TTABlog Test: Are Pizza Parlors and Baked Goods Related Under Section 2(d)?

The USPTO refused to register the mark PIZZERIA SAPIENZA, in standard character and logo form, for "restaurant and catering services; pizza parlor" [PIZZERIA disclaimed] on the ground of likelihood of confusion with the registered mark SAPIENZA for "bakery products, namely, cream puffs, cannoli, eclairs and assorted pastries." Keeping in mind that the Office must show "something more than that similar or even identical marks are used for food products and for restaurant services," how do you think this came out? Do bakeries sell pizza, you might ask? Do pizza parlors sell cannoli? In re Amore Food Group LLC, Serial Nos. 97524502 and 975588431 (February 12, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

The Board found it proper to give the generic term "pizzeria" less weight in considering applicant's mark, agreeing with Examining Attorney William Verhosek that "purchasers would be more inclined to use SAPIENZA when referring to the services as opposed to the generic term PIZZERIA that describes every pizza restaurant in America."

In logo mark, "the pizza design, while creating some degree of visual distinction, does not overwhelm, detract from or change the commercial impression of the literal elements."

As to the sound of the marks, the word “Sapienza” "dictates the pronunciation of each mark and the modest [??? - ed.] difference in sound from addition of the generic word 'Pizzeria' does not overcome the identical sound of the dominant word 'Sapienza.'"

The Board concluded that "Applicant’s marks contain the entire registered mark SAPIENZA. Addition of the generic word 'Pizzeria,' and design of a pizza and modest stylization to the words in the composite mark, does not meaningfully distinguish the marks."

Turning to the second DuPont factor, the Examining Attorney submitted website evidence of ten businesses offering pizza parlor services as well as pastries. He also made of record a number of third-party use-based registrations, owned by different parties, identifying goods and services that include one or more of Applicant’s services and one or more of Registrant’s goods. Moreover:

There is a specific connection between Applicant’s pizza parlor services and Registrant’s cannoli because both are of Italian origin, satisfying the “something more” requirement. [Oh please, gimme a break! ed.].

As to channels of trade and classes of customers, the third party uses showed that the involved goods and services may be offered by the same businesses to the same customers: namely, "persons seeking restaurant or pizza parlor services and bakery goods such as cannoli or pastries." The channels of trade and consumers therefore overlap.

Bakery goods are low cost items, and eating at a pizzeria is not expensive; the Board therefore found that the goods and services are subject to impulse buying, increasing the risk of likelihood of confusion.” [Even an impulsive customer like me can tell pizza from a cannoli -ed.]

Finally, the lack of evidence of actual confusion was not probative because there was no evidence of meaningful opportunities for confusion to occur.

For most of the 30 years of use, Applicant’s predecessor operated a single pizzeria in Albany, located in upstate New York, a different part of the state from Registrant’s Elmont location on Long Island. Applicant opened a second pizzeria in 2018, but this was located in North Carolina. There is no evidence that Registrant has a presence in the upstate New York or North Carolina markets."

And so, the Board affirmed the refusal.

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TTABlogger comment: Here's an example of the Board's formulaic approach to Section 2(d), with the deck stacked against the applicant. The cannoli = "something more" argument didn't grab me. How about you?

Text Copyright John L. Welch 2025.