Stonebridge Realty Advisors, Inc.

Trademark Trial and Appeal Board

Sep 29, 2010

No. 77194222 (T.T.A.B. Sep. 29, 2010)

Mailed: September 29, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Stonebridge Realty Advisors, Inc.
________

Serial Nos. 77194091, 77194216 and 771942221
_______

Christopher M. Parent of Brownstein Hyatt Farber Schreck,
LLP for Stonebridge Realty Advisors, Inc.

Nancy Clarke, Trademark Examining Attorney, Law Office 102
(Karen M. Strzyz, Managing Attorney).
_______

Before Quinn, Bucher and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Stonebridge Realty Advisors, Inc. (applicant) seeks
registration on the Principal Register of the marks PI

1 On April 7, 2010, the Board granted the examining attorney’s
motion to consolidate these proceedings inasmuch as they involve
common issues of law and fact. Citations to the briefs refer to
the briefs filed in application Serial No. 77194097, unless
otherwise noted; however, we have, of course, considered all
arguments and evidence filed in each case.

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial Nos. 77194091; 77194216 and 77194222
2
KITCHEN + BAR in standard characters,2 ,3 and 4 for
“restaurant and bar services” in International Class 43.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used on its identified services, so
resembles the registered mark (“PIZZERIA” disclaimed)
for “restaurant serving Italian food and pizza” in
International Class 43 owned by Pi-zerria, LLC5 and
(“PIZZERIA” disclaimed) for “restaurant services” in
International Class 43, owned by The Pie Pizzeria, Inc.,6 as
to be likely to cause confusion, mistake or deception.
Our determination of the issue of likelihood of
confusion is based on an analysis of 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

2 Application Serial No. 77194091, filed on May 31, 2007. In
response to a request from the examining attorney, applicant
disclaimed “KITCHEN + BAR.”

3 Application Serial No. 77194216, filed on May 31, 2007.

4 Application Serial No. 77194222, filed on May 31, 2007.

5 Registration No. 3164828, issued on October 1, 2006.

6 Registration No. 3476674, issued on July 29, 2008.
Serial Nos. 77194091; 77194216 and 77194222
3
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Applicant’s restaurant and bar services encompass the
Italian food and pizza restaurant services in Reg. No.
3164828 and the restaurant services in Reg. No. 3476674.
Further, because the application and cited registrations do
not contain limitations and the services are legally
identical, we must presume that they are offered in the
same channels of trade and are available to the same
classes of customers. See Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
and Octocom Systems Inc. v. Houston Computer Services Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987).
Applicant asserts that “it has raised the issue of the
dissimilarity of the services in its Office Action
Responses” and “the limited and specific services offered
by the owners of the cited registrations play a critical
role in” analyzing the commercial impressions of the marks.
Reply Br. p. 2. In the Office action responses applicant
Serial Nos. 77194091; 77194216 and 77194222
4
argued that any “likelihood of confusion is less in light
of the services with which the marks will be used.”
However, as noted above, we are constrained to make our
analysis based on the identifications in the applications
and registrations and we cannot limit that analysis by
applying any restrictions or limitations to those
identifications based on extrinsic evidence of actual use.
Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986).
We turn then to an analysis of the similarity or
dissimilarity of the marks when compared in their
entireties in terms of appearance, sound, connotation and
commercial impression. The test, under this du Pont
factor, 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 that confusion as to the
source of the services offered under the respective marks
is likely to result. The focus is on the recollection of
the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
The examining attorney argues that the dominant
portion of applicant’s marks and the marks in the cited
Serial Nos. 77194091; 77194216 and 77194222
5
registrations “is the word PI or its symbolic equivalent.”
She bases her conclusion on the descriptiveness of the
remaining literal elements in the marks (KITCHEN + BAR, THE
PIE PIZZERIA and PIZZERIA) which are all disclaimed and the
general proposition that the “word portion of a mark is
more likely to be impressed upon a purchasers’ memory and
to be used in calling for the goods and/or services.” Br.
p. 5. In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985) (“[t]hat a particular feature is
descriptive ... with respect to the involved goods ... is
one commonly accepted rationale for giving less weight to a
portion of a mark.”)
In traversing the refusal, applicant argues that (1)
the common element PI or π is weak in this field and (2) the
differences in the marks are sufficient to prevent likely
confusion, in particular, because its marks convey a very
different commercial impression from the marks in the cited
registrations. Applicant, in addition, notes the
“inconsistency of the USPTO’s position in this regard,
especially when considering that the Examining Attorney had
allowed [applicant’s] two applications for PI KITCHEN + BAR
with a design element to proceed to registration.” Br. pp.
3-4.
Serial Nos. 77194091; 77194216 and 77194222
6
In support of its position, applicant submitted the
following third-party registrations:7
Registration No. 3376116 for the mark
for “fresh pizza; pizza; pizzas”;

