D’Amico Holding Companyv.D’Amico Enterprises, Inc.

Trademark Trial and Appeal Board

Jan 2, 2015

No. 91204469 (T.T.A.B. Jan. 2, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
January 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

D’Amico Holding Company
v.
D’Amico Enterprises, Inc.
_____

Opposition No. 91204469
_____

Peter J. Gleekel, Bradley J. Walz, and Susan A. Perera of Winthrop & Weinstine,
P.A. for D’Amico Holding Company.

Patrick K. Steele and Jeffrey L. Streets of Streets & Steele for D’Amico Enterprises,
Inc.
_____

Before Zervas, Kuczma and Gorowitz Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:

D’Amico Enterprises, Inc. (“Applicant”) filed an application to register the mark
NASH D’AMICO’S ITALIAN MARKET CAFÉ for “bar and restaurant services” in
Class 43.1 D’Amico Holding Company (“Opposer”) opposed the application on the

1 Application Serial Number 85282848, filed March 31, 2011 on the basis of intent-to-use,
pursuant to Section 1(b) of the Trademark Act. “ITALIAN MARKET CAFÉ” has been
disclaimed.

2

ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d). Opposer alleges ownership of eighteen registrations for marks containing
the word “D’Amico” for inter alia, food items and restaurant services.
Applicant filed an answer denying all salient allegations and asserting four
affirmative defenses. However, Applicant did not file a brief or otherwise present
arguments in support of the affirmative defenses. Thus, they are deemed waived.
This matter has been briefed by Opposer.
The Record.
The record includes the pleadings, and by operation of Trademark Rule
2.122(b), 37 CFR § 2.122(b), the application file. The record also includes the
following evidence proffered by Opposer: the testimony deposition of Paul Smith,
Chief Financial Officer of Opposer dated March 25, 2013 and exhibits thereto
(Smith Test.), and the following documents introduced by notice of reliance:
1. Title and status copies of fifteen of Opposer’s
pleaded registrations in standard characters
unless otherwise displayed, all of which are:
• Reg. No. 2423292 – D’AMICO & SONS
Services: restaurant & catering services
Issued: January 23, 2001 – renewed;

• Reg. No. 3523120 – D’AMICO & SONS
Services: Retail shops featuring gifts, gift
baskets, and food items, issuing gift certificates
which may be redeemed for goods or services;
Issued: October 28, 2008 - Sections 8 & 15
Declarations Accepted and Acknowledged;

• Reg. No. 3523121 – D’AMICO & SONS
Services: Food delivery, and delivery of food by
restaurants;
3

Issued: October 28, 2008 - Sections 8 & 15
Declarations Accepted and Acknowledged;

Reg. No. 3523110 – D’AMICO & SONS
Goods: Wine, table wines, red wine, and white
wine;
Issued: October 28, 2008 - Sections 8 & 15
Declarations Accepted and Acknowledged;

• Reg. No. 3700671 – D’AMICO & SONS
Goods: Prepared entrees consisting primarily of
pasta; prepared meals consisting primarily of
pasta; pasta; pasta salads; pizza; sandwiches;
bread; bakery desserts; processed herbs; spices;
seasonings; vinegar; biscotti; cookies; dessert
bars; coffee; and tea;
Issued: October 27, 2009 - Sections 8 & 15
Declarations Accepted and Acknowledged;

• Reg. No. 3700674 – D’AMICO & SONS
Goods: Prepared entrees consisting primarily of
meat, fish, poultry or vegetables; prepared
meals consisting primarily of meat, fish, poultry
or vegetables; prepared vegetarian entrees;
prepared beef; prepared meat; salmon; soups;
fruit salads; olive oil; edible oil; and salads
except macaroni, rice, and pasta salad;
Issued: October 27, 2009 - Sections 8 and 15
Declarations Accepted and Acknowledged;

• Reg. No. 3700672 -
Goods: Prepared entrees consisting primarily of
pasta; prepared meals consisting primarily of
pasta; pasta; pasta salads; pizza; sandwiches;
bread; bakery desserts; processed herbs; spices;
seasonings; vinegar; biscotti; cookies; dessert
bars; coffee; and tea;
Issued: October 27, 2009 - Sections 8 and 15
Declarations Accepted and Acknowledged;

4

Reg. No. 3429511 -
Goods: Wine, table wines, red wine, and white
wine;
Issued: May 20, 2008 - Sections 8 and 15
Declarations Accepted and Acknowledged;

• Reg. No. 3700673 -
Goods: Prepared entrees consisting primarily of
meat, fish, poultry or vegetables; prepared
meals consisting primarily of meat, fish, poultry
or vegetables; prepared vegetarian entrees;
prepared beef; prepared meat; salmon; soups;
fruit salads; olive oil; edible oil; and salads
except macaroni, rice, and pasta salad;
Issued: October 27, 2009 - Sections 8 and 15
Declarations Accepted and Acknowledged;

