Pssghetti’s, Inc.v.Howard Finkelstein

Trademark Trial and Appeal Board

Dec 21, 2011

No. 91187699 (T.T.A.B. Dec. 21, 2011)

Mailed: December 21, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Pssghetti’s, Inc.

v.

Howard Finkelstein
_____

Opposition No. 91187699
_____

Frank R. Jakes of Johnson Pope Bokor Ruppel & Burns LLP for
Pssghetti’s, Inc.

Howard Finkelstein, Esq., appearing pro se.
______

Before Rogers, Chief Administrative Trademark Judge,
Bergsman and Wellington, Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Howard D. Finkelstein, applicant, seeks to register the
mark PIZGHETTI for:
Apparel, namely, jeans, sweaters, sweatshirts,
sweatpants, hooded sweatshirts, shorts, jackets, coats,
leggings, tights, thermal long sleeves being clothing
in the nature of arm warmers, thermal leggings, thermal
one piece garments for infants and toddlers, infant and
toddler one piece clothing, tank tops, dresses, short
sleeve t-shirts, long sleeve t-shirts, skirts, blouses,
jumpers, gloves, mittens, hats, baby socks, baby
booties, bathing suits, bloomers, flip flops,
headbands, blazers, tutus, and bibs not made of paper

in International Class 25; and

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91187699
2
“combination of pizza and pasta” in International Class 30.1
Pssghetti’s, Inc. has opposed registration of the
applicant’s mark on the ground of priority of use and
likelihood of confusion.2 Opposer alleges ownership of (and
attached copies of) two registrations for the following
marks: PSSGHETTI’S (in typed form),3 and

.4
Both registrations are for “restaurant services.” Opposer
alleges that applicant’s proposed mark is “confusingly
similar” to opposer’s marks and that the “proposed goods [of
applicant] are virtually identical to the goods and services
provided in connection with opposer’s mark, and such goods
are offered and are promoted through the same channels of
trade to, and used by, the same class of purchaser.”
Opposer concludes its allegations with the assertion that

1 Application Serial No. 77166471, filed on April 26, 2007, is
based on an allegation of a bona fide intent to use the mark in
commerce.
2 Opposer alleged false suggestion of a connection, under Section
2(a); however, this claim was not pursued at trial or argued in
the parties’ trial briefs. Accordingly, the false suggestion of
a connection claim is dismissed. Cf. Trademark Rule 2.106(c).
3 Registration 3009210 issue on October 25, 2005.
4 Registration No. 3287849 issued on September 4, 2007. The mark
is described in the application as “a design with a guy with a
Opposition No. 91187699
3
“use of [applicant’s proposed mark] is likely to cause
confusion, mistake or deception in the minds of the public
…”
Applicant denied all of the material allegations in the
notice of opposition.
Opposer, in the notice of opposition, clearly relies on
its rights in its registered marks in connection with
restaurant services, but opposer also alludes to its use of
the marks on goods. Although opposer did not allege the
particular goods for which it has used its marks, the
parties have, by implied consent, tried and argued the
priority and likelihood of confusion ground so as to include
opposer’s use of its mark PSSGHETTI’S on several goods,
namely, t-shirts, caps, take-away and prepackaged food
products, and coffee. In particular, applicant has
stipulated to opposer’s use of its mark on the
aforementioned goods (see description of record below).
Accordingly, we deem the pleadings amended to conform to the
evidence pursuant to Fed. R. Civ. P. 15(b).
The Record
By operation of the rules, the record includes the
pleadings and the subject application file.

bib eating pasta with a fork and spoon on a checkered
background.”
Opposition No. 91187699
4
On June 30, 2010, the parties filed a stipulation
during opposer’s testimony period setting forth the
following facts:5
1. Opposer has used its PSSGHETTI’S mark on restaurant
services since at least May 2005 and has continually
used the mark on restaurant services thereafter.

2. Opposer has used its PSSGHETTI’S mark on adult and
children’s t-shirts which have been sold on a regular
basis since at least 2005.

3. Opposer has used its PSSGHETTI’S mark on take-away
food products that have been sold by opposer
continuously since at least 2005.

4. Opposer has used its PSSGHETTI’S mark on
prepackaged coffee which has been sold continuously
since at least 2005.

5. Opposer has used its PSSGHETTI’S mark on
prepackaged food products that have been sold
continuously since at least 2008.

