Gennaro Auricchio S.p.A.v.Trademark Management Company

Trademark Trial and Appeal Board

Jan 22, 2008

No. 91161200 (T.T.A.B. Jan. 22, 2008)

Mailed:
January 22, 2010
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Gennaro Auricchio S.p.A.
v.
Trademark Management Company
________

Opposition No. 91161200
against Serial No. 78212909
_______

Marsha G. Ajhar of Hartman & Craven LLP for Gennaro Auricchio
S.p.A.

Timothy P. Fraelich of Jones Day for Trademark Management
Company.
_______

Before Bucher, Grendel and Zervas, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Trademark Management Company seeks registration on the
Principal Register of the mark CATELLI (in standard character
format) for “pasta sauces” in International Class 30.1
Registration has been opposed by Gennaro Auricchio S.p.A.
As its grounds for opposition, opposer asserts that

1 Application Serial No. 78212909 was filed on February 10, 2003
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91161200
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applicant’s mark when used in connection with its goods so
resembles opposer’s previously used and registered marks,
LOCATELLI (in standard character format), for “cheese,”2 and
the design mark shown below:

registered for “cheese” in International Class 29,3 as to be
likely to cause confusion, to cause mistake or to deceive
under Section 2(d) of the Lanham Act.
Applicant, in its answer, has denied the essential
allegations in the opposition.
The Record
In addition to the pleadings, the file of opposed
application Serial No. 78212909 is part of the record without

2 Registration No. 1092901 issued to The Nestle Company, Inc. on
June 6, 1978; assigned to Societe Des Products Nestle S.A. on
December 21, 1982; assigned to opposer, Gennaro Auricchio S.p.A. on
March 20, 1997; renewed.

3 Registration No. 3059989 issued to opposer, Gennaro Auricchio
S.p.A., on February 21, 2006. The underlying application was filed
on April 28, 2004, soon after Registration No. 2054657 (for the
identical design mark) was cancelled under Sec. 8 of the Act on
January 24, 2004.

Opposition No. 91161200
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any action by the parties. Trademark Rule 2.122(b), 37 C.F.R.
§ 2.122(b). Additionally, opposer introduced the following
evidence:
(i) opposer’s notice of reliance on (a) certified status
and title copies of the above identified registrations; (b)
certain of applicant’s responses to opposer’s interrogatories
and requests for admission, (c) portions of the discovery
deposition of Kristen Clark on July 28, 2005, Marketing
Director of The H.J. Heinz Company, applicant’s Fed. R. Civ.
P. 30(b)(6) witness, and (d) copies of third-party U.S.
trademark registrations showing registration of marks
registered in connection with food items including cheese and
pasta sauce; and,
(ii) the trial testimony of Mary Anna Rose Ajemian and
Philip Marfuggi, President and Vice-president / director of
sales and marketing, respectively, for The Ambriola Company,
Inc. (“Abriola”) -- the exclusive licensee and distributor of
opposer’s LOCATELLI cheese products in the United States, with
exhibits.
Applicant introduced into the record the following
evidence:
(i) applicant’s notice of reliance of April 8, 2008 on
(a) portions of the discovery deposition of Mary Anna Rose
Ajemian on January 12, 2007, opposer’s Fed. R. Civ. P.
Opposition No. 91161200
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30(b)(6) witness; (b) certain of opposer’s responses to
applicant’s interrogatories and requests for admission; and
(c) the entirety of Ms. Kristen Clark’s discovery deposition
of July 28, 2005, to which opposer did not object; and
(ii) the trial testimony of Christine Shea, earlier
associate director for the Classico pasta sauce business, and
more recently, Director of Global Health and Wellness for The
H.J. Heinz Company, taken on March 25, 2008.
The parties each filed a brief in the case.
Factual Findings
Trademark Management Company (“TMC”) is a holding company
for trademarks owned by the H.J. Heinz Company. Pursuant to
an asset purchase agreement of June 2001, BF Foods
International Corporation (“Borden Foods”) assigned its U.S.
rights in the CATELLI mark to TMC in July 2001.4

4 The Assignment documents referred to two then-pending
applications that the assignee inadvertently allowed to become
abandoned for failure to file Statements of Use:
(1) Application Serial No. 75381034
for “pasta; and tomato based sauces”
was filed by BFC Investments, L.P. /
Borden Foods Corp. on October 28,
1997, abandoned November 2001,
failure to file a Statement of Use.
(2) Application Serial No. 75381037
for “pasta; and tomato based sauces”
was filed by BFC Investments, L.P. /
Borden Foods Corp. on October 28,
1997, abandoned June 2002, failure
to file a Statement of Use.

