Pizza Pro, Inc.

Trademark Trial and Appeal Board

Jul 9, 2015

No. 86320662 (T.T.A.B. Jul. 9, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: July 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Pizza Pro, Inc.
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Serial No. 86320662
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Pizza Pro, Inc., pro se, by Scott A. Stevens, President.

William H. Dawe, III, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
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Before Seeherman, Zervas and Kuczma,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Pizza Pro, Inc., seeks registration on the Principal Register of the mark BYO
PIZZA BUILD YOUR OWN PIZZA, as shown below, for “fresh pizza; pizza; pizza
dough; pizza sauce.”1

1 Application Serial No. 86320662, filed June 25, 2014, based on Section 1(b) of the
Trademark Act (intent-to-use).
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The colors black and red are claimed as a feature of the mark. The mark consists of
the stylized capital letters BYO in black above the stylized word Pizza in red, along
with the stylized phrase Build Your Own Pizza in black below. Applicant has
disclaimed exclusive right to use PIZZA BUILD YOUR OWN PIZZA apart from the
mark as shown.
The Trademark Examining Attorney issued a final refusal of registration of
Applicant’s mark pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s mark so resembles the mark BYOPizza, in
standard characters, registered for “restaurant services, including sit-down service
of food and take-out restaurant services,”2 that if used in connection with
Applicant’s identified goods it is likely to cause confusion or mistake or to deceive.
Applicant has appealed. We affirm the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
In its brief Applicant has referenced an online search of OneLook.com and some of
the meanings it retrieved for BYO. The brief also lists 31 registrations for marks
that include the letters “BYO.” However, this material was never made of record,

2 Registration No. 4421968, issued October 22, 2013.
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and therefore it has not been considered. See Trademark Rule 2.142(d), which
provides that “[t]he record in the application should be complete prior to the filing of
an appeal. The Trademark Trial and Appeal Board will ordinarily not consider
additional evidence filed with the Board by the appellant or by the examiner after
the appeal is filed.” Moreover, in this case the evidence was never filed, the brief
merely lists some information regarding definitions and third-party registrations.
Applicant also referenced, in its November 20, 2014 response, certain third-party
registrations for prepared alcoholic cocktails and beer. Although Applicant did not
properly make these registrations of record, the Examining Attorney did not advise
Applicant of this fact at a point when the registrations could have been submitted,
and therefore we will consider the information that was listed in the response for
whatever probative value it may have. We add, however, that the probative value of
these registrations is quite limited since they are for different marks and goods
from the marks and goods/services at issue herein.
Applicant did make of record five pages from a Google search summary for “byo.”
The listings in such summaries are often too truncated to show the context within
which a term is used, and therefore they may have limited probative value. See
TBMP § 1208.03 (June 2015). For example, there is a truncated listing from
InternetSlang.com that starts to explain what the meaning of BYO is, but ends with
“The slang word/acronym/abbreviation BYO means…” and does not give the
meaning. Response filed October 15, 2014, p.2.
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Finally, we note that in his brief the Examining Attorney requested that we take
judicial notice of the meaning of BYO from www.acronymfinder.com. However, the
Examining Attorney made this evidence of record with the December 30, 2014
Office action, pp. 3-4, and therefore the request is moot.
II. Applicable Law
Our determination of the issue of likelihood of confusion 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).
We turn first to the du Pont factor of the similarity of the goods and services. As
Applicant has pointed out, there is no per se rule that confusion is likely to result
from use of similar or even identical marks for food or beverage items and
restaurant services; there must be something more. In re Opus One Inc., 60 USPQ2d
1812, 1813 (TTAB 2001), citing Jacobs v. International Multifoods Corporation, 668
F.2d 1234, 212 USPQ 641 (CCPA 1982). In the present case, the something more
includes evidence submitted by the Examining Attorney that the primary focus of
the Registrant’s restaurant services is pizza. The Registrant’s website prominently
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lists, as a slogan beneath the mark, “build your own pizza,” and the Home page has
the title “Fresh, quick-fired pizza designed by you!” along with the subtitle, “Build
your personal favorite pizza or create something unique,” and several pictures of
pizza pies.3 In addition, the Examining Attorney has made of record a large number
of third-party registrations showing that a single mark has been registered for both
“pizza” and for “restaurant services.”4
In addition, the evidence submitted by Applicant itself shows that certain
restaurants are so associated with “pizza” that they are referred to as “pizza
restaurants” or “pizzerias,” and that build-your-own pizza is a growing trend. See
Investor Place, July 30, 2012 article, “A New Type of Pizza Restaurant Is Popping
Up Across the U.S.,” discussing how consumers can “build” their own pizzas:
“Patrons place their orders at a counter and then select the ingredients they want
on their pizza as a [sic] restaurant staffers build the pie before their eyes.”5 Another
article, also submitted by Applicant, reports:
Build-your-own has entered the pizza world, too, with Blaze Pizza
encouraging consumers to not only choose the toppings, but also the
types of sauces, dough and even cheeses. And, yes, Chipotle is eyeing
build-you-own pizza, with two Pizza Locale locations it owns in
Colorado.6

