Tuesday, January 26, 2010

TTAB Finds "CATELLI" for Pasta Sauce Confusingly Similar to "LOCATELLI" for Cheese

In a "somewhat close" but nonetheless dull case, the Board gave the benefit of the doubt to the Registrant in sustaining a Section 2(d) opposition to registration of the mark CATELLI for "pasta sauces," finding it likely to cause confusion with the registered mark LOCATELLI for "cheese." Gennaro Auricchio S.p.A. v. Trademark Management Company, Opposition No. 91161200 (January 22, 2010) [not precedential].

As to the marks, the Board found them "more similar than dissimilar." Although there are readily discernible differences between the marks [Can you identify them? - ed.], "to the extent they may well be seen as Italian surnames, [they] will leave prospective consumers with similar connotations."

Of course, the goods need not be identical or even competitive in order to support a finding of likely confusion. Opposer introduced a number of third-party registrations that cover both cheese and pasta sauce, and it pointed to various websites where cheese and pasta sauces appear -- and even pasta sauce containing cheese!

Opposer also showed that "cups of its hard, grated cheese are often sold in supermarkets on stand-alone displays , or 'shippers,' placed in the produce section, in store aisles with dry pasta and pasta sauces, and/or in the deli area."

And so the Board found the goods to be related for Section 2(d) purposes.

Because neither the registration nor the opposed application includes any limitation as to channels of trade, it must be assumed that the goods travel in the normal channels therefor, which channels would clearly overlap. Similarly, Registrant's "cheese" must be assumed to include inexpensive goods purchased "without much care." [I.e., I don't care what type of cheese you got, just give me some cheese, will you?]

Opposer then hit Applicant with the strength of its mark. The long and successful history (since 1984) of US sales of LOCATELLI brand cheese (three million pounds (by weight) in 2007), convinced the Board that LOCATELLI has achieved "a notable degree of renown in the field, and this factor weighs in opposer's favor."

Applicant pointed to the fact that Opposer had agreed to limit its use of the LOCATELLI mark to pecorino cheese and had granted Nestle a license to use the mark for other cheeses. However, Nestle "no longer maintains any rights in this mark," and so the Board found this situation distinguishable from those in which "multiple third parties using similar marks may have the impact of weakening or boxing-in a potential plaintiff." In short, Opposer has "a fairly significant right to exclude third-parties from the use and registration of the LOCATELLI mark for cheese and related food items."

And so the Board sustained the opposition.

TTABlog comment: It's a close call, but I think I agree with the Board.

Text copyright John L. Welch 2010.


At 2:42 PM, Blogger Catherine said...

Maybe it's because my last name is "Cavella" or because my grandmother always insisted on Locatelli romano, but these just don't seem confusingly similar to me ... another example of how unpredictably subjective the LOC analysis can be

At 7:44 PM, Anonymous Paul Reidl said...


This is one of those where I might have said to the client: it depends on your proof of "fame" or "consumer recognition". Obviously, the Board thought that the perimeter of protection of the mark was broad because it has some considerable degree of consumer recognition. Based on the Board's description of the facts, I also agree with the Board.



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