Anton Airfood, Inc.

Trademark Trial and Appeal Board

Aug 16, 2002

No. 75917312 (T.T.A.B. Aug. 16, 2002)

Hearing: Mailed: 16 AUG 2002
06 AUG 2002 Paper No. 12
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Anton Airfood, Inc.
________
Serial No. 75/917,312
_______
Laurence E. Stein of Patton Boggs LLP for Anton Airfood,
Inc.
M. Catherine Faint, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______
Before Cissel, Walters and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On February 15, 2000, Anton Airfood, Inc. (applicant)
filed an intent-to-use application to register the mark
RAPIDO’S FRESH FOOD FAST (typed drawing) on the Principal
Register for services identified as “restaurant and carry-
out restaurant services” in International Class 42.1 The
application contains a translation of the word “Rapido” as
the Spanish word for “rapid.”
1 Serial No. 75/917,312.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 75/917,312
2
The examining attorney2 ultimately refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because it so resembles the prior
registered mark shown below for “restaurant services” in
International Class 42 that the examining attorney
concluded that it would be likely to cause confusion, or to
cause mistake or to deceive.3
The examining attorney also required the applicant to
disclaim the phrase “Fresh Food Fast” under the provision
of Section 6 of the Trademark Act (15 U.S.C. § 1056).
After the examining attorney made the refusal and the
requirement final, this appeal followed, and an oral
hearing was held on August 6, 2002.
The examining attorney argues that the services are
identical and the commercial impression of the terms
WRAPIDO and design and RAPIDO’s FRESH FOOD FAST are
similar. The term “fresh food fast” is an informational
phrase that “is not likely to be used by the consumer when
2 The current examining attorney was not the original examining
attorney in this case.
Ser. No. 75/917,312
3
calling for the services.” Brief at 5. “When the marks
are used to call for the services, the consumer could not
distinguish between the two sources because they sound
exactly the same.” Id. In addition, the examining
attorney submitted dictionary definitions of the words
“fresh,” “food,” and “fast” to conclude that the “terms
would be understood to describe fresh food provided quickly
or fast.” Brief at 7.
Applicant, on the other hand, submits that the
similarity in sound alone is not sufficient to find a
likelihood of confusion. Applicant, referring to
statements that the registrant made when registrant’s mark
was pending in the Office, argues that the “WRAPIDO portion
of the stylized WRAPIDO with design mark is weak.” Brief
at 8. Applicant also argues that the design is the
dominant portion of the registered mark. Id. It maintains
that “applicant’s mark is a unitary mark that has no
dominant portion.” Brief at 5. Applicant submits that
“wrapido” is a descriptive term, while its term, “rapido,”
“indicates a name (e.g., a last name) of a fictitious
business owner. In another sense, Applicant’s mark
indicates a Spanish word for RAPID.” Brief at 4-5.
Applicant also argues that its mark contains a double
3 Registration No. 2,377,851, issued August 15, 2000.
Ser. No. 75/917,312
4
entendre, and, therefore, a disclaimer is not appropriate.
The double entendre is alleged to lie in the fact that the
“word FAST exploits and develops the word RAPIDO, the
Spanish word for RAPID.” Brief at 8; Reply Brief at 10.
Because we conclude that there would be a likelihood
of confusion if the marks WRAPIDO and design and RAPIDO’S
FRESH FOOD FAST were both used in connection with
restaurant services, we affirm the refusal to register the
mark under Section 2(d) of the Trademark Act. We also
affirm the examining attorney’s requirement for a
disclaimer of the phrase FRESH FOOD FAST.
Our primary reviewing court, the U.S. Court of Appeals
for the Federal Circuit, has set out the factors that may
be considered in determining whether there is a likelihood
of confusion. Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000), citing In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973). In considering the evidence of
record on these factors, we must keep in mind that “[t]he
fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
Ser. No. 75/917,312
5
The first factor in our analysis is the relatedness of
the services. Here, inasmuch as both applicant and
registrant would be providing restaurant services, the
services are identical. In re Dixie Restaurants, 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) (Applicant’s
restaurant services identified as “restaurant services
specializing in Southern-style cuisine” are legally
identical to registrant’s restaurant services identified as
“…restaurant services”).
Next, we turn to the similarity of the marks. “If the
services are identical, ‘the degree of similarity necessary
to support a conclusion of likely confusion declines.’”