The foregoing demonstrates the “something more” between pizza and restaurant
services. Quite simply, pizza is not merely an ingredient or a minor item that can be

3 http://byopizza.com, December 30, 2014 Office action, p. 5.
4 October 6, 2014 Office action, pp. 9-107.
5 November 20, 2014 response, pp. 2-3.
6 “Wendy’s: Tests build-your-own burger,” USA Today, submitted as part of November 20,
2014 response, pp. 4-5.
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found in a restaurant, but it is a major part of restaurant services, and a product
that restaurants also market separately. We acknowledge Applicant’s statements
that its pizza is not a prepared pizza that is ready to eat, but is an uncooked pizza
that a consumer would cook himself or herself. We point out, however, that
Applicant’s identification of goods does not limit its goods to uncooked pizza. Rather,
its goods as identified include “fresh pizza” and “pizza”; if it were to obtain a
registration for the goods as identified, it would be prima facie evidence of
Applicant’s right to use its mark for any type of pizza, including “fresh pizza” that
would be sold by a restaurant.
In any event, the evidence submitted by the Examining Attorney shows the
relatedness between even the uncooked pizza described by Applicant and the
Registrant’s identified services. The evidence shows that Applicant, Pizza Pro,
renders restaurant services in addition to selling uncooked pizza. See, for example,
the website allmenus.com, showing various pizzas one can order from Applicant,
including pizzas that the consumer “builds” himself or herself.7 The website
menuism.com lists Applicant’s Pizza Pro business, along with customer reviews that
say, inter alia, that the delivered pizza “is always hot.”8 An offer to sell a Pizza Pro
franchise describes Applicant’s business as having begun with carry-out delivery
locations that have expanded to “full size buffet and sit-down restaurants.”9 In
addition, the Examining Attorney has shown that third parties sell pizza dough

7 December 30, 2014 Office action, p. 17.
8 December 30, 2014 Office action, pp. 22-24.
9 www.bizquest.com, December 30, 2014 Office action, p. 25-27.
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and/or wrapped pizza that can be baked at home, as well as rendering restaurant
services.10
Accordingly, we find that Applicant’s “fresh pizza” and “pizza” are related to the
Registrant’s restaurant services. In view thereof, we need not consider whether the
remaining items in Applicant’s identification of goods are related to the restaurant
services identified in the cited registration. 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). The du
Pont factor of the similarity of the goods and services favors a finding of likelihood
of confusion.
With respect to the du Pont factor of the channels of trade, the information we
have from Applicant as to its planned channels of trade is rather limited. It appears
from Applicant’s statements that its mark is to be used with “fresh pizza which a
consumer will ‘build,’ using Appellant’s proprietary pizza dough and proprietary
pizza sauce along with an assortment of cheeses and fresh toppings, which pizza
will then be wrapped for transporting by the consumer to his or her own kitchen for
cooking.” Brief, 4 TTABVUE 5. Applicant also makes the statement that its pizza
“will appeal to fast food consumers who are cost-conscious as well as health-
conscious, and will offer an alternative to delivery or frozen pizzas.” Id. at 5-6.

