Friday, November 19, 2010

CAFC Affirms TTAB's Decision in "ANTHONY'S" Pizza 2(d) Brouhaha

The U.S. Court of Appeals for the Federal Circuit has affirmed the TTAB's precedential ruling in Anthony’s Pizza & Pasta International, Inc. v. Anthony’s Pizza Holding Company, Inc., 95 USPQ2d 1271 (TTAB 2009) [precedential]. [TTABlogged here]. The Board found a likelihood of confusion between the marks ANTHONY'S PIZZA & PASTA and the mark shown below, both for restaurant services. The appellate court opined that the Board had correctly applied the du Pont factors and had properly considered Appellee's co-existence agreement with the owner of the registered mark ANTHONY'S PIZZA THE WORLD'S GREATEST. Anthony’s Pizza Holding Company, Inc. v. Anthony’s Pizza & Pasta International, Inc., Appeal No. 2010-1191 (Fed. Cir. November 18, 2010). [not precedential].

The Board rejected the contention that Appellee did not adequately police its mark, noting the co-existence agreement as well as Appellee's employment of a trademark watching service (which led to the subject opposition). And it rejected the argument that the Board gave Appellee sole rights to the name "Anthony's."

Finally, the Board did not grant APPI exclusive rights to the term “Anthony’s.” Nor did it grant APPI exclusive right to the terms “Anthony’s” and “Pizza.” The Board merely found that APPI’s relatively weak mark bars the registration of marks “as to which the resemblance to [APPI’s mark] is striking enough to cause one seeing it to assume that there is some connection, association, or sponsorship between the two.” 95 U.S.P.Q.2d at 1278 (citation omitted). That is precisely consistent with the intent of the Lanham Act, which prevents registration of marks likely to cause confusion.

TTABlog note: The court recognized that Appellant's restaurant was founded and owned by someone named "Anthony." Maybe there should be a section of the Trademark Act that bars registration of terms that are "primarily merely given names." Consider Judge Seeherman's approach to the surname refusal: rareness is the most important factor, since the objective of Section 2(e)(4) is to keep marks available for people who have the same surname. Doesn't that rationale apply even more strongly to common given names? I suggest that you write to your congressperson and we'll see if we can get bi-partisan support for a change in the statute.

Text Copyright John L. Welch 2010.


At 11:59 AM, Anonymous Michael Feigin, Patent Attorney said...

Or, choose a name that isn't yet trademarked for your business... if you choose "Tony's Pizza" your probably safe. Name will be unprotectable, but that might not matter to you... or matter more than the cost of being vigilant of you have a trademark / chance of a trademark dispute.

At 4:22 PM, Anonymous Francine ward said...

Interestingly the prior mark was not denied because of descriptiveness

At 7:56 PM, Anonymous Neil Martin said...

I do not think that the same considerations apply to given names as apply to surnames. There are many more given names that are identical, than is the case for surnames. As a result, if you could not protect a given name there could be hundreds of "Bob's" restaurants and the public would most certainly be confused.

I can see no reason that the first person to operate a "Bob's Restaurant" chain, should not be able to stop others in his service area from using the same name. A race from adoption to the Trademark Office is not inherently unfair if every Bob had the same opportunity to be first.


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