Lightman Barnes, Inc.v.Gelato Mio, LLC

Trademark Trial and Appeal Board

Mar 17, 2009

No. 91177950 (T.T.A.B. Mar. 17, 2009)

Mailed: March 17, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Lightman Barnes, Inc.
v.
Gelato Mio, LLC
_____

Opposition No. 91177950
to application Serial No. 76626542
filed on December 30, 2004
_____

James L. Vana and Matthew D. Schneller of Perkins Coie LLP
for Lightman Barnes, Inc.

Michael A. Levy of Levy & Schneps, PC for Gelato Mia, LLC.
______

Before Taylor, Wellington and Ritchie, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Gelato Mio, LLC has filed an application to register on
the Principal Register the mark GELATO MIO!, in standard
characters, for “flavored gelato made according to an
Italian recipe” in International Class 30.1 Applicant
disclaimed the term “GELATO” and entered the following

1 Serial No. 76626542, filed on December 30, 2004 and claiming
July 13, 2004 as the date of first use anywhere and in commerce.

THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Opposition No. 91177950
2
translation statement into the application record: “The
English translation of the word MIO in the mark is “MY.”
Registration has been opposed by Lightman Barnes, Inc.
on the ground of likelihood of confusion with its previously
used mark MIO GELATO. Opposer specifically alleges that it
first used its MIO GELATO mark in connection with a variety
of services, including restaurant services featuring frozen
desserts such as gelato and sorbetto before both the filing
date and asserted first use date of applicant’s involved
mark; that applicant’s mark is highly similar in sound,
meaning and appearance to opposer’s mark; and that “in view
of the fact that the respective marks are highly similar and
given that Applicant’s goods are identical/or closely
related to Opposer’s services, Applicant’s mark is likely to
cause confusion, or to cause mistake, or to deceive.” (Not.
of opp. ¶ 14).
Applicant, in its answer, has denied the essential
allegations of the notice of opposition.2

2 Applicant, at paragraph 2 of its answer, particularly denies
that the description of goods in the application is “Flavored
gelato made according to an Italian recipe,” but admits that said
description appears on the TESS system of the United States
Patent and Trademark Office. Applicant states that the
identification should be “gelato, ice cream and ices.” We note,
however, that in response to the first office action, applicant,
via its former attorney, amended the identification of goods to
“Flavored gelato made according to an Italian recipe,” the
identification presently recited in TESS and set forth earlier in
this decision.

Opposition No. 91177950
3
PRELIMINARY MATTERS
Evidence
Before turning to the record and merits of this case,
we address a couple of preliminary matters. Both parties
submitted notices of reliance on materials that are not the
proper subject matter for a notice of reliance. Although
the parties did not file a motion or stipulation agreeing to
the introduction of such materials by way of a notice of
reliance, we note that neither party objected to the notices
of reliance and they have treated the materials submitted by
the notices of reliance as being of record. Under these
circumstances, we deem the parties to have stipulated to the
introduction of these materials through the notices of
reliance and accord them their appropriate probative value.3
Issues
In its notice of opposition, opposer alleges that it
first used its MIO GELATO mark in connection with a variety
of services, including restaurant services featuring frozen
desserts such as gelato and sorbetto. In the section of its
brief discussing the relatedness of the goods and services,
opposer alleges that “it offers both services and goods” and
that it “offers gelato products for sale to restaurants.
These gelato products are essentially identical to

3 We add that even if we had not considered these materials, the
decision would have been the same.

Opposition No. 91177950
4
applicant’s goods, ‘flavored gelato made according to an
Italian recipe’.” (Br. pp. 8 and 9). Applicant, in its
brief, appears to object to opposer’s claim of use of its
MIO GELATO mark on goods by its statement that
[i]n arguing a close relationship between goods
and services, Opposer ignores the fact that its
own registration application fails to seek
registration of its mark for the goods it now
argues should be covered. … Based on the record
there is just no showing of any overlap of
Applicant’s product and Opposer’s services that
could possibly be confusing.

We note first that opposer is asserting common law ownership
of its MIO GELATO mark and, accordingly, is not restricted
to the services recited in its apparent pending application
which is not before us in this proceeding. Nonetheless,
petitioner may not rely on an unpleaded claim. We therefore
must determine whether opposer’s attempt to argue prior use
of its asserted mark on gelato was tried by implied consent.
Implied consent to the trial of an unpleaded
claim can be found only where the nonoffereing
party (1) raised no objection to the
introduction of evidence on the issue, and (2)
was fairly apprised that the evidence was being
offered in support of the issue.