Opposition No. 91161200
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H.J. Heinz Company of Canada owns the CATELLI mark in
Canada and markets CATELLI brand dry pasta and pasta sauces in
Canada. From its Canadian operations, CATELLI pasta is
exported to thirteen countries worldwide. Although the record
does not reflect that applicant has used the mark CATELLI in
connection with the sale of goods in commerce in the United
States, the product sold by Heinz Canada is produced in the
United States in a manufacturing plant in New Jersey, owned
and operated by H.J. Heinz Company, L.P., a trademark licensee
of applicant. The CATELLI labels are applied by Heinz L.P. at
the New Jersey manufacturing plant before the product is
shipped to Canada.
It was applicant’s intention first to introduce this as a
mainstream pasta sauce brand in the United States, positioned
to compete with popular mainstream brands like PREGO and
RAGU. In response to opposer’s interrogatories, applicant
indicated that it has a bona fide intention eventually to use
the CATELLI mark in the United States on pasta sauces, but
also on pesto, olive oil, bruschetta, frozen meals and
entrees.
At the time of the asset purchase and trademark
assignment, H.J. Heinz Company, TMC and other Heinz affiliates
also granted a license back to Borden Foods Canada Corporation
Opposition No. 91161200
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to use the CATELLI mark worldwide, including in the United
States.
As noted earlier, Societe Des Products Nestle S.A.
assigned the LOCATELLI and LOCATELLI (and design) United
States registrations, both for “cheese,” to opposer, Gennaro
Auricchio S.p.A., on March 20, 1997 (the “Main Agreement”).
Gennaro Auricchio S.p.A., a family-owned cheese producer is
the owner of the LOCATELLI brand sheep’s milk (or “pecorino”)
romano cheeses in Italy. Opposer claims to have used its
LOCATELLI mark in commerce in the United States (including
through its predecessors in interest) for more than a hundred
years (since 1904), and the LOCATELLI (and design) mark in
commerce in the U.S. since March 1984. According to a second
agreement of the same date, a “sole sale contract,” “Abriola”5
is the sole importer and exclusive manufacturer’s distributor
of opposer’s pecorino romano cheese products in the U.S.6 In
2007, Abriola imported and sold more than three million pounds
of LOCATELLI cheese in the United States.7 Within a third
agreement between Nestle and Auricchio entitled “Trademark

5 In its case-in-chief, opposer relies upon the testimony of two
principals of “Abriola.”

6 Trial testimony of Mary Anna Rose Ajemian, at 11 – 12, Exhibit
3.

7 Id. at 43.

Opposition No. 91161200
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License Agreement,” also executed on the same date, the
LOCATELLI and LOCATELLI (and design) marks are again
identified as the relevant trademarks. According to this
confidential document, opposer
agrees to use the Locatelli
trademarks only in connection
with pecorino cheese and only
in the United States. In
8
return, opposer granted to Nestle a license to use the
Locatelli Trademarks in the United States for cheese other
than pecorino cheese.9 Finally, the record reveals that Nestle
no longer maintains any rights in this mark.10
Standing and priority
As a preliminary matter, we find that opposer has
established its standing by alleging and submitting status and
title copies of its registrations. Because opposer has made
of record copies of its valid and subsisting registrations,

8 http://www.salamisbymail.com/zcstore/index.php?main_page=
product_info&products_id=8, Trial testimony of Christine Shea, at 67
- 69, Exhibit CC.

9 However, Nestle has evidently not used the LOCATELLI mark in
the United States on these other non-pecorino types of cheeses.
Opposer’s responses to applicant’s second set of interrogatories,
## 26 – 46.

