Lombardo

Trademark Trial and Appeal Board

Jul 30, 1999

No. 74468937 (T.T.A.B. Jul. 30, 1999)

Paper No. 31
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 30, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Lombardo
________
Serial No. 74/468,937
_______
Elizabeth F. Janda of Brooks & Kushman P.C. for Frank J.
Lombardo.
Janice L. McMorrow, Trademark Examining Attorney, Law Office 104
(Sidney I. Moskowitz, Managing Attorney).
_______
Before Cissel, Quinn and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Frank J. Lombardo has filed an application to register
the mark "MR. PITA ROLLED SANDWICHES & SALADS" and design, which
is reproduced below,
as service mark for "restaurant services".1

1 Ser. No. 74/468,937, filed on December 13, 1993, which alleges dates
of first use of December 1, 1993. The words "PITA ROLLED SANDWICHES &
SALADS" are disclaimed and the mark includes "a stylized design of a
person comprising a rolled pita, lettuce and tomato."
Ser. No. 74/468,937
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to his services, so resembles the
mark "MR. PITA NO CHOLESTEROL! LOW IN CALORIES! NO OILS, FATS OR
SUGARS ADDED!" and design, as illustrated below,
for "pocket breads and bread chips,"2 as to be likely to cause
confusion, mistake or deception.3

2 Reg. No. 1,655,673, issued on September 3, 1991, which sets forth
dates of first use of October 9, 1989; combined affidavit §§8 and 15.
The words "PITA" and "NO CHOLESTEROL! LOW IN CALORIES! NO OILS, FATS
OR SUGARS ADDED!" are disclaimed.
3 Although registration was also finally refused in light of Reg. No.
1,628,518, issued on December 18, 1990, for the mark "MR. PITA" and
design, as illustrated below,
for "pocket breads and bread chips," such registration was
subsequently cancelled under Section 8 of the Trademark Act, 15 U.S.C.
§1058, and thus will not be given further consideration.
Ser. No. 74/468,937
3
Briefs have been filed, but an oral hearing was not
requested. We affirm the refusal to register.
Turning first to consideration of the respective goods
and services, it is plain that, as noted by applicant in his
brief, "the goods and services are different." However, as the
Examining Attorney properly observes, it is well settled that
goods and services need not be identical or even competitive in
nature in order to support a finding of likelihood of confusion.
Instead, it is sufficient that the goods and services are related
in some manner and/or that the circumstances surrounding their
marketing are such that they would be likely to be encountered by
the same persons in situations that would give rise, because of
the marks employed in connection therewith, to the mistaken
belief that they originate from or are in some way associated
with the same producer or provider. See, e.g., Monsanto Co. v.
Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978); and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978). Nevertheless, applicant is correct that there is no
per se rule that "confusion must be found to be likely wherever
food items and restaurant services are provided under marks
containing similar components" since, as pointed out in Jacobs v.
International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642
(CCPA 1982), "[t]o establish likelihood of confusion a party must
show something more than that similar or even identical marks are
used for food products and for restaurant services."
The Examining Attorney, in light thereof, supports her
contention that applicant’s restaurant services are closely
Ser. No. 74/468,937
4
related to registrant’s pocket breads and bread chips by relying
upon the fact that the record contains over a dozen use-based
third-party registrations for marks which, in each instance, are
registered for restaurant and/or carry-out services, on the one
hand, and bread and/or bread products, on the other. Although
such registrations are not evidence that the different marks
shown therein are in use or that the public is familiar with
them, they still have some probative value to the extent that
they serve to suggest that the services and goods listed therein
are of the kinds which may emanate from a single source. See,
e.g., In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993) and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 (TTAB 1988) at n. 6. Moreover, as the Examining Attorney
notes in her supplemental brief, "[i]t has often been held that
food products and [fast] food services are closely related."
See, e.g., Southern Enterprises, Inc., v. Burger King of Florida,
Inc., 419 F.2d 460, 164 USPQ 204, 205 (CCPA 1970); In re Mucky
Duck Mustard Co. Inc., supra at 1469-70; In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1556 (TTAB 1987); In re Best
Western Family Steak House, Inc., 222 USPQ 827, 829 (TTAB 1984);
Roush Bakery Products Co., Inc. v. Ridlen, 190 USPQ 445, 448
(TTAB 1976); In re Three Chefs Corporation, 175 USPQ 177, 178
(TTAB 1972); and Marriott Corporation v. Top Boy International,
Inc., 165 USPQ 642, 643 (TTAB 1970).
We concur with the Examining Attorney’s conclusion that
the respective services and goods are closely related. The use-
based third-party registrations plainly demonstrate the requisite
Ser. No. 74/468,937
5
"something more" in that they suggest that the services and goods
listed therein are of the kinds which may emanate from a single
source. Such registrations confirm that prepared or ready-to-eat
foods as breads, including pocket breads, are often items
featured in connection with the sandwiches or other entrées
served by restaurants and carry-outs. Pita bread or rolled
sandwiches, moreover, are not only increasingly popular items at
restaurants and carry-outs in general, but some fast-food
businesses, like applicant's restaurants, specialize in such
sandwiches.4 The average consumer, therefore, would view pocket
breads, such as pita breads, as emanating from or sponsored by
the same source as restaurant services which feature rolled or
pita sandwiches, if such goods and services were to be sold under
the same or substantially similar marks.
Turning, therefore, to consideration of the marks at
issue, applicant argues that, as shown by the numerous third-
party registrations and telephone directory excerpts which he has
made of record, marks containing the terms "MR." or "MISTER" have
been so commonly registered and/or used by others that "the
purchasing public is used to making distinctions between a
multitude of 'Mr.' and 'MISTER' marks." Applicant asserts, in