TBMP 507.03(b)(2nd ed. rev. 2004). See also Fed. R. Civ. P.
15(b). Because any evidence of record intended to show use
of the mark MIO GELATO in connection with gelato could also
support opposer’s claim of use of the mark in connection
with restaurant services featuring gelato, applicant was not
fairly apprised that opposer intended that evidence to
Opposition No. 91177950
5
support a separate claim of prior use on gelato. Moreover,
inasmuch as applicant objects to the additional claim, it
was not tried by implied consent. Long John Silver’s, Inc.
v. Lou Scharf Inc., 213 USPQ 263, 266 n.6 (TTAB 1982).
In view of the foregoing, opposer’s claim of prior use
of its mark on gelato will not be further considered in this
decision.4
THE RECORD
The record consists of the pleadings and the file of
application Serial No. 76626542. In addition, during its
testimony period opposer submitted:
a) Testimony deposition, with exhibits, of Robert
Lightman; and

b) Notice of reliance on:

i) Applicant’s responses to Opposer’s First
Request for Admissions to Applicant No. 5

ii) Applicant’s Responses to Opposer’s First Set of
Interrogatories, Nos. 6(c), 6(d), 7-12 and 16

iii) Applicant’s Responses to Opposer’s First
Request for Production, Bates No. 0000002,
0000003 and 0000007

iv) Copies of the electronic record of thirty (30)
federal registrations, each covering restaurant
services and ice cream or gelato

4 We add that even if we were to have considered that claim, the
evidence of record does not support such use, as there is no
direct testimony of opposer’s use of the MIO GELATO mark on
gelato, or any other evidence showing such use of the mark on the
goods, packaging for the goods or on displays associated with the
sale of the goods. While the mark is displayed on the menus and
menu board, it is not displayed in a manner that would be
considered a display associated with the sale of gelato.
Opposition No. 91177950
6
v) Copies of the electronic record of four (4)
federal registrations, each containing the term
MY plus a generic food or beverage item and
restaurant services

vi) Copies of seven articles taken from the
Portland Business Journal and the Portland
Tribune discussing opposer

Applicant, during its testimony period, made of record:5
a) 5 Notices of reliance (dated July 7, 2008 (3) and
July 9, 2008 (2)) on the following items which were
divided among all five notices:

i) Applicant’s responses to Opposer’s First
Request for Admissions

ii) Applicant’s Responses to Opposer’s First Set of
Interrogatories

iii) Applicant’s Responses to Opposer’s First
Request for Production

iv) Testimony deposition, with Exhibits 8, 9, 10,
11 and A-H, of Robert Lightman

v) Copies of the trademark applications for
involved application Serial No. 76626542 and
opposer’s application Serial No. 78958066 for
the mark MIO GELATO

FINDINGS OF FACT
Opposer
In July, 2003, opposer opened a restaurant/café in
Portland Oregon, called Mio Gelato. The restaurant features
gelato (which is defined as “an Italian ice cream or ice”6),

5 We observe that much of applicant’s evidence was already of
record in this proceeding, and its resubmission was unnecessary.

6 American Heritage Dictionary, 4th ed. (2006), available at
http://dictionary.reference.com/browse/gelato. Opposer requests,
and we take, judicial notice of this definition. See University
Opposition No. 91177950
7
as well as other foods and beverages, including coffees,
sandwiches, soups and pastries, for consumption on and off
premises. Opposer opened two other locations, in July and
October, 2005, and now operates three restaurants under the
Mio Gelato name and logo.7 Each of the three restaurants
has operated continuously under the MIO GELATO name and logo
since it opened until the present. Opposer manufactures its
gelato, which is sold at opposer’s restaurants and for off
premises consumption to opposer’s retail consumers in pint,
quart and gallon sizes. Opposer’s gelato is also sold
wholesale to restaurants and other businesses who sometimes
display opposer’s mark in connection with the sale of the
gelato. Opposer’s MIO GELATO mark appears on store signage,
on menu boards and on the menus but, as of the date of the
Lightman deposition, not on the gelato containers in which
the gelato is sold. Opposer primarily advertises locally in
general circulation newspapers and business and lifestyle
magazines, such as the Portland Monthly, Northwest Business
Journal and Willamette Week. Opposer’s business has
received third-party recognition in the form of articles,

