Thursday, December 28, 2017

TTAB Test: Are Frozen Pizza and Restaurant Services Related For Section 2(d) Purposes?

The USPTO refused registration of the mark URBAN PIE PIZZA CO. & Design, shown below left, for "frozen pizza not sold or distributed through restaurants" [PIE PIZZA CO. disclaimed], finding the mark likely to cause confusion with the registered marks URBAN PI & Design (one design, adding the words "creative pizza," shown below right), for restaurant services. Applicant argued that the USPTO did not provide the "something more" needed to show that frozen pizza is related to restaurant services, and furthermore it contended that the weakness of the word URBAN supports a finding that the marks are not similar. How do you think this appeal came out? In re Palermo Villa, Inc., Serial No. 86836045 (December 20, 2017) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The goods/services: The evidence submitted by Examining Attorney Carol Spils suggested that pizzerias often offer frozen versions of their pizzas that are sold through retail stores (including Sbarro's, California Pizza Kitchen, and the beloved UNO brand pizza). The examining attorney also submitted "a sizable number" of third-party registrations identifying frozen pizza and restaurant services under the same mark.

The Board found applicant's statistical arguments regarding the rareness of one entity offering both frozen pizza and restaurant services to be flawed and unsupported by probative evidence. Similarly, applicant's arguments based on TESS search results were faulty. The fact that many registration for restaurant services do not include frozen pizza, and vice versa, begs the question. The issue is whether consumers are exposed to entities that offer both. Moreover:

There is no requirement for goods to be found related that all or even a majority of the sources of one product must also be sources of the other product. Therefore, evidence showing only that the source of one product may not be the source of another product does not aid applicant in its attempt to rebut the evidence of the examining attorney.

The Board also noted that "registrants may have registered the omitted goods/services in a separate registration or may have begun use on those goods/services at a later date."

The Board concluded that the record amply supports the relatedness of frozen pizza and restaurant services, and this evidence contributes to the required "something more."

The marks: Applicant pointed to 12 use-based third-party registrations for marks containing the word URBAN for restaurant, bar, or brewpub services. However, applicant provided no evidence of third-party use. Moreover, none of the registrations contain the term URBAN PIE or URBAN PI. "Thus, while the evidence may suggest that consumers can distinguish among marks that contain URBAN along with other matter, the record does not support such a finding as to marks containing the term URBAN PI(E) as a whole."

Comparing the marks at issue, the Board found them to be very similar. In all three marks, the phrase URBAN PIE/URBAN PI dominates. Applicant argued that "PIE" is "easily distinguishable" from "PI," but the Board noted that PI looks very similar to PIE and sounds identical. Also PI, in the cited marks, appears on a circular design of a pizza or pizza pan, and thus the context gives it the connotation of "pizza pie."

The Board concluded that the marks have a similar look, sound, meaning, and commercial impression.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: What do you think?

Text Copyright John L. Welch 2017.


At 7:56 PM, Anonymous Paul Reidl said...

A diligent Examining Attorney can make anything related to anything. Personally, I think that the PTO has become far too estranged from reality on this point.


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