Registration No. 1003505 (renewed) for the mark
for “restaurant and fast-food carryout
services”;

Registration No. 1862125 (renewed) for the mark
for “restaurant services.”

The marks in these three third-party registrations are
joined by the marks in the cited registrations which brings
to five the total number of registrations owned by
different parties that include the word PI and/or the
symbol π in the relevant field.8 Third-party registrations

7 The abandoned application submitted by applicant is of no
probative value on this point. Action Temporary Services Inc. v.
Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir.
1989) (“[A] cancelled registration does not provide constructive
notice of anything”); Interpayment Services Ltd. v. Docters &
Thiede, 66 USPQ2d 1463, 1467 n.6 (TTAB 2003) (applications are
only probative to show that the application has been filed).
Applicant’s other evidence of third-party registrations for a
wide range of goods and services also is not supportive of its
argument. Third-party registrations featuring goods and/or
services dissimilar or unrelated to those in the application and
the cited registrations are of little probative value in
determining the weakness of a mark or portions of a mark in a
particular field.

8 With regard to the materials attached to the examining
attorney’s brief regarding the prosecution and cancellation
proceeding involving the two cited registrations, it is untimely
and not of the type for which the Board may take judicial notice.
Cf. Alpha Industries, Inc. v. Alpha Microsystems, 223 USPQ 96
Serial Nos. 77194091; 77194216 and 77194222
7
are useful in determining whether a particular element in a
mark is descriptive, suggestive, or so commonly used that
the public will look to other elements to distinguish the
source of the goods or services. AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268,
269-70 (CCPA 1973). While five third-party registrations
do not constitute a large amount, even without these
registrations there can be no dispute that the word “pie”
is descriptive of pizza or restaurants that serve pizza
pies. See The Free Dictionary (pizza pie – Italian open
pie made of thin bread dough spread with a spiced mixture
of e.g. tomato sauce and cheese), attached to Applicant’s
May 29, 2009 Response. The co-existence of the cited
registrations and the third-party registration No. 3376116
simply illustrates that even the symbol π is suggestive due
to the double entendre based on the phonetically equivalent
pronunciation to the descriptive word “pie” where the goods
or services feature pizza pies. Thus, the asserted common
element π is suggestive in the cited marks where the other
elements in the marks (pizza slice design, the words
pizzeria and pie) evoke the double entendre. Conversely,
as to the meaning or connotation of PI and π in applicant’s