• Reg. No. 3343280 -
Services: Restaurant and catering services;
Issued: November 27, 2007 - Sections 8 and 15
Declarations Accepted and Acknowledged;

• Reg. No. 3343281 -
Services: Food delivery, and delivery of food by
restaurants;
Issued: November 27, 2007 - Sections 8 and 15
Declarations Accepted and Acknowledged;

5

• Reg. No. 3343282 -
Services: Retail shops featuring gifts, gift
baskets, and food items, issuing gift certificates
which may be redeemed for goods or services;
Issued: November 27, 2007 - Sections 8 and 15
Declarations Accepted and Acknowledged;

• Reg. No. 3700676 -
Goods: Prepared entrees consisting primarily of
meat, fish, poultry or vegetables; prepared
meals consisting primarily of meat, fish, poultry
or vegetables; prepared vegetarian entrees;
prepared beef; prepared meat; salmon; soups;
fruit salads; olive oil; edible oil; and salads
except macaroni, rice, and pasta salad;
Issued: October 27, 2009 - Sections 8 and 15
Declarations Accepted and Acknowledged; and

• Reg. No. 3700677 -
Goods: Prepared entrees consisting primarily of
pasta; prepared meals consisting primarily of
pasta; pasta; pasta salads; pizza; sandwiches;
bread; bakery desserts; processed herbs; spices;
seasonings; vinegar; biscotti; cookies; dessert
bars; coffee; and tea;
Issued: October 27, 2009 - Sections 8 and 15
Declarations Accepted and Acknowledged.

2. Copies of third-party registrations;
3. Applicant’s responses to Opposer’s First Set of
Interrogatories;
4. Applicant’s responses and amended response to
Opposer’s First Set of Admissions;
6

5. Applicant’s response to Opposer’s Third Set of
Interrogatories;
6. Content from third-party websites; and
7. USPTO records acknowledging receipt of Section
15 Declaration for five of Opposer’s registrations.
Applicant did not introduce any evidence.
Background.
Opposer has established that it has been in the business of selling and
providing food and drinks since at least 2003. See Smith Test., 9:15-17. Specifically
Opposer’s goods and services include: restaurant and bar services, take-out services,
delivery services, food for sale in specific retail establishments, and wine. See Smith
Test., 14:7 – 16:4.
Standing.
Opposer has properly made its registrations of record, with evidence that its
registrations are subsisting and owned by Opposer. Accordingly, Opposer has
established its standing in this proceeding. Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Priority.
Opposer is the owner of registrations for the marks: D’AMICO & SONS,
, and . Opposer’s ownership of these pleaded
registrations removes priority as an issue with respect to the goods and services
covered by the registrations. Top Tobacco LP v. North Atlantic Operating Co., 101

USPQ2d
Inc., 496
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69 (TTAB
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Q 563 (CC
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201 (Fed.
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8

is no likelihood of confusion between Applicant's mark and the Opposer’s mark in
standard characters for “restaurant and catering services,” then there would be no
likelihood of confusion with the marks with design elements for the other goods and
services. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
Similarity or Dissimilarity of the Parties’ Services.
We start our analysis by considering the similarity or dissimilarity between the
parties’ services. Our evaluation of the parties’ services is based on the services as
identified in the Registration No. 2423292 and the present application. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston Computers Servs. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank v.
Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
The services in both the application and in Registration No. 2423292 include
“restaurant services.” Thus, as identified, Applicant’s services and Opposer’s
services are in part identical, which is sufficient to find Applicant’s services related
to Opposer’s services. Accord, Tuxedo Monopoly, Inc. v. General Mills Fun Group,
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 in the application). As such, Applicant’s “restaurant and
bar services” are similar to Opposer’s “restaurant and catering services.”
9

Accordingly, this du Pont factor favors a finding of likelihood of confusion.
Similarity or Dissimilarity of Established, Likely-To-Continue Trade
Channels.
Since the services are in-part identical, the services are deemed to be sold to the
same class of purchasers through the same channels of trade. See Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-
part related nature of the parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers, these clothing items
could be offered and sold to the same classes of purchasers through the same
channels of trade.”); and In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994) (“Because the goods are legally identical, they must be presumed to travel in
the same channels of trade, and be sold to the same class of purchasers.”).
Accordingly, this du Pont factor favors a finding of likelihood of confusion.
Similarity or Dissimilarity of the Marks.
We turn next to the first du Pont factor, the similarity of the marks, noting that
the legally identical nature of Applicant’s and Opposer’s restaurant services not
only weighs heavily in favor of a finding of likelihood of confusion, but also reduces
the degree of similarity of the marks necessary to find a likelihood of confusion. In
re Viterra, 671 F3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital
Group Ltd., 93 USPQ2d at 1248. In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of the marks at issue.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
10

