TTABlog Test: Are Pizza and Bakery Goods Related Under Section 2(d)?
The USPTO refused to register the mark HIGH FIVE for “Pizza for consumption on or off the premises," finding confusion likely with the identical mark registered for "bakery goods." The issue baked down to whether the goods are related for Section 2(d) purposes. Applicant Pizza Inn argued that "something more" is required to prove relatedness when marks are used for food products and for restaurant services. How do you think this came out? In re Pizza Inn, Inc., Serial No. 88244151 (March 21, 2024) [not precedential] (Opinion by Judge Mark Lebow).
Examining Attorney Lakeisha Lewis submitted some 30 website references each showing bakery goods and pizza sold under the same mark, along with some 50 registrations covering both type of products. The Board concluded that the involved goods are closely related.
Nonetheless, Pizza Inn argued that the goods are not related. First it argued that, in the Office's evidence, the bakery goods are sold in separate locations from the pizza. Not so, said the Board, and in any case it doesn't make any difference.
Next, Pizza Inn contended that these businesses "call out their bakery services separate and apart from their pizzeria operation through use of separate headings, links and – in some cases – even separate web pages. Clearly, these business owners consider pizzas to be their own category of goods separate from bakery goods.” The Board was unimpressed: "The fact that a business has different menu pages, headings, or links for its various goods does not necessarily detract from their relatedness."
With regard to Pizza One's "something more" argument, the Board pointed out that "the heightened 'something more' standard first enunciated in Coors Brewing may be required in any context where 'the relatedness of the goods and services is not evident, well-known or generally recognized.'" In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082 (Fed. Cir. 2014),
[H]ere, the evidence in this case shows that Registrant’s bakery goods and Applicant’s pizza goods are closely related. Because the evidence sufficiently demonstrates that Applicant’s goods are related to those in the cited registration, there is no need to address the “something more” standard.
The Office's evidence also established that the involved products travel to the same trade channels to the same classes of consumers.
Pizza Inn argued that its mark has co-existed with the cited mark since 2017 without any incidents of actual confusion. The Board pointed out once again that the test under Section 2(d) is likely confusion, not actual confusion. In any event, Pizza Inn did not provide evidence regarding the duration, extent, or geographic reach of its sales under its mark, and therefore there was no basis on which to conclude that a reasonable opportunity for actual confusion had occurr.
And so, the Board affirmed the refusal to register.
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TTABlogger comment: WYHA?
Text Copyright John L. Welch 2024.
posted by John L. Welch @ 3/25/2024
4 comments
4 Comments:
The issue is that the USPTO's analysis is completely disconnected from reality. It is flawed. Their analysis applies a double standard against the applicant because the TTAB routinely discards third party evidence presented by applicants of internet trademark usage, stating that the evidence must include some proof as to the actual extent of trademark use. Yet that standard does not apply toward their own rejections.
Third party registrations are not evidence of trademark use, so there is really very little evidentiary value there in establishing that certain goods or services are related. I think the USPTO realizes this, and that's why they are training the EAs to use "real world" internet evidence more so than third party registrations. That is a step in the right direction.
However, the website evidence of trademark use that they present values the NUMBER of examples of related-use examples, and it completely disregards the extent to which any of those examples are actually being used. Each example they attach as evidence might be associated with $100/year in sales, or $100,000,000/year in sales. We don't know, and neither does the EA or the TTAB. But the EXTENT to which those internet examples are actually being placed in the marketplace and advertised and marketed to consumers is exactly what counts - not the number of examples. The analysis is flawed because it places the value on the wrong thing. The number of examples is completely irrelevant, and the evidence is naked and worthless unless it includes proof of the extent to which the marks showing relatedness are actually being presented to consumers. If I were to pursue an appeal based on a particularly weak rejection, this is probably where I'd be focusing my argument.
It's 2024. Everything is related. Basketballs are related to mouthwash, see https://www.amazon.com/stores/AmazonBasics/page/947C6949-CF8E-4BD3-914A-B411DD3E4433
The USPTO's "excuse" for relying on "naked" third-party registrations and uses is that the examining attorneys don't have the resources to investigate the extent and manner of use of these third-party marks.
PS: In the real world, does the typical consumer really expect to see baked goods in a pizzeria, or pizza in a bakery? I think not.
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