(TTAB 1984) (Board will not take judicial notice of statements
made in third-party applications regarding use).
Serial Nos. 77194091; 77194216 and 77194222
8
marks, they do not evoke the double entendre present in the
cited marks due to the absence of such other elements.
While greater weight is often given to the word
element in a composite mark, because it is the word that
purchasers would use to refer to or request the goods or
service, “[t]here is no general rule as to whether letters
or designs will dominate in composite marks; nor is the
dominance of letters or design dispositive of the issue.”
Compare In re Appetito Provisions Co. Inc., 3 USPQ2d 1553,
1554 (TTAB 1987) with In re Electrolyte Laboratories Inc.,
929 F.2d 645, 647, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990).
The examining attorney argues that the π symbol dominates
over the remaining designs and descriptive wording in the
registrants’ marks. In this case, however, π is more akin
to a design itself or a letter mark rather than a word, and
it is not clear that the guidance from In re Appetito is
the most relevant. Thus, while the symbol may be prominent
in registrants’ marks, we do not find it so dominant that
it overrides differences between the cited marks and
applicant’s marks.
Clearly the letters PI in applicant’s marks in
Application Serial Nos. 77194091 and 77194216, are not
similar in appearance to the π symbols appearing in the
Serial Nos. 77194091; 77194216 and 77194222
9
registrants’ marks, and . Moreover, registrants’
marks contain completely different design elements and
wording. The bolding of the letters P and I in the word
PIZZERIA in Reg. No. 31648828 does not create a similar
appearance. Also, in Application Serial No. 77194091 the
addition of the wording KITCHEN + BAR presents a different
appearance and the plus sign heightens that difference. As
to meaning or connotation, to support the examining
attorney’s position, we must presume that consumers would
understand the letters PI in applicant’s marks to mean the
mathematical concept of π without any other cues present in
the marks and that the double entendre in registrants’
marks does not predominate over the original meaning of the
symbol π as a mathematical concept. In addition, to find
similarity in sound we must presume that the respective
constructions of the cited marks instruct consumers as to
the pronunciation of the symbol π (i.e., the bolding of PI
and the word PIE). To the extent that is the case, we can
consider them to have this similarity in sound. However,
as to the overall commercial impressions, they are
dissimilar given the suggestiveness of the asserted common
element in registrants’ marks and conversely the uniqueness
of it in applicant’s mark.
Serial Nos. 77194091; 77194216 and 77194222
10
Where “(1) the marks in their entireties convey
significantly different commercial impressions; or (2) the
matter common to the marks is not likely to be perceived by
purchasers as distinguishing source because it is merely
descriptive or diluted” then no likely confusion will be
found. Trademark Manual of Examining Procedure (TMEP)
1207.01(b)(iii) (6th ed. rev. 2nd 2010). Comparing the
marks in their entireties and taking into account the
suggestive meaning of the π symbol in the cited marks absent
from applicant’s marks, and the differences in appearance
and commercial impressions from applicant’s marks, we find
the cumulative differences in sound, appearance, meaning
and commercial impression outweigh the similarities. In
making this determination, we observe that, as pointed out
by applicant, the same examining attorney allowed
applicant’s co-pending applications Serial Nos. 77194195
and 77194203 “for PI KITCHEN + BAR with a design element”
to go forward. Br. pp. 3-4.
With regard to the mark, unlike applicant’s other
marks subject to these appeals, it is similar in appearance
to the cited marks in that it is the symbol π, albeit in
different stylization. This similarity is even stronger in
regard to the mark in Reg. No. 3476674 inasmuch as they are
Serial Nos. 77194091; 77194216 and 77194222
11
both presented against a circular background. Further, we
consider the element of sound to carry less weight in this
case, because these are design elements; however, to the
extent consumers would recognize the element in applicant’s
mark they would pronounce it in a similar manner to
registrants’ marks. The difference in connotation does not
contain the same hurdle here inasmuch as the mark presents
the symbol not the letters PI and as such also has a
similar commercial impression. Thus, as to the mark in
Application Serial No. 77194222 the similarities outweigh
the dissimilarities.
In view of the above, we hold that even though the
services are for our purposes identical, the differences in
the appearance, meanings and commercial impressions of the
marks in Application Nos. 77194091 and 77194216 are
sufficient to make confusion unlikely. The United States
Shoe Corp. v. Chapman, 229 USPQ 74 (TTAB 1985) (no likely
confusion between CALIFORNIA COBBLERS for footwear and
COBBLER’S OUTLET for shoes based on suggestiveness of
COBBLER and different commercial impressions from the
marks). Moreover, as to the marks in these applications,
we find that the dissimilarity of the marks is dispositive.
See Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330,
21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no
Serial Nos. 77194091; 77194216 and 77194222
12
reason why, in a particular case, a single duPont factor
may not be dispositive”).
With regard to Application No. 77194222, we hold that
confusion is likely as to both registrations. To the
extent there is any doubt in regard to this determination
we are bound to resolve that doubt in favor of the prior
registrants. Hewlett-Packard Co., 62 USPQ2d at 1003.
Decision: The refusals to register under Section
2(d) of the Trademark Act in Application Serial Nos.
77194091 and 77194216 are reversed.
The refusal to register under Section 2(d) of the
Trademark Act in Application Serial No. 77194222 is
affirmed.