4 We judicially notice, in this regard, that Webster’s New World
College Dictionary (3d ed. 1997) at 1029 defines "pita" as meaning "a
round, hollow, relatively flat bread of the Middle East that can be
split into two layers or cut crosswise to form a pocket for a
filling[.] Also pita bread". It is settled that the Board may
properly take judicial notice of dictionary definitions. See, e.g.,
Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97
USPQ 330, 332 (CCPA 1953) and University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 74/468,937
6
view thereof, that registrant’s mark is weak and therefore "is
not entitled to broad protection."
The Examining Attorney, while admitting in her
supplemental brief that "the term MR./MISTER is a common
designation," contends therein that such fact does not mean that
marks incorporating the terms "MR." or "MISTER" are inherently
weak. To the contrary, the Examining Attorney insists that "the
addition of descriptive or generic matter to courtesy titles such
as MR./MISTER creates the very disparity in language that keeps
these marks strong." Furthermore, in her initial brief, the
Examining Attorney maintains that:
[T]he marks are not "MR." alone. They are
[basically] "MR. PITA." In calling for the
registrant’s goods [or the applicant’s
services], the public does not request just
any "MR." mark; they request the "MR. PITA"
mark. The term "PITA" aids the public to
distinguish this "MR." mark from other
unrelated "MR." marks. The dominant portion
of the mark is the term "MR. PITA," taken as
a whole. ....
We agree with the Examining Attorney that, when the
respective marks are considered in their entireties, the dominant
and most distinctive literal elements thereof are, in each case,
the words "MR. PITA". None of the third-party registrations
furnished by applicant is for a mark which includes such words,
nor do the telephone directory excerpts applicant submitted show
that anyone--other than apparently applicant--uses those words in
connection with restaurant services. Thus, even though there are
numerous marks which have been registered, as well as many trade
names which are in use, which feature the terms "MR." or "MISTER"
for a variety of goods and services, including food items and
Ser. No. 74/468,937
7
restaurants, on this record the term "MR. PITA" must be
considered, in the context of pocket breads and restaurants
offering rolled or pita sandwiches, as a relatively strong source
indicator for registrant’s goods and applicant’s services.
Applicant further argues, however, "[t]he obvious
differences in these design marks preclude a likelihood of
confusion" because his mark "consists of the words ’MR. PITA
ROLLED SANDWICHES & SALADS’ in addition to a distinctive logo
incorporating a stylized design of a person comprised of a rolled
flat bread with lettuce and tomato peeking out of the top." The
logo, applicant urges, "has a distinctive character face on a
vertical roll-like shape" and "is an additional distinctive
source indicator, as is evidenced by the fact that it is a
separately registered trademark of Applicant, U.S. Reg. No.
1,955,050".5 By contrast, applicant asserts that:
[Registrant’s mark] uses a design of a pocket
bread cut in half[,] with the open end filled
with the words "MR. PITA" and a wheat shaft,
as the horizontal body of a face-less figure
which wears a hat bearing the word
"INTERNATIONAL". This character has no face,
is wearing oversized sneakers and is holding
a sign stating "NO CHOLESTEROL! [LOW IN
CALORIES!] NO OILS, FATS OR SUGARS ADDED!"
.... [T]he words "MR. PITA" are in lower
case stylized lettering with the dot of the

5 Applicant’s claim of ownership thereof is belied, however, by the
statement made earlier in his brief that applicant "is the president
of Pita Franchise Corp., which owns U.S. Registration No. 1,955,050."
The Examining Attorney, while acknowledging in her supplemental brief
that the character mark which is the subject of such registration
"functions as a source indicator," notes that "the Office records at
this time indicate that Pita Franchise Corp., and not the applicant,
is the owner of this registration," which covers "restaurant
services". No explanation has been given, however, as to why such
registration was never cited as a possible bar to registration under
Section 2(d) of the statute. See TMEP §1201.07(b).
Ser. No. 74/468,937
8
"i" forming the period for "MR.".
Applicant’s character and mark as a whole is
totally different in its appearance,
presentation, and commercial impression.
While applicant is correct that differences are
apparent from a side-by-side comparison of the respective marks,6
it is nevertheless the case that, in articulating reasons for
reaching a conclusion on the issue of likelihood of confusion,
"there is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature of a
mark, provided [that] the ultimate conclusion rests on
consideration of the marks in their entireties." In re National
Data Corp., 753 F.3d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
For instance, "that a particular feature is descriptive or
generic with respect to the involved goods or services is one
commonly accepted rationale for giving less weight to a portion
of a mark ...." 224 USPQ at 751.
Here, in the case of registrant’s "MR. PITA" and design
mark, the descriptive words appearing on the sign held by an
anthropomorphic pita character are essentially informational and
devoid of trademark significance. Such words also appear in much
smaller size lettering than the more prominently displayed words

