Palermo Villa, Inc.

Trademark Trial and Appeal Board

Dec 20, 2017

No. 86836045 (T.T.A.B. Dec. 20, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 20, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Palermo Villa, Inc.
_____
Serial No. 86836045
_____
Daniel E. Kattman and Heidi R. Thole of Reihnart Boerner Van Deuren, s.c.
for Palermo Villa, Inc.

Carol Spils, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
_____
Before Cataldo, Lynch, and Coggins,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
I. Background
Palermo Villa, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark with PIE PIZZA CO. disclaimed, for frozen pizza not sold
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or distributed through restaurants in International Class 30.1 The Examining
Attorney has finally refused registration under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), based on a likelihood of confusion with two registered marks of
the same owner:2
URBAN PI and design and URBAN PI CREATIVE
PIZZA and design both for “[r]estaurant, restaurant
carryout, and catering services; take out restaurant services for consumption of food
off the premises” in International Class 43. After the final Office Action, Applicant
appealed and requested reconsideration. The Examining Attorney denied the
request, and this appeal proceeded. This Board subsequently granted Applicant’s
request for a remand to submit newly available evidence.3 The Examining Attorney
considered the new evidence, but maintained the refusal, and supplemented the

1 Application Serial No. 86836045 was filed December 1, 2015, based on a declared intent to
use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
2 Registration Nos. 4538919 and 4538920 both issued May 27, 2014. Their mark descriptions
contain the following identical wording: “The mark consists of a rectangular design with the
stylized wording ‘URBAN Pi’ therein. ‘Pi’ is surrounded by a circle, and a flame represents
the dot in the ‘i’. The design of a pizza peel appears behind all of the wording in the rectangle
in the mark with its head being directly behind the circle containing ‘Pi’.” And the description
in Registration No. 4538920 also contains the concluding sentence, “The stylized wording
‘creative pizza’ appears below the rectangle.”
3 13 TTABVUE.
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record with evidence to rebut Applicant’s new evidence.4 This appeal again resumed
and is fully briefed. We affirm the refusal to register for the reasons set out below.
II. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the relatedness of the goods and services. See In re Chatam Int’l Inc.,
380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); 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 [and services] and differences in the marks.”). We discuss
below these and other relevant factors. See M2 Software, Inc. v. M2 Commc’ns, Inc.,
450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir. 2006) (only du Pont factors that are
“relevant and of record” need be considered).
A. The Goods and Services
As to the goods and services, we must determine whether their degree of
relatedness rises to such a level that consumers would mistakenly believe the

4 14, 15, and 16 TTABVUE.
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respective goods and services emanate from the same source. In making this analysis
of the second du Pont factor, we look to the identifications in the application and cited
registrations. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston
Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Applicant identifies “frozen pizza not sold or distributed through restaurants,” while
the cited registrations recite “[r]estaurant, restaurant carryout, and catering
services; take out restaurant services for consumption of food off the premises.”
Applicant argues that the Examining Attorney has not shown the requisite
“something more” needed to establish the relatedness of food items and restaurant
services. “‘[T]o establish likelihood of confusion a party must show something more
than that similar or even identical marks are used for food products and for
restaurant services.’” In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063
(Fed. Cir. 2003) (citation omitted); see also In re St. Helena Hosp., 774 F.3d 747, 113
USPQ2d 1082, 1087 (Fed. Cir. 2014) (explaining the need to show “‘something more’
than the mere fact that the goods and services are ‘used together’” in situations where
the relatedness of the goods and services is obscure or not generally recognized).
The record includes evidence that goods and services of this type emanate from
the same source under the same mark. In particular, the evidence suggests that
pizzerias offer frozen versions of their pizzas that are sold through retail stores. For
example:
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The California Pizza Kitchen website invites visitors to “visit your favorite
location … to experience our hand-tossed artisan pizzas…” and promotes its frozen
pizzas with a link to “Find Grocery Store” where the goods are available;5
The website for Roberta’s in Brooklyn offers location and menu information for its
pizza restaurants, and the record includes an online article entitled “Taste Test: We
Try the $12 Roberta’s Frozen Pizza from Whole Foods Gowanus,” stating, “The
plastic-wrapped margherita is the Brooklyn restaurant’s first foray into frozen foods”
and noting that the pizzas are sold at the local Whole Foods grocery store;6
The Connie’s Pizza website advertises pizza restaurant services and notes that its
“restaurant-style deep dish pizza is now available as a frozen pizza in your local
grocer’s freezer case”;7
The Instacart.com website promotes the “Full of Life Flatbread” frozen pizza with
a link for delivery as well as information to “Find Stores” and “see prices in your local
store” for the frozen pizza, and the Full of Life Flatbread website shows a photograph
of the restaurant interior, indicating “We will be open for lunch every Saturday and
Sunday”;8