10 December 30, 2014 Office action: www.doughpizzeria.com, DOUGH Pizzeria Napoletana,
pp. 28-35; http://glutenfreeguidehq.com, Godfather’s Pizza, p. 56; “Buying Pizza Dough from
a Pizzeria,” www.yelp.com, p. 66-67; www.localtabletours.com, Pizzeria Locale-Pizza Dough
To Go, p. 69-71.
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Again, the manner in which Applicant has identified its goods does not restrict its
pizza to a non-restaurant channel of trade. Further, we see no particular reason
why uncooked pizza of the type described by Applicant cannot be sold through a
restaurant; as noted above, there is evidence that some restaurants in fact sell both
cooked pizza and “take-n-bake” style pizza. Even if we were to treat Applicant’s
pizza as not being sold through restaurants, the pizzas are still products that are
sold to the general public. As a result, the same classes of consumers would
encounter Applicant’s pizza and the Registrant’s restaurant services. This du Pont
factor favors a finding of likelihood of confusion.
Moreover, “pizza” is in the nature of fast food, particularly the pizza described by
Applicant itself. Pizza in general can be an inexpensive item, for example, the
Examining Attorney has submitted evidence showing a price of $6.95 for a 9 inch
pie at Caffe Italia and $12.79 for a 12 inch pie at Cenario’s Pizza.11 Therefore, the
decision to purchase a pizza, either an unbaked pie or a take-out pizza from a
restaurant, or even to patronize a pizzeria, can be made on impulse. We are simply
not persuaded by Applicant’s unsupported argument that the determination as to
whether a consumer will want to purchase a pizza for consumption at a later date
“would require careful, studied consideration.” Brief, 4 TTABVUE 6. Even if the
consumer must decide when he or she will eat Applicant’s pizza prior to purchasing
it, that decision does not require a careful examination of the trademark used on

11 December 30, 2014 Office action, pp. 72-73.
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the pizza. This du Pont factor regarding the conditions of purchase favors a finding
of likelihood of confusion.
This brings us to a consideration of the marks. Applicant’s mark is
while the cited mark is BYOPizza in standard characters.
In both marks, the letters BYO stand out; they are the first part of both marks, and
in Applicant’s mark they are displayed on a separate line, while in the cited mark,
because BYO and PIZZA have actual meanings, as discussed below, BYO would be
understood as a separate term from the word PIZZA.12 We also point out that,
because the cited mark is registered in standard character format, the Registrant is
not limited to any particular type font or color. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1909 (Fed. Cir. 2012). Therefore, it could depict its mark with
BYO in much larger letters than “Pizza,” with all of the wording in the same font as
Applicant’s mark, and with BYO in black letters and Pizza in red, the same colors
that Applicant uses for its mark. Although Applicant’s mark also includes the
slogan BUILD YOUR OWN PIZZA, this difference is not sufficient to differentiate
the marks. The Examining Attorney has submitted evidence that one meaning of
BYO is “build your own”;13 consumers are likely to view the BUILD YOUR OWN

