Forza Pizza LLCv.Fired Up Kitchens

Trademark Trial and Appeal Board

Jul 23, 2019

91235087 (T.T.A.B. Jul. 23, 2019)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: July 23, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Forza Pizza LLC
v.
Fired Up Kitchens
_______
Opposition No. 91235087
_______
Alberto DeCicco for Forza Pizza LLC
Francis G. Pennarola of Chipman, Mazzucco, Land & Pennarola, LLC for Fired Up
Kitchens.
_______
Before Taylor, Shaw and Coggins, Administrative Trademark Judges.
Opinion by Shaw, Administrative Trademark Judge:
Applicant, Fired Up Kitchens, seeks registration of the mark FORZA FORNI, in
standard characters, for services identified as “On-line retail store services featuring
brick ovens, wood fired ovens, pizza making equipment and tools,” in International
Class 35.1 The application includes the following translation statement: “The English

1 Application Serial No. 87163532, filed on September 7, 2016 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming dates of first use anywhere and in commerce
of March 1, 2016.
Opposition No. 91235087
2
translation of ‘Forza Forni’ in the mark is ‘force ovens’.” Applicant has disclaimed the
wording FORNI.
Opposer, Forza Pizza LLC, has opposed registration of Applicant’s mark on the
ground of priority and likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on ownership of the mark FORZA PIZZA,2 in standard
characters, for services identified as “Providing a web site featuring technology that
enables users to find, view, browse, like, comment, upload, post, display, blog, link,
share or otherwise receive or provide electronic media or other information about,
relating to or otherwise involving pizza, pizzerias or other pizza related content,” in
International Class 42. The registration includes the following translation statement:
“The English translation of the word ‘Forza’ in the mark is ‘force’.” The registration
disclaims the wording PIZZA.
Applicant denied the salient allegations of the notice of opposition.
I.The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved application.
Opposer submitted the following evidence:
1. A copy of Opposer’s pleaded registration;3
2. The declaration of Alberto DeCicco, Opposer’s sole member and manager,
with exhibits relating to Opposer’s use of its mark and related activities;4

2 Registration No. 5012017, issued August 2, 2016.
3 1 TTABVUE 8.
4 10 TTABVUE 2-213; also introducing Opposer’s registration by declaration, 10 TTABVUE
Opposition No. 91235087
3
3. Opposer’s first notice of reliance introducing, inter alia, excerpts from
Opposer’s websites and social media, as well as excerpts from third-party
websites;5
4. The rebuttal declaration of Alberto DeCicco, with exhibits;6 and
5. Opposer’s second notice of reliance introducing, inter alia, excerpts from
Opposer’s websites and third-party websites.7
Applicant submitted the following evidence:
1. Applicant’s first notice of reliance introducing, inter alia, Opposer’s
trademark application file, excerpts from Opposer’s web site, excerpts from
the Internet archive of Opposer’s website; excerpts from Opposer’s
LinkedIn, Facebook, and Instagram pages, and various documents
purportedly relating to Opposer’s efforts to promote its services.8
2. The declaration of Peter de Jong, founder and CEO of Applicant, with
exhibits;9
3. The declaration of Rick Figueiredo, Applicant’s General Manager;10 and
4. The declaration of Francis G. Pennarola, attorney for Applicant, with
exhibits relating to Opposer’s efforts to sell third party pizza ovens.11

6 (“Opposer owns U.S. Registration No. 5,012,017 for the mark ‘Forza Pizza’. . . . evidenced
in Notice of Reliance Exhibit (b) [10 TTABVUE 220].”).
5 10 TTABVUE 214-89.
6 17 TTABVUE 2-66.
7 Id. at 67-158.
8 13 TTABVUE.
9 14 TTABVUE.
10 15 TTABVUE.
11 16 TTABVUE.
Opposition No. 91235087
4
II.Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014). Our primary reviewing court, the U.S. Court of
Appeals for the Federal Circuit, has enunciated a liberal threshold for determining
standing, namely that a plaintiff must demonstrate that it possesses a “real interest”
in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his
belief of damage.” Empresa Cubana Del Tabaco, 111 USPQ2d at 1062 (citing Ritchie
v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). A “real
interest” is a “direct and personal stake” in the outcome of the proceeding. Ritchie v.
Simpson, 50 USPQ2d at 1026.
In this case, although Opposer made of record only plain copies of its pleaded
registration, neither of which were reasonably contemporaneous, see United Global
Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1043 (TTAB 2014), Applicant, in its
brief, treated the registration as if it were properly of record.12. In view thereof,
Opposer has established its standing. In addition, priority is not in issue with respect
to the marks and the services set out in Opposer’s pleaded registration vis-à-vis

