T & S Foods, Inc.

Trademark Trial and Appeal Board

Aug 30, 2000

No. 75470006 (T.T.A.B. Aug. 30, 2000)

Paper No. 10
DEB
8/30/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re T & S Foods, Inc.
________
Serial No. 75/470,006
_______
J. Scott Young of Dougherty & Associates for T & S Foods,
Inc.
Samuel E. Sharper, Jr., Trademark Examining Attorney, Law
Office 101 (Jerry Price, Managing Attorney).
_______
Before Simms, Bucher and Holtzman, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
T & S Foods, Inc., a corporation of North Carolina,
has filed an application for registration of the mark
“TOUCHDOWN PIZZA” (with the word “PIZZA” disclaimed) for
“pizza” in International Class 30, and for “restaurant
services, carry-out restaurants, and restaurants featuring
home delivery,” in International Class 42.1

1 Serial Number 75/470,006, filed on April 20, 1998, was
based upon applicant's claim of first use of the mark in both
classes on January 4, 1996, and first use of the mark in
interstate commerce in both classes on the same day.
THIS DISPOSITION
IS NOT CITABLE AS
Serial No. 75/470,006
2
The Trademark Examining Attorney issued a final
refusal to register based upon 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 pizza and with
restaurant services, so resembles the registered mark,
“TOUCHDOWN CAFE and design,” as shown below (with the word
“CAFE” disclaimed), when applied to restaurant services, as
to be likely to cause confusion, or to cause mistake, or to
deceive.2
Applicant argues that its mark creates a different
overall commercial impression from registrant’s mark –-
that the Trademark Examining Attorney has inappropriately
dissected its mark to find confusing similarity with
registrant’s mark. Also, applicant takes the position that
“Touchdown” is a highly suggestive mark for pizza, entitled
to a narrow scope of protection. Finally, applicant argues
that pizza is sold in places other than restaurants, e.g.,

2 Registration No. 2,030,581 issued on January 14, 1997. The
registration sets forth dates of first use of July 13, 1992.
Serial No. 75/470,006
3
presumably sold at retail in food stores, grocery markets,
etc., and that the Trademark Examining Attorney has not
taken this into consideration.3
The Trademark Examining Attorney, in turn, contends
that the dominant portion of applicant’s mark (“TOUCHDOWN”)
is identical to the dominant portion of registrant’s mark,
thus concluding there are strong similarities in the sound,
meaning and overall appearance of the respective marks.
Furthermore, the Trademark Examining Attorney argues that
applicant’s restaurant services are closely related if not
legally identical to registrant’s restaurant services.
Moreover, the Trademark Examining Attorney asserts that
applicant's goods (“pizzas”) are the types of food items
likely to be served in registrant's restaurant, and that
food products and restaurant services are commonly marketed
by a single entity under a single mark. In connection with
the refusal to register, the Examining Attorney submitted
third-party registrations showing that a single entity has

