Satek, Inc.v.B.C. Pizza, Inc.

Trademark Trial and Appeal Board

Nov 30, 2010

No. 91171803 (T.T.A.B. Nov. 30, 2010)

Mailed: November 30, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Satek, Inc.

v.

B.C. Pizza, Inc.
_____

Opposition No. 91171803
to application Serial No. 78408745
filed on April 27, 2004
_____

Scott W. Satek, pro se for Satek, Inc.

Timothy J. Jordan of Garan Lucow Miller, P.C. for B.C.
Pizza, Inc.
______

Before Seeherman, Kuhlke and Mermelstein, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, B.C. Pizza, Inc., seeks registration of the
mark B.C. PIZZA in standard characters with PIZZA disclaimed
for services identified in the application as “dine in and
THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91171803
2
carry out services featuring pizza and other Italian related
cuisine and drinks” in International Class 43.1
Opposer, Setak, Inc., has opposed registration of
applicant’s mark on the ground that, as used in connection
with applicant’s services, the mark so resembles opposer’s
previously used and registered mark B&C PIZZA for restaurant
services2 as to be likely to cause confusion under Section
2(d) of the Lanham Act, 15 U.S.C. §1052(d).
Applicant has filed an answer denying the salient
allegations of the notice of opposition. In addition,
applicant filed a counterclaim against opposer’s pleaded
registration.
The evidence of record consists of the pleadings herein
and the files of the opposed application and the
registration sought to be cancelled. In addition, opposer
submitted, under a notice of reliance, a copy of opposer’s
pleaded registration,3 an excerpt of an order from the

1 Serial No. 78408745, filed April 27, 2004, based on a claimed
date of first use in commerce of 1998 under Section 1(a) of the
Trademark Act, 15 U.S.C. §1051(a).

2 Registration No. 3031683, issued on December 20, 2005, based on
an application filed June 28, 2004, for the mark B&C PIZZA in
standard characters, claiming January 1, 1979 as the first use in
commerce and disclaiming the word PIZZA.

3 We note that opposer submitted a copy of the registration from
the time it issued, which does not show the current status and
title of the registration. However, the filing of the
counterclaims made opposer’s pleaded registration of record as
the subject of the counterclaims. We further note that applicant
does not dispute the status or title of opposer’s pleaded
registration and has treated it as being of record.
Opposition No. 91171803
3
Michigan Circuit Court granting opposer’s motion for partial
summary disposition in a civil proceeding between these
parties, opposer’s Michigan state trademark registration for
the mark B&C Pizza, and opposer’s Michigan state certificate
of assumed name.
Applicant did not take any testimony or file a notice
of reliance. The material attached to applicant’s brief is
untimely and has been given no consideration.4 We further
note that the unilaterally proffered unsigned “concurrent
use agreement” attached to applicant’s brief and applicant’s
arguments concerning possible concurrent use in its brief
are not proper subject matter for an opposition proceeding.
On two separate occasions the Board advised the parties on
this issue and provided guidance as to the procedure for
dismissing the opposition in favor of a concurrent use
proceeding. In view thereof, opposer’s motion, presented in
its reply brief, to strike the documents attached to
applicant’s brief, is granted.
In its reply brief, opposer also moves to strike
applicant’s brief as untimely. The brief was received in
the Office on June 1, 2010. In response, applicant argues
that it mailed the brief, by first class mail, on the due

4 The fact that one of the documents had been previously
submitted in support of a motion for summary judgment does not
make it of record for purposes of trial. The parties were
advised of this in the Board’s order denying the second motion
for summary judgment.
Opposition No. 91171803
4
date, May 26, 2010, and, as such, it is timely under
Trademark Rule 2.197(a). However, a party can rely on the
date it mailed a submission only if the submission is
accompanied by a certificate of mailing. Applicant did not
include a certificate of mailing on the USPTO with its
filing. See Trademark Rule 2.197(a)(1)(ii) (“Correspondence
will be considered as being timely filed if ... The
correspondence includes a certificate for each piece of
correspondence stating the date of deposit or transmission.
The person signing the certificate should have a reasonable
basis to expect that the correspondence would be mailed or
transmitted on or before the date indicated.”) However,
because of the minimal delay in filing the brief, and
because the brief is for the benefit of the Board to be able
to more fully understand the parties’ relative positions, we
have exercised our discretion to consider the brief.
APPLICANT’S COUNTERCLAIMS
The Board’s May 6, 2008 order, denying applicant’s
motion for summary judgment, noted that applicant’s
counterclaim is based on the claim of fraud. However, in a
subsequent Board order, dated October 31, 2008, the Board,
after denying opposer’s motion for summary judgment due, in
part, to remaining genuine issues of material fact
concerning applicant’s counterclaims, noted sua sponte that
applicant’s pleading was insufficient to set forth claims of
Opposition No. 91171803
5
fraud based on two different scenarios and allowed applicant
time in which to perfect its pleading of fraud in the
counterclaims. Applicant did not submit an amended
pleading. In addition, applicant did not set forth argument
regarding its counterclaims in its brief. Thus, we consider
the counterclaims to be waived.
STANDING, PRIORITY AND LIKELIHOOD OF CONFUSION
Because opposer’s pleaded registration is of record,
opposer has established its standing to oppose registration
of applicant’s mark and its priority is not in issue. See
King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974).
Our likelihood of confusion determination under Section
2(d) 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 and 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). Two
key considerations are the similarities between the marks
and the similarities between the services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). Opposer, as plaintiff in the
opposition proceeding, bears the burden of proving, by a
preponderance of the evidence, its asserted ground of
likelihood of confusion. See Cerveceria Centroamericana,
Opposition No. 91171803
6
S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989); Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000).5
Applicant argues that opposer “has failed to present
any competent and admissible evidence supporting its
contention that there exists confusion and/or likelihood of
confusion. ... Opposer has simply failed to meet its burden.
One cannot simply make a conclusory statement and/or
otherwise allege confusion (or the likelihood thereof) and
meet its burden and prevent a registration from going
forward.” Br. pp. 4, 6.
While the record is thin, there is evidence of record.
Because opposer’s registration is of record opposer may rely
on the presumptions provided by Section 7(b) of the
Trademark Act. A trademark owner’s certificate of
registration is “prima facie evidence of the validity of the
registered mark and of the registration of the mark, of the
owner’s ownership of the mark, and of the owner’s exclusive
right to use the registered mark in commerce on or in
connection with the goods or services specified in the
certificate.” 15 U.S.C. §1057(b); Cerveceria, 13 USPQ2d