5 TSDR March 29, 2016 Office Action at 43-45 (cpk.com & cpkfrozen.com).
6 Id. at 48-49 (robertaspizza.com & firstwefeast.com).
7 Id. at 41-42 (conniespizza.com). We note that during this appeal, after requesting a remand
to submit newly existing evidence, Applicant submitted documentation dated February 14,
2017 that it acquired trademark rights to the CONNIE’S mark for frozen pizza, while the
trademark rights in restaurant services will remain with the original owner. 12 TTABVUE.
Nonetheless, at the time the Examining Attorney submitted (and consumers were exposed
to) the CONNIE’S-related evidence, the respective rights rested with the same original
owner.
8 TSDR February 20, 2017 Office Action at 46-49 (instacart.com & fulloflifefoods.com).
Serial No. 86836045
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The American Flatbread website features information about American Flatbread
restaurants and about American Flatbread frozen pizza, which can be found “in your
freezer section”;9
The website of Gino’s East of Chicago features information about its “landmark
downtown Chicago eatery” as well as its “deep-dish pizza now available in your
grocers freezer,” corroborated by the Target website indicating that Gino’s East of
Chicago frozen pizza is available in some of its stores;10
The Sbarro website offers information about its pizzerias, while the Walmart
website shows Sbarro frozen pizza in stock at various Walmart stores;11
The Amy’s mark appears on frozen pizza sold through Walmart and also is used
in connection with a fast food restaurant;12
The website of Home Run Inn pizzeria indicates that there are multiple
restaurant locations under the mark, while the Walmart website shows that Home
Run Inn frozen pizza is sold at Walmart stores;13
The mark Table 87 appears in connection with restaurant services and on frozen
pizzas that the website indicates are sold “in the supermarket”;14

9 Id. at 52-55 (americanflatbread.com).
10 Id. at 56-65 (ginoseastpizza.net); 16 TTABVUE 26 (target.com).
11 TSDR March 29, 2016 Office Action at 52-53 (sbarro.com & walmart.com).
12 16 TTABVUE 8-22 (walmart.com, amys.com, amysdrivethru.com) (May 22, 2017 Denial of
Reconsideration).
13 17 TTABVUE 7 (homeruninnpizza.com); 16 TTABVUE 31 (walmart.com).
14 14 TTABVUE 2-7 (table87.com).
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The Target website indicates that Uno frozen pizza is sold at some of its stores,
while the Uno website shows the same mark used in connection with pizzeria
restaurant services.15
This marketplace evidence demonstrates that consumers encounter frozen pizza
sold or distributed through non-restaurant channels under the same mark as
restaurant services. The evidence suggests that pizza restaurants, in particular,
venture specifically into the frozen pizza industry, marketing frozen pizza under their
restaurant marks, even when that pizza is sold through grocery or other retail stores.
Showing “something more” than just that these goods and services are offered under
the same mark, numerous examples from the record also reflect mark owners touting
the connection between their restaurants and their frozen pizza, making restaurant
customers aware that, for example, they can “ENJOY OUR PIZZA AT HOME!”16 The
Home Run Inn website provides the background that its “Home Run Inn frozen pizzas
are made exactly like they are at all of our pizzeria locations …. We began freezing
the pizzas ahead of time and distributing them to neighborhood grocers—and it was
a hit! [They] are now available in more than thirty five states nationwide.”17 The
Connie’s Pizza website similarly explains, “For over 50 years, Connie’s Pizza has been
famous for pizza. Our restaurant-style deep dish pizza is now available in your local
grocer’s freezer case.”18 We note that in this case Registrant’s unrestricted

