Nice N Easy Grocery Shoppes, Inc.

Trademark Trial and Appeal Board

Mar 7, 2001

No. 75492944 (T.T.A.B. Mar. 7, 2001)

03/07/01
Paper No. 14
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nice N Easy Grocery Shoppes, Inc.
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Serial No. 75/492,944
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Laurence P. Trapani of Trapani & Molldrem for Nice N Easy
Grocery Shoppes, Inc.
Craig D. Taylor, Managing Attorney, Law Office 111.
_______
Before Cissel, Seeherman and Hanak, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On May 29, 1998, applicant filed the above-identified
application to register the mark “MAMA MIA’S CLASSIC PIZZA”
on the Principal Register for “restaurant services,” in
Class 42. The application was based on applicant’s claim
of use of the mark since February 9, 1998, and use of it in
interstate commerce since April 1, 1998.
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act on the ground that
applicant’s mark, when used in connection with restaurant
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/492,944
2
services, so resembles four registered trademarks that
confusion is likely. Each registration is owned by a
different entity. The four cited registered marks are
shown below.
for "restaurant services"1; "MAMA MIA," for "Italian
bread"2;
for "cheese, namely ricotta, mozzarella and grated Parmesan
1 Registration No. 1,321,346, issued on the Principal Register to
Mama Mia! Pasta, an Illinois corporation, on February 19, 1985.
Combined affidavit under Sections 8 and 15 of the Lanham Act
accepted and acknowledged.
2 Registration No. 1,376,575, issued on the Principal Register to
My Bread and Baking Co. on December 24, 1985. Combined affidavit
under Sections 8 and 15 of the Lanham Act accepted and
acknowledged.
Ser No. 75/492,944
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cheeses"3; and
for "pizza."4
In addition to the refusal to register under Section
2(d) of the Lanham Act, the Examining Attorney required a
disclaimer of the term "CLASSIC PIZZA” apart from the mark
as shown.
Responsive to the first Office Action, applicant
amended the recitation of services to state them as
“restaurant carry-out services” and proffered the requested
disclaimer. Applicant also argued that there is no
likelihood of confusion with any of the registered marks
cited as bars to registration under Section 2(d) of the
Act. Citing In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973), applicant argued that a key
factor in determining whether there is a likelihood of
confusion between marks is the number and nature of similar
3 Registration No. 1,393,405, issued on the Principal Register to
Eastern States Marketing Inc. on May 13, 1986. Combined affidavit
under Sections 8 and 15 of the Lanham Act accepted and
acknowledged.
4 Registration No. 1,625, 073, issued on the Principal Register
to Pasquale Food Company, Inc. on November 27, 1990. Affidavit
under Section 8 of the Lanham Act accepted.
Ser No. 75/492,944
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marks in use on similar goods, and that in the case at
hand, widespread use of “MAMA MIA” or its equivalent by
third-party food and restaurant businesses, combined with
differences between applicant’s mark and the cited
registered marks and the goods and services with which they
are used, combine to create situations wherein confusion is
not likely.
Submitted in support of applicant’s arguments was a
copy of a common law/business name search report. The
report lists over 300 company names, 220 of which contain
either “MAMA MIA” or “MAMMA MIA” for various restaurants,
grocers and other businesses providing food products. Also
submitted were the results of a search of a computerized
advertising directory database. That search revealed more
than 90 business names containing the wording “MAMA MIA,”
most of which were used in connection with restaurants,
pizza and pizzerias. Applicant pointed out that this
search showed that in the Chicago area, eight business
names incorporate “MAMA MIA,” only one of which appears to
belong to the owner of the cited registered mark “MAMA MIA!
PASTA” and design, (Registration No. 1,321,346).
Applicant contended that this evidence of widespread
third-party use of “MAMA MIA” by food-related businesses is
competent evidence to suggest that purchasers of these
Ser No. 75/492,944
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goods and services have been conditioned to look to the
other elements of such marks as a means of distinguishing
the source of the goods or services with which they are
used. Applicant cited In re Broadway Chicken Inc., 38
USPQ2d 1559 (TTAB 1996), wherein the refusal to register
“BROADWAY CHICKEN” based on two registrations, one for
“BROADWAY PIZZA” and the other for “BROADWAY BAR & PIZZA,”
was reversed by the Board in view of evidence of widespread
third-party use of the term “BROADWAY” in connection with
food establishments. Applicant argued that in the case at
hand, substantial third-party use of “MAMA MIA” in the food
field and differences between applicant’s mark and the
cited registered marks, as well as differences between the
goods and services with which these marks are used, mandate
a finding that confusion is not likely.
The Examining Attorney was not persuaded by