10 Trial testimony of Mary Anna Rose Ajemian of January 12, 2007,
at 130-31, 142-43.

Opposition No. 91161200
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the issue of priority does not arise. See King Candy Company
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Moreover, applicant has not contested opposer’s
claim of priority.
Likelihood of Confusion
We turn then to the issue of likelihood of confusion.
Our determination of likelihood of confusion must be based
upon our analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the issue of
likelihood of confusion. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations are
the similarities between the marks and the relatedness of the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The salient question to be determined is not whether the
involved goods and/or services of the parties are likely to be
confused, but rather whether there is a likelihood that the
relevant purchasing public will be misled to believe that the
goods and/or services offered under the involved marks
originate from a common source. See J.C. Hall Company v.
Hallmark Cards, Incorporated, 340 F.2d 960, 144 USPQ 435 (CCPA
1965); and The State Historical Society of Wisconsin v.
Opposition No. 91161200
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Ringling Bros.-Barnum & Bailey Combined Shows, Inc., 190 USPQ
25 (TTAB 1976).
The Marks
Opposer’s mark that is the closest to applicant’s
applied-for mark is the word LOCATELLI in standard character
format. Applicant’s mark CATELLI also consists of a single
word.
There are readily-discernible differences in the
appearance of these two marks given opposer’s leading
syllable, “Lo-.” On the other hand, this difference in
appearance between applicant’s mark and opposer’s mark may
well not be recalled by purchasers seeing the marks at
separate times. Furthermore, as to applicant’s argument
regarding the appearance of applicant’s stylized mark as
actually used in Canada, the fact that applicant is applying
for its mark in standard character format in the involved
application means that any overall visual differences growing
out of this stylization are irrelevant.
As to sound, applicant has adopted the final three of the
four syllables in opposer’s marks, which begin with a soft
sounding “Lo-” while the balance is dominated by a hard
sounding “C,” as is applicant’s mark.
Opposition No. 91161200
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Opposer argues that despite the fact that both marks
would seem to be arbitrary terms as applied to these goods,
the prefix “Lo-” in the Italian language means “the,” such
that “Locatelli” could be seen as “The Catelli.” Furthermore,
opposer argues that both “Locatelli” and “Catelli” fit an
established branding “pattern” in the United States for
selecting “Italian-sounding” terms in the food sector for
goods often associated with Italian cuisine. In support of
this conclusion, opposer’s counsel simply points to well-known
brand names such as PREGO, CLASSICO, RONZONI, BARILLA, BERTOLLI
and SAN PELLEGRINO. Even without accepting opposer’s argument
that there is such a “pattern” at work in this field, we find
that the words LOCATELLI and CATELLI, to the extent they may
well be seen as Italian surnames, will leave prospective
consumers with similar connotations. In view of the
foregoing, we find that the parties’ marks will engender
similar commercial impressions. See Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); and In re Azteca Restaurant Enterprises Inc., 50
USPQ2d 1209 (TTAB 1999). While this factor is not clear-cut,
we do find the marks to be more similar than dissimilar, and
this du Pont factor is resolved in opposer’s favor.
Opposition No. 91161200
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The Goods
It is not necessary that the respective goods be
identical or even competitive in order to support a finding of
likelihood of confusion. Rather, it is sufficient that the
goods are related in some manner, or that the circumstances
surrounding their marketing are such, that they would be
likely to be encountered by the same persons in situations
that would give rise, because of the marks used thereon, to a
mistaken belief that they originate from or are in some way
associated with the same source or that there is an
association or connection between the sources of the
respective goods. See In re Martin's Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re
International Telephone & Telegraph Corp., 197 USPQ2d 910
(TTAB 1978).
Additionally, opposer has made of record the following
third-party registrations which show that the same mark has
been registered by a single entity for both cheese and pasta
sauce.
Opposition No. 91161200
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Reg. No. 1559979 issued on October
10, 1989; renewed.

Reg. No. 1838948 issued on June 7,
1994; renewed.
NATURAL GOODNESS FROM
CALIFORNIA
Reg. No. 1922244 issued on
September 26, 1995; renewed.
DELALLO Reg. No. 2071448 issued on June
17, 1997; renewed.
BELLETIERI’S Reg. No. 2328919 issued on March
14, 2000; Section 8 affidavit
(six-year) accepted and Section 15
affidavit acknowledged.
DE VECCIO Reg. No. 2507774 issued on
November 13, 2001; Section 8
affidavit (six-year) accepted and
Section 15 affidavit acknowledged.

Reg. No. 2604769 issued on August
6, 2002; Section 8 affidavit (six-
year) accepted and Section 15
affidavit acknowledged.
Opposition No. 91161200
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Reg. No. 2661501 issued on
December 17, 2002; Section 8
affidavit (six-year) accepted.
Reg. No. 2751749 issued on August
19, 2003; Section 8 affidavit
(six-year) accepted and Section 15
affidavit acknowledged.
CONAGRA FOODS Reg. No. 2889507 issued on
September 28, 2004.
Reg. No. 2926511 issued on
February 15, 2005.
AUTHENTIC ITALIAN COOKING
BEGINS WITH CENTO
Reg. No. 2937287 issued on April
5, 2005.
Reg. No. 2969737 issued on July
19, 2005.
WILD OATS Reg. No. 2990840 issued on
September 6, 2005.
RACCONTO Reg. No. 3017274 issued on
November 22, 2005.
ROSELI Reg. No. 3020308 issued on
Opposition No. 91161200
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November 29, 2005.
Reg. No. 3032241 issued on
December 20, 2005.
Reg. No. 3034607 issued on
December 27, 2005.
BELLINO Reg. No. 3210005 issued on
February 20, 2007.
TRUST YOUR FAMILY WITH OUR
FAMILY
Reg. No. 3210006 issued on
February 20, 2007.
CENTO Reg. No. 3210011 issued on
February 20, 2007.

