Friday, May 16, 2008

Mueller's Bests Barilla in TTAB 2(d) Food-Fight Over "AMERICA'S FAVORITE PASTA"

The Italian company, Barilla, was foiled in its attempt to register the mark BARILLA - AMERICA'S FAVORITE PASTA for pasta [AMERICA'S FAVORITE PASTA disclaimed]. The Board sustained a Section 2(d) opposition brought by the successor to Mueller's, finding Barilla's mark likely to cause confusion with Opposer's common law mark AMERICA'S FAVORITE PASTA for the same goods. American Italian Pasta Co. v. Barilla Alimentare S.p.A., Opposition No. 91161373 (May 13, 2008) [not precedential].

The simmering battle between Mueller's and Barilla over the mark AMERICA'S FAVORITE PASTA finally came to a boil before the TTAB. Newcomer Barilla had become the highest selling brand of pasta in the United States by the early 2000s, which motivated Barilla to seek registration of the subject mark. But Mueller's opposed, claiming rights to the mark going back to at least 1989.

Opposer admitted that the phrase "America's Favorite Pasta" is not inherently distinctive. Consequently, Opposer's claim of priority "turns upon opposer's demonstrating that this term had acquired distinctiveness prior to June 18, 2002, when applicant filed its intent-to-use application."

Barilla contended that "American's Favorite Pasta" is incapable of acquiring distinctiveness as a trademark, but the Board disagreed. Unlike the phrase BEST BEER IN AMERICA, which was deemed so highly laudatory and descriptive as to be incapable of acquiring distinctiveness, "America's Favorite Pasta" is not a common phrase used descriptively by others. Furthermore, the "word 'Favorite' in the context of this phrase cannot be said to be a clear claim of superiority." In addition, Opposer submitted dozens of third party Supplemental Registrations for marks containing the identical construction "America's Favorite ...."

The "critical and hotly contested" issue before the Board was whether Opposer established acquired distinctiveness prior to Barilla's filing date. Reviewing the "voluminous" evidence, the Board sided with Mueller's, even while recognizing that Opposer had not shown use of "America's Favorite Pasta" as a stand-alone brand.

"For good or ill, at the time applicant filed this application, opposer and its predecessors in interest had spent more than 135 years building the goodwill of a branding image tied to the 'American-ness' of the Mueller's brand of pasta. Evidence of this fact is not tied to extensive media advertising, but is tied first and foremost to the packaging on more than a hundred million pounds of pasta a year, and supported by aggressive coupon campaigns distributing many millions of coupons to markets throughout Muellerland."

Applicant's branding image, on the other hand, "has been linked to the continuing perception that truly authentic pasta is associated with its Italian roots." Since arriving in the USA in 1995, Barilla, "through its pasta promotion and pasta product packaging - adorned in red, white and green, the colors of the Italian flag - has unapologetically embraced its Italian heritage. In fact, applicant has a federal trademark registration for its own long-used tag-line, ITALY's #1 PASTA."

Noting that product differentiation in this fiercely competitive field may turn on subtle nuances, the Board was convinced "that opposer has strengthened an American-themed brand identity that Mueller's owners ha[ve] been building for more than 130 years, and which should not be subject to taking by the new market leader - whose success in this market has been built on a very different brand-identity."

Having found that Opposer has priority, the Board didn't noodle around before reaching the conclusion that confusion between the marks in question is likely. In short, it observed that consumers who see the phrase "Barilla-America's Favorite Pasta" are likely to assume that there is some relationship between Mueller's and Barilla.

The Board therefore sustained the opposition.

Text Copyright John L. Welch 2008.


Post a Comment

<< Home