Luca’s Chophouse LLC

Trademark Trial and Appeal Board

Sep 15, 2009

No. 77335047 (T.T.A.B. Sep. 15, 2009)

Mailed:
September 15, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Luca’s Chophouse LLC
________

Serial No. 77335047
_______

Julia L. Black of J. Black & Associates, P.L.C. for Luca’s
Chophouse LLC

Paul A. Moreno, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney)
_______

Before Seeherman, Drost and Zervas, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Luca’s Chophouse LLC has appealed from the final
refusal of the trademark examining attorney to register
LUCA’S CHOPHOUSE and design, as shown below, with CHOPHOUSE
disclaimed, for “restaurant and bar services.”1

1 Application Serial No. 77335047, filed November 21, 2007, and
asserting first use as of December 2006 and first use in commerce
as early as March 2007.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77335047
2

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark, as used in connection with its
services, is likely to cause confusion with the following
two registrations, both owned by the same entity:
LUCA PIZZA DI ROMA, in standard
character form, with PIZZA DI ROMA
disclaimed, and with the statement that
the English translation of DI ROMA is
“OF or FROM ROME,” registered for
restaurant services2 and

LUCA PIZZA, in standard character form,
with PIZZA disclaimed, registered for
restaurant services.3

We affirm the refusal of registration.
As a preliminary matter, we note that with its appeal
brief applicant has submitted copies of the exhibits that
were previously filed during the prosecution of the
application. The Board discourages such duplicate filings.
See TBMP § 1203.01 (papers that are already in the file
should not, as a matter of course, be resubmitted as

2 Registration No. 3398268, issued March 18, 2008.

3 Registration No. 3249643, issued June 5, 2007.
Ser No. 77335047
3
exhibits to the brief); In re SL&E Training Stable Inc., 88
USPQ2d 1216, 1220 n.9 (TTAB 2008) (attaching exhibits to
brief of material already of record only adds to the bulk
of the file, and requires Board to determine whether
attachments had been properly made of record); In re Thor
Tech Inc., 85 USPQ2d 1474, 1475 n. 3 (TTAB 2007) (material
attached to briefs that is duplicative of matter submitted
during examination is already part of application file and
its submission with briefs is unnecessary).
We turn now to the issue on appeal, i.e., whether
applicant’s use of its mark for restaurant and bar services
is likely to cause confusion with the two cited
registrations. Our determination of this issue is based on
an analysis of all of the probative facts in evidence that
are 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 marks and the similarities
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Ser No. 77335047
4
We turn first to a consideration of the services.
Applicant has identified its services as “restaurant and
bar services” and the services in the two cited
registrations are identified as “restaurant services.”
Thus, the restaurant services are legally identical.
Applicant has argued at length about the differences in the
actual services, noting that the registrant’s website shows
that its restaurants are casual style eateries specializing
in pizza that are frequently located in shopping malls,
while applicant operates a single restaurant that is “an
upscale fine dining establishment” offering “a full service
bar and live dinner entertainment such as small
jazz/singing groups” and providing table service by wait
staff. Affidavit of Luca Gjonaj, the founder and owner of
applicant. Applicant contends “that looking beyond the
general registration of ‘restaurant services’ for Luca
Pizza di Roma/Luca Pizza and ‘restaurant and bar service’
for Luca’s Chophouse to the actually [sic] type of
operation operated by the two entities shows that there is
not a likelihood of confusion.” Brief, p. 10.
The foregoing statement in applicant’s brief sums up
the problem with applicant’s arguments. We may not look
beyond the identification set forth in the cited
registrations and applicant’s application to the actual
Ser No. 77335047
5
type of operation of applicant and the registrant. The
ownership of the registrations gives the registrant the
benefits of Section 7(b) of the Trademark Act, that is, the
registrations are prima facie evidence of the registrant’s
exclusive right to use the mark on or in connection with
the goods or services specified in the certificate.
Because the registrations specify the services as
“restaurant services,” registrant is entitled to use its
marks in connection with all types of restaurant services;
its rights are not limited to using the marks for casual or
fast food restaurants specializing in pizza. Similarly, if
a registration were to issue to applicant with the
identification of “restaurant and bar services,” the
registration would give it the right to use its mark with
any type of restaurant, including a casual or fast food
restaurant specializing in pizza. “Likelihood of confusion
must be determined based on an analysis of the mark as
applied to the ... services recited in applicant's
application vis-a-vis the ... services recited in [a] ...
registration, rather than what the evidence shows the ...
services to be.” In re Dixie Restaurants Inc., 41 USPQ2d
at 1534, quoting Canadian Imperial Bank v. Wells Fargo
Bank, N.A. , 811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815
(Fed.Cir. 1987). As applicant itself has recognized from
Ser No. 77335047
6
its quoting of the du Pont factors at p. 4 of its reply
brief, the second factor is “the similarity or
dissimilarity of the goods or services as described in an
application or registration.” (emphasis added). Further,
although it is the identification of services that is
controlling, we point out that applicant’s restaurant menu
lists “Personal Pizza” as one of the featured categories of
food it offers.
Because as identified the services are in part legally
identical, the du Pont factor of the similarity of the
services favors a finding of likelihood of confusion.4
Further, because the services are legally identical,
they must be presumed to be offered in the same channels of
trade to the same classes of consumers, which in this case
would be the public at large. This du Pont factor favors a
finding a likelihood of confusion. And, because the
decision to patronize a restaurant may be made on impulse,
the factor of the conditions of purchase also favors a
finding of likelihood of confusion. Applicant’s argument