Reg. No. 3212469 issued on
February 27, 2007.

Third-party registrations which individually cover a
number of different items and which are based on use in
commerce serve to suggest that the listed goods and/or
services are of a type which may emanate from a single source.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993).
Although applicant argues that opposer has introduced no
evidence that these trademarks were actually used by third
parties, opposer does point to a variety of third-party marks
used on Internet websites, including registered marks listed
above such as Cento, DeLallo, etc. These include sites that
Opposition No. 91161200
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offer both pasta sauces and sheep’s milk cheese as separate
items, and tomato-based pasta sauces whose ingredients include
such cheese:
11
Hence, we note that third parties are selling pasta
sauces explicitly touting pecorino romano cheese as an
ingredient. Similarly, several of the pasta sauces marketed

11 Trial testimony of Mary Anna Rose Ajemian of January 12, 2007,
Exhibits 9A, 9B, 9C and 10.

Opposition No. 91161200
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under the Classico® brand, a premium brand under the province
of Kristen Clark of The H.J. Heinz Company, contain as an
ingredient “imported pecorino romano cheese.”12
Nonetheless, applicant argues that in a pasta sauce
product sold at mainstream price points, this ingredient would
certainly not be an expensive type of cheese. It is in this
context that applicant argues that opposer’s LOCATELLI brand
pecorino romano cheese is a premium or even “super-premium”
product, allegedly selling for $24.99 per pound, with limited
availability in mainstream supermarkets across the United
States. Opposer, in response, alleges that it is a national
brand sold in all fifty states, that opposer’s LOCATELLI brand
is a well-known mark within the cheese delis of both
speciality shops and supermarkets, and is even available at
discount prices through club stores such as Costco.
Opposer has shown that cups of its hard, grated cheese
are often sold in supermarkets on stand-alone displays, or
“shippers,” placed in the produce section, in store aisles

12 Trial testimony of Mary Anna Rose Ajemian of January 12, 2007,
Exhibit 11.

Opposition No. 91161200
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with dry pasta and pasta sauces, and/or
in the deli area. According to the
testimony of Ms. Ajemian, LOCATELLI
brand pecorino romano cheese is a hardy
cheese that could be kept in the store
aisle in an air-conditioned supermarket

during the day if
refrigerated at night.13
Opposer has shown that
grated cheeses, including
its own, are sold in the
store aisle with pasta

sauces, and that sometimes pasta and
pasta sauces are cross-marketed close
to the deli section or specialty cheese
department in a supermarket.14

15
Nonetheless, applicant argues that we should focus on the
fact that pecorino cheese is generally refrigerated, and sold

13 Trial testimony of Mary Anna Rose Ajemian of January 12, 2007,
at 28 – 32, Exhibit 6, Bates No. GA00361.

14 Trial testimony of Philip Marfuggi of April 24, 2007, at 13 –
90, Exhibits 3 – 17.

15 http://www.ambriola.com/locatelliproducts.html submitted as
Exhibit 7, Trial testimony of Mary Anna Rose Ajemian of January 12,
2007.