6. Opposer has used its PSSGHETTI’S mark on black
embroidered caps that have been sold continuously since
at least 2005.

Because opposer submitted copies of its pleaded
registrations with its notice of opposition, they are
considered of record. Trademark Rule 2.122. Opposer was
also the only party to take testimony and introduce
evidence. Specifically, opposer filed the testimony
deposition, with exhibits, of Ms. Melanie Steen, a product
brand analyst, and former senior graphic designer of Able

5 In the stipulation, there are only references to opposer’s
PSSGHETTI’S mark (in typed form), without any mention of the
opposer’s registered stylized mark with the design element. We
therefore construe the stipulation as pertaining solely to the
typed mark.
Opposition No. 91187699
5
Body Labor who performed work for opposer. Opposer also
submitted copies of third party registrations under a notice
of reliance.
Standing

Because opposer has properly made of record its pleaded
registrations, it has established its standing to bring this
opposition. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
Priority
Opposer’s proof of ownership of its pleaded
registrations removes priority as an issue with respect to
the restaurant services covered by the registration, vis-à-
vis the goods identified in the opposed application. King
Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108 (CCPA 1974).
With respect to priority and opposer’s rights in its
PSSGHETTI’S mark on goods, opposer must prove that it had a
proprietary interest in said mark prior to the filing date
of the application, i.e., the earliest date that applicant
can rely upon. Herbko International Inc. v. Kappa Books
Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002);
Otto Roth & Co., Inc. v. Universal Corp., 640 F.2d 1317, 209
Opposition No. 91187699
6
USPQ 40, 43 (CCPA 1981); Miller Brewing Co. v. Anheuser-
Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993).
The involved application was filed on April 26, 2007,
and applicant has stipulated that, prior to that date,
opposer used its PSSGHETTI’S mark on “t-shirts...take-away
food products... prepackaged coffee...[and] black
embroidered caps.” Stipulated Facts 1-4, 6. Accordingly,
the record establishes opposer’s priority between its
PSSGHETTI’S mark and applicant’s proposed mark, with respect
to said goods.6 In addition, the testimony of Ms. Steen and
accompanying exhibits comprising menus establish that
opposer was using its PSSGHETTI’S mark in connection with
restaurant and take-away food services featuring Italian
cuisine and, in particular pasta dishes, prior to
applicant’s filing date.
Likelihood of confusion
Our determination of likelihood of confusion under
Section 2(d) of the Lanham Act 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.

6 With respect to “prepackaged food products,” the stipulated
facts mention use in 2008, but not prior to applicant’s filing
date. Moreover, the testimony of Ms. Steen does not establish
use of opposer’s marks on the prepackaged food products by a
certain date. While she testified as to the preparation of
labels and has personal knowledge of her graphic design services,
she states that she was “not sure” if opposer “ever sold any
packaged food” (Steen 109:8-18) and, likewise, she was not sure
if the mark was used on pasta sauce (see Steen 108:16-109:6).

