Little Caesar Enterprises, Inc.v.Silver Lake Restaurant Systems, Inc.

Trademark Trial and Appeal Board

Dec 20, 2001

No. 91108652 (T.T.A.B. Dec. 20, 2001)

12/20/01

Hearing: Paper No. 30
October 24, 2001 HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Little Caesar Enterprises, Inc.

v.

Silver Lake Restaurant Systems, Inc.
_____

Opposition No. 108,652
to application Serial No. 75/139,794
filed on July 25, 1996

Marc A. Bergsman of Dickinson Wright PLLC for Little
Caesar Enterprises, Inc.

Robert F. Zielinski of Wolf, Block Schorr and Solis-Cohen
LLP for Silver Lake Restaurant Systems, Inc.
______

Before Cissel, Hohein and Wendel, Administrative
Trademark Judges.

Opinion by Wendel, Administrative Trademark Judge:
Silver Lake Restaurant Systems, Inc. has filed an
application to register the mark PEACE A PIZZA and
design,
as shown below, for “restaurant services.”1

1 Serial No. 75/139,794, filed July 25, 1996, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 108,652
2

Little Caesar Enterprises, Inc. has filed an
opposition to registration of the mark on the ground of
priority of use and likelihood of confusion under Section
2(d) of the Trademark Act.2 In the notice of opposition
opposer alleges use of the mark PIZZA!PIZZA! in
connection with pizza and restaurant services since 1980;
ownership of registrations for the mark PIZZA!PIZZA! and
marks containing the term PIZZA!PIZZA! for various food
items and restaurant services;3 continuous and extensive

2 Although opposer included allegations of false suggestion of a
connection with opposer under Section 2(a) of the Trademark Act
in the notice of opposition, opposer failed to pursue these
allegations and thus we have given no consideration to the same.
3 Registration No. 1,295,178, issued September 11, 1984, for the
mark LITTLE CAESARS PIZZA!PIZZA! and design for “restaurant
services”; Section 8 & 15 affidavits; disclaimer of “pizza”;
Registration No. 1,297,170, issued September 18, 1984, for
the mark LITTLE CAESARS PIZZA!PIZZA! and design for
“restaurant services”; Section 8 & 15 affidavits; disclaimer
of “pizza”;
Registration No. 1,399,730, issued July 1, 1986, for the mark
PIZZA!PIZZA! (as amended) for “pizza for consumption on or off
the premises”; Section 8 & 15 affidavits; disclaimer of
“pizza”;
Registration No. 1,439,558, issued May 12, 1987, for the mark
PIZZA!PIZZA! (as amended) for “restaurant services”; Section 8
& 15 affidavits; disclaimer of “pizza”;
Registration No. 1,811,270, issued December 14, 1993, for the
Opposition No. 108,652
3
use and promotion of these marks such that the marks have
become extremely valuable business and marketing assets
of opposer; and a likelihood of confusion because of the
close resemblance of applicant’s mark PEACE A PIZZA and
design to opposer’s marks as used in connection with
opposer’s goods and services.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.4
The Record
The record consists of the file of the involved
application; opposer’s testimonial declarations of Robert
A. Elliott, former Vice-President of Marketing of
opposer, and Stuart de Gues, Senior Director of
Advertising of opposer, made of record by notices of
reliance;5 responses by applicant to certain of opposer’s
interrogatories and requests for admission and dictionary
definitions made of record by opposer by notices of

mark LITTLE CAESARS’ PIZZA!PIZZA! CRAZY KIDS and design for
“restaurant services”; Section 8 affidavit; disclaimer of
“pizza”; and
Registration No. 2,071,554, issued June 17, 1997, for the mark
PIZZA!PIZZA! PICNIC! for “combination meals consisting of
pizza, bread, and a non-alcoholic beverage for consumption on
and off the premises”; disclaimer of “pizza.”

4 Although alleging as an affirmative defense the ground of
estoppel, applicant has failed to take any action with respect
to this defense and thus it will not be further considered.
Opposition No. 108,652
4
reliance; certified copies of opposer’s pleaded
registrations made of record by notice of reliance;
applicant’s trial testimony depositions of Peter Howey,
President of applicant, and Joseph Leggio, Secretary of
applicant; and opposer’s rebuttal testimonial
declarations of Linda Jaworski, Senior Vice President of
Marketing for opposer, and Kevin J. Friesen, Vice
president of Operations for the Midwest Region for
opposer, also made of record by notices of reliance.6
Both parties filed briefs7 and participated in an
oral hearing.
The Parties
Opposer has operated restaurants featuring pizza and
related products since May 1959. As of 1996, opposer was
the franchisor of over 4,200 restaurants located in each
of the fifty states, as well as Puerto Rico and Guam. By
1998 there were in excess of 5,000 restaurants including

5 The parties filed a stipulation that the testimony of these
two witnesses could be submitted in declaration form in
accordance with Trademark Rule 2.123(b).
6 The parties also stipulated to the submission of this
testimony in declaration form.
7 Opposer has objected to exhibits C-F attached to applicant’s
brief as not being part of the record. Introduction of new
evidence with the brief is clearly untimely. Inasmuch as this
material was neither submitted by means of notice of reliance
during applicant’s testimony period nor introduced during the
taking of testimony by applicant, Exhibits C-F are hereby
stricken and have been given no consideration.