of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

7 Opposer’s mark appears in the record as:

Opposition No. 91177950
8
and in those articles applicant’s business is referred to
solely as Mio Gelato.
Applicant
Applicant first used its mark in connection with the
offer, sale, advertisement and/or promotion of its gelato on
July 13, 2004. Applicant’s gelato is sold to supermarket
chains in several states, including Georgia, Connecticut,
Delaware, New Jersey, New York, North Carolina, Maryland,
Pennsylvania and the District of Columbia. Applicant sells
and distributes its gelato through a distributor of frozen
and other food products. Applicant promotes its gelato
through a distributor and also advertises via the internet.
DISCUSSION
Standing

An opposer must have “a ‘real interest’ in the outcome
of a proceeding in order to have standing.” Richie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.
1999). Herein, the evidence of record shows that opposer is
the source of restaurant services featuring gelato with
which it uses its MIO GELATO mark. We find this fact,
together with the fact that opposer’s likelihood of
confusion claim is not without merit, satisfies the
requirements for standing in this case. See Lipton
Industries v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185, 189 (CCPA 1982).
Opposition No. 91177950
9
Opposer, as plaintiff in this proceeding, has the
burden of proving, by a preponderance of the evidence, its
asserted grounds of priority and likelihood of confusion.
See Cerveceria Centroamericana, S.A. v. Cerveceria India,
Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989).
We first address the issue of priority of use.
Priority

To establish priority on a likelihood of confusion
claim brought under Trademark Act §2(d), a party must prove
that, vis-à-vis the other party, it owns "a mark or trade
name previously used in the United States ... and not
abandoned...." 15 U.S.C. § 1052(d). Priority is an issue
in this case because opposer does not own a subsisting
registration upon which it can rely under § 2(d). See King
Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Opposer asserts common law rights in the MIO GELATO
mark. In order for a plaintiff to prevail on a claim of
likelihood of confusion based on its ownership of common law
rights in a mark, the mark must be distinctive, inherently
or otherwise, and plaintiff must show priority of use. See
Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209
USPQ 40 (CCPA 1981). Applicant has not questioned the
distinctiveness of opposer’s asserted mark, nor does the
record reflect any other circumstances which would have put
Opposition No. 91177950
10
opposer on notice of this defense, and opposer has offered
its services under its MIO GELATO mark since July of 2003.
We therefore find that the mark is distinctive. See The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). See also Wetseal Inc. v. FD Management
Inc., 82 USPQ2d 1629 (TTAB 2007).
As regards priority, the record establishes that
opposer first used MIO GELATO as a trademark in connection
with its restaurant/café services featuring, inter alia,
gelato, sometime in July, 2003.8 Applicant has established
July 13, 2004 as the date of first use of its mark on or in
connection with gelato. This date is subsequent to
opposer’s established first use date and, thus, priority
rests with opposer.
Likelihood of Confusion

Our determination under Section 2(d) is based on an
analysis of all the facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard

8 Because no specific date was established, the date is construed
as July 31, 2003. See generally TMEP § 903.07.

Opposition No. 91177950
11
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997).
Goods and services/Trade channels/Conditions of sale
We first consider the goods and services. We begin our
analysis by noting that registrability of applicant’s mark
must be determined on the basis of the identification of
goods as set forth in the involved application and, because
opposer relies on common law rights acquired through use of
its mark, the services for which opposer has established
prior rights. Herein, the goods and services at issue are
applicant’s “flavored gelato made according to an Italian
recipe” vis-à-vis opposer’s restaurant services featuring
gelato, coffees, sandwiches, soups and pastries, for
consumption on and off premises.
Applicant seems to suggest that because there is no
“overlap” between its goods and opposer’s services,
confusion is not likely. As a general rule, however, the
goods or services need not be identical or even competitive
in order to support a finding of likelihood of confusion.
It is sufficient that the goods and/or services are related
in some manner or that some circumstances surrounding their
marketing are such that they would be likely to be seen by
the same persons under circumstances which would give rise,
because of the marks used therewith, to a mistaken belief
Opposition No. 91177950
12
that they originate from or are in some way associated with
the same producer or that there is an association between
the producers of each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and the cases
cited therein.
Nonetheless, as pointed out by applicant, there is no
per se rule that requires a determination of likelihood of
confusion when similar marks are used on restaurant services
and food items. See Jacobs International Multifoods Corp.,
668 USPQ 1234,1236, 212 USPQ2d 641, 642 (CCPA 1982)(“To
establish likelihood of confusion a party must show
something more than similar or even identical marks are used
for food products and for restaurant services.”); In re
Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir.
2003); and In re Opus One Inc., 60 USPQ2d 1812, 1813 (TTAB
2001). We therefore consider whether opposer’s evidence of
the relatedness of its restaurant services and applicant’s
gelato shows the requisite “something more.”
Opposer has made of record thirty (30) use-based third-
party registrations showing that a single entity has
registered its mark for both restaurant services and gelato
or ice cream. They include, for example, Registration No.
3410925 for frozen confections, sorbet, gelato, soy– and
yogurt-based gelato and café, restaurant and coffee house
services; Registration No. 33002233 for prepared foods for
Opposition No. 91177950
13
consumption on and off the premises, namely, pizza, panini,
and gelato and restaurant services and carry-out restaurant
services; Registration No. 3320678 for, inter alia, gelato
and restaurant services; Registration No. 3281848 for, inter
alia, gelato and restaurant services; Registration
No. 3197230 for, inter alia, gelato and restaurant services;
Registration No. 2961010 for, inter alia, gellato [sic] and
restaurants; and Registration No. 3048157 for, inter alia,
gelato and café, restaurant and coffee house services.
Although the registrations are not evidence that the marks
are in use or that consumers are familiar with them, third-
party registrations which individually cover a number of
different items and which are based on use in commerce serve
to suggest that the listed goods and/or services are of a
type which may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). In
addition, the record clearly shows that opposer’s restaurant
services feature gelato which, incidentally, is made on the
premises. In addition, although the exact percentage of
sales is confidential, gelato is opposer’s restaurants’
signature item.
We find this evidence demonstrates the “something more”
that is required to show that restaurant services and gelato
are related. Not only has opposer shown that such goods and
services may likely emanate from a single source, but it has
Opposition No. 91177950
14
shown that its restaurants feature the sale of gelato, the
goods identified in applicant’s application.
Applicant primarily relies on In re Coors Brewing Co.,
343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003), to support
its claim that the goods and services are not related and
that opposer has failed to show the requisite “something
more.” The facts of that case are distinguishable from the
facts herein. In that case, the Court reversed the Board’s
decision finding likelihood of confusion between BLUE MOON
with a naturalistic design of woods at night for beer, and
BLUE MOON with an art deco design and a moon with a cartoon
face for restaurant services. The Court found that while
the marks were generally similar because they both use the
words “BLUE MOON,” the full moon figures depicted therein
were quite different. The Court further found that the
number of brewpubs or microbreweries in the United States is
so small, compared to the number of restaurants, and that
the degree of overlap between the sources of restaurant
services and the sources of beer was de minimus. Because
most restaurants do not have the ability to brew beer, the
Court found that the Patent and Trademark Office had not
made the requisite showing of something more. The Court
stated, however, that “[t]his case would be different … if
the registrant’s mark had been for a brewpub or for
restaurant services and beer.” Coors Brewing, 68 USPQ2d at
Opposition No. 91177950
15
1064. In this instance, not only are the marks more similar
than those at issue in Coors Brewing, the only design
element is in opposer’s mark and it is evocative of both
opposer’s restaurants’ signature item and applicant’s goods.
More importantly, opposer’s restaurant services feature
gelato made on the premises of one its restaurants; this
featured item is identical to applicant’s identified goods.
We accordingly find applicant’s goods and opposer’s
services related.
Further, though applicant asserts that it sells its
goods through supermarkets, applicant’s identification of
goods contains no limitations or restrictions as to types of
purchasers or channels of trade. Thus, we must presume that
applicant sells its gelato in all channels of trade that
would be normal for such goods, including supermarkets and
other food stores. See In re Elbaum, 211 USPQ 639 (TTAB
1981). Although restaurant services would be offered
through other settings, the same classes of consumers, i.e.,
ordinary purchasers, will encounter applicant’s goods and
opposer’s restaurant services.
We also find applicant’s argument that its products
and opposer’s services are not sold in the same channels of
commerce because the respective businesses on are opposite
coasts unavailing, inasmuch as applicant’s application is
not geographically restricted. Giant Food, Inc. v. Nation’s
Opposition No. 91177950
16
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed.
Cir. 1983) (“Section 7(b) of the Trademark Act of 1946, 15
U.S.C. § 1057(b), creates a presumption that the registrant
has the exclusive right to use its mark throughout the
United States. Therefore, the geographical distance between
the present locations of the respective businesses of the
two parties has little relevance in this case”); Amcor, Inc.
v. Amcor Industries, Inc., 210 USPQ 70, 73 (TTAB 1981)
(“[T]he possible geographical separation between the
parties, although the evidence does show an overlap on
occasion, is of no significance in this proceeding because
applicant is seeking territorially unrestricted
registrations for its marks and, if granted, the
presumptions afforded the registrations under Section 7(b)
include a presumption of use or the right to use the
registered marks throughout the United States”).
With respect to the conditions under which the parties’
goods and services would be purchased, applicant argues
Opposer’s customers are restaurant visitors,
while Applicant’s sales are made to supermarket
shoppers. The difference is, of course, self-
evident. The type of buyer who purchases ice
cream in a supermarket and the impulse of that
buyer to make a purchase is wholly different
that the consumer who wishes to have a
restaurant experience.