Opposition No. 91187699
7
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(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 Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
We first consider the similarity or dissimilarity of
the marks. We also focus this decision on opposer’s rights
in its typed mark, PSSGHETTI’S, vis-à-vis applicant’s mark
because it is this mark of opposer’s that we find bears the
closest resemblance to applicant’s mark and, further,
applicant has conceded opposer’s use of that mark with
respect to a variety of goods.
In our analysis of the parties’ marks, we must decide
whether they are similar in sound, appearance, meaning, and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). In his brief, applicant
concedes that his proposed mark PIZGHETTI and opposer’s
“PSSGHETTI’S mark are similar except for the fact
applicant’s mark uses the initial syllable ‘PIZ’ while
opposer[] uses ‘PSS’ and is in the possessive form.
Notwithstanding the slight differences between the form and
pronunciation of applicant’s and opposer’s marks, because
the involved marks are similar, this weighs in favor of the
Opposition No. 91187699
8
opposer.” Brief, pp. 4-5. Independent of applicant’s
concessions regarding the similarity of the parties’ marks
and weighing this factor in favor of opposer, we too find
the marks to be overall very similar in sound and
appearance. The marks also have the same suggestive meaning
and connotation; that is, the marks will be perceived by
consumers of the respective food goods and restaurant
services, as an abbreviated or childish pronunciation for
the term “spaghetti,” a type of pasta. Accordingly, we find
this factor strongly favors opposer and a finding of a
likelihood of confusion.
Applicant argues in his brief, under a subheading
referencing the sixth du Pont factor, that the term
“‘Pssghetti’ is commonly used and exists in a variety of
spelling formats in a variety of different geographic
locations, and across a variety of industries and product
lines.” Brief, p. 7 However, none of the evidence that
applicant references in support of this assertion is in the
record. Accordingly, we cannot conclude that either of the
parties’ marks is so commonly used on similar goods or in
connection with similar services such that consumers have
become conditioned so that otherwise minimal differences in
the marks play a more significant role for purposes of
distinguishing the marks. Without any evidence in this
regard, this factor is neutral.
Opposition No. 91187699
9
We next consider the du Pont factors regarding the
similarity or dissimilarity of the goods and services, trade
channels and classes of purchasers. In our evaluation of
these factors, we are bound by the goods and services
identified in the involved application and pleaded
registrations, as well as the previously mentioned goods on
which opposer has established, or applicant has conceded,
prior common law rights. As to the registrations and
application, in the absence of any restrictions or
limitations we must assume the identified goods and services
are sold or offered through all the normal and usual trade
channels for such goods and services to all the usual
purchasers of such goods and services. See Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); and Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1987).
With the aforementioned principles in mind, we address
the similarity of the parties’ goods and services by each
class of goods for which applicant seeks registration of his
mark.
Class 25
Opposer has established prior use of its mark on t-
shirts and embroidered caps which are technically identical
to certain goods identified in Class 25 of the application.
Opposition No. 91187699
10
Specifically, applicant has stipulated to opposer’s use of
its mark on t-shirts and this encompasses applicant’s long
and short-sleeve t-shirts; likewise, applicant’s identified
“hats” is broad enough to include opposer’s “black
embroidered caps.” Although Ms. Steen’s testimony
establishes that opposer’s clothing goods are sold in its
restaurants (or in conjunction with the promotion of its
restaurants), there is no restriction in applicant’s
identification of clothing goods and we must consider the
possibility that his clothing goods will be offered in any
channel of trade customary for such goods, including various
retail stores that sell clothing, via the internet or other
means for other than in-person purchasing, and even in a
restaurant or food store that would also sell applicant’s
pizza and pasta product. Because the various products and
services all would be marketed to general consumers, we find
that they all will be sold to the same classes of consumers.
That is, while the parties’ goods likely would not be found
in the same restaurant, we find that the same class of
consumers visiting opposer’s restaurants would be the same
class of consumers encountering the parties’ respective t-
shirts and hats in various outlets for such goods.
Class 30
We now address the degree of similarity between
opposer’s goods and services and applicant’s goods in Class
Opposition No. 91187699
11
30, i.e., “a combination of pizza and pasta.” First, we
address what the goods and services are that opposer uses it
PSSGHETTI’S mark on or in connection with. Of course,
opposer owns the registrations covering “restaurant
services.” Also, as previously noted, the parties have
stipulated that opposer has prior rights in its mark on “t-
shirts...take-away food products... prepackaged
coffee...[and] black embroidered caps.” Of these items,
“take-away food products” appears to be a broad enough
specification to encompass applicant’s “combination of pizza
and pasta.” However, the stipulated fact that opposer uses
its mark on “take-away food products” omits any further
information regarding the nature of the food products.
Based on the Steen deposition testimony and accompanying
exhibits, opposer offers a “take out” service in conjunction
with its restaurant services whereby customers can order
certain items on its “take out” menu and they are packaged
in a metal container with paper lid bearing the PSSGHETTI’S
mark. See Steen Exhibs. 26. Furthermore, opposer’s “take-
out” menu and regular menu (submitted as Steen Exh. 25)
demonstrate that its restaurant and take-out services
feature primarily Italian cuisine and, in particular,
different pasta dishes. However, we cannot conclude that
customers would view opposer’s take-out service as being
anything more than an extension of the restaurant service
Opposition No. 91187699
12
and the evidence does not establish that opposer sells the
type of food products that may be found in retail food
stores.
Ultimately, we find that opposer uses its PSSGHETTI’S
mark in connection with restaurant and carry-out services
featuring an Italian-cuisine menu specializing in dishes
that are very similar, if not identical, to applicant’s
goods. Thus, we consider whether opposer’s restaurant and
carry-out services are sufficiently related to applicant’s
“combination of pizza and pasta.”
The Board has addressed the question of relatedness of
restaurant services and food products on numerous occasions
and often notes in such cases that there is no per se rule
that confusion is likely simply because “similar or even
identical marks are used for food products and for
restaurant services.” Jacobs v. International Multifoods
Corporation, 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982).
The court in Jacobs held that “a party must show something
more” to establish that the respective restaurant services
and goods are related. Id.
Our case law has recognized that the “something more”
requirement of Jacobs is met in situations where the
specific food or beverage items of one entity are of the
type that is likely to be sold in the other's type of
restaurant. See In re Azteca Restaurant Enterprises Inc.,
Opposition No. 91187699
13
50 USPQ2d 1209, 1211 (TTAB 1999) (“The average consumer,
therefore, would be likely to view Mexican food items and
Mexican restaurant services as emanating from or sponsored
by the same source if such goods and services are sold under
the same or substantially similar marks”); In re Opus One
Inc., 60 USPQ2d 1812, 1815 (TTAB 2001) (“The fact that
applicant's restaurant serves the type of goods (indeed the
actual goods) identified in the cited registration is
certainly probative evidence which supports a finding under
the second du Pont factor that applicant's services and
[registrant's] goods are related”). See also In re Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1064 (Fed. Cir.
2003) (record did not demonstrate the relatedeness of
restaurant services in general and beer; however, court went
on to say that the outcome would have been different “if the
registrant's mark had been for a brewpub or for restaurant
services and beer. In that case, the goods and services
associated with the two marks would clearly be related.”)
The circumstances and facts of this case are very
similar to those in the In re Azteca Restaurant proceeding.
Likewise, we too find there is a sufficient relationship
between opposer’s restaurant services and applicant’s
“combination of pizza and pasta” food product such that when
a very similar mark is used on or in connection with the
goods and services, a likelihood of confusion exists.
Opposition No. 91187699
14
Specifically, although opposer’s registration for the mark
PSSGHETTI’S covers general “restaurant services,” the record
shows that its restaurant, as well as its take-out food
service, is focused primarily on Italian cuisine with a
special emphasis on pasta dishes.7 This is certainly
reinforced by opposer’s mark under which the services are
rendered, i.e., the mark is suggestive of spaghetti pasta.
This is sufficient for purposes of showing the requisite
“something more” and that there is a relationship between
opposer’s restaurant services and applicant’s “combination
of pizza and pasta” food product. A consumer familiar with
opposer’s pasta-oriented PSSGHETTI’S restaurant and take-out
food service is likely to believe that, upon encountering
applicant’s PIZGHETTI “combination of pizza and pasta,” that
these services and goods emanate from the same source.
As to the other du Pont factors argued by the parties,
the evidence is limited or non-existent and these factors
remain neutral in our analysis. We would be remiss,
however, if we did not address applicant’s argument in the