3 Although applicant makes this argument, the entire record
herein suggests that applicant’s pizzas are currently marketed
exclusively through its two restaurants: “One of T & S Foods
major business enterprises is Touchdown Pizza, a chain of
restaurants, currently having two locations. The restaurants
specialize in pizza, particularly pizza prepared in the shape of
a football. One of the locations is a full service restaurant
having dine in, carry-out and delivery service, while the second
location features carry-out and delivery service.” [Applicant’s
brief, p. 2].
Serial No. 75/470,006
4
registered the same mark for sit-down restaurant services,
carry-out food services as well as for delivery to the
homes of customers, especially of items such as pizza.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationships
between the services and/or goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
Under Section 2(d) of the Act, we must compare
applicant’s “TOUCHDOWN PIZZA” mark to registrant’s
“TOUCHDOWN CAFÉ and design” mark. The respective marks
must be considered in their entireties. Nevertheless, in
supporting 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 consideration of the marks in their
entireties.” In re National Data Corp., 753 F.3d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
Serial No. 75/470,006
5
Applicant’s mark begins with the most dominant,
source-indicating feature of registrant’s mark, and then
appears with the generic word, “Pizza.” That “a
particular feature is descriptive or generic with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark…"
In re National Data Corp., supra at 751.
Clearly, when applicant's mark and registrant’s mark
are both viewed in their entireties, the term “TOUCHDOWN”
is the dominating and distinguishing element of each mark.
See, e.g., In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1533-34 (Fed. Cir 1997) [dominant portion of
the mark THE DELTA CAFE and design (CAFE disclaimed) for
restaurant services is the word DELTA.].
In finding that the marks are similar, we have kept in
mind the normal fallibility of human memory over time and
the fact that the average consumer retains a general rather
than a specific impression of trademarks encountered in the
marketplace. This is especially the case given the largely
impulse nature of these particular purchases.
Similarly, while registrant’s design feature may be
prominent, it merely reinforces the football motif
suggested by the word “Touchdown.” Hence, we find that
Serial No. 75/470,006
6
these marks are similar as to sound, meaning and
appearance.
Applicant argues that the word “Touchdown” is weak
because it is a highly suggestive term for pizza:
‘Touchdown’ is, of course, closely related
to the sport of football. Many activities
are closely related to the sport of football
in American society, including Sunday and
Monday night television, drinking beer, and
eating wings and pizza. One need only
attempt to order a pizza on Superbowl Sunday
to realize that pizza is a part of the
football tradition. In that way,
‘touchdown’ brings football to the mind of
the consumer, thereby invoking a thought of
pizza. ‘Touchdown’ in this situation is
highly suggestive with respect to both
pizza, and a restaurant that sells pizza.
[Applicant’s brief, p. 9, emphasis in
original].
However, we remain unpersuaded by applicant’s attempt
to portray the word “TOUCHDOWN” as being weak in the food
or restaurant fields. Applicant never proffered any third
party usage in support of this dubious proposition.
Given the strong similarity of the marks, the question
of likelihood of confusion turns principally on the
relationship between the applicant’s services and
registrant’s services, as well as applicant’s goods and
registrant’s services. As applicant has requested, we will
be careful to analyze applicant’s services and goods
separately. However, as to the respective services, they
Serial No. 75/470,006
7
are legally identical -- both marks are applied to
“restaurant services.”
As to an analysis of applicant’s pizza in relation to
registrant’s restaurant, it is well settled that goods or
services need not be identical in nature in order to
support a finding of likelihood of confusion. Instead, it
is sufficient that the goods and services are related in
some manner. The circumstances surrounding their marketing
need only be such that they would be likely to be
encountered by the same persons under situations that would
give rise to the mistaken belief that they are in some way
associated with the same producer or provider. See, e.g.,
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96
(TTAB 1978); and In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978).
As to applicant’s pizza itself, we acknowledge that
there is no per se rule which mandates a finding that
confusion is likely whenever eateries and various food
items are marketed under identical or similar marks. To
establish likelihood of confusion, more must be shown than
that similar marks are used for various food products
and/or for restaurant services. See, e.g., Jacobs v.
International Multifoods Corporation, 668 F.2d 1234, 212
USPQ 641 (CCPA 1982); and In re Central Soya Company, Inc.,
Serial No. 75/470,006
8
220 USPQ 914 (TTAB 1984). In the case now before us, we
have applied no per se rule but have decided this case on
its own facts, examining the applicant’s and registrant’s
respective marks and particular goods and/or services.
This is consistent with the reported decisions where the
factual differences between cases having opposite results
are often subtle ones.
The Examining Attorney has introduced use-based,
third-party registrations demonstrating that restaurants
frequently feature carry-out and home delivery services,
especially when pizza is featured prominently in the
trademark or on the menu. Although these registrations are
not evidence that the different marks shown therein are in
use or that the public is familiar with them, they
nevertheless have probative value to the extent that they
serve to suggest that the goods and services listed therein
(which are the same types of goods and services involved
herein) are of a kind which may emanate from a single
source. Accord In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467 (TTAB 1988). In further support of
this relationship, the Trademark Examining Attorney has
submitted dozens of stories from the LEXIS/NEXIS® database
Serial No. 75/470,006
9
demonstrating the popularity of pizza as a menu item in a
wide variety of very different kinds of restaurants.
Accordingly, we find that the subject marks are
similar as to sound, meaning and appearance, that the
services are identical, and that applicant’s goods are
closely related to registrant’s services, resulting in a
likelihood of confusion.
Decision: The refusals to register this mark
for goods and for services are hereby affirmed.
R. L. Simms
D. E. Bucher
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board