12 In fact, although the cited mark is registered in standard character format, it is depicted
in the registration as BYOPizza.
13 www.acronymfinder.com, December 30, 2014 Office action, p. 3.
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PIZZA portion of Applicant’s mark as merely reinforcing, or advising consumers, of
the meaning of the BYO PIZZA portion of the mark. “Build your own” is also the
meaning consumers are likely to ascribe to BYO in the Registrant’s mark,
particularly since the Registrant uses the slogan “build your own pizza”
immediately below the mark in its advertising. We find unpersuasive Applicant’s
argument that the cited mark “could be interpreted either as identifying a
restaurant where you ‘bring your own pizza’, or as a type of pizza, i.e. a ‘BYOP’
pizza, or as a restaurant location, i.e., ‘by OPizza.’” Brief, 4 TTABVUE 9. Applicant
has not provided any evidence that there is such a thing as a restaurant where one
brings one’s own pizza such that consumers would view the Registrant’s mark as
having this meaning, nor any evidence that there is such a thing as a BYOP pizza,
or that BYOPizza would be viewed as BY OPizza. On the contrary, because both
marks begin with BYO, followed by the word PIZZA, the marks are likely to both be
understood as BYO PIZZA. Thus, we find the marks to be very similar in
appearance and connotation. As for pronunciation, Applicant asserts that the marks
do not sound the same because the Registrant’s mark “is obviously pronounced ‘Bi
Op Izza’ or ‘Bio Pizza.’” Brief, 4 TTABVUE 9. We disagree. Although there is no
correct pronunciation of a trademark that is not a known word, certainly when used
in connection with a pizza restaurant the term PIZZA in the Registrant’s mark
would be readily recognized, and would be pronounced as “pizza.” And there is no
“obvious” reason why the identical letters BYO in both Applicant’s mark and the
Registrant’s mark would not be pronounced the same, most likely as the individual
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letters B-Y-O, since this is the way consumers are used to pronouncing BYO when
used as an abbreviation.
Viewing the marks in their entireties, we find that they convey the same
commercial impression, and that the du Pont factor of the similarity of the marks
weighs in favor of a finding of likelihood of confusion.
We have also taken into consideration the strength of the registered mark. As
noted, BYO, in the context of the mark and services, has the connotation of “build
your own,” and therefore is suggestive of restaurant services which allow one to
customize one’s own pizza. Suggestive marks, of course, are entitled to a more
limited scope of protection than more distinctive marks. However, even highly
suggestive marks are still deserving of protection, and given the similarity of
Applicant’s and the Registrant’s marks and the goods and services, the scope of
protection to be accorded the Registrant’s mark extends to prevent the registration
of Applicant’s mark. As for the sixth du Pont factor, the number and nature of
similar marks in use on similar goods and services, Applicant has made of record
five pages from a Google search summary. As previously mentioned, the results as
shown in the summary are highly truncated and therefore have limited probative
value. There are some listings that appear to refer to third-party uses, such as BYO
Records, BYO Wireless prepaid phone service, www.byoplayground.com for
commercial playground equipment for schools, BYO Ethanol to blend your own
ethanol, BYO Burger which appears to be a burger restaurant, Build Your Own
BMW for BMW automobiles, BYOstudio.com for cash advances, and BYO Fitness
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for fitness classes. However, because of the limited number of listings of BYO for
food-related goods and services, and the lack of information about such uses, we
cannot conclude that the sixth du Pont factor favors Applicant. In this connection,
we point out that none of the listings shows BYO for pizza or pizza restaurant
services.
Of the remaining du Pont factors, Applicant asserts that all but one are neutral,
while the Examining Attorney does not address them at all. We agree that there is
no evidence regarding them, and therefore we have treated them as neutral.
Applicant does contend that the factor of the extent of potential confusion favors it,
because of the claimed differences in the goods and services and the differences in
the marks. We have already discussed why we have found the marks to be similar
and the goods and services to be related. In addition, the extent of potential
confusion is substantial because Applicant’s and the Registrant’s goods and services
are consumer items and services that would be purchased by the general public.
Therefore, to the extent that this du Pont factor is relevant, it favors a finding of
likelihood of confusion.
After considering all of the relevant du Pont factors, we find that Applicant’s
mark, if used in connection with Applicant’s identified goods, is likely to cause
confusion with the mark and services shown in the cited registration.
Decision: The refusal to register Applicant’s mark BYO PIZZA BUILD YOUR
OWN PIZZA in stylized form is affirmed.