7 Opposer also submitted several third-party registrations
covering “restaurant services” and various food items to show
that it is not uncommon for restaurants to also sell food
products under the same mark. We accord little probative value
to this evidence because they do not specifically cover the same
or similar goods as applicant’s, i.e., pasta and/or pizza food
products. Thus, while they may show it is not uncommon for
restaurants to also sell various food products, they do not
specifically show that restaurants also sell the same or similar
goods as applicant’s particular food products. Thus, for sake of
showing “something more,” we do not find this evidence
convincing.
Opposition No. 91187699
15
“conclusion” of his brief where he asserts that there is no
likelihood of confusion because the parties operate on
different sides of the country, i.e., his trademark use
exists solely in California and the opposer only owns
restaurants in North Carolina and Florida. Such an argument
is unavailing inasmuch as applicant seeks a geographically
unrestricted registration for his mark and opposer owns
geographically unrestricted registrations. Giant Food, Inc.
v. Nation's 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.8 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

8 The possible exception, based on geographically remote use by
another of a similar mark but prior to the filing date of the
applications resulting in opposer’s registrations, involves a
question not now before us.
Opposition No. 91187699
16
7(b) include a presumption of use or the right to use the
registered marks throughout the United States”).
Based on the entire record, we conclude that there is a
likelihood of confusion between opposer’s PSSGHETTI’S mark
and applicant’s PIZGHETTI mark based on the goods being
identical, in part, with respect to Class 25 of the
application, and related with respect to opposer’s
restaurant services and applicant’s goods in Class 30. Our
conclusion rests principally on the parties’ marks being
very similar in appearance, sound, connotation and
commercial impression.
Decision: The opposition is sustained and registration
to applicant is refused.