15 Id. at 8-15 (target.com & unos.com).
16 Id. at 6 (table87.com).
17 15 TTABVUE 7 (homeruninnpizza.com).
18 TSDR March 29, 2016 Office Action at 42 (conniespizza.com).
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identification of “[r]estaurant . . . services” encompasses pizza restaurants. Indeed,
the wording and designs in Registrant’s mark, and other evidence in the record, show
that Registrant operates a pizzeria.19
The Examining Attorney also submitted additional evidence, in the form of a
sizable number of use-based third-party registrations that identify frozen pizzas and
restaurant services under the same mark.20 These registrations suggest that the
relevant goods and services may emanate from the same source. See Joel Gott Wines,
LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1432 (TTAB 2013) (“The use-
based, third-party registrations . . . also have probative value to the extent that they
serve to suggest that the goods listed therein are of a kind which may emanate from
a single source under a single mark.”); see also In re Infinity Broadcasting Corp. of
Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993).
Applicant’s proffered statistical-type arguments about the rarity of one entity
providing restaurant services and frozen pizza are flawed and have little probative

19 Id. at 8-12; TSDR July 8, 2016 Office Action at 2 (urbanpi.com).
20 TSDR March 29, 2016 Office Action at 13-38; TSDR November 10, 2016 Office Action at 2-
50; TSDR February 20, 2017 Office Action at 2-41, 74-. We have not considered registrations
that do not contain the relevant goods/service, indicate that the registrations have been
cancelled, or that the relevant goods/services have been deleted, such as Reg. Nos. 1780465,
2956376, 3202619, 3313236, 3423391, 3425412, 3473869, 3520355, 3951553, 3982409,
4207013, 4212582, 4487234, 4487235, 4517470, 4752636, 4763888, 4917041, 5081487. We
also have taken into consideration the additional evidence submitted by Applicant on remand
of its acquisition of three of the third-party registrations, which according to Applicant
demonstrates “that even fewer entities sell both frozen pizza at retail and restaurant services
under the same or similar trademark” and “that entities that sell frozen pizza at retail and
entities that offer restaurant services under a similar trademark may co-exist in the
marketplace without causing consumer confusion.” 12 TTABVUE 4 (Applicant’s Request for
Remand).
Serial No. 86836045
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value. We reject Applicant’s contentions based on the alleged number of operating
restaurants in the U.S.21 Applicant’s claim about the number of restaurants is not
based on evidence in the record in this case, but instead rests on a factual finding
from the 2003 Coors Brewing case, 68 USPQ2d at 1063. The Coors Brewing finding
relied on actual evidence submitted by the applicant in that case. By contrast, here,
where Applicant introduced no evidence on this point, we decline to find that the state
of the restaurant marketplace well over a decade later remains the same. See, e.g.,
Faultless Starch Co. v. Sales Producers Associates, Inc., 530 F.2d 1400, 189 USPQ
141, 142-43 (CCPA 1976) (holding that ultimate conclusion regarding likelihood of
confusion is necessarily drawn from all probative facts in evidence in each individual
case, such conclusion, as distinguished from general rules of law or interpretation,
cannot be controlled by earlier conclusions reached in another case); Nat’l Dairy
Products Corp. v. Parman-Kendall Corp., 122 USPQ 332, 333 (TTAB 1959) (“facts
found by a court and the conclusions drawn therefrom in a case involving another
party are not binding on this applicant or controlling on this tribunal”).
We also find fault with Applicant’s arguments stemming from TESS search
results it introduced. Regarding the number of registrations identifying “frozen pizza”
and restaurant services, or “frozen pizza” but not restaurant services, Applicant’s
search query and results reflect that it has overlooked that a broader identification
such as “pizza” would encompass frozen pizza.22 See In re Hughes Furniture Indus.,