(Br. p. 12). We find this argument unconvincing. First,
the restaurant services and the gelato are consumer goods
that, as noted above, will be offered to and purchased by
Opposition No. 91177950
17
the same classes of consumers, namely ordinary consumers who
will not have any particular knowledge about them. In
addition, our review of the menu from opposer’s restaurants
show that the menu items are inexpensive and are or could be
purchased on impulse, without a great deal or care or
sophistication.
The du Pont factors of relatedness of the goods and
services, classes of purchasers and conditions of sale thus
favor opposer.
The marks
We now consider the marks. In determining the
similarity or dissimilarity of the marks, we must consider
the marks in their entireties in terms of sound, appearance,
meaning and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). The test is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in their entireties that confusion as to the source
of the goods and services offered under the respective marks
is likely to result. The focus is on the recollection of
the average purchaser, who normally retains a general,
rather than a specific impression of trademarks. See Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Opposition No. 91177950
18
Applicant argues that the marks are distinctly
different. Applicant particularly argues that opposer’s
mark does not consist solely of the words “mio gelato” but
of the words “mio gelato caffe italiano” with an ice cream
cone design; that opposer’s mark appears in a distinctive
font; and essentially that the meanings of the marks differ
– opposer’s mark is Italian for “my ice cream” and
applicant’s mark is “simply two Italian words with an
exclamation point after them which, at best, can only be
interpreted as ‘ice cream my’ and [sic] ungrammatical
attempt at identifying an Italian style product.” (Br. pp.
9). Opposer, by comparison, argues that applicant’s mark,
GELATO MIO!, and its mark, MIO GELATO, contain identical
terms, share great similarity in appearance and sound, and
share identical meaning, with the sole differences between
them being the order of the terms “gelato” and “mio,” and
the exclamation point in applicant’s mark. Opposer
maintains that these differences are not significant enough
to eliminate the overwhelming similarity between the marks.
Opposer also states that its mark is often featured in
signage in a stylized fashion, featuring an ice cream cone
logo and the wording “caffe italiano,” but maintains that
these additional elements do little to change the overall
commercial impression of the marks.
Opposition No. 91177950
19
We begin our analysis of the similarity of the marks by
stating that we find the uses of opposer’s mark shown in the
record support opposer’s trademark rights in its MIO GELATO
mark and we compare that mark with applicant’s GELATO MIO!
mark. In so doing, we note that the marks contain the
identical words “GELATO” and “MIO,” albeit in reverse order.
This transposition does not serve to distinguish the two
marks in terms of appearance and sound, especially in view
of the descriptive nature of the word “gelato” in both
marks. Nor, contrary to applicant’s contention, does it
change the connotation of the two marks. In either order
the words convey the same meaning, “my ice cream.” The only
other difference is the presence of an exclamation point
used as punctuation in applicant’s mark; it has no
meaningful impact visually, aurally or as to commercial
impression. See In re Burlington Industries, Inc. 196 USPQ
718, 719, (TTAB 1977). We accordingly find opposer’s mark
substantially similar to applicant’s mark in appearance,
sound, connotation and commercial impression.
We alternatively find that the uses in the record
support opposer’s trademark rights in the MIO GELATO CAFFE
ITALIANO and ice cream cone design mark, and find it too is
substantially similar to applicant’s GELATO MIO! mark
Opposition No. 91177950
20
because it is dominated by the words MIO GELATO.9 First,
the words CAFFE ITALIANO clearly describe the type of
opposer’s restaurant/cafes and are not source signifying and
therefore not a dominant element. Second, the stylization
of the words in opposer’s mark is not a distinguishing
feature. This is so because applicant seeks registration of
its GELATO MIO mark in standard character format and,
accordingly, is not limited to the depiction thereof in any
special form. See Phillips Petroleum Co. v. C. J. Webb,
Inc. 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). As the
Phillips Petroleum case makes clear, when a word mark is
registered in typed (or standard character) format, the
Board must consider all reasonable modes of display that
could be represented, including the same stylized lettering
as that in which opposer’s mark appears. Last, the ice
cream cone design does not suffice to distinguish opposer’s
mark from applicant’s mark as it simply enhances the meaning
of the wording MIO GELATO. It is settled that with a
composite mark comprising a design and words, the word
portion of the mark is usually the one most likely to
indicate the origin of the goods to which it is affixed.
CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed.

