Pizza Capri L.L.C.

Trademark Trial and Appeal Board

Sep 20, 2001

No. 75817473 (T.T.A.B. Sep. 20, 2001)

9/20/01 Paper No. 7

GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pizza Capri L.L.C.
________

Serial No. 75/817,473
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Keith A. Vogt of Niro, Scavone, Haller & Niro for Pizza Capri
L.L.C.

Brian A. Rupp, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Hohein and Holtzman, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Pizza Capri L.L.C. has filed an application to
register the mark "VIVALDI" for "restaurant services."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant's mark, when applied to its services, so

1 Ser. No. 75/817,473, filed on October 7, 1998, which is based on an
allegation of a bona fide intention to use such mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/817,473
2
resembles the mark "VIVALDI," which is registered to one
registrant for "ham"2 and to another registrant for "wines"3
and "candy, biscuits, and confectionery products, namely,
chocolate-coated biscuits,"4 as to be likely to cause
confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We reverse the refusal to
register.
The determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973). However,
as indicated in Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in any
likelihood of confusion analysis, two key considerations are
the similarity or dissimilarity of the goods and/or services

2 Reg. No. 1,642,182, issued on April 23, 1991, which is based on
ownership of French Reg. No. 1,110,995, dated October 20, 1989;
affidavit §8 accepted.

3 Reg. No. 1,970,489, issued on April 23, 1996, which sets forth a
date of first use anywhere of August 24, 1994 and a date of first use
in commerce of November 10, 1995.

4 Reg. No. 2,173,586, issued on July 14, 1998, which sets forth a
date of first use anywhere and in commerce of May 1997.

Ser. No. 75/817,473
3
and the similarity or dissimilarity of the marks.5 However,
inasmuch as the marks at issue in this appeal are identical in
all respects, the focus of our inquiry is on the similarity or
dissimilarity of the respective services and goods.
Turning, therefore, to consideration thereof, it is
well settled that that the issue of likelihood of confusion
must be determined on the basis of the services and goods as
they are set forth in the involved application and each of the
cited registrations. See, e.g., CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and
Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Thus, where the
services and goods in the application at issue and in the
cited registrations are broadly described as to their nature
and type, it is presumed in each instance that in scope the
application and registrations encompass not only all services
and goods of the nature and type described therein, but that
the recited services are rendered and the identified goods
move in all channels of trade which would be normal for such
services and goods and that they would be purchased by all

5 The court, in particular, pointed out that: "The fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods [and/or
services] and differences in the marks."
Ser. No. 75/817,473
4
potential buyers thereof. See, e.g., In re Elbaum, 211 USPQ
639, 640 (TTAB 1981).
Applicant, contrary to the above, contends with
respect to its restaurant services that:
Applicant's restaurant is a fine dining
establishment featuring Italian food that
is located in Oak Park, Illinois[,] a
suburb of Chicago. It competes with other
fine dining establishments and its
customers typically spend over fifty
dollars on dinner. In other words, it is
not a fast-food establishment -- it is an
establishment that serves discriminating
customers with discriminating tastes.
These consumers would be able to tell --
without confusion -- that Applicant's use
of the term VIVALDI is completely different
from the marks used on ham and wine [and
candy, biscuits, and confectionery
products, namely, chocolate-coated
biscuits].

However, as the Examining Attorney correctly points out in his
Ser. No. 75/817,473
5
brief, inasmuch as "the application describes the services
broadly and there are no limitations as to their nature, type,
channels of trade or classes of purchasers, it is presumed
that the application encompasses all services of the type
described, that they move in all normal channels of trade, and
that they are available to all potential customers," citing In
re Elbaum, supra. Accordingly, applicant's restaurant
services, for purposes of whether there is a likelihood of
confusion, must be regarded as encompassing "fast-food" as
well as "fine dining" establishments.
Applicant, although notably without citation to
relevant authority, is nonetheless on firmer ground in arguing
essentially that there is no per se rule that all food
products and restaurant services are related for purposes of
determining whether contemporaneous use of the marks
respectively associated therewith is likely to cause
confusion. According to applicant:
If wines and candy[, biscuits, and
confectionery products, namely, chocolate-
coated biscuits] are sufficiently distinct
from ham to permit registration of the mark
VIVALDI to two different owners, certainly
the same mark covering the [restaurant]
service of preparing food is sufficiently
distinct to support registration. The
presence of the various marks using the
term VIVALDI indicates that the scope of
coverage afforded to this common term used
with food related services and products
Ser. No. 75/817,473
6
should not be as broad in this case as in
other cases.

Consequently, ... it should be found
that confusion is unlikely in this instance
....

Our principal reviewing court has held, in Jacobs v.
International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641,
642 (CCPA 1982), that "[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." Here, the Examining Attorney, in support of his
position, states in his brief that "[e]nclosed with the Final
Office action were copies of twenty-nine current [third-party]
registrations showing entities offering and using the same
mark on or in connection with these [same] types of goods and
services [as are at issue in this appeal]." The Examining
Attorney maintains that "[t]his evidence shows that entities
routinely provide ham, wines, candy, biscuits, chocolate-
covered biscuits, and other confectionery products and have
restaurant services for such items all under the same marks."
It is well established, in this regard, that while
third-party registrations which are based upon use of the
subject marks in commerce are not evidence that the different
marks shown therein are actually in use by the owners thereof
Ser. No. 75/817,473
7
or that the public is familiar with them,6 they nevertheless
have some probative value to the extent that they serve to
suggest that the services and goods listed therein are of the
kinds which may emanate from a single source. See, e.g., In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993) and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 (TTAB 1988) at n. 6. In the present case, however, a
careful reading of the use-based third-party registrations
made of record by the Examining Attorney reveals that there
are only three such registrations which involve marks that are
registered for both "restaurant services" and "wine(s)"; that
there likewise are but three such registrations which cover
marks that are registered for both "restaurant services" and
"candy" or "candies"; that there are just two such
registrations which pertain to marks that are registered for
both "restaurant services" and "biscuits"; and that there are
no such registrations which set forth marks that are
registered for both "restaurant services" and "ham." Such
evidence can scarcely be considered sufficient to establish
the "something more" required by the court in Jacobs, supra,
and the Examining Attorney has not offered any other evidence
with respect thereto. Compare In re Azteca Restaurant

6 See, e.g., AMF Inc. v. American Leisure Products, Inc., 474 F.2d
1403, 177 USPQ 268, 269 (CCPA 1973) and In re Hub Distributing, Inc.,
218 USPQ 284, 285-86 (TTAB 1983).
Ser. No. 75/817,473
8
Enterprises Inc., 50 USPQ2d 1209, 1211 (TTAB 1999). The
evidence is thus either inadequate or simply lacking insofar
as demonstrating that applicant's restaurant services, on the
one hand, and one registrant's ham and the other registrant's
wines, candy and biscuits, including chocolate-covered
biscuits, on the other hand, are so closely related in a
commercial sense that the contemporaneous use of the mark
"VIVALDI" in connection therewith would be likely to cause
confusion as to the origin or affiliation of such services and
goods.
Decision: The refusal under Section 2(d) is
reversed.