Thursday, November 12, 2009

Precedential No. 46: TTAB Finds Two "ANTHONY'S" Marks Confusingly Similar for Pizza Restaurants

Sustaining a Section 2(d) opposition and granting a petition for cancellation, the Board found the mark ANTHONY'S COAL-FIRED PIZZA, in standard character and design form (below), for "restaurant services, namely, eat-in and take-out coal oven pizza and other items" [COAL-FIRED PIZZA disclaimed] likely to cause confusion with the registered mark ANTHONY'S PIZZA & PASTA for restaurant services [PIZZA & PASTA disclaimed]. Despite the demonstrated weakness of "Anthony's" as a formative, the Board concluded that the other slices of the du Pont pie outweighed the weakness wedge. Anthony’s Pizza & Pasta International, Inc. v. Anthony’s Pizza Holding Company, Inc., 95 USPQ2d 1271 (TTAB 2009) [precedential].

Hearsay Objection: Defendant's witness testified regarding her conversations with third-party users of "Anthony's" in connection with restaurant services. Plaintiff objected on the ground of hearsay. The Board overruled the objection with regard to her testimony that "she heard the person answer the telephone as 'Anthony's." As for the rest of her testimony regarding conversations with third parties [e.g., how long the restaurant had been open or what kind of food it serves], that was hearsay because it was offered to prove the truth of the statements and was not based on something "she knows or experienced."

Priority: Plaintiff relied on the filing date of the application that issued as its registration (December 15, 2000). Defendant did not open an ANTHONY'S COAL-FIRED PIZZA restaurant until July 10, 2002. However, Defendant tried to tack on its prior use of the mark ANTHONY'S RUNWAY 84 since 1983 or 1984. The Board had two problems with that: (1) Defendant failed to amend its pleading pursuant to an earlier Board order to make that claim; and (2) the marks were not legally equivalent anyway. And so tacking was not allowed.

Strength of Plaintiff's Mark: Defendant's main argument was that "Anthony's" is an extremely weak formative, and so consumers will look to other portions of the marks to distinguish them. Its testimony, third-party registrations, and telephone listings led the Board to concluded that the name 'Anthony's has been "extensively adopted, registered and used for restaurant services, in particular for Italian restaurant and pizzerias, and therefore 'Anthony's' has a significance in this industry. Thus, the evidence corroborates the testimony that 'Anthony's' suggests an Italian restaurant or even a New York style Italian restaurant." Consequently, Plaintiff's mark should be given "a restricted scope of protection."

Similarity of the Marks: The Board found "Anthony's" to be the dominant element in Defendant's marks. It concluded that consumers will focus on the name "Anthony's" and that the remaining words are "not sufficient to distinguish defendant's mark from plaintiff's mark."

Plaintiff's Third-Party Consent Agreement: Prior to filing its application to register, Plaintiff entered into a consent agreement with the Army and Air Force Exchange Service, owner of a registration for ANTHONY'S PIZZA THE WORLD'S GREATEST and Design for restaurant services. By the agreement, the Service agreed to use its mark only on military bases, while plaintiff would not do so.

Defendant maintained that Plaintiff is barred from challenging its marks because (1) the agreement shows an acknowledgment that two ANTHONY'S restaurants could co-exist, and Plaintiff cannot change positions on that point, and (2) in its application Plaintiff verified that no other confusingly similar marks existed, thereby conceding that the two ANTHONY's marks were sufficiently different for Section 2(d) purposes. The Board did not agree.

The Board pointed out that "file wrapper estoppel" does not apply in trademark cases, and that Plaintiff's opinion regarding the two marks does not rise to the level of an admission against interest. Moreover, entry into a coexistence agreement when Plaintiff believed that the different channels of trade would prevent confusion "epitomizes the type of circumstance in which the Federal Circuit has encouraged such agreements." As it turned out, Plaintiff was incorrect in its belief, and actual confusion did occur: that actual confusion is relevant to the Board's decision here.

Balancing the Factors: The Board concluded that, although the evidence of third-party registration and use of ANTHONY'S is a significant factor, it was outweighed by the other du Pont factors, and therefore the Board sustained the opposition and granted the cancellation petition.

TTABlog comment: So, Tony, you wanna open a pizza joint and call it "Anthony's"? Fuggedaboudit!

Text Copyright John L. Welch 2009.


At 5:46 PM, Anonymous Frank Herrera said...

had Anthony's Coal-Fired Pizza for dinner last night and for breakfast today. Frank Herrera


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