Deco Pizza Concepts, LLCv.Frandina Enterprise LLC

Trademark Trial and Appeal Board

Apr 13, 2020

91242714 (T.T.A.B. Apr. 13, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 13, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Deco Pizza Concepts, LLC
v.
Frandina Enterprise, LLC
________

Opposition No. 91242714
_______

Molly Buck Richard and David J. Diamond of Richard Law Group,
for Deco Pizza Concepts, LLC.

Fred Frandina (pro se) for Frandina Enterprise, LLC.

Before Zervas, Goodman and Johnson,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Frandina Enterprise, LLC (“Applicant”) is the owner of application Serial No.
87678617, filed on November 9, 2017, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), for the standard character mark DECO on the Principal Register
for “restaurant and café services” in International Class 43.
Opposition No. 91242714
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In its notice of opposition,1 Deco Pizza Concepts, LLC (“Opposer”) alleges priority
based on its, and its predecessor in interest’s, common law use of the marks DECO
and DECO PIZZERIA since August 2011 for restaurant services;2 and likelihood of
confusion between its marks and Applicant’s mark for restaurant services pursuant
to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
Applicant denied Opposer’s salient allegations in its answer to the notice of
opposition.3 Only Opposer filed a brief and evidence.
I. The Record
In addition to the pleadings and Applicants’ opposed application which is
automatically of record, see Trademark Rule 2.122(b), the evidence of record consists
of the Declaration of Jacob Valenzuela, majority member of Applicant and founder of
Applicant’s predecessor, and exhibits.4
II. Standing and Priority
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. To establish standing in an opposition proceeding, an opposer must show
“both a ‘real interest’ in the proceedings as well as a ‘reasonable basis’ for its belief of
damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d
1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports, Inc. v. Lacy, 102 USPQ2d
1036, 1041 (TTAB 2012)); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025

1 1 TTABVUE.
2 ¶ 3, 1 TTABVUE.
3 4 TTABVUE.
4 7 TTABVUE.
Opposition No. 91242714
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(Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185, 189 (CCPA 1982). The U.S. Court of Appeals for the Federal Circuit has
enunciated a liberal threshold for determining standing in Board proceedings.
Ritchie, 50 USPQ2d at 1030. To establish priority, an opposer must show proprietary
rights in a mark that produce a likelihood of confusion. Herbko Int’l, Inc. v. Kappa
Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002). See also, Otto
Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981).
These proprietary rights may arise from prior trademark use. Id.
To prevail on a claim of likelihood of confusion based on common law use of a
mark, an opposer must prove that it acquired rights to a mark prior to rights claimed
by an applicant. Trademark Act § 2(d). An applicant may rely on its constructive use
date, i.e., the filing date of its intent to use application. See Zirco Corp. v. Am. Tel.
and Tel. Co., 21 USPQ2d 1542, 1544 (TTAB 1991) (“[T]here can be no doubt but that
the right to rely upon the constructive use date comes into existence with the filing
of the intent-to-use application and that an intent-to-use applicant can rely upon this
date in an opposition brought by a third party asserting common law rights”).
Opposer must prove it used its mark prior to November 9, 2017, the filing date of
Applicant’s intent to use application, to establish its priority.
Turning to the evidence, Mr. Valenzuela states in his declaration that he opened
the first DECO PIZZERIA restaurant on April 1, 2011; that it has been in continuous
business since that date; that he formed Opposer on or about June 30, 2017; and that
he sold the DECO PIZZERIA restaurant, its menus, trademarks and goodwill to
Opposition No. 91242714
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Opposer effective September 30, 2017.5 As examples of use of the mark, Opposer
submitted:
● A “true and correct copy of [Mr. Valenzuela’s] first post
on ... Deco Pizzeria Facebook page dated March 11, 2011”:6

5 Valenzuela Decl. at ¶¶ 2-14, 7 TTABVUE 2-3.
6 Id. at ¶ 3, 7 TTABVUE 2, and Exh. A, 7 TTABVUE 5.
Opposition No. 91242714
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● A “true and correct copy of what the home page for [Mr.
Valenzuela’s] website for looked like on
November 3, 2017”:7

7 Id. at ¶ 9, 7 TTABVUE 3, and Exh. F, 7 TTABVUE 17.
Opposition No. 91242714
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Opposer also submitted a copy of the “Trademark Assignment” transferring the
marks DECO PIZZERIA and from Mr. Valenzuela to
Opposer along with the goodwill of the business.8
Opposer’s evidence demonstrates (i) that Opposer has a real interest in this
proceeding and, therefore, has standing;9 and (ii) that Opposer’s priority date is April
1, 2011, the date Mr. Valenzuela first used his mark in connection with restaurant
services. Opposer, as the assignee of Mr. Valenzuela, may rely on rights Mr.
Valenzuela had to the mark because it purchased the mark along with goodwill of the
business, and his restaurant, menus and recipes.10 Because Opposer’s priority date is
earlier than Applicant’s priority date, we find that Opposer has established priority
of use of the mark DECO PIZZERIA for restaurant services.11
III. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on

