M&T Foods Inc.

Trademark Trial and Appeal BoardMay 24, 2012

No. 85048891 (T.T.A.B. May. 24, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: May 24, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re M&T Foods Inc. ________ Serial No. 85048891 Filed on May 27, 2010 _______ Scott H. Kaliko of Kaliko & Associates, LLC for M&T Foods Inc. Lesley LaMothe, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop, Managing Attorney). _______ Before Grendel, Mermelstein, and Wolfson, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: M&T Foods Inc. (“applicant”) has filed an application for the mark TJ’S PIZZERIA CAFE (in standard characters) for “restaurant services for consumers of all ages” in International Class 43.1 1 Based on applicant’s assertion of a date of first use and first use in commerce of October 1, 1991. A disclaimer of “pizzeria cafe” has been entered. Serial No. 85048891 2 The examining attorney has refused registration of applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined that registration would lead to a likelihood of confusion in view of Reg. No. 3134332 for the mark TJ’S SUBS (in standard characters) for “restaurant and fast food services featuring sandwiches and subs” in International Class 43.2 We affirm. I. Applicable Law Our determination under Trademark Act § 2(d) is based on an analysis of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the 2 Registered August 22, 2006. A disclaimer to “subs” has been entered. A “name portrait consent” statement has been entered that the “name T.J. does not identify a living individual.” Serial No. 85048891 3 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); see also In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999). II. Discussion A. Similarity or Dissimilarity of the Marks in Their Entireties In a likelihood of confusion analysis, we compare the marks for similarities and dissimilarities in appearance, sound, connotation and commercial impression. Palm Bay, 73 USPQ2d at 1692. In comparing the marks, 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 terms of their overall commercial impression so that confusion as to the source of those goods or services offered under the respective marks is likely to result. Coach Services Inc. v. Triumph Learning LLC, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. L'Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Serial No. 85048891 4 While the pronunciation of the marks differs somewhat, in terms of appearance, connotation and overall commercial impression, applicant’s mark TJ’S PIZZERIA CAFE strongly resembles the cited mark TJ’S SUBS. In terms of appearance, both marks start with the initialism “TJ’S.” This term is considered the dominant portion of both marks. Although we must compare the marks in their entireties, one feature of a mark may be more significant than another and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) (“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 the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”). The initialism “TJ’S” forms the dominant portion of each mark because it is the first word in each mark and thus “most likely to be impressed upon the mind of a purchaser and remembered.” Presto Products Inc. v. Nice- Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). It is also considered the dominant portion of each mark because the other elements of the marks are either merely Serial No. 85048891 5 descriptive or generic for the involved services. The wording “pizzeria cafe” describes a small and informal establishment where pizzas are made or sold3 and the wording “subs” describes the type of food sold at the registrant’s establishment,4 and both terms have been disclaimed in their respective application and registration. Our principal reviewing court has observed “[t]hat 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 the mark.” See In re National Data Corp., 224 USPQ at 751. Applicant argues that the initials “TJ’S” are commonly used with respect to restaurant services, and therefore the term is weak. Applicant relies upon the existence of third-party registrations to show this alleged weakness, but the registrations have not been properly made of record and we may not consider them. To have made any third-party 3 The term “pizzeria” is defined at www.merriam-webster.com as “an establishment where pizzas are made or sold.” The term “cafe” is defined as “a usually small and informal establishment serving various refreshments (as coffee); broadly : restaurant.” The Board may take judicial notice of dictionary definitions, including definitions or entries from references that are the electronic equivalent of a print reference work. See University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 n.1 (TTAB 2009); see also TBMP § 1208.04 (3d ed. 2011). 