Wednesday, October 06, 2010

WYHA? TTAB Affirms 2(d) Refusal of "VICCINO'S & Design" Over "IL VICINO" for Restaurant Services

No matter how you slice it, Applicant Viccino's was in deep-dish trouble when it appealed from a Section 2(d) refusal to register its logo mark shown below for "delivery of food by restaurants" and "carry-out restaurants." The Board affirmed, finding the mark likely to cause confusion with the registered mark IL VICINO for restaurants. In re Viccino's Pizza Restaurants, Inc., Serial No. 77472394 (September 30, 2010) [not precedential].

As to the services, Applicant's carry-out restaurants were encompassed by Registrant's recitation of "restaurants." As to Applicant's delivery services, nearly two dozen third-party use-based registration were submitted by Examining Attorney Brian P. Callaghan to show that delivery services and restaurant services are of a kind that "could be marketed by a single source under a single mark." Moreover the trade channels and the classes of consumers overlap, and consumers would exercise only ordinary care in their purchasing decisions.

As to the marks, the Board not surprisingly found that the word VICCINO'S dominates Applicant's mark. The pizza design element "certainly contributes to the visual impression of the mark," but it is "highly suggestive because it informs purchasers that applicant's carry-out restaurants feature pizza as a menu item."

The word VICINO dominates the cited mark, since consumers "are likely to perceive and recall (if they recall at all)" the word IL "as merely an introduction to the longer and more prominent word VICINO."

The points of visual dissimilarity are "counter-balanced by the basic visual similarity of the marks" arising from "the presence at the heart of the marks of the same letters in the same order, i.e., VIC followed by INO."

In terms of sound, the marks are "highly similar," and neither mark "has a straightforward connotation or meaning which purchasers might use to distinguish the marks." As for commercial impression, each mark suggests an Italian restaurant either named after a person named VICCINO or having an "Italian-looking" name IL VICINO.

Comparing the marks as a whole, the Board found them to be similar "due primarily to the similarity in the way the marks sound." The sound of the marks is particularly significant here because restaurant services are often recommended by word-of-mouth.

And so the Board affirmed the refusal to register.

TTABlog comment: Do you think there was a snowball's chance in a brick oven that this refusal could be overturned on appeal?

How about arguing that VICCINO'S looks like someone's name, while IL VICINO has the meaning of "in the vicinity of Illinois" or "near Illinois?"

Text Copyright John L. Welch 2010.


At 9:08 AM, Anonymous Anonymous said...

The Board's very strong language re the irrelevance of Applicant's argument it owned a prior registration is troubling. Assuming a case where ownership and file history are in the record, it seems relevant under "du Pont" -- the
13th factor, "any other established fact probative of the effect of use". Prior registration of the same mark for the same or similar goods/services by Applicant should at least be considered by the Board, even if that information is outweighed by other factors.

At 11:13 AM, Anonymous Orrin A. Falby said...

Prior "active" registrations are relevant to show that the marks have co-existed on the Register for a period of time. However, the registration that the applicant claims here was cancelled in 2008. It is therefor not probative in the analysis. It is the 8th du Pont factor - the length of time the marks have been concurrently ued without actual confusion that the attorneys who proseuting this application should have built a record on.

At 12:23 PM, Anonymous Freiburger said...

I agree with the first commenter, that it should be *relevant*. "Thus, under the miscellaneous thirteenth du Pont likelihood of confusion factor, we have taken into account the facts pertaining to applicant's prior registration. We find that they weigh in applicant's favor to a degree, but they are not determinative." In re Davey Prods. Pty Ltd., 92 U.S.P.Q.2d 1198, 1206 (T.T.A.B. 2009).

At 3:01 PM, Anonymous Orrin A. Falby said...

The Dewey case is distinguishable. There, the "prior registrations" were still alive. In this case they were cancelled and thus, have no "probative value" in the analysis.

At 3:54 PM, Anonymous Freiburger said...

You're mistaken, Orrin. The prior registration relied on by the applicant in Dewey was dead. See pages 1205-1206 of the decision. For example: "Applicant argues that by filing its current application for registration of the same mark for the same goods as those covered by its prior registration, it merely seeks to return to the status quo that existed prior to the Section 8 cancellation of its prior registration."

At 10:30 AM, Anonymous Orrin A. Falby said...

Thanks Frieburger - -I am one to admit when I am wrong. I went back and read the Davey case and the registration was cancelled. In any case, I don't see how a prior cancelled registration could help you in overcoming a 2(d) refusal. Again, it seems to me that the client would have been better served by submitting evidence of concurrent use of the marks.


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