8 Id. at Exh. K, 7 TTABVUE 30.
9 In order for a plaintiff to prevail on a claim of likelihood of confusion based on its ownership
of common law rights in a mark, the mark must be distinctive, inherently or otherwise, and
plaintiff must show priority of use. See Otto Roth, 209 USPQ 43. We find Opposer’s mark is
distinctive for Opposer’s claimed services.
10 Exh. K to Valenzuela Decl., 7 TTABVUE 30.
11 Opposer pleaded use of its marks DECO and DECO PIZZERIA; its evidence is directed to
the mark DECO PIZZERIA. We therefore focus on the mark DECO PIZZERIA.
Opposition No. 91242714
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a likelihood of confusion. See In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973); see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In making
our determination, the Board has considered each DuPont factor for which there is
evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160,
1162-63 (Fed. Cir. 2019). In considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods [and
services] and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
a. The Services, Channel of Trade and Classes of Consumers
The services, are identical; Opposer has priority for restaurant services and
Applicant’s application lists restaurant services. Turning to the trade channels and
classes of consumers, absent express restrictions, the services described in the
application are presumed to travel in all channels of trade that would be normal
therefor, to all classes of prospective purchasers of such services. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming
Board finding that where the identification is unrestricted, “we must deem the goods
to travel in all appropriate trade channels to all potential purchasers of such goods
[or services]”); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Because
there are no restrictions in Applicant’s identification of services, we find that
Opposition No. 91242714
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Opposer’s and Applicant’s services travel in the same trade channels to the same
classes of purchasers, who are members of the general public.
b. The Similarity of the Marks
We now address the similarities of Opposer’s DECO PIZZERIA mark and
Applicant’s DECO mark, comparing them in their entireties for similarities in
appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Our analysis cannot be
predicated on dissection of Opposer’s mark. Stone Lion Capital Partners, L.P. v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Rather, we
consider the mark in its entirety. Id. See also Franklin Mint Corp. v. Master Mfg. Co.,
667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should
not be dissected and considered piecemeal; rather, it must be considered as a whole
in determining likelihood of confusion.”). Nonetheless, 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 a consideration of the
marks in their entireties. Stone Lion, 110 USPQ2d at 1161. For instance, “[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 Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant has simply eliminated the term PIZZERIA in Opposer’s two-word mark.
Likelihood of confusion is often found where the entirety of one mark is incorporated
within another. The Wella Corp. v. Calif. Concept Corp., 558 F.2d 1019, 194 USPQ
Opposition No. 91242714
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419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design for men’s cologne,
hair spray, conditioner and shampoo is likely to cause confusion with the mark
CONCEPT for cold permanent wave lotion and neutralizer); Coca-Cola Bottling Co.
v. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL
LANCER and soldier design for club soda, quinine water and ginger ale is likely to
cause confusion with BENGAL LANCER for gin); In re West Point-Pepperell, Inc., 468
F.2d 200, 175 USPQ 558 (CCPA 1972) (WEST POINT PEPPERELL and griffin design
for fabrics is likely to cause confusion with WEST POINT for woolen piece goods).
Additionally, PIZZERIA in Opposer’s mark is highly descriptive, if not generic, of
its restaurant services, identifying the nature of Opposer’s restaurants. It therefore
contributes little, if anything, to the mark’s function and significance as an indication
of source. For that reason, it is entitled to lesser weight in our comparison of Opposer’s
and Applicant’s marks. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,” is
the dominant portion of the mark THE DELTA CAFE). By contrast, the word DECO
appears on this record to be an arbitrary term as applied to restaurant services. It is
therefore the feature of the mark that purchasers are likely to perceive to be and
recollect as being the indication of the source of the services. For these reasons, we
find that DECO is the dominant feature of Opposer’s mark, and that it accordingly is
entitled to greater weight in our comparison of the marks under the DuPont factor
concerning the marks.
Opposition No. 91242714
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Comparing the marks in their entireties in terms of appearance, sound,
connotation and commercial impression, we find that Applicant’s mark is similar to
Opposer’s mark, and indeed identical to Opposer’s mark but for the absence of the
highly descriptive if not generic wording PIZZERIA. We find that the similarity of
the marks which results from the presence in both marks of the arbitrary word
DECO, as the dominant feature of Opposer’s mark and the whole of the Applicant’s
mark, outweighs the dissimilarities between the marks which result from the
presence in Opposer’s mark of the additional word PIZZERIA.
c. Conclusion
Because we have found the marks to be similar, and the services, trade channels
and classes of purchasers to be identical, we find that Applicant’s mark DECO for
restaurant services is likely to be confused with Opposer’s mark DECO PIZZERIA
also for restaurant services.
Decision: The opposition is sustained and registration to Applicant is refused.