Opposition No. 108,652
5
non-traditional locations such as airports, K-Mart stores
and college campuses. Opposer’s sales rose from $39.2
million in 1979 to $2 billion in 1994. Opposer’s ranking
in restaurant chains based on sales was 13th in 1993 and
14th in 1994. In January 1995 opposer was recognized by
Restaurants and Institutions Magazine as providing the
best pizza value in America for the eighth consecutive
year.
Opposer adopted PIZZA!PIZZA! as a trademark and
advertising theme in the late 1970s. The mark
PIZZA!PIZZA! is used to promote opposer’s marketing
strategy based on value, namely, two pizzas for one low
price. The PIZZA!PIZZA! mark appears on store signs,
pizza boxes, pizza bags, menus, napkins, drinking cups
and advertising materials. In 1997 opposer sold
approximately 180,000,000 pizzas and projected that the
same amount would be sold in 1998. Each pizza that was
sold was placed in a box or bag bearing the PIZZA!PIZZA!
mark. A broad sampling of advertisements, newspaper
inserts, coupons, direct mail advertisements and other
promotional materials featuring the mark PIZZA!PIZZA! has
been made of record. The PIZZA!PIZZA! advertising theme
has been so successful that opposer has adopted other
Opposition No. 108,652
6
double word marks, such as PAN!PAN! and CHEESER!CHEESER!,
for use in advertising its restaurants.
As of the time of taking testimony, opposer had
conducted approximately six different national television
advertising campaigns a year, each campaign lasting
approximately eight weeks. The trademark PIZZA!PIZZA! is
featured as the tag line at the end of the television
commercials, with opposer’s “Roman Man” character saying
the words PIZZA!PIZZA!. Opposer spent approximately
$36,000,000.00 on national television advertising in 1996
and projected expenditures of $35,000,000.00 in 1998.
These commercials are regularly broadcast over the NBC,
CBS, ABC and FOX networks as well as cable channels. The
commercials over the years have been viewed by hundreds
of millions of viewers. In recent years, consumers have
rated opposer’s television advertisements among the most
memorable twenty-five commercials, ranking them second in
1994, fifth in 1993, first in 1992, seventh in 1991 and
sixth in 1990.
Opposer uses direct mail and newspaper inserts in
conjunction with its national television advertising. As
of 1998 opposer issued mailings and newspaper inserts
which featured the mark PIZZA!PIZZA! approximately twice
a month. The traditional restaurant locations order
Opposition No. 108,652
7
between 5,000 and 10,000 printed advertisements per
month, resulting in approximately 25,000,000 print drops
per month which feature the mark PIZZA!PIZZA!.
Opposer is frequently the subject of articles in
newspapers and magazines. A number of these articles in
which the mark PIZZA!PIZZA! is mentioned have been made
of record.
Opposer’s menu includes pizza by the slice. Since
at least 1982 opposer has promoted pizza by the slice,
although primarily as a lunch item. Since 1994 opposer
has implemented a school lunch program in which opposer
delivers pizzas to participating schools, which in turn
sell pizza by the slice. In 1999 opposer opened two
drive-through restaurants in Detroit where the emphasis
is on pizza by the slice and combination meals including
slices of pizza.
Applicant was incorporated in 1995 and has three
principal shareholders. Applicant has approximately 100
full and part-time employees in its five restaurants.
The first restaurant began operations in Ardmore,
Pennsylvania in May 1996, the second in Newark, Delaware
in January 1998, the third in State College, Pennsylvania
in March 1998, the fourth in Stone Harbor, New Jersey in
June 1998 and the last in Rosemont, Pennsylvania in May
Opposition No. 108,652
8
1999. Applicant’s market is basically gourmet pizza by
the slice; approximately 75% of its sales are by the
slice. A full range of pizza slices with many different
topping combinations are available, which cost from $2.50
to $2.75 per slice. Applicant offers both eat-in and
take-out services, with delivery at only two of its
stores, and with eat-in predominating at most of the
restaurants. For the most recent year (the Howey
deposition was taken in June 1999) the approximate sales
for all of its restaurants were $1.8 million.
The origin of the mark PEACE A PIZZA lies in the
concept of “pizza by the slice” or a “piece of pizza.”
According to the testimony of applicant’s president Peter
Howey, the shareholders and others were attempting to
come up with a name in line with “piece of pizza” and one
of the group drew a peace symbol, which they decided
would be a good theme they could play on. Applicant has
incorporated the theme of the 60-70’s peace movement into
its restaurants and its marketing efforts. Its principal
advertising means are Volkwagen vans with peace symbols