12 Applicant’s Br., p. 3 (Description of the Record, para. 2), 19 TTABVUE 4. A registration
owned by a party to a proceeding may be deemed of record even though it was not properly
introduced in accordance with the applicable rules if the adverse party in its brief treats the
registration as being of record. TRADEMARK TRIAL AND APPEAL MANUAL OF PROCEDURE
(“TBMP”) § 704.03(b)(1)(A) (June 2019); see also Local Trademarks Inc. v. Handy Boys Inc.,
16 USPQ2d 1156, 1157 n.5 (TTAB 1990) (applicant conceded ownership and validity of
pleaded registration in its trial brief); Jockey Int’l, Inc. v. Frantti, 196 USPQ 705, 706 n.5
(TTAB 1977) (“Although status copies showing title in opposer were never filed by
opposer...applicant's brief treats the registrations as being in the record and so shall we.”).
Opposition No. 91235087
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Applicant’s mark and its identified services. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
III.Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the services and the similarities between the marks. 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 [or services] and differences in the marks.”).
A. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression
We first consider the marks, comparing them for similarities and dissimilarities
in appearance, sound, connotation and commercial impression. See Palm Bay Imps.
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). When considering the similarity of the marks, the test is not whether
the marks can be distinguished when subjected to a side-by-side comparison, but
rather whether the marks are sufficiently similar in terms of overall commercial
impression so that confusion as to the source of the goods or services offered under
the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des
Opposition No. 91235087
6
Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re
Davia, 110 USPQ2d 1810, 1813 (TTAB 2014).
Applicant’s mark is FORZA FORNI. Opposer’s mark is FORZA PIZZA. Opposer
argues that “the parties’ marks are highly similar because the dominant and first
word in both marks is FORZA.”13 And further, that FORNI and PIZZA are entitled to
less weight because they are descriptive and have been disclaimed.14 Applicant
argues that the marks have different commercial impressions because it is unlikely
consumers will translate FORZA and, therefore, Opposer’s mark “‘FORZA PIZZA’ is
clearly a play on words, creating the impression ‘For the Pizza’.”15
Applicant’s argument is unpersuasive. There is no evidence that consumers would
perceive Opposer’s mark as “For the Pizza.” Further, even assuming that consumers
would perceive Opposer’s mark as “For the Pizza,” we see no reason why consumers
would not perceive the FORZA portion of Applicant’s mark in the same way. Thus, to
the extent that consumers do not translate the parties’ marks, FORZA would be an
arbitrary word creating the same commercial impression in both marks. On the other
hand, to the extent that consumers would translate the marks, the translations
FORCE PIZZA and FORCE OVENS have similar commercial impressions because
they both share the term FORCE.
Applicant also argues that the marks differ in appearance as actually used by the
parties because “Opposer typically uses a unique font, and unique settings for its

13 Opposer’s Br., p. 13, 18 TTABVUE 14.
14 Id.
15 Applicant’s Br., p. 11, 19 TTABVUE 12.
Opposition No. 91235087
7
mark” whereas Applicant “displays its mark with a logo.”16 It is well settled that we
must compare the marks as depicted in the application and the registration, not as
actually used. See, e.g., In re Infinity Broad. Corp. of Dallas, 60 USPQ2d 1214 (TTAB
2001) (“[I]n Board proceedings, likelihood of confusion is determined independent of
the context of actual usage.”). Here, the parties’ marks are standard character marks
and may be used in any font or typeface. In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1909 (Fed. Cir. 2012). Accordingly, this argument is unavailing.
In terms of sound, both marks are similar in cadence because they begin with the
term FORZA followed by a two-syllable word. The alliteration in Applicant’s mark
does little to diminish the marks’ similarity in sound and does not overcome the
similarity in commercial impression.
When we consider the marks as a whole, we find the marks are similar in that the
dominant portion of each mark, FORZA, is identical. The weaker terms, PIZZA and
FORNI, as descriptive and disclaimed, play a subordinate role. In sum, we find the
marks are more similar than dissimilar, particularly, as noted, in commercial
impression and sound. Similarity in any one of these elements is sufficient to support
a determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola Co.,
390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in
either form, spelling or sound alone is likely to cause confusion.”); In re Davia, 110
USPQ2d at 1812 (“Similarity in any one of these elements may be sufficient to find
the marks confusingly similar.”).