F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The emphasis of our analysis
must be on the recollection of the average purchaser who normally retains a
general, rather than specific, impression of trademarks. In re Cynosure, Inc., 90
USPQ2d 1644, 1645 (TTAB 2009) (citing Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975)). “While we analyze the marks in their entireties, it is
well settled that one feature of a mark may be more significant than another, and it
is not improper to give more weight to this dominant feature when evaluating the
similarities of the marks.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985). The dominant feature is “often the first part of a mark, which
is most likely to be impressed upon the mind of a purchaser and remembered.”
Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(Likelihood of confusion found between KIDWIPES and KID STUFF for pre-
moistened disposable towelettes). See also Palm Bay Imports Inc., 73 USPQ2d at
1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because
“Veuve” is the first word in the mark and the first word to appear on the label);
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first
notice the identical lead word).
In this case, the first portions of the marks are D’AMICO, which is a surname,
and NASH D’AMICO, which is a full name. The Federal Circuit and the Board have
held that when conflicting marks consist of a surname and a full name ending in
11

the same surname, confusion is likely. As the Board stated in Modern Shoe
Company v. B. B. Walker Shoe Company, 170 USPQ 530, 531 (TTAB 1971):
We have here a surname “WALKER” and a full name
“JOHNNIE WALKER”. The full name would represent an
individual. The surname “WALKER” does not per se
identify any particular individual but it does identify any
and all persons who bear that surname, including
“JOHNNIE WALKER”. And, it is not uncommon to
identify an individual by a surname without reference to
a first or Christian name, for example Nixon or
Rockefeller in reference to well-known political figures.
Thus, “WALKER” and “JOHNNIE WALKER” could be
regarded as one and the same individual. These names
when used as marks will create the same impression and
such impression is greatly enhanced because they are
used on directly competitive goods, even as to price. We
are of the opinion that the circumstances give rise to a
likelihood of confusion.
Id. (internal citations omitted). See also Nina Ricci S.A.R.L. V. E.T.F. Enterprises
Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1904 (Fed. Cir. 1989) (VITTORIO RICCI for
handbags, clothing and retail store services in the field of clothing is likely to cause
confusion with NINA RICCI for clothing and accessories even though Vittorio Ricci
was the name of defendant’s principal); Jack Winter Inc. v. Lancer of California,
Inc., 183 USPQ 445, 446 (TTAB 1974) (DAVID WINTER for clothing is likely to
cause confusion with JACK WINTER for clothing). Thus, on their own, the
dominant portions of the marks, D’AMICO and NASH D’AMICO are similar.
Having considered the similarities between the dominant portions of the marks,
we now look at the marks in their entireties. In Applicant’s mark, NASH
D’AMICO’S ITALIAN MARKET CAFÉ, the descriptive phrase “ITALIAN MARKET
CAFÉ,” which identifies the nature of Applicant’s business and which has been
12

disclaimed, has been added to the dominant term. In general, the addition of merely
descriptive matter does not obviate a finding of similarity. In re Chatam Int’l Inc.,
380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (“Viewed in their entireties with
non-dominant features appropriately discounted, the marks [GASPAR’S ALE for
beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical … .”).
In the mark D’AMICO & SONS, the phrase “& SONS” does not distinguish or relate
to anything except the surname “D’Amico.” See In re Piano Factory Group Inc., 85
USPQ2d 1522, 1526-27 (TTAB 2006) (VOSE & SONS held to be merely a surname
because the addition of the notation “‘& SONS’ cannot be said to distinguish or
relate to anything other than a surname” and “serves only to emphasize or reinforce
that ‘VOSE’ is the surname of the sons’ parents.”) Cf. In re I. Lewis Cigar
Manufacturing Co., 205 Fed.2d 204, 98 USPQ 265, 267 (CCPA 1953) (S.
SIEDENBERG & CO’s. held to be primarily merely a surname.) Similarly, the
phrase “& SONS” in Opposer’s mark would be seen as emphasizing that D’AMICO
is a surname and that NASH D’AMICO is a “son” of Opposer.
Accordingly, the first du Pont factor favors a finding of likelihood of confusion.
Conclusion.
Having considered all the evidence and argument on the relevant du Pont
factors, whether specifically discussed herein or not, we conclude that Applicant’s
use of the mark NASH D’AMICO’S ITALIAN MARKET CAFÉ for “bar and
restaurant services” is likely to cause confusion with Opposer’s mark “D’AMICO &
SONS” for “restaurant and catering services.”
13

Decision: The opposition is sustained on the ground of likelihood of confusion
under Section 2(d) of the Trademark Act and registration to Applicant is refused.