21 18 TTABVUE 21 (Applicant’s Brief).
22 4 TTABVUE 55-57 (January 9, 2017 Request for Reconsideration).
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Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded
identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified
‘residential and commercial furniture.’”). Thus, Applicant’s numbers of third-party
registrations with or without the goods/services at issue cannot be considered
accurate. Furthermore, the question is not whether some, or even many, entities have
registrations for both frozen pizza and restaurant services. Rather, the question is
whether consumers are exposed to entities that engage in both activities, and the
evidence submitted by the Examining Attorney is sufficient to show that this is not
an aberration done by only one or two companies. As the Board said in connection
with a similar argument based on third-party registrations, i.e., that there were many
third-party registrations for the goods of the applicant that did not include the goods
identified in the cited registration, and vice versa:
There is no requirement for goods to be found related that all or even a
majority of the sources of one product must also be sources of the other
product. Therefore, evidence showing only that the source of one product
may not be the source of another product does not aid applicant in its
attempt to rebut the evidence of the examining attorney.

In re G.B.I. Tile and Stone Inc., 92 USPQ2d 1366, 1370 (TTAB 2009) (also noting that
registrants may have registered the omitted goods/services in a separate registration
or may have begun use on those goods/services at a later date).
Overall, we find that the record amply supports the relatedness of restaurant
services and frozen pizza. The evidence of industry practice with pizzerias like
Registrant’s branching out into the sale of frozen pizza through retail channels
contributes to the requisite “something more.” Compare Coors Brewing Co., 68
Serial No. 86836045
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USPQ2d at 1064 (court found “something more” lacking to find beer and general
restaurant services related but noted that the “case would be different” if comparing
a brewpub and beer); see also In re Opus One Inc., 60 USPQ2d 1812, 1815-16 (TTAB
2001) (finding the requisite “something more” showing the relatedness of wine and
restaurant services based on industry practice of private labeling as well as other
considerations); In re Azteca Rest. Enterprises Inc., 50 USPQ2d 1209, 1211 (TTAB
1999) (evidence indicated that “Mexican food items are often principal items of
entrees served by . . . Mexican restaurants,” so “the average consumer, therefore,
would be likely to view Mexican food items and Mexican restaurant services as
emanating from or sponsored by the same source if such goods and services are sold
under the same or substantially similar marks”).
Considering the non-precedential cases cited by Applicant for whatever probative
value they may have, we find them quite distinguishable. See In re Constr. Research
& Tech. GmbH, 122 USPQ2d 1583, 1585 n.6 (TTAB 2017) (“Board decisions which
are not designated as precedent are not binding on the Board, but may be cited and
considered for whatever persuasive value they may hold”) (citations omitted). In
comparing the records to this one, Applicant’s broad characterizations of the evidence
in those cases omits significant findings, for example that in In re DLMW-BBQ, LLC,
the “two website printouts” Applicant refers to were deemed “ambiguous” as to
whether the goods were sold separately. The evidence in this case is not ambiguous.
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Also under this du Pont factor, Applicant argues that the coexistence of other
similar or identical marks23 for frozen pizza and restaurant services shows that such
goods and services should be considered unrelated. Applicant provides five examples
of such alleged coexistence situations among registered marks, such as CALIFORNIA
CHUTNEY TANDOORI KITCHEN for restaurant services and CALIFORNIA PIZZA
KITCHEN for frozen pizza, and for frozen pizza and
(stylized with design) for restaurant services.24 Applicant cites to no authority for its
position that this evidence supports the coexistence of its mark with those in the
registrations cited against it. “It has been said many times that each case must be
decided on its own facts.” In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)
(internal citation omitted). Our record does not include the records in those cases.
Applicant’s proffered coexistence situations have little probative value in our
determination whether Applicant’s mark is confusingly similar to Registrant’s
marks. “[T]he PTO’s allowance of such prior registrations does not bind the Board.”
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Based on the record as a whole, we find the frozen pizza not sold or distributed
through restaurants in the application and the restaurant services in the cited
registrations related. The evidence as to pizzerias and frozen pizza shows that “the