4 Although not raised as an argument by applicant, the fact that
its identification includes “bar services” and the registrant’s
identification does not is not sufficient to avoid a likelihood
of confusion. See 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 or services in the application).

Ser No. 77335047
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with respect to the conditions of purchase factor, that its
restaurant is high-end while the registrant’s restaurants
are a fast food chain and therefore consumers would not be
confused as to the source of the respective restaurants,
cannot be given any weight since the identifications in the
respective application and registrations must control.
We now consider the marks, keeping in mind that when
marks would appear on virtually identical goods or services
the degree of similarity necessary to support a conclusion
of likely confusion declines. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992). We also repeat the well-established
principle that, in articulating reasons for reaching a
conclusion on the issue of likelihood 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 a
consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Both applicant’s mark and the registrant’s marks
consist of the word LUCA’S or LUCA, followed by a generic
term for the goods sold in the restaurant (PIZZA or PIZZA
DI ROMA) in the registrant’s marks, or a generic term for
Ser No. 77335047
8
the services (CHOPHOUSE) in applicant’s mark. In this
connection we take judicial notice that “chophouse” is
defined as “a restaurant that specializes in serving chops
and steaks.”5 Although LUCA appears in the possessive in
applicant’s mark and is not in the possessive in the
registered marks, the meaning of the name is the same in
all three marks, as applicant acknowledges. “Certainly
[applicant] agrees both parties’ marks contain the same
proper name (Luca).” Brief, p. 5. This name is clearly
the dominant element in applicant’s and the registrant’s
marks, as it is the element that consumers would view as
the source-indicating part of the marks; further, the
source-indicating part of the marks are virtually
identical.
Applicant, contends, however, that the stylization of
its mark and the difference in the descriptive/generic
words in the mark are significant.
With respect to applicant’s arguments about the
differences in appearance of the marks, we point out that
the cited mark is shown in standard character format. This
does not mean, as applicant apparently believes, that the