Dixie Restaurants, 41 USPQ2d at 1534, quoting, Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992). There is no doubt
that there are differences between the cited mark and the
applied-for mark, but the question is whether the marks are
similar when viewed in their entireties. “[T]here is
nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of the mark, provided [that] the ultimate conclusion rests
on consideration of the marks in their entireties.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). “The focus must be on the ‘general
Ser. No. 75/917,312
6
recollection’ reasonably produced by appellant’s mark and a
comparison of appellee’s mark therewith.” Johann Maria
Farina Gegenuber Dem Julichs-Platz v. Chesebrough-Pond,
Inc., 470 F.2d 1385, 176 USPQ 199, 200 (CCPA 1972)
(citation omitted). We also understand that human memory
of trademarks is not necessarily perfect. See Clorox
Company v. State Chemical Mfg. Co., 197 USPQ 840, 844 (TTAB
1977) (“[T]aking into account, as we must, the fallibility
of the human memory over a period of time, we conclude that
applicant’s mark “FORMULA 999’ so resembles opposer’s mark
‘FORMULA 409’ as to be likely” to cause confusion).
Here, when we compare the marks, we find that their
similarities far outweigh their differences. First, there
is no serious dispute that only word in registrant’s mark
and the first word in applicant’s mark could be pronounced
almost identically. While applicant argues that RAPIDO’S
may be viewed as the possessive form of a name of a person,
it also admits that it is the Spanish word for “rapid” and,
indeed, it is very similar to the English word “rapid” with
simply the letter “O” added at the end. Both marks would,
therefore, likely be pronounced similarly and be understood
to have the same meanings of “rapid,” “quick,” or “fast.”
Applicant makes much of the fact that registrant’s
mark contains a design element. Applicant attaches the
Ser. No. 75/917,312
7
registrant’s (then applicant’s) response to the examining
attorney during the prosecution of the underlying
application in which registrant argues that:
By sharp contrast, the dominant portion of Applicant’s
[now registrant] mark is its design element, which
consists of, among other things, highly-stylized
lettering that forms “swirls” and a “swirl design.”
Nothing in the cited mark is remotely similar to
Applicant’s design. This word, however, may not be
considered to have greater weight where it is not
given greater weight in both Applicant’s and cited
applicant’s mark.
Response dated January 29, 2001, Ex. A, p. 4.
Registrant’s statement hardly indicates that the term
“wrapido” is not entitled to be accorded weight in
subsequent likelihood of confusion determinations. There
is no doubt that there is a significant design element in
the registered mark, but it is also clear that the word
“wrapido” cannot be ignored in considering the issue of the
likelihood of confusion. Indeed, in the same response,
registrant clearly denied the descriptiveness of the term.
“’WRAPIDO’ is a coined word that suggests both the nature
of the ‘wrap’-style sandwich and the speediness of the
restaurant services.” Id. at 1. It is interesting to note
that both applicant and registrant agree that the term
“wrapido” and “rapido” would have the same meaning,
“speed,” “rapid,” or “fast.”
Ser. No. 75/917,312
8
Another factor that undercuts applicant’s reliance on
the design in registrant’s mark to distinguish the marks is
the fact that applicant has presented its mark in a typed
drawing. “[T]he argument concerning a difference in type
style is not viable where one party asserts rights in no
particular display. By presenting its mark in a typed
drawing, a difference cannot legally be asserted by that
party. Tomy asserts rights in SQUIRT SQUAD regardless of
type styles, proportions, or other possible variations.
Thus, apart from the background design, the displays must
be considered the same.” Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 939 (Fed. Cir. 1983). Similarly, here,
apart from the background display and swirl, there is no
basis to distinguish the cited mark from applicant’s mark
based on the type style of registrant’s mark.
We also have considered the fact that applicant’s mark
contains the phrase “Fresh Food Fast.” While applicant has
not disclaimed the term, we do not conclude that this
informational phrase would avoid confusion when the terms
“Wrapido” and “Rapido” are used with identical services.
Descriptive or informational matter is often given less
weight when considering the issue of likelihood of
confusion. In this case, this is particularly true because
the additional wording, when applied to applicant’s
Ser. No. 75/917,312
9
identified carry-out restaurant services, would indicate
that the fresh food that would be available in the dine-in
restaurant would now be available as “fast” or “carry-out”
food. Thus, the additional phrase, rather than
distinguishing the marks, would reinforce the connection
between the marks. See In re McWilliams, 200 USPQ 47, 49
(TTAB 1978)(“While there may be a different connotation
between the terms ‘EDEN’ and ‘MT. EDEN’ insofar as the word
‘EDEN’ might be interpreted as referring to the Biblical
‘Garden of Eden,’ whereas ‘MT. EDEN’ would refer to a
particular mountain, we do not believe that such difference
in meaning between the respective terms would have any
significant bearing upon the minds of prospective
purchasers of wine insofar as the commercial impression
created by such terms are concerned”).
