Pizzeria Uno Corporationv.Bruno’s Adore Pizza Holding Company, Inc.

Trademark Trial and Appeal Board

Aug 28, 2012

No. 91185497 (T.T.A.B. Aug. 28, 2012)

Mailed:
August 28, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Pizzeria Uno Corporation
v.
Bruno’s Adore Pizza Holding Company, Inc.

_____

Opposition No. 91185497
to application Serial No. 77111705
filed on February 20, 2007

_____

John L. Welch of Lando & Anastasi, LLP for Pizzeria Uno
Corporation.

James A. Masters of Nemeth, Feeney, Masters & Campiti, P.C.
for Bruno’s Adore Pizza Holding Company, Inc.

______

Before Holtzman, Zervas and Kuczma, Administrative Trademark
Judges.

Opinion by Kuczma, Administrative Trademark Judge:

On February 20, 2007, Bruno’s Adore Pizza Holding
Company, Inc. (“applicant”) filed a use-based application
for the mark “BRUNO’S PIZZA,” in standard character form,1

1 Application Serial No. 77111705, alleging 02/14/1975 as the
date of first use anywhere and in commerce. Applicant also
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91185497
2
for “restaurant services” in Class 43; the word “pizza”
subsequently being disclaimed.
Pizzeria Uno Corporation (“opposer”) filed a notice of
opposition against the registration of applicant’s mark on
the grounds of priority of use and likelihood of confusion
pursuant to § 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), alleging that applicant’s BRUNO’S PIZZA mark for
“restaurant services” is likely to cause confusion with
eleven of opposer’s previously used and registered marks.2
Applicant denied, or effectively denied, all salient
allegations in the notice of opposition.
Opposer has submitted a Notice of Reliance and a trial
brief. Applicant did not submit any evidence or testimony,
nor did it submit a trial brief.
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR §
2.122(b). Additionally, the record includes copies of the
electronic TARR reports for opposer’s eleven pleaded
registrations submitted via a Notice of Reliance showing
that opposer is the owner of the registrations and that the
registrations are valid and subsisting.

claims ownership of Registration No. 2663057 for the mark BRUNO’S
ARDORÉ PIZZA for restaurant services.
2 Opposer’s pleaded registrations are Registration Nos.:
1089458, 1329014, 1586246, 1613333, 1615917, 1757093, 1795389,
1814299, 1846019, 2179797, and 2561335.
Opposition No. 91185497
3
Opposer’s Standing and Priority
Opposer bears the burden of proving both standing to
oppose and at least one valid ground for refusal of
registration. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025 (Fed. Cir. 1999) and Sanyo Watch Co., Inc. v.
Sanyo Electric Co., Ltd., 691 F.2d 1019, 215 USPQ 833, 834
(Fed. Cir. 1982). Because opposer has properly made the
pleaded registrations of record, it has established standing
to oppose registration of applicant’s mark and its priority
is not an issue. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Likelihood of Confusion
In determining the likelihood of confusion, we must
analyze all of the probative facts in evidence that are
relevant to the factors set forth in In re E.I du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also, In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
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 Paper
Co. 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Our determination of likelihood of confusion in this
case is limited to the most relevant pleaded registration,
Opposition No. 91185497
4
Registration No. 1795389, for the mark shown below for
“restaurant services:”

Turning to the similarity of the parties’ services, the
“restaurant services” identified in opposer’s registration
are identical to the “restaurant services” in applicant’s
application.
Because the services are identical and are not
otherwise limited, we must presume that opposer’s and
applicant’s services will be rendered in the same channels
of trade and will be purchased by the same classes of
purchasers. See Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002);
Canadian Imperial Bank of Commerce, NA v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1816-17 (Fed. Cir. 1987).
With respect to the degree of care exercised by
consumers of the services, there are no restrictions on the
price ranges of applicant’s and opposer’s respective
restaurants so they presumably include inexpensive or
moderately-priced restaurant services where consumers would
Opposition No. 91185497
5
exercise no more than ordinary care in making purchasing
decisions. See In re Opus One Inc., 60 USPQ2d 1812, 1817
(TTAB 2001) and Jansen Enterprises Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007).
In view of the foregoing, the du Pont factors of the
similarity of the services, channels of trade, classes of
purchasers and degree of care, favor a finding of likelihood
of confusion.
We next turn to the similarity or dissimilarity of the
marks when compared in their entireties, in terms of
appearance, sound, meaning and commercial impression.
The mark shown in Registration No. 1795389 constitutes
the caricature of a smiling boy wearing an emblazoned cap
and shirt3 riding a skateboard. The boy and the skateboard
appear to be launched in the air such that the name “BRUNO”
is visible on the bottom of the skateboard. Based on the
placement of the name BRUNO on the bottom of the skateboard,
it appears BRUNO is the name of the skateboard rather than
the name of the boy.

