TTAB Test: Are FAVAZZA'S and LAVAZZA Confusable for Restaurant Services?
Luigi Lavazza S.p.A. opposed an application to register the mark FAVAZZA'S for "Bar services; Catering services; Restaurant services," on the ground of likelihood of confusion with the registered mark LAVAZZA for "coffee shops, bars, restaurants, cafeterias, self-service restaurants, pubs, catering services." The services are the same. What about the marks? How do you think this came out? Luigi Lavazza S.p.A. v. Favazza's, Inc., Opposition No. 91210050 (February 16, 2016) [not precedential].
Applicant conceded that the involved services are identical and are rendered in the same channels of trade to the same classes of consumers, who would exercise only ordinary care in their purchasing decisions.
As to the marks, applicant argued that LAVAZZA is a "family name" and therefore not entitled to a broad scope of protection. The Board noted that opposer's mark was registered under Section 2(f), but observed that the mark is still "entitled to the same trademark protection as any other validly registered trademark."
According to applicant, consumers would recognize the marks as Italian surnames that are easily distinguishable. The Board disagreed. It found the marks to be "visually similar because they both contain AVAZZA and there is little, if any, trademark significance in the addition of the apostrophe and letter 'S' in Applicant’s mark." "[W]hen the marks are compared in their entireties, they are strikingly similar in appearance and sound, and the differences are not sufficient to distinguish the marks visually or phonetically."
As for connotation, it is not clear whether consumers would ascribe any meaning to the marks, but rather would see both marks either as invented foreign words or as surnames. We find it highly unlikely that consumers would view one mark as a surname and the other as an invented foreign word. Thus, regardless of whether consumers would view the marks as invented foreign words or surnames, the connotation is the same. As a result of the similarities between the marks, both marks convey similar overall commercial impressions. We therefore find that the marks are highly similar in sound, appearance, connotation, and commercial impression.
Opposer Lavazza urged that its mark is famous, but its proof fell short. It failed to show with the requisite specificity what portion of its sales figures were attributable to restaurant services (as opposed to its coffee products),or what portion related to sales under the mark LAVAZZA by itself.
Applicant pointed to the lack of actual confusion despite some thirty years of coexistence, but because of the lack of evidence regarding opposer's use of the LAVAZZA mark for restaurants, the Board was unable to ascertain whether there had been a meaningful opportunity for actual confusion to have occurred. In any case, the Board observed, the test is likelihood of confusion.
Considering the pertinent du Pont factors, the Board found confusion likely and it sustained the opposition.
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Text Copyright John L. Welch 2016.
posted by John L. Welch @ 2/18/2016
6 comments
6 Comments:
How Lavazza was not able evidence fame is a mystery. The Board seems to require fame in connection with restaurant services and specific ad figures for restaurants. However, that is not the test for a famous mark. If the evidence supports that the mark is famous based on coffee sales and advertising - that is enough to expand the realm of protection to restaurants.
I agree with that result.
Clearly the TTAB needs to get out more. You can formulaically use the DuPont factors and come to this conclusion, but not even a moron in a hurry would confuse two different surnames. I can see if it was Lavazza vs. Lavazzo or Favazza v. Favazzo or something like that, but it is very clear that these two have nothing to do with each other.
As a descendant of a Favazza myself, I sincerely hope that Favazza appeals this ridiculous decision.
I agree with the result because of the closeness in spelling and pronunciation and the identity of services.
However, the Board dodges an essential issue with the statement that a 2(f) surname mark is entitled to the "same" trademark protection as "any other" validly registered trademark. Of course it is protectable once registered - the issue is the scope of protection to be granted.
Not all marks get the same protection as any other mark. All marks get different scopes of protection depending on their strength. Courts hold that, rather than a black line (protectable or not), there is a range of protection depending on where a mark falls on the continuum from descriptive to arbitrary (weak protection to strong).
Complicating this question is 2(f) protection. A surname starts out weak. Where on the continuum does it fall after gaining secondary meaning? Does it somehow become arbitrary or fanciful?
Isn't it a waste of time to plead no actual confusion in the TTAB?
For lack of actual confusion to be meaningful, I think you would at least have to show that there was a LAVAZZA cafe in St. Louis, in FAFAZZA'S trading area.
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