc., is a subsidiary of Bravo Systems
International ("Bravo"), a manufacturer of specialty restaurant
equipment such as pasta machines, rotisseries and wood burning
pizza ovens. Italgel Inc. was created to sell refrigerated
Opposition No. 91151290
6
display cases and certain models of ice cream or gelato making
machines for commercial use. As described by Mr. Bisani, gelato
is "an Italian version of an ice cream product" (Dep., p. 20)
that contains less butter fat than ice cream and less air. Mr.
Bisani states that the same machine could be used to produce
either product by changing the pump and the speed of the machine.
Applicant's commercial grade machines are not intended for
home use. Depending on the size and grade, a machine could range
in price from $7,500 for a small "table top" model to $35,000 for
the large commercial model. Mr. Bisani explains that the smaller
capacity models might be used by a restaurant and a larger one
might be used by an ice cream store. The entire sale process may
take several months from the initial contact with a customer.
The process may include a customer’s request for inspection or
demonstration of the equipment or an on-site consultation at the
customer’s facility.
According to applicant's invoices, the cost of a display
case holding 24 flavors of ice cream is $16,000. Mr. Bisani
describes the use and placement of these display cases in ice
cream shops as follows:
[The product] goes into a stainless steel five liter
container, and it gets displayed on a gelato show case which
can go from four flavors to 24 flavors.
...
As you enter the shop you would have such a display. The
customer comes up and he sees whatever the shop has
manufactured.
Dep., p. 24.
Opposition No. 91151290
7
Applicant's parent company, Bravo, has been selling ice
cream makers under the name Bravo International to hotels,
restaurants and supermarkets. These are the intended customers
for applicant's equipment as well. Bravo advertises and markets
its ice cream makers through brochures and trade publications
targeted to the restaurant and hotel industry, including ice
cream and gelato shops. In addition, Bravo promotes and markets
these machines at regional and national trade shows for
restaurant equipment. Mr. Bisani explains that companies in the
equipment trade attend these shows on the first day, and that
normally the direct customers such restaurants, hotels or ice
cream stores attend the shows on the second day. According to
Mr. Bisani, food products are not exhibited at these equipment
shows.
We turn first to the question of priority. A plaintiff may
make a pleaded registration of the record in the proceeding by
filing, either with the complaint or by a notice of reliance
during its testimony period, a copy of the registration prepared
and issued by the USPTO showing both the current status of and
current title to the registration. Alternatively, a registration
may be made of record by introducing a copy of the registration
as an exhibit to testimony establishing that the registration is
still subsisting and is owned by the offering party. See
Trademark Rule 2.122(d).
Opposition No. 91151290
8
Opposer did not submit status and title copies of the
registrations either with the complaint or by a notice of
reliance. Moreover, although Mr. Acuri has testified that
opposer is the owner of its pleaded registrations for the ITAL
GELATI marks, there was no testimony that the registrations are
still valid. Thus, the pleaded registrations are not properly of
record and are not considered evidence of opposer's priority.
See Cadence Industries Corp. v. Kerr, 225 USPQ 331, 332 n.2 (TTAB
1985) (no probative value where testimony established opposer’s
ownership of registration, but not current status).
Nevertheless, opposer has clearly established use of the
word mark ITAL GELATI7 in connection with its frozen
confectionary products, including ice cream, which predates the
August 16, 1999 filing date of the opposed intent-to-use
application.8
Accordingly, we turn to the question of likelihood of
confusion as between opposer’s word mark ITAL GELATI and
applicant’s mark ITALGEL and design as used in connection with
the parties' respective products.
Here, as in any likelihood of confusion analysis, we look to
the factors set forth in In re E. I. du Pont de Nemours & Co.,
7 We find that ITAL GELATI is used in a manner that is essentially the
equivalent, in its commercial impression, of a typed version of the
mark.
8 There is no claim by applicant, and insufficient evidence to show,
that ITAL GELATI is either merely descriptive or misdescriptive, or
geographically descriptive or deceptively misdescriptive, of ice cream.
Opposition No. 91151290
9
476 F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular
attention to the factors most relevant to the case at hand,
including the similarities or dissimilarities between the marks
and the similarities or dissimilarities between the goods. See
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 cumulative effect of differences in the
essential characteristics of the goods and the differences in the
marks."].
Opposer argues that the marks create highly similar
commercial impressions in light of the dominant portions of the
respective marks. Opposer contends that the term ITALGEL and the
depiction of the ice cream cone are the dominant portions of
applicant's mark.
We agree with opposer to the extent that we find that the
dominant part of applicant’s mark is ITALGEL. While this term
and ITAL GELATI have a similar meaning, both suggestive to some
degree of Italian style ice cream, it is clearly not the same
meaning. We take judicial notice that "Ital" is a recognized
abbreviation for "Italian,"9 and opposer has explained that
"gelati" is the plural form of "gelato." Moreover, Mr. Bisani
has testified that gelati is "an Italian version of an ice cream
9 The American Heritage Dictionary of the English Language (4th ed.,
2000). The Board may take judicial notice of dictionary definitions.
See, e.g., University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Opposition No. 91151290
10
product."10 Dep., p. 20. On the other hand, we have no evidence
that "gel" would immediately be recognized as an abbreviated form
of "gelato." Thus, where ITALGEL is only mildly suggestive of an
ice cream maker that produces an Italian style ice cream, the
meaning of ITAL GELATI for an Italian style ice cream is close to
obvious.