16 Id. at 12-13, 19 TTABVUE 13-14.
Opposition No. 91235087
8
Accordingly, the du Pont factor regarding the similarity of the marks weighs in
favor of finding a likelihood of confusion.
B. The similarity or dissimilarity of the services, trade channels and classes of
consumers
We next consider the similarity of the parties’ services, keeping in mind that the
services need not be identical or even competitive to find a likelihood of confusion. See
On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475
(Fed. Cir. 2000). The respective services need only be “related in some manner and/or
if the circumstances surrounding their marketing [be] such that they could give rise
to the mistaken belief that [they] emanate from the same source.” Coach Servs., Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir.
2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
We compare the services as identified in the application and registration, not on
extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys.,
Inc. v. Hous. Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990) (“The authority is legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to the particular nature of an
applicant’s goods, the particular channels of trade or the class of purchasers to which
the sales of goods are directed.”)).
To recap, Applicant’s identified services are “On-line retail store services featuring
brick ovens, wood fired ovens, pizza making equipment and tools.” Opposer’s services
Opposition No. 91235087
9
are “Providing a web site featuring technology that enables users to find, view,
browse, like, comment, upload, post, display, blog, link, share or otherwise receive or
provide electronic media or other information about, relating to or otherwise
involving pizza, pizzerias or other pizza related content.” In other words, Opposer’s
registration covers the provision of a web site providing information about pizza,
pizzerias or other pizza-related content.
The parties’ services are related inasmuch as Opposer’s provision of information
about “pizza, pizzerias or other pizza related content” could include providing
information about “brick ovens, wood fired ovens, [and] pizza making equipment and
tools” such as those offered by Applicant. In addition, both parties’ services are
provided online. Thus, for example, consumers familiar with Applicant’s pizza ovens
and accessories could think that Opposer’s website was a related service providing
information about pizza generally. Conversely, consumers familiar with Opposer’s
website could think that Applicant’s pizza ovens and accessories were an extension
of Opposer’s pizza information site, even if Opposer does not actually sell pizza ovens
and accessories. In fact, Opposer’s FORZA PIZZA website blog chronicles the
construction and use of a backyard pizza oven.17
Applicant argues that the services are not related because “parties are not in
direct competition. . . . Opposer’s social pizza network of sites [are not] related to
Applicant’s on-line retail store for the sale of pizza ovens.”18 This argument is

17 See Exh. A to Opposer’s Notice of Reliance, 10 TTABVUE 12 and Exh. E-1 to Applicant’s
Notice of Reliance, 13 TTABVUE 40.
18 Applicant’s Br., p. 16, 19 TTABVUE 17.
Opposition No. 91235087
10
unpersuasive. A likelihood of confusion among consumers may exist even when
parties are not direct competitors and the rights of the owner of a mark extend to
those goods or services which potential consumers might mistakenly conclude are
related or have some common sponsorship. See In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Opus One Inc., 60 USPQ2d
1812 (TTAB 2001); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). Here, the fact
that Opposer provides online “pizza related content,” including content about a
backyard pizza oven, and Applicant offers pizza ovens and pizza making accessories
online, is sufficient to find the services are related for likelihood of confusion
purposes.
Regarding channels of trade, the parties’ services, as identified, are not restricted
to any specific trade channels and so it must be assumed that they travel in channels
normal for such services, particularly since they are both offered over the Internet.
See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Regarding classes of consumers,
given the relatedness of the services, we also find they would be offered to the same
classes of consumers, including consumers searching the Internet for information
about purchasing, building, or installing pizza ovens.
For the foregoing reasons, we find that the du Pont factors of the similarity of the
services, channels of trade and classes of consumers weigh in favor of a finding of
likelihood of confusion.
C. Actual Confusion
Next, we turn to the seventh and eighth du Pont factors: the nature and extent of
any actual confusion, and the length of time and conditions under which there has
Opposition No. 91235087
11
been concurrent use without evidence of actual confusion. Applicant alleges that it
began using its mark on March 1, 2016 and that the parties’ mark have co-existed
since then without any actual confusion.19
A showing of actual confusion may be highly probative, if not conclusive, of a
likelihood of confusion. Majestic Distilling, 65 USPQ2d at 1205. Yet the opposite is
not true; an absence of evidence of actual confusion carries little weight. Id. (citing J.
C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 964, 144 USPQ 435, 438 (CCPA
1965)). That is, an absence of such evidence is not compelling in support of a finding
of no likelihood of confusion, particularly in these circumstances where there has only
been contemporaneous use of the marks for three years. We cannot conclude from the
lack of instances of actual confusion that confusion is not likely to occur. This du Pont
factor is neutral.
D. Consumer sophistication.
Applicant argues that its customers “are likely careful, sophisticated purchasers;
whereas, buyers under the Opposer’s mark, are likely impulse buyers.”20 This
argument misapprehends the goods and services at issue because it is based on
comparing Applicant’s products with branded clothing items Opposer also sells on its
website. This is not a proper comparison of the parties’ goods and services. The proper
comparison is not with Opposer’s ancillary clothing items but with the services
actually identified in Opposer’s registration, namely, providing a web site involving
pizza, pizzerias or other pizza related content. As discussed above, Opposer’s FORZA

19 Applicant’s Br., p. 20, 19 TTABVUE 21.
20 Id.
Opposition No. 91235087
12
PIZZA website blog chronicles, among other things, the construction and use of a
backyard pizza oven. This content could confuse even sophisticated consumers
searching the Internet for information about purchasing, building, or installing pizza
ovens.
E. Balancing the factors
After considering all of the applicable du Pont factors, we find that Applicant’s
mark FORZA FORNI for on-line retail store services featuring brick ovens, wood fired
ovens, pizza making equipment and tools is likely to cause confusion with Opposer’s
FORZA PIZZA mark for providing a web site involving pizza, pizzerias or other pizza
related content.
Decision: The opposition is sustained and registration of the mark is refused.