23 We note that the chart in Applicant’s Brief presents only the literal elements of the marks
without showing the actual marks, some of which contain either stylization or design
elements that may further distinguish them.
24 4 TTABVUE 19-54 (January 9, 2017 Request for Reconsideration).
Serial No. 86836045
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circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that they emanate from the same source.’” Coach Servs. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012).
B. Trade Channels and Classes of Consumers
This du Pont factor must be assessed according to the identifications of the
respective goods and services in the application and registration at issue, not on
extrinsic evidence of actual use. See, e.g., Coach Servs., 101 USPQ2d at 1722;
Octocom, 16 USPQ2d at 1787. We must assume that the identified goods and services
move through all normal and usual channels of trade and methods of distribution for
such goods and services. In re i.am.symbolic llc, 866 USPQ2d 1315, 123 USPQ2d
1744, 1751 (Fed. Cir. 2017); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
940 (Fed. Cir. 1983).
While the channels of trade for frozen pizza that is not sold or distributed through
restaurants differ from the channels of trade for restaurant services, the marketplace
evidence set out above reflects that such goods and services are promoted together,
often through the same websites, and the goods and services reach the same classes
of consumers. Indeed, the evidence of record indicates that pizza restaurants sell
frozen pizzas at other retail locations, such as grocery and big box stores, separate
from the restaurant locations.
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C. The Number and Nature of Similar Marks for Similar Services
Applicant asserts under the sixth du Pont factor that the shared term URBAN in
the marks “is weak and diluted for the parties’ respective goods and services.”25 In
support thereof, Applicant points in its brief to twelve use-based third-party
registrations of marks that contain the word URBAN along with other matter for,
inter alia, restaurant, bar, or brewpub services. The marks are: URBAN PIZZA,
URBAN PUTT, URBAN FONDUE, URBAN SPICE, URBAN GROWLER (in
standard characters and with a design), URBAN TACO, URBAN SEOUL, URBAN
OLIVE, URBAN FIRE and design, and URBAN BUTCHER (in standard characters
and with a design).26 In addition, Applicant also relies on other third-party
registrations for food products other than frozen pizza, arguing that because they
coexist with the cited registrations, Applicant’s mark also should be allowed to
register.27
The Federal Circuit has held that evidence of the extensive registration and use
of a term by others in the same industry can be powerful evidence of the term’s
weakness. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir.
2015). Use evidence may reflect commercial weakness, while third-party registration

25 18 TTABVUE at 9 (Applicant’s Brief).
26 Id. at 13-14.
27 Id. at 14-15; see also TSDR June 10, 2016 Response to Office Action at 29-79 (also includes
registrations for bar and restaurant services).
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evidence that does not equate to proof of third-party use may bear on conceptual
weakness if a term is commonly registered for similar goods or services. See
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976)
(even if “there is no evidence of actual use” of third-party registrations, such
registrations “may be given some weight to show the meaning of a mark in the same
way that dictionaries are used”).
As an initial matter, Applicant did not provide any third-party evidence of actual
use of the same or similar marks. Turning to the third-party registration evidence, as
to the proffered third-party registrations for food items other than frozen pizza, such
as honey, cheese spreads, baking spices, and soybeans, Applicant submitted no
evidence of their relatedness to the goods and services at issue here. Under the du
Pont factor of relatedness of the goods and services, when the Examining Attorney
relied on third-party registrations that cover both restaurant services and other types
of food items, Applicant criticized those registrations that “do not include Applicant’s
Goods,” arguing, “These registrations are insufficient to show that Applicant’s Goods
and the Cited Registration Services are likely to emanate from a single source.”28 As
we disregarded registrations for other food items in that context, see fn. 20, supra, we
similarly find them unpersuasive here to show weakness in relation to restaurant
services and frozen pizza. Cf. i.am.symbolic, 123 USPQ2d at 1751 (disregarding third-
party registrations for goods where the proffering party “has neither introduced
evidence, nor provided adequate explanation to support a determination that the