Opposition No. 91161200
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from the deli, in specialty foods section at the perimeter of
grocery, in the cheese section of warehouse stores, and
furthermore that given the price points of opposer’s cheese, it
clearly falls into the premium or even “super premium” category
of food products.
However, in addition to the fact that opposer supports
retailers in placing grated LOCATELLI cheese on shippers in
grocery aisle right next to pasta and pasta sauces, a
determination of the issue of likelihood of confusion between
the applied-for and the registered marks must be made on the
basis of the goods as they are identified in the involved
application and registration. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000).
In such circumstances, if there are no limitations in the
identification, we must presume that the “registration
encompasses all goods of the nature and type described.” In
re Elbaum, 211 USPQ 639 (TTAB 1981).
In view of the foregoing, and based on the evidence of
record and identifications of goods, we find that the parties’
goods are related, and resolve this factor too in opposer’s
favor.
Opposition No. 91161200
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Trade Channels
Inasmuch as the identifications of goods in both the
registration and the application do not include any
limitations with respect to trade channels, we assume that
both parties’ goods move through the same trade channels,
namely all trade channels normal for food items, such as
delis, supermarkets and club stores. Elbaum, 211 USPQ at 640.
In response to opposer’s interrogatories, applicant indicated
that it planned to utilize retail trade channels including
retail grocery stores, convenience stores, drug stores, dollar
stores, club stores and super centers, commissary channels and
food service channels, but not gourmet or specialty food
stores. This provides a clear overlap in trade channels with
those opposer has been using. Thus, we resolve this factor in
opposer’s favor.
The conditions under which and buyers to whom sales are made
Applicant argues that opposer is selling “expensive
goods,” purchased by sophisticated purchasers after careful
consideration. However, the record shows LOCATELLI cheese
wrapped in small, seven-ounce, deli wedges, and sealed in
small cups of grated cheese stacked on grocery aisle
shippers. These are not expensive items, and will likely be
purchased casually, the same as would applicant’s mainstream
Opposition No. 91161200
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goods. In any case, as noted above, we must presume that the
registration encompasses all goods of the nature and type
described. Accordingly, apart from any extrinsic evidence of
“extra-premium” goods, registrant’s “cheese” must be
considered to include inexpensive goods purchased without much
care. Thus, we resolve this du Pont factor in opposer’s favor
as well.
Strength of Opposer’s Mark
Opposer has enjoyed many years of exclusive use of the
LOCATELLI mark in connection with cheese in the United States.
Opposer’s licensee, Abriola, imported and sold more than three
million pounds of LOCATELLI cheese in the United States during
2007. According to the testimony of opposer’s president,
“… currently [opposer is] the 800-pound gorilla … of the
cheese deli. No question.”16 In support of its prominent
position in the U.S. marketplace, opposer expended more than
$2 million in promotional costs in 2007.17 Given this long and
successful history of sales in the United States, we find that
this mark has achieved a notable degree of renown in the
field, and this factor weighs in opposer’s favor.

16 Trial testimony of Mary Anna Rose Ajemian of January 12, 2007,
at 44.

17 Id. at 46.
Opposition No. 91161200
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Limits on opposer’s U.S. rights
Opposer is the owner of two cited registrations listing
simply “cheese” in the identification of goods. The
assignment of these registrations conveyed to opposer all the
legal rights and presumptions accorded to Nestle, the
assignor, prior to the date of transfer. These include the
statutory presumptions of Section 7(b) of the Trademark Act,
including the presumption of an exclusive right to use the
mark in commerce in the United States on cheese. The fact
that on the same day, opposer licensed back to Nestle the
right to use the mark on non-pecorino cheeses, and in the same
agreement promised Nestle that it would not seek further to
register the LOCATELLI mark in United States for any food
items, does not lessen the right opposer has to exclude third
parties from the use or registration of similar marks on
related goods. Apart from the details of this past
contractual relationship with Nestle, this factual pattern is
easily distinguishable from situations where multiple third
parties using similar marks may have the impact of weakening
or boxing-in a potential plaintiff. Rather, in this inter
partes context, opposer has sufficiently demonstrated a fairly
significant right to exclude third-parties from the use and
registration of the LOCATELLI mark for cheese and related food
items. Hence, at worst for opposer, this is a neutral fact.
Opposition No. 91161200
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Conclusion
We conclude, based upon a preponderance of the evidence,
and particularly in view of the similarities between the
marks, the strength of opposer’s marks, and the relatedness of
the respective goods as identified in the identifications of
goods, that there is a likelihood of confusion when LOCATELLI
and CATELLI are used contemporaneously on the parties’ cheese
and pasta sauces, respectively.
Nonetheless, given the acknowledged differences between
the appearances of the marks, we consider this to be a
somewhat close case. To the extent that we have doubts as to
the proper resolution of this case, we consider it appropriate
to resolve such doubt against the newcomer (applicant) and in
favor of the prior user and registrant (opposer). See In re
Pneumatiques, Caoutchouc Manufacture, 487 F.2d 918, 179 USPQ
729 (CCPA 1973). See also TBC Corp. v. Holsa Inc., 126 F.3d
1470, 44 USPQ2d 1315 (Fed. Cir. 1997); and In re Hyper
Shoppes, 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The opposition is sustained based upon the
ground of likelihood of confusion under Section 2(d) of the
Lanham Act, and registration to applicant is hereby refused.