9 We consider the issue of likelihood of confusion with
opposer’s MIO GELATO CAFFE ITALIANO and ice cream cone design
mark to have been tried by consent, Fed. R. Civ, P. 15(b)(2), and
we deem the pleadings amended accordingly.

Opposition No. 91177950
21
Cir. 1983); In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593
(TTAB 2001) [“words are normally accorded greater weight
because they would be used by purchasers to request the
goods”]; In re Nat’l Data Corp., 753 F.2d at 1056.
Quite simply, while differences admittedly exist
between the marks when viewed on the basis of a side-by side
comparison, for the reasons discussed above, we find that
they are substantially similar in sound, appearance,
connotation and convey the same overall commercial
impression. See Palm Bay Imports Inc. v. Veuve Clicuot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
Accordingly, the du Pont factor of similarity of the marks
favors opposer.
Absence of actual confusion
Lastly, applicant states that it “knows of no instances
of actual confusion between its products and Opposer’s
services; nor has Opposer demonstrated any instance of
confusion between the two.” (Br. p. 9). The absence of
evidence of actual confusion, however, does not weigh in
applicant’s favor. Indeed, applicant points out, and the
record confirms that the parties’ respective businesses are
on opposite coasts, i.e., opposer’s restaurants on the West
coast and applicant’s sales on the East coast. We are
therefore not persuaded that a meaningful opportunity for
actual confusion has ever existed. See Gillette Canada Inc.
Opposition No. 91177950
22
v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). Under the
circumstances, we consider this factor to be neutral. See
Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB
2005).10
CONCLUSION
We have considered all relevant evidence in this case
bearing on the du Pont factors and, for the reasons
discussed above, conclude that there is a likelihood of
confusion between opposer’s MIO GELATO and MIO GELATO CAFFE
ITALIANO and design marks and applicant’s MIO GELATO! mark.
We conclude so principally because the goods and services
are closely related and the opposer’s marks and applicant’s
mark are similar in appearance, sound, connotation and
overall commercial impression.11
Decision: The opposition is sustained and registration
to applicant is refused.

10 It is not inconsistent for the Board to read the involved
application in a way that presumes applicant’s goods to be
offered in the same area as opposer’s services, yet focus on the
areas of actual sales when assessing the probative weight to be
accorded to the absence of actual confusion. Such analysis is
required by applicable precedent.

11 To the extent that applicant argues that opposer does not use
the designation TM or SM in connection with its use of the MIO
GELATO and design mark for restaurant services, such argument is
irrelevant to opposer’s being accorded trademark rights in the
mark. Such rights accrue with use. To the extent that this
argument is intended as an assertion that opposer has not made
use of the mark on goods, it is likewise irrelevant as we have
not considered that claim.