5 Applicant is mistaken as to the appropriate standard. This is
not a motion for summary judgment but rather a final disposition.
Summary judgment may only be granted if there is no genuine issue
of material fact and the movant is entitled to prevail as a
matter of law. By contrast, upon final disposition after trial,
the Board may make any necessary fact finding, whether or not the
matter is in dispute.
Opposition No. 91171803
7
1307. Thus, we consider the relevant du Pont factors in
light of the evidence of record.
We turn first to a consideration of the services,
channels of trade and classes of purchasers. We must make
our determinations under these factors based on the services
as they are recited in the registration and application.
See In re Elbaum, 211 USPQ 639 (TTAB 1981). In this case,
the services are legally identical because applicant’s “dine
in and carry out services featuring pizza and other Italian
related cuisine and drinks” are encompassed by opposer’s
“restaurant services.”
Considering the channels of trade and classes of
purchasers, because the services are identical and there are
no limitations as to channels of trade or classes of
purchasers in either the application or opposer’s
registration, we must presume that applicant’s and opposer’s
respective restaurant services will be offered in the same
channels of trade and will be used by the same classes of
purchasers. See Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); Genesco Inc. v. Martz, 66 USPQ2d
1260, 1268 (TTAB 2003) and In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994).

Opposition No. 91171803
8
In view of the above, the du Pont factors of the
similarity of the services, the channels of trade and
classes of purchasers favor a finding of likelihood of
confusion.
We now consider the similarity or dissimilarity of the
marks when compared in their entireties in terms of
appearance, sound, connotation and commercial impression,
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, 1701 (Fed. Cir.
1992).
The marks B.C. PIZZA and B&C PIZZA share obvious
similarities. The only differences are the periods in
applicant’s mark and the ampersand in opposer’s mark.
Taking this record within the parameters of the case law
outlined above and given the legal identity of the services,
we find that the similarities in these marks outweigh the
dissimilarities.
Finally, we note that these parties are not strangers
and were involved in a prior action in state court that
resulted in a consent decree outlining where in Michigan
applicant may use its mark. See May 6, 2008 Board order.
During its trial period, opposer made of record an excerpt
Opposition No. 91171803
9
from an order of the court, granting a motion for partial
summary judgment, wherein the court made a finding of fact
that opposer had encountered an instance of actual confusion
between its mark and applicant’s mark. The excerpt reads in
pertinent part:
Finally, this Court fully agrees with Satek’s
contention that “the use of the mark ‘B.C.’ in
connection with [Jankowski’s]6 sale, offering for
sale, and advertising of its pizza products is not
only likely to cause confusion or mistake or
deceive as to the source or origins of such goods,
but has caused actual confusion...”

Applicant argues that the Board has already ruled that
collateral estoppel does not apply in this case. However,
that earlier ruling was based on applicant’s reliance on the
consent decree entered into in that case and not the court’s
grant of summary judgment. That being said, opposer only
provided one page of the ruling. This is simply not
sufficient for the Board to rely on in making its own
determination as to whether to apply the doctrine of issue
preclusion. In any event, proof of actual confusion is not
necessary to support a determination of likelihood of
confusion.
We conclude that the evidence of record as it pertains
to the relevant du Pont factors supports a finding of a
likelihood of confusion as between applicant’s B.C. PIZZA

6 Jankowski appears to be related to applicant. The case is
captioned “B.C. Pizza, Inc. (Plaintiff) v. Satek, Inc.
(Defendant).” May 6, 2008 Board order.
Opposition No. 91171803
10
mark and opposer’s registered B&C PIZZA mark, such that
registration of applicant’s mark is barred under Trademark
Act Section 2(d). While the record is thin, it is
sufficient in this case to satisfy opposer’s burden, in view
of the presumptions accorded to opposer’s registration, the
identity of the services and the near identity of the marks.
As noted above, applicant has not submitted any evidence or
taken any testimony to rebut opposer’s showing. Moreover,
to the extent we have any doubt we must resolve it in favor
of the registrant. In re Hyper Shoppes (Ohio), Inc., 837
F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The opposition is sustained.