4 The definition from www.dictionary.com of “subs,” submitted by the examining attorney with her Final Office action, includes “a submarine sandwich. See hero sandwich.” Serial No. 85048891 6 registration of record, applicant should have submitted, prior to appeal, either a copy of the paper USPTO record, or a copy taken from the electronic records of the Office. Trademark Rule 2.142(d). See TBMP § 1208.02 (3d ed. 2011) and authorities cited in that section. The examining attorney will not be deemed to have stipulated the registrations into the record as she advised the applicant that the listing is insufficient to make the registrations of record at a point when the applicant could have corrected the error, and maintained the objection in her brief.5 In terms of connotation and commercial impression, the marks are also similar. As noted above, a pizzeria cafe is an informal dining establishment where pizza is served. An establishment serving “subs” is likely to also be informal, as sandwiches are generally luncheon items eaten informally with the fingers (as is pizza). The possessive form as used in the initialism “TJ’S” suggests the name of the 5 In response to the first Office action, applicant had listed several purported third-party registrations, but failed to submit copies of them. In her final Office action, the examining attorney advised applicant that the registrations had not been properly submitted. Nonetheless — and notwithstanding that applicant subsequently requested reconsideration, again arguing that the cited registration is “extremely common and widely- used,” relying on the third-party registrations — applicant did not avail itself of the opportunity to attach copies of these registrations. Serial No. 85048891 7 proprietor. Thus, the overall commercial impression of the marks TJ’S PIZZERIA CAFE and TJ’S SUBS is similar. Accordingly, the first du Pont factor favors a finding of likelihood of confusion. B. Similarity of the Services Applicant intends to use its mark in association with “restaurant services for consumers of all ages.” The recitation of services in registration No. 3134332 is “restaurant and fast food services featuring sandwiches and subs.” Applicant’s argument in its December 16, 2010 response to the Office action that confusion is avoided because the cited registration is restricted to “sandwiches and subs” while applicant “focuses their attention primarily on pizza” fails for two reasons. First, it is well-settled that the question of likelihood of confusion must be determined based on an analysis of the services recited in applicant’s application vis-à-vis the services in the cited registration. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1987); and Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Thus, although applicant argues that it intends to use its Serial No. 85048891 8 mark primarily in connection with a pizza establishment, we must consider applicant’s services as they are recited in the application, which is not limited to pizza restaurants. Applicant’s restaurant services, as recited, encompass the registrant’s more limited services of a sandwich and sub restaurant, and we accordingly consider applicant’s services and those of the cited registration to overlap. Secondly, even were applicant’s services, as recited, restricted to “pizza,” the examining attorney has shown that it is common for restaurants that offer pizza to also sell subs. Consumers have come to recognize that these types of foods are often sold together. For example, the examining attorney provided copies of web pages from the following websites: 1. At www.jerrys usa.com/, Jerry’s Systems, Inc. advertises “Welcome to Jerry’s Subs & Pizza” and touts its restaurants as providing the “World’s Best Cheesesteaks / Famous Overstuffed Subs / Washington’s #1 Pizza.” 2. At http://southflorida.menupages.com, a listing for “Pasquales Pizza & Subs” as an Italian restaurant features “Pizza, Italian, Sandwiches, Wings.” 3. At www.ocean-city.com, a listing for “Caruso Pizza & Subs” bears the tag-line: “The Best Italian Cold Serial No. 85048891 9 Cut Sub, NY Style Pizza & Original-Style Philly Cheesesteak in Ocean City!” 4. At http://maps.google.com (search limited to Arlington, Virginia), there are listings for two restaurants serving pizza and subs: Amit Pizza & Subs and Chez Mo Pizza & Subs. 5. At www.marinospizzaandsubs.com, “Marino’s” advertises: “Welcome to Marino’s Pizza and Subs! … Our delicious food consists of high quality pizza, subs and pastas. Accordingly, based on the recitations in the cited registrations and the evidence of record suggesting that services provided by both registrant and applicant may emanate from a single source, we find that applicant’s services are closely related to the services recited in the cited registration. This du Pont factor favors a finding of likelihood of confusion. III. Conclusion We have carefully considered the entire record, including all arguments and the evidence submitted. We find that the marks are similar and the services are closely related. Use of applicant’s mark in association with “restaurant services for consumers of all ages” is Serial No. 85048891 10 likely to cause confusion with the mark in the cited registration. Decision: The refusal to register under Trademark Act § 2(d) is affirmed.