3 The letters “UN” on a circle background are visible on the
front of the boy’s shirt. Opposer suggests that the shirt bears
“a portion of a logo that looks somewhat like the registered logo
of [Registration Nos. 1846019 and 2179797], but only the
letter[s] ‘UN’ can be recognized.” Opposer’s Brief at Final
Hearing p. 6. The indicia on the front of the boy’s cap is not
recognizable.
Opposition No. 91185497
6
We take judicial notice of the definition of “Bruno” as
“3. a male given name: from a Germanic word meaning ‘brown.’”4 To the
extent opposer’s mark contains the vocalizable name BRUNO,
applicant’s BRUNO’s PIZZA mark is similar in sound to
opposer’s mark. The descriptive word “pizza” in applicant’s
mark is given less weight in determining likelihood of
confusion. In re National Data Corporation, 224 USPQ 749,
752 (Fed. Cir. 1985).
Typically, words predominate over design elements in a
mark. However, given the proportional sizes and stylized
design features of opposer’s mark, the unnamed boy figure,
rather than the name BRUNO, is the dominant part of
opposer’s mark. Nevertheless, the term BRUNO is a
recognizable and articulable part of opposer’s mark and this
term is essentially identical to BRUNO’S, the dominant part
of applicant’s mark. See, e.g., Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002) (PACKARD TECHNOLOGIES and HEWLETT PACKARD
convey similar commercial impressions since PACKARD, the
dominant element of PACKARD TECHNOLOGIES, is identical to "a
prominent" portion of HEWLETT PACKARD); In re Riddle, 225
USPQ 630 (TTAB 1985) (RICHARD PETTY'S ACCU TUNE for

4 The Random House Dictionary of the English Language 2nd edition,
Unabridged (1987). The Board may take judicial notice of
dictionary definitions, Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91185497
7
automotive service centers confusingly similar to ACCUTUNE
for automotive testing equipment; rejecting applicant's
argument that because RICHARD PETTY dominates the mark, it
would be sufficient to avoid confusion.).
We make the determination of the similarity of the
marks with the understanding that where the services are
identical, “the degree of similarity [between the marks]
necessary to support a conclusion of likelihood of confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992), cert denied 506 U.S. 1034 (1992). The marks are
similar to the extent the name BRUNO’s, the dominant part of
applicant’s mark, and BRUNO, a visible and recognizable part
of opposer’s mark, are essentially identical. While there
are differences between the marks, when we consider that
these marks are used in connection with identical restaurant
services that may be inexpensive and purchased without great
care, and given the lack of evidence that BRUNO is weak or
anything other than a unique and distinctive term for such
services, we find that the marks are sufficiently similar
that confusion is likely to result. See SquirtCo v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983)
(any doubt about whether the marks create similar or
dissimilar commercial impressions "would, of course, have to
be resolved in favor of the prior user….").
Opposition No. 91185497
8
We have considered the third-party evidence submitted
by applicant during prosecution of its application and find
that it does not support a finding of likelihood of
confusion.5 The two third-party registrations for marks
containing the name BRUNO for restaurant services without
proof of their use in the marketplace are of little
probative value in proving likelihood of confusion.6 In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
Similarly, the instances of use of the name BRUNO’s in
connection with restaurant services provided by applicant in
the form of a handful of electronic yellow pages listings,
have little, if any, probative value as they are limited in
number and do not demonstrate that the public is aware of
the businesses or the number of their customers or extent of
their trading areas.7 See Anthony’s Pizza & Pasta
International Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d
1271, 1278 (TTAB 2009) aff’d 415 Fed.Appx. 222 (Fed. Cir.
2010).

5 Evidence submitted by applicant during prosecution of its
application is part of the record in this proceeding. See Cold
War Museum Inc. v. Cold War Air Museum Inc., 586 F.3d 1352, 92
USPQ2d 1626, 1628-29 (Fed. Cir. 2009).
6 See Exhibits A and F to 12/11/2007 Response to Office Action
filed in connection with application Serial No. 77111705.
Moreover, the TESS printout consisting of a partial list of
third-party registrations and applications in Exhibit A is
insufficient to make them of record and has extremely limited
probative value as we cannot determine whether the marks are for
services that are similar to restaurant services. In re Jump
Designs LLC, 80 USPQ2d 1370, 1372 (TTAB 2006).
7 See Exhibits B and C to 12/11/2007 Response to Office Action
filed in connection with application Serial No. 77111705.
Opposition No. 91185497
9
Because the evidence of record is limited to opposer’s
registrations and applicant’s application file, there is no
basis to consider the remaining du Pont factors.
Inasmuch as any doubts as to likelihood of confusion
must be resolved against applicant and in favor of
registrant, we sustain the opposition. See Hewlett-Packard
Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1003 (Fed. Cir. 2002).

Decision
The opposition is sustained.