28 18 TTABVUE 20 (Applicant’s Brief).
Serial No. 86836045
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existence of I AM marks for goods in other classes, … support a finding that
registrants’ marks are weak with respect to the goods identified in their
registrations”).
The remaining third-party registrations for marks that contain URBAN along
with other matter for restaurant and brewpub services reflect some degree of
conceptual weakness of URBAN in this context. However, we do not consider the
record analogous to that in Primrose Retirement Communities, LLC v. Edward Rose
Senior Living, LLC, 122 USPQ2d 1030 (TTAB 2016), an inter partes case cited by
Applicant where this du Pont factor carried great weight. In that case, in addition to
the eight third-party registrations, the record included more than 85 actual uses of
ROSE-formative marks for similar services, as well as expert testimony and other
evidence regarding the common nature of ROSE-formative marks in the industry. Id.
at 1034-35. Here, we have no such actual use evidence of record. Also, in this case,
none of the third-party registrations contain URBAN PIE or URBAN PI. Thus, while
the evidence may suggest that consumers can distinguish among marks that contain
URBAN along with other matter, the record does not support such a finding as to
marks containing the term URBAN PI(E) as a whole.
D. Similarity of the Marks
Next, we turn to the du Pont factor comparing the applied-for and cited marks,
which we consider “in their entireties as to appearance, sound, connotation and
commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du
Serial No. 86836045
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Pont, 177 USPQ at 567). The test assesses not whether the marks can be
distinguished in a side-by-side comparison, but rather whether their overall
commercial impressions are so similar that confusion as to the source of the goods
and services offered under the respective marks is likely to result. Coach Servs., 101
USPQ2d at 1721; see also Edom Labs., Inc. v. Glenn Lichter, 102 USPQ2d 1546, 1551
(TTAB 2012).
Comparing to the registered marks
and , we find the marks to be very similar. The marks all
contain the identical first word, URBAN. The second word in Applicant’s mark, PIE,
differs by one letter and is phonetically identical to the second word in the cited
marks, PI. In all three marks, as explained below, these words dominate over any
other wording and design elements.
In Applicant’s mark, URBAN PIE appears in much larger font than PIZZA CO,
while the stylization and design elements are quite minimal. Also, PIZZA is generic
for the goods and “CO.” is an abbreviation for “company,”29 an entity designation.
Applicant complied with the Examining Attorney’s requirement for a disclaimer of
PIE PIZZA CO. as describing Applicant’s goods and entity type,30 also an implicit
acknowledgment, with which we agree, that URBAN PIE PIZZA CO. is not a unitary

29 TSDR March 29, 2016 Office Action at 62 (acronymfinder.com).
30 TSDR June 10, 2016 Response to Office Action at 1; March 29, 2016 Office Action at 1.
Serial No. 86836045
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term with a distinct meaning derived from the combination of words. See Trademark
Manual of Examining Procedure § 1213.05 (Oct. 2017) (“If the matter that comprises
the mark or relevant portion of the mark is unitary, no disclaimer of an element,
whether descriptive, generic, or otherwise, is required.”). Thus, with Applicant’s
mark, consumers would be more likely to perceive as the stronger source-indicating
feature of the mark a more distinctive term like URBAN, rather than the descriptive
or generic wording, or common entity designation. See, e.g., In re Dixie Rests., Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (affirming TTAB’s finding
that the dominant portion of the mark THE DELTA CAFE was DELTA, not the
disclaimed generic term CAFE); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)
(finding that the dominant portion of the mark BINION’S ROADHOUSE was
BINION’S, not the disclaimed descriptive wording ROADHOUSE). That URBAN is
the first word in the mark also contributes to its dominance. See Presto Products Inc.
v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (noting that the first
word of a mark is “most likely to be impressed upon the mind of a purchaser and
remembered”).
In the first cited mark above, URBAN PI is the only wording, and the pizza peel
and circle, which gives the impression of a pizza pan or a pizza on the peel, serve as
background designs for the more significant wording. The small flame design that
dots the “I” merely reinforces the pizza theme of the designs, connoting the heat of
the oven used to bake the pizza. We see no reason to depart here from the typical rule
that when a mark comprises both wording and a design, greater weight is given to
Serial No. 86836045
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the wording. See In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir.
2012); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). In the
second cited mark above, in addition to the wording and design elements just
discussed, the additional wording CREATIVE PIZZA appears in smaller font, and
describes the type of food available at the restaurant.
We find that in all three marks, URBAN would be understood as modifying PIE
or PI, and the phrase URBAN PIE/URBAN PI dominates. See In re Nat’l Data Corp.,
753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985) (“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”); see also Stone Lion Capital 110 USPQ2d at 1161. For the
reasons explained above, regardless of any conceptual weakness of URBAN based on
its suggestiveness for restaurant services, it still stands out in the marks. As to the
meaning of URBAN PIE, we find that it gives the impression of pizza that is from or
characteristic of the city. “Urban” is defined as “of, relating to, [or] characteristic of…
a city.”31 The record includes numerous references to “pizza pie,” such as an entry in
The Free Dictionary,32 a business named “the Pizza Pie Guys,”33 a business named