When we consider the marks in their entireties, we
conclude that WRAPIDO and design for restaurant services
and RAPIDO’S FRESH FOOD FAST for restaurant and carry-out
restaurant services are likely to cause confusion. Dixie
Restaurants, 41 USPQ2d at 1534 (THE DELTA CAFÉ and design
for restaurant services specializing in Southern-style
cuisine confusingly similar to DELTA for hotel, motel, and
restaurant services). See also Wella Corp. v. California
Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA
Ser. No. 75/917,312
10
1977)(CALIFORNIA CONCEPT and design held likely to be
confused with CONCEPT for hair care products).
One final point we will address on the likelihood of
confusion issue is applicant’s contention that the word
“wrapido” is descriptive of the goods.” Brief at 5. See
also Brief at 6 (“the word portion “WRAPIDO,” which is at
very best descriptive of the registered mark’s goods”).
The evidence of descriptiveness consists of a Cornell
University Internet story announcing that “Cornell students
win national food product competition for the third time.”
The story goes on to report that the “winning entry was a
cone-shaped, flour tortilla meal-wrapper called Wrapidos.”
The other Internet story is a recipe for “Peidmontese
‘Wrapido.’” This limited evidence falls far short of
establishing that the term is descriptive. It is not even
clear from the articles if the term “Wrapidos,” which is
capitalized and/or in quotes, is used as a descriptive
term. Even if it were used descriptively, this limited use
would not support a conclusion that the only word in the
cited registered trademark is descriptive.
Regarding the examining attorney’s requirement to
disclaim the phrase “Fresh Food Fast,” we agree that it is
merely descriptive and that a disclaimer of the term is
appropriate.
Ser. No. 75/917,312
11
A term is merely descriptive if it immediately conveys
knowledge of the ingredients, qualities, or characteristics
of the goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1010 (Fed. Cir. 1987); In re Quik-Print Copy Shops, Inc.,
616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980). A term is
descriptive if it describes one of the qualities or
properties of the goods. Gyulay, 3 USPQ2d at 1010. While
applicant argues that the phrase “fresh food fast” suggests
its services and that it “requires imagination, thought or
perception to reach a conclusion as to the nature of the
services” (Brief at 8; Reply Brief at 10), we are at a loss
to understand in what way it does not describe the services
set forth in the application. Applicant does not argue
that it does not intend to serve “fresh food” nor does
applicant argue that it will not attempt to serve the this
“fresh food” fast. The examining attorney has included
dictionary definitions of “fresh” as “recently made,
produced, or harvested; not stale or spoiled: fresh
bread;” of “food” as “nourishment taken in solid form:
food and drink;” and “fast” as “acting, moving, or capable
of acting or moving quickly” and “accomplished in
relatively little time.” See Office Action dated April 12,
2001, attachments. The phrase “fresh food fast” would
Ser. No. 75/917,312
12
immediately tell potential customers that the applicant’s
fresh food is prepared quickly.
Applicant does argue that there is a double entendre
in the mark that saves the mark from being merely
descriptive because the mark is unitary and that no
disclaimer is necessary.
A unitary mark has certain observable characteristics.
Specifically, its elements are inseparable. In a
unitary mark, these observable characteristics must
combine to show that the mark has a distinct meaning
of its own independent of the meaning of its
constituent parts.
Dena Corp. v. Belvedere International, Inc., 950 F.2d 1555,
21 USPQ2d 1047, 1052 (Fed. Cir. 1991). Here, the phrase
“fresh food fast” has no distinct meaning independent of
its constituent parts. The fact that “rapido” and “fast”
can have similar meanings does not create any significant
double entendre that overcomes the descriptiveness of the
phrase. Unlike the term “light” in the mark LIGHT N’
LIVELY, “fresh food fast” is not lost in the mark RAPIDO’S
FRESH FOOD FAST.
The mark "LIGHT N' LIVELY" as a whole has a suggestive
significance which is distinctly different from the
merely descriptive significance of the term "LIGHT"
per se. That is, the merely descriptive significance
of the term "LIGHT" is lost in the mark as a whole.
Moreover, the expression as a whole has an
alliterative lilting cadence which encourages persons
encountering it to perceive it as a whole. For these
reasons, we believe that purchasers will not go
through the mental process of breaking the mark "LIGHT
Ser. No. 75/917,312
13
N' LIVELY" into its component elements but will rather
regard it as a unitary mark.
In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983).
Instead, applicant’s term provides information about
the restaurant services without creating a unitary mark.
In re Volvo Cars of North America Inc., 46 USPQ2d 1455,
1460 (TTAB 1998) (“We hasten to add that to the extent that
applicant's designation DRIVE SAFELY engenders some minor
double entendre, this should not result in registration
inasmuch as the primary significance of the phrase remains
that of a commonplace safety admonition”). Therefore, the
requirement for a disclaimer is appropriate.
Decision: The refusal to register the mark under
Section 2(d) is affirmed. The requirement for a disclaimer
of the phrase “fresh food fast” is also affirmed.