5 The American Heritage Dictionary of the English Language, ©
1970. The Board may take judicial notice of dictionary
definitions. 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).
Ser No. 77335047
9
registered mark appears in something called “standardized
font.” On the contrary, a registration in standard
character format is not limited to any special form or
style, and we must therefore consider the mark in all
reasonable manners in which it may be displayed. See
ProQuest Information and Learning Co. v. Island, 83 USPQ2d
1351 (TTAB 2007), and cases cited therein. Thus, the
registrant would be entitled to use its mark in the same
capital letter font used in applicant’s mark. Applicant
has not discussed the oval background on which the word
CHOPHOUSE appears, presumably because it does not regard it
as a distinguishing feature. Nor do we. The “carrier” for
the generic word CHOPHOUSE does not create a separate
commercial impression, nor is it likely to be noted or
remembered by consumers. See In re Appetito Provisions
Co., 3 USPQ2d 1553 (TTAB 1987) (if a mark comprises both a
word and a design, the word is normally accorded greater
weight because it would be used by purchasers to request
the goods or services).
As for the word CHOPHOUSE in applicant’s mark and the
words PIZZA and PIZZA DI ROMA in the cited marks, these
words convey to consumers that there is a difference in the
type of restaurant they identify, since a CHOPHOUSE, as the
dictionary definition states, is a restaurant that
Ser No. 77335047
10
specializes in steaks and chops, while the word PIZZA in
the registrant’s marks indicates that its restaurants
specialize in pizza. However, the question is not whether
consumers will confuse the goods or services, but whether
they will confuse the source of the goods or services.
Thus, a consumer who is familiar with the registrant's LUCA
PIZZA or LUCA PIZZA DI ROMA restaurant, and sees the mark
LUCA’S CHOPHOUSE on a restaurant, is likely to believe that
the LUCA PIZZA people have expanded their operations and
have opened a restaurant that has a broader menu.
Accordingly, these additional words in the marks are not
sufficient to distinguish applicant’s mark from the cited
marks.
Comparing the marks in their entireties, and giving
appropriate weight to the various elements of the marks,
and further taking into account that the marks are used in
connection with identical services, we find that the marks
are similar in appearance, pronunciation, connotation and
commercial impression, and that this du Pont factor favors
a finding of likelihood of confusion.
Applicant has argued that LUCA “is a fairly common
name for individuals from the Mediterranean Area.” Brief,
p. 5. Applicant has not submitted any evidence in support
of this statement and, more importantly, it has not
Ser No. 77335047
11
submitted any evidence of third-party use of LUCA marks in
the restaurant or food service field. On the contrary, in
its reply brief applicant has stated that it “is unaware of
any other restaurant [than its own] with the name Luca
contained in it.” Reply brief, p. 5. Thus, on the record
before us, we must consider the registrant’s marks LUCA
PIZZA and LUCA PIZZA DI ROMA to be strong marks that are
entitled to a broad scope of protection.
With respect to the du Pont factor of evidence of
actual confusion, applicant has stated that it is unaware
of any instances of such confusion. In general, such
uncorroborated statements by an applicant are of little
evidentiary value. See In re Majestic Distilling Co., 65
USPQ2d at 1205 and cases cited therein. The lack of
evidence of actual confusion carries little weight. Id.
That is particularly true in the present case because,
according to applicant, it has used its mark for its
services only in Michigan, while the registrant has no
restaurants in that state. Thus, there has been no
opportunity for confusion to occur.6

6 Applicant has argued that there is no likelihood of confusion
because it and the registrant are located in different states.
However, as the examining attorney has pointed out, applicant is
seeking a geographically unrestricted registration which would
give applicant the right to use its mark throughout the country.
Further, the cited registrations are unrestricted. Therefore, we
must determine the issue of likelihood of confusion on the
Ser No. 77335047
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Applicant has cited a number of cases in support of
its argument that there is no likelihood of confusion.7 We
will not burden this opinion with a discussion of them.
Suffice it to say that most of them are trademark
infringement cases which are distinguishable both on their
facts and the principles of law that govern them, while one
is a non-precedential opinion issued by the Federal Circuit
in 2006.
After considering the relevant du Pont factors, and
the evidence and argument pertaining thereto, we find that
applicant’s mark LUCA’S CHOPHOUSE and design, used in
connection with restaurant and bar services, is likely to
cause confusion with the cited registrations.
Decision: The refusal of registration is affirmed.

assumption that the applicant’s and the registrant’s services
would be offered in the same geographic areas.

7 Applicant has not provided the case cites to the United States
Patent Quarterly for the federal court cases it has cited. “When
cases are cited in a brief, the case citation should include a
citation to The United States Patent Quarterly (USPQ), if the
case has appeared in that publication.” TBMP §801.03 (2d ed.,
revised 2004). See also In re Carlson, 91 USPQ2d 1198, 1199 n.2
(TTAB 2009).