WYHA? TTAB Affirms 2(d) Refusal of "VICCINO'S & Design" Over "IL VICINO" for Restaurant Services
No matter how you slice it, Applicant Viccino's was in deep-dish trouble when it appealed from a Section 2(d) refusal to register its logo mark shown below for "delivery of food by restaurants" and "carry-out restaurants." The Board affirmed, finding the mark likely to cause confusion with the registered mark IL VICINO for restaurants. In re Viccino's Pizza Restaurants, Inc., Serial No. 77472394 (September 30, 2010) [not precedential].
As to the services, Applicant's carry-out restaurants were encompassed by Registrant's recitation of "restaurants." As to Applicant's delivery services, nearly two dozen third-party use-based registration were submitted by Examining Attorney Brian P. Callaghan to show that delivery services and restaurant services are of a kind that "could be marketed by a single source under a single mark." Moreover the trade channels and the classes of consumers overlap, and consumers would exercise only ordinary care in their purchasing decisions.
As to the marks, the Board not surprisingly found that the word VICCINO'S dominates Applicant's mark. The pizza design element "certainly contributes to the visual impression of the mark," but it is "highly suggestive because it informs purchasers that applicant's carry-out restaurants feature pizza as a menu item."
The word VICINO dominates the cited mark, since consumers "are likely to perceive and recall (if they recall at all)" the word IL "as merely an introduction to the longer and more prominent word VICINO."
The points of visual dissimilarity are "counter-balanced by the basic visual similarity of the marks" arising from "the presence at the heart of the marks of the same letters in the same order, i.e., VIC followed by INO."
In terms of sound, the marks are "highly similar," and neither mark "has a straightforward connotation or meaning which purchasers might use to distinguish the marks." As for commercial impression, each mark suggests an Italian restaurant either named after a person named VICCINO or having an "Italian-looking" name IL VICINO.
Comparing the marks as a whole, the Board found them to be similar "due primarily to the similarity in the way the marks sound." The sound of the marks is particularly significant here because restaurant services are often recommended by word-of-mouth.
And so the Board affirmed the refusal to register.
TTABlog comment: Do you think there was a snowball's chance in a brick oven that this refusal could be overturned on appeal?
How about arguing that VICCINO'S looks like someone's name, while IL VICINO has the meaning of "in the vicinity of Illinois" or "near Illinois?"
Text Copyright John L. Welch 2010.