Wednesday, February 16, 2022

TTABlog Test: Is ROMA PIZZA for Restaurant Services Confusable with ROMA for Frozen Pizza?

Bernatello's Pizza, Inc. opposed Timothy Bammann's application to register the mark ROMA PIZZA for restaurant services [PIZZA disclaimed], alleging a likelihood of confusion with its registered mark ROMA for frozen pizza. Bernatello's also contended that Bammann uses his mark at a single location in Bangor, Michigan, and not in interstate commerce. Bammann maintained that "ROMA" is a weak mark entitled to only a narrow scope of protection, and further that the involved goods and services travel in different channels of trade. How do you think this came out? Bernatello’s Pizza, Inc. v. Timothy Bammann, Opposition No. 91251606 (February 11, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Non-use Claim: Opposer argued that Applicant Bammann's use of his mark at only a single location in Bangor, Michigan, was insufficient to establish use of the ROMA PIZZA mark in commerce. Bammann retorted that "[i]t is inconceivable that a restaurant operating since 1978 has not served out of state customers."

[C]ontrary to Opposer’s arguments, it is not determinative that Applicant admittedly only offers restaurant services in one location in Michigan as it is not necessary that the restaurant “services be rendered in more than one state to satisfy the use in commerce requirement.” Larry Harmon Pictures Corp., 18 USPQ2d at 1295.

In Larry Harmon, the CAFC ruled that restaurant services offered in one location in intrastate commerce constitutes use in interstate commerce. Here, Opposer Bernatello's did not prove "that applicant's rendering of its services in Bangor, Michigan, in the aggregate, does not have an effect on commerce that is regulable by Congress.".

Section 2(d): The Board first considered the relatedness of the involved goods and services. Jacobs v. Int'l Multifoods requires that "[t]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used for foods products and restaurant services." Third-party registrations and third-party website evidence showed the same mark used by a single entity for both restaurant services and frozen pizza sold at retail (for example, Uno Pizzeria and Grill). The Board concluded that there is an "undeniable connection" between opposer's frozen pizza and the pizza offered fresh in applicant's restaurant. Applicant Bammann's identified "restaurant services" are broad enough to encompass restaurants offering pizza. Thus Opposer Bernatello's supplied the "something more" required by Jacobs. As to channels of trade, however, the Board found them to be different for frozen pizza (grocery stores) than for restaurant services.

Pizza is a relatively inexpensive item typically purchased without great deliberation. Restaurant services, too, may be relatively inexpensive. This fourth DuPont factor therefore favored opposer.

Turning to the 5th and 6th DuPont factors, Bernatello's claimed that its mark ROMA enjoys strong marketplace recognition. It sells ROMA brand frozen pizza in supermarkets in 29 states. It spent $2.3 million on advertising from 2017-2020, garnering $81 million in revenues from 2015-2020. However, opposer did not provide information regarding its market share or regarding advertising expenditures by its competitors. There was no evidence of media recognition or brand awareness. The Board therefore concluded that, although the evidence reflected commercial success from sales, it did not prove that the ROMA mark is widely recognized by a significant portion of the general public. And so, the Board deemed the 5th DuPont factor to be neutral.

As to inherent strength, third-party registrations corroborated by a dictionary translation established that "Roma" is "highly suggestive of Rome, Italy when used in connection with goods and services for Italian food such as pizza." Applicant also submitted evidence regarding use of "Roma" in six restaurant names, evidence that had "significant probative value as to commercial weakness."

As to the marks, the Board unsurprisingly found ROMA PIZZA and ROMA to be similar, but in view of the conceptual weakness of ROMA, this factor weighed only slightly in Opposer Bernatello's favor.

Finally, under the eighth DuPont factor, the lack of evidence of actual confusion was neutral since there was insufficient evidence to show that, in light of the parties' respective geographical markets, there had been a reasonable opportunity for confusion to occur.

Conclusion: The Board found that the strength or weakness of opposer's ROMA mark was the most important factor.

In view of the highly suggestive nature of ROMA in the food industry, and its commercial weakness, we find purchasers are able to distinguish among various ROMA marks by looking to other elements of the marks. In this case, that other element is the addition of the term PIZZA to Applicant’s mark rendering Opposer’s and Applicant’s marks sufficiently distinguishable that confusion is unlikely.

And so the Board dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: Arrivederci Roma! How did you do?

Text Copyright John L. Welch 2022.


At 9:37 AM, Anonymous Joel MacMull said...

This, I find, is a difficult concept to explain to clients. "Yes, you have a registration, but it's thin man, thin. Just like your crust."

At 10:13 AM, Anonymous Anonymous said...

Wow! On a search of the USPTO online database, I found 43 live U.S. registrations that provide coverage for both "frozen pizza" and "restaurant services". Trying to wrap my head around the concept that the descriptive word "pizza" distinguishes "ROMA PIZZA" from "ROMA".

At 11:52 AM, Anonymous Anonymous said...

I didn't expect that dismissal. John, as a trademark paralegal (about 6 years in) I have learned so much from you. Please never stop publishing this blog.


At 4:32 PM, Anonymous Anonymous said...

Huh? In TTAB world almost everything is related to everything, except pizza is not related to pizza? Very poorly written decision.

At 6:04 PM, Blogger Valerie N said...

I agree with the other comments, esp in light of recent decisions which seem to connect everything on the planet to establish likelihood of confusion.

At 7:59 PM, Anonymous Anonymous said...

Glad to see this come down the right way.

---Signed, Definitely Not Registrant's Attorney

At 12:41 PM, Blogger Pamela Chestek said...

Is it well-established that the opposer has the burden of proof on use in commerce? That seems odd to me. Use in interstate commerce is required for a valid application, seems like it should be the applicant's burden.

At 1:47 PM, Blogger John L. Welch said...

Pam, that struck me too. Seems like the Board leaned over backwards to rule for the applicant.


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