Tuesday, December 28, 2010

Test Your TTAB Judge-Ability: Are "B.C. PIZZA" and "B&C PIZZA" Confusingly Similar?

Applicant sought to register the mark B.C. PIZZA for "dine in and carry out services featuring pizza and other Italian related cuisine and drinks," but pro se Opposer Satek, Inc. claimed likely confusion with its registered mark B&C PIZZA for restaurant services. Satek's brief was late, Applicant submitted no evidence or testimony, and the evidentiary record was "thin" [not sure about the pizza - ed.]. Was Opposer's claim more than half-baked? Satek, Inc. v. B.C. Pizza, Inc., Opposition No. 91171803 (November 30, 2010) [not precedential].

Yes. Satek's 2(d) claim may have been thinly supported, but it was not half-baked.

The Board excused Satek's tardy filing since the delay was minimal. Satek failed to properly submit its registration, but not to worry, since Applicant had counterclaimed for cancellation and did not dispute the status and title of the registration. Applicant dropped its improperly pleaded fraud counterclaims rather than re-plead them.

The Board found that the presumptions accorded Satek's registration pursuant to Section 7(b) of the Trademark Act (validity of the mark and the registration, ownership of the mark, and the exclusive right to use the mark with the recited services), coupled with the identity of the services and the near-identity of the marks, were enough to carry the day for Opposer. Not a surprise, eh?

And so the Board sustained the opposition.

TTABlog comment: There appears to be a lot of history between these two Michigan-based pizza shops. One is in Boyne City and the other in Bay City. That is enough to confuse me.

Are these two outfits really in interstate commerce? Should either of them have a federal registration?

Text Copyright John L. Welch 2010.


At 9:56 AM, Anonymous Orrin A. Falby said...

John, is this a trick question? As you, a trademark does not have to be used in "interstate" commerce to be entitled to Federal registration. It has to be used in connection with an activity that is regulated by Congress. Whether any of these restaurants are entitled to a Federal registration cannot be determined in a vacuum. We must look at each situtation . . . and as you know, the bar is pretty low for what Congress can regulate.

At 10:04 AM, Blogger John L. Welch said...

Yes. It is a trick question. Why should either of two pizza shops somewhere in Michigan be able to tie up a federal registration? Please do not use more than one blue book for your answer.

At 1:39 PM, Blogger Kevin W. Grierson said...

Because if you don't like the current standard (which seems overbroad on occasion) you're going to have to replace it with something else. So, if I have a little pizza place in Suffolk VA a few miles from the NC border, and folks cross the border to come to my pizza place, would that qualify? Or would I need to have a business location in more than one state? What if I just deliver across state lines? And if is my VA business that delivers to NC really any more worthy of a federal registration than a small business several hours from the border?

Yes, a pizza place in the middle of the Michigan lower peninsula probably gets little, if any, interstate business. But the current standard, while perhaps overbroad, functions better than any other standard I can think of.

At 11:59 AM, Anonymous Anonymous said...

I have forgotten the standard, but I assume it's the same anywhere that's in public commerce -- If I sell popcorn on Main street in a small town in the middle of Texas, it still affects interstate commerce ever so slightly because my price here competes with prices in the next little town, which in turn compete with prices at the truck stop 10 miles further, where interstate truckers stop.

At 1:57 PM, Blogger Kevin W. Grierson said...

"Public Commerce" does not equal "Interstate Commerce," though in the case of restaurants just serving food might qualify.

Here's what the PTO says (from their FAQs):

What is “interstate commerce”?

For goods, "interstate commerce" generally involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, "interstate commerce" generally involves offering a service to customers in another state or rendering a service that affects interstate commerce (e.g., restaurants, gas stations, hotels).


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