6 Such a comparison, of course, is not the proper test to be used in
determining the issue of likelihood of confusion since it is not the
ordinary way that consumers will be exposed to the marks. Rather, it
is the similarity of the general overall commercial impression
engendered by the marks which must determine, due to the fallibility
of memory and the consequent lack of perfect recall, whether confusion
as to source or sponsorship is likely. The proper emphasis is thus on
the recollection of the average purchaser, who normally retains a
general rather that a specific impression of trademarks or service
marks. See, e.g., In re United Service Distributors, Inc., 229 USPQ
237, 239 (TTAB 1986); and In re Solar Energy Corp., 217 USPQ 743, 745
(TTAB 1983).
Ser. No. 74/468,937
9
"MR. PITA". Likewise, applicant’s "MR. PITA" and design mark not
only contains an anthropomorphic pita character, but the words
"ROLLED SANDWICHES & SALADS" are merely descriptive, if not
generic, terms for the foods featured in applicant’s restaurants
and consequently are lacking in source indicating significance.
Moreover, such words are clearly subordinate elements inasmuch as
they appear in a much smaller and thinner style of lettering than
the more boldly displayed words "MR. PITA". We therefore agree
with the Examining Attorney that, when considered in their
entireties, it is the words "MR. PITA" which "are the dominant
and most significant features of the marks because consumers will
call for the goods or services in the marketplace by that
portion." See, e.g., In re Appetito Provisions Co., supra at
1554; and In re Drug Research Reports, Inc., 200 USPQ 554, 556
(TTAB 1978). The anthropomorphic pita characters, while visually
not identical, nevertheless are not sufficiently different in
their overall appearance, when allowance is made for the
fallibility of the average consumer’s memory, so as to
distinguish marks which are used in connection with products and
services that constitute or feature, respectively, pocket breads
and rolled sandwiches. As a whole, applicant’s "MR. PITA" mark,
including its pita character design, is substantially similar in
sound, appearance and meaning to registrant’s "MR. PITA" mark,
with its pita character design, and such marks project
essentially the same commercial impression.

Ser. No. 74/468,937
10
We accordingly conclude that customers, familiar with
registrant’s "MR. PITA NO CHOLESTEROL! LOW IN CALORIES! NO OILS,
FATS OR SUGARS ADDED!" and design mark for, inter alia, pocket
breads, would be likely to believe, upon encountering applicant’s
substantially similar "MR. PITA ROLLED SANDWICHES & SALADS" and
design mark for restaurant services, that such closely related
goods and services emanate from or are otherwise sponsored by or
affiliated with the same source. In particular, even to those
consumers who might notice the relatively minor differences in
the anthropomorphic pita characters in such marks, it would not
be unreasonable for them to assume, for example, that applicant
has expanded his operations to include sales of the pocket breads
used in the pita sandwiches offered by his restaurants.7
Decision: The refusal under Section 2(d) is affirmed.
R. F. Cissel

7 See, e.g., Southern Enterprises, Inc., v. Burger King of Florida,
Inc., supra [confusion is likely between mark "WHOPPABURGER" for
sandwiches and mark "HOME OF THE WHOPPER" for drive-in restaurant
services]; In re Mucky Duck Mustard Co. Inc., supra at 1469-70
[confusion is likely between mark "MUCKY DUCK" and duck design for
mustard and mark "THE MUCKY DUCK" and duck design for restaurant
services]; In re Appetito Provisions Co. Inc., supra at 1556
[confusion is likely between mark "APPETITO" and design for Italian
sausages and mark "A APPETITO’S INC." and sandwich design for
restaurant services]; In re Best Western Family Steak House, Inc.,
supra [confusion is likely between mark "BEEF MASTER" for frankfurters
and bologna and mark "BEEFMASTER" for restaurant services]; Roush
Bakery Products Co., Inc. v. Ridlen, supra [confusion is likely
between mark "HILLBILLY" for bread and "HILLBILLY RESTAURANT" for
restaurant services]; In re Three Chefs Corporation, supra [confusion
is likely between mark "WISHBONE" for frozen poultry and mark "IT’S
WISHBONE SWEET" for restaurant services]; and Marriott Corporation v.
Top Boy International, Inc., supra [confusion is likely between mark
"BIG BOY" for hamburger sandwiches and mark "TOP BOY" for drive-in
restaurant services].
Ser. No. 74/468,937
11
T. J. Quinn
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board