It is settled that highly suggestive marks are weak and are
generally accorded a more limited scope of protection than an
arbitrary mark. See The Drackett Company v. H. Kohnstamm & Co.,
Inc., 404 F.2d 1399, 160 USPQ 407, 408 (CCPA 1969) ["The scope of
protection afforded such highly suggestive marks is necessarily
narrow and confusion is not likely to result from the use of two
marks carrying the same suggestion as to the use of closely
similar goods."]; and Sure-Fit Products Company v. Saltzson
Drapery Company, 254 F.2d 158, 117 USPQ 295 (CCPA 1958).
Thus, while ITALGEL and ITAL GELATI share some similarities
in terms of sound and appearance, in view of the weak and highly
suggestive nature of ITAL GELATI, we find that the differences in
sound and the differences in the overall visual impressions of
the two marks are sufficient to distinguish the marks as a whole.
10 We also note that in response to the question on cross-examination,
"Now, would they be carrying your product along with other Italian
foods or Italian desserts, or is it a mix,...?" Mr. Acuri stated,
"Mainly they won't have two (2) Italian ice cream[s], they probably
have an American ice cream like Ben & Jerry's and then carry Ital
Gelati like a, you know, to show the distinction, but they wouldn't
carry two (2) Italian ice creams, it doesn't make sense." Dep., p. 66
(emphasis added.)
Opposition No. 91151290
11
Contrary to opposer's contention, the absence of evidence of
third-party use is a factor which is, at best, neutral as it does
not offset the highly suggestive nature of opposer's mark or
serve to broaden the scope of protection to which the mark is
entitled. Nor is the weakness of the mark offset by any evidence
of renown of opposer's mark, and opposer has not argued otherwise
in its brief.
We turn then to the goods. It is well settled that the
goods of the parties need not be similar or even competitive to
support a finding of likelihood of confusion. It is sufficient
that the respective goods are related in some manner and/or that
the conditions surrounding their marketing are such that they
would be encountered by the same persons under circumstances that
could, if similar marks are used thereon, give rise to the
mistaken belief that they emanate from or are associated with,
the same source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993).
There is no evidence of record that ice cream on the one
hand and ice cream makers and refrigeration equipment on the
other emanate from the same source or that any third parties
provide both types of products such that the relevant purchasers
might assume a connection between those goods if they were
offered under similar marks. Moreover, we do not find Mr.
Acuri's rather vague statements that he has been "approached" to
sell ice cream makers and refrigerated display cases to be
Opposition No. 91151290
12
particularly convincing evidence of opposer's intent to expand
into that field.
Opposer argues that the parties' respective products are
complementary in nature. This may be true with respect to ice
cream and cases for displaying ice cream. However, opposer has
not explained or shown any such connection between ice cream and
machines for making ice cream, nor does there appear to be one.
Opposer sells "finished" ice cream products in prepackaged
containers to its customers. Prepackaged ice cream would
certainly not be dispensed from applicant's type of ice cream
making machine. Nor is there any evidence that applicant's type
of ice cream maker would, or even could, after manufacturing the
ice cream, be used to dispense ice cream into serving containers
such as cups or cones, or into anything other than commercial
dispensing containers.
In any event, and even assuming that the respective products
have complementary uses, there is no evidence that either piece
of equipment is sufficiently related to ice cream such that,
notwithstanding the differences in the marks used thereon,
purchasers would believe that these goods come from the same
source.
Moreover, while the channels of trade may to some extent be
the same (both are sold directly from the manufacturer through
brochures, trade publications and over the Internet), we have no
persuasive evidence that the goods would be encountered in those
Opposition No. 91151290
13
trade channels by the same purchasers. To begin with, it is
clear from applicant's identification of goods as well as its
testimony that its ice cream making machines and refrigerated
cases are directed to the restaurant and food service industry,
not to the general public. While the general public may
encounter applicant's display cases in their purchase of ice
cream at, for example, an ice cream parlor, it would not be under
circumstances where confusion is likely to result because the
general public is neither a purchaser nor an ultimate user of the
display cases.
Nor is it clear that the commercial purchasers for the
respective products would be the same. The goods of both parties
may be purchased by the same food service institutions, such as
restaurants or hotels. However, opposer has not shown, and it
cannot be presumed from the inherent nature of these products,
that the person responsible for the purchase of food for the
restaurant would be the same person who would purchase the
supplies and equipment for the restaurant, and in particular, a
$32,000 ice cream maker or $16,000 refrigeration unit. Our
primary reviewing Court has stated that the mere purchase of the
goods of both parties by the same institution does not, in
itself, establish overlap of customers. See Electronic Design &
Sales v. Electronic Data Systems, 954 F.2d 713, 21 USPQ2d 1388
(Fed. Cir. 1992). The fact that food products and equipment are
Opposition No. 91151290
14
not even exhibited at the same trade shows further suggests that
the purchasers would not be the same.11
Thus, to the extent that the commercial purchasers do
overlap, any such overlap would be de minimis. In any event,
these commercial purchasers would be sophisticated and
knowledgeable about the products they are buying. In addition,
the record shows that ice cream making machines in particular are
expensive goods that are purchased only after a careful
evaluation process. The Court has made it clear that purchaser
"sophistication is important and often dispositive because
sophisticated consumers may be expected to exercise greater
care." Electronic Design & Sales v. Electronic Data Systems,
supra at 1392. Moreover, "there is always less likelihood of
confusion where the goods are expensive and purchased after
careful consideration." Electronic Design & Sales v. Electronic
Data Systems, supra at 1392.
In view of the cumulative differences in the marks and the
respective goods and the fact that the goods are not marketed
under circumstances which would give rise to the mistaken belief
that the goods emanate from a single source, we find that there
is no likelihood of confusion.
Decision: The opposition is dismissed.
11 Mr. Acuri stated that he has exhibited in combined food and
restaurant equipment trade shows. However, those trade shows were held
outside of the United States. Dep., p. 54.