Friday, January 05, 2007

Unsatisfied by Applicant's Half-Baked Arguments, TTAB Affirms 2(d) Refusal of "TIRAMISU BY ISABELLA"

Cappuccino's Cafe not surprisingly found that it was no piece of cake to overcome the PTO's refusal to register TIRAMISU BY ISABELLA for "bakery deserts, namely, tiramisu" [TIRAMISU disclaimed]. The Board affirmed the PTO's finding of likely confusion with the registered mark ISABELLA for bakery products. In re Cappucino's Cafe, Ltd., Serial No. 76586779 (December 12, 2006) [not citable].

The Board readily found the marks to be "highly similar" and the goods "closely related." It then addressed the two awful arguments advanced by Applicant: (1) confusion is not likely because Applicant and Registrant operate in different geographical areas, and (2) Registrant's mark consists of a "personal name," which is not entitled to protection.

According to Applicant, Registrant operates only in Ohio, while Applicant operates solely in Illinois, and "[t]he average purchaser in Ohio would not travel to Illinois just buy (sic) bakery goods specifically Tiramisu and the average purchaser in Illinois would not travel to Ohio for their bakery goods or Tiramisu." The Board, however, noted that an unrestricted registration is entitled to nationwide scope (See 15 U.S.C. Section 1057(c)), and so this geographical distinction is meaningless.

As to the personal name argument, Applicant made the ridiculous claim that "a personal name is not subject to exclusive appropriation as a trademark even though registered as such," citing a 1912 decision. The Board, however, observed that in 1946 the Lanham Act "modernized, and substantially 'rewrote' U.S. Trademark Law," and it "in no way restricts the ability of trademark owners to secure rights in and registration for given names." Moreover, Applicant's argument amounts to an improper attack on the validity of a registration, which is not permitted in an ex parte proceeding.

And so this Applicant got its just desserts.

Text Copyright John L. Welch 2007.


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