applicant’s arguments, and the refusal to register under
Section 2(d) of the Lanham Act was made final in the second
Office Action.
Applicant timely filed a Notice of Appeal and a
Request For Reconsideration, attached to which were copies
of the cited registrations. In them, “MAMA MIA” or its
equivalent is translated as “My Mother,” “My Momma,” “Dear
Me” or “My Goodness.” Applicant argued that these
Ser No. 75/492,944
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connotations are laudatory in nature, suggesting that the
goods are as good those which a mother would make, or are
so good that they warrant an exclamation. Applicant again
drew distinctions between its mark and each of the cited
registered marks, as well as distinctions between the goods
and services with which these marks are used.
The Board instituted the appeal, but suspended action
on it and remanded the application to the Examining
Attorney for consideration of the Request for
Reconsideration. He was not persuaded to withdraw the
refusal, so action on the appeal was resumed. Applicant
then submitted its brief on appeal, the Examining Attorney
submitted his appeal brief, and applicant filed a brief in
reply. Applicant did not request an oral hearing before
the Board.
Based on careful consideration of the record before us
in this appeal as well as the arguments of applicant and
the Examining Attorney, we reverse the refusals to
register. In view of the evidence of substantial use by
third parties of “MAMA MIA,” differences between
applicant’s mark and the cited registered marks and
distinctions among the goods and services which are
specified in the application and the registrations,
respectively, we find that confusion is not likely.
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The simple fact that all four of the cited registered
marks, each of which consists of or incorporates “MAMA MIA”
or its equivalent, have been registered to four different
entities is an indication that this term is weak in source-
identifying significance in the field of food products and
services. Just as distinctions between these four marks
and the goods or services with which they are used
permitted issuance of these registrations without running
afoul of Section 2(d) of the Act, similar distinctions
allow registration of applicant’s mark.
The mark in Registration No. 1,625,073, as noted
above, combines “Mama-Mia’s Kitchen” with an illustration
of a woman. The goods listed in the registration are
“pizza.” This mark, considered in its entirety, is
different in appearance, pronunciation and connotation from
the mark applicant seeks to register, “MAMA MIA’S CLASSIC
PIZZA.” The commercial impressions generated by these
marks are different. Given the weakness of “MAMA MIA” in
connection with food products and services that the record
establishes, the design components and the word “Kitchen”
in this registered mark distinguish it from applicant’s
mark, which has no design and incorporates the term
“CLASSIC PIZZA,” but not “Kitchen.”
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The mark in cited Registration No. 1,393,405 combines
“MAMA MIA” with a design showing a woman with a spoon in
her hand, feeding her child from a bowl, framed by a vine
or leaf design. The goods are listed in the registration
as ricotta, mozzarella and Parmesan cheeses. Again, in
view of the demonstrated weakness of the common element in
both applicant’s mark and this registered mark, “MAMA MIA,”
the differences in commercial impression between the marks
in their entireties and between the goods set forth in the
registration and the services identified in the application
are sufficient to make confusion unlikely.
“MAMA MIA” by itself is the mark in Registration No.
1,376,575, and the goods are identified therein as “Italian
bread.” In view of the above-referenced weakness of “MAMA
MIA” in connection with food and food services, the
combination of the differences in the marks and the
goods/services in the cited registration and applicant’s
application are sufficient to preclude confusion.
The mark in Registration No. 1,321,346 combines “Mama
Mia!” on one line, “Pasta” on the line below, and a
rectangular design featuring diagonal parallel lines within
a rectangular frame. The services are listed in the
registration as “restaurant services.” Although
applicant’s services, as identified in the amended
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application, are encompassed within the recitation of
services in this registration, this registered mark
presents “Mama Mia!” in the context of an exclamatory
expression, rather than in the possessive form, “MAMA
MIA’S” (MY MOTHER’S) in which it appears as part of
applicant’s mark. In view of the substantial third-party
use of “MAMA MIA,” the differences in the marks,
particularly in terms of connotation, are sufficient to
make confusion unlikely.
In summary, in view of the evidence of substantial
third-party use of names and marks in the food field
consisting of or incorporating “MAMA MIA,” the differences
between applicant’s mark and the registered marks and
differences in the goods and services set forth in the
application and the registrations lead us to the conclusion
that confusion is not likely.
Decision: The refusal to register under Section 2(d)
the Lanham Act is reversed.