31 We take judicial notice of the Merriam-Webster dictionary entry for “urban,” accessed
December 19, 2017 at merriam-webster.com. See Univ. of Norte Dame du Lac v. J.C. Gourmet
Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
32 TSDR March 29, 2016 Office Action at 54 (thefreedictionary.com).
33 Id. at 56 (thepizzapieguys.com).
Serial No. 86836045
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“Sky’s … Traditional NY Style PIZZA PIE,”34 a business called “Joey’s Pizza Pie,”35 a
business named “Wiseguy Pizza Pie,”36 another named “Sweet Basil’s Pizza Pie Food
to Go,”37 and a “pizza school” offering a “DIY Pizza Pie” app to help users “master
making the perfect pie.”38 Applicant’s submitted dictionary entry for “pie” also
includes “pizza” as one of the definitions.39 Thus, in the context of pizza-related goods
and services, “pie” would be understood as “pizza pie.”
Applicant expresses doubt, however, that PI in the cited marks carries the same
connotation as PIE. According to Applicant’s assessment of the cited marks, because
PI is a Greek letter and numerical value, it constitutes “a play on words that creates
a distinct meaning and commercial impression,” and is “easily distinguishable from
Applicant’s use of ‘PIE.’”40 We find that PI looks very similar to PIE, and sounds
identical, given that the one-letter variation between the words is a silent E at the
end of PIE. Also, PI in the registered marks appears on a pizza-related design,
literally on a circular design of a pizza or pizza pan sitting atop a pizza peel. And with
one of the registered marks, the word PIZZA also appears in the mark. Thus, whether
consumers view PI merely as a misspelling of PIE, or whether they recognize a
reference to the Greek letter or math term, the context in which it appears in the

34 Id. at 57 (skyspizzapie.com).
35 Id. at 58 (joeyspizzapie.com).
36 Id. at 59 (wiseguypizzapie.com).
37 Id. at 60 (sbpizzapie.com).
38 Id. at 61 (pizzaschool.com).
39 TSDR June 10, 2016 Response to Office Action at 17 (dictionary.com).
40 18 TTABVUE 17 (Applicant’s Brief).
Serial No. 86836045
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marks and its use for pizza restaurants unmistakably gives it the primary
connotation of “pizza pie.” Thus, we disagree with Applicant’s contention that this
significantly changes the commercial impression of the marks so as to preclude
confusion.
Overall, we find that because of the very similar dominant wording shared by the
marks, and because the other wording and design elements have much less
significance visually and in the commercial impression of the marks, Applicant’s
mark and the cited marks have a similar look, sound, meaning, and commercial
impression.
E. Conclusion
The overall similarity of the marks for related goods and services that move in
channels of trade reaching the same classes of customers renders confusion likely.
Applicant’s evidence of the conceptual weakness of URBAN is insufficient to
overcome these similarities.
Decision: The refusal to register Applicant’s mark is affirmed.