on them and a large piece of pizza on top. Its
restaurants display peace symbols on their signs, tie-
dyed shirts with the PEACE A PIZZA and design logo on
them are used, and peace slogans and the peace symbol are
Opposition No. 108,652
9
incorporated in their promotional materials. Applicant’s
first use of its mark was in late 1995 in connection with
catering services. Its first use of the mark in
connection with restaurant services commenced with the
opening of its Ardmore location in May 1996.
The Opposition
Priority is not an issue here in view of opposer’s
submission of certified status and title copies of its
pleaded registrations. See King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). In addition, opposer’s witness Robert A. Elliott
has testified to the adoption and used of the mark
PIZZA!PIZZA! for restaurant services by the late 1970s, a
time well prior to applicant’s filing of its intent-to-
use application or its actual first use of its mark.
Turning to the issue of likelihood of confusion, we
take under consideration all of the du Pont factors which
are relevant under the present circumstances and for
which there is evidence of record. See E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Insofar as the respective services are concerned,
they are both restaurant services. Opposer’s
Registration No. 1,439,558 is for the mark PIZZA!PIZZA!
Opposition No. 108,652
10
for restaurant services and applicant’s services are
similarly identified in its intent-to-use application.
Furthermore, there are no restrictions in the
services as identified as to channels of trade or class
of purchasers. Because there are no such limitations, it
must be presumed that the restaurant services of both
would be offered in all the normal channels of trade and
to all the usual customers of services of this type. See
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987). While applicant
argues that the cost of its gourmet pizza as opposed to
opposer’s valued-priced pizzas effectively creates
different channels of trade, we are not persuaded by this
argument. The issue of likelihood of confusion must be
determined based on an analysis of the mark as used in
connection with the services recited in applicant’s
application vis-à-vis the services recited in opposer’s
registration(s), rather than what any evidence may show
the actual services to be. See Canadian Imperial Bank v.
Wells Fargo Bank, supra; CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198 (Fed. Cir. 1983). Here the normal
channels of trade for the restaurant services of both
opposer and applicant would be the same.
Opposition No. 108,652
11
Similarly, we can make no distinction on the basis
of the conditions under which, and buyers to whom, sales
are made. Both parties are selling pizza to the general
public. This is a relatively inexpensive purchase and
subject to impulse buying. Purchasers of products of
this type typically exercise a lesser standard of
purchasing care. See Recot Inc. v. M.C. Becton, 214 F.3d
1332, 54 USPQ2d 1895 (Fed. Cir. 2000). We find no
evidence of record from which we might conclude that,
because applicant’s gourmet slices range from $2.50 to
$2.75 a piece, purchasers would exercise any greater
degree of care in selecting between the parties’
restaurants. The product remains a relatively
inexpensive food item which is purchased on a casual
basis without any great degree of forethought or
consideration.
Turning to the similarity or dissimilarity of the
respective marks, we are guided in our analysis by the
general principal that when marks are used in connection
with identical services, the degree of similarity in the
marks necessary to support a conclusion that confusion is
likely declines. Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ 1698 (Fed. Cir.
1992).
Opposition No. 108,652
12
We are in full agreement with applicant that
opposer’s mark PIZZA!PIZZA! differs in appearance from
applicant’s mark PEACE A PIZZA with an accompanying peace
sign imposed on pizza. Furthermore, the connotations of
the two marks are distinctively different. Opposer’s
repetitive mark is clearly directed to its offering of
two pizzas for the price of one, whereas applicant’s mark
conjures up a double entendre, with the term “peace” and
the peace symbol being reminiscent of the peace movement
of the 60s and 70s and at the same time referring to
applicant’s sale of its pizzas by the “piece.”
We must disagree, however, with applicant’s argument
that the pronunciations of the two marks are “quite easy
to distinguish.” Although the separate words “peace” and
“pizza” may differ phonetically, the word portion of
applicant’s mark in its entirety is virtually
indistinguishable in sound from opposer’s PIZZA!PIZZA!
mark. It is true one can not predict the exact manner in
which the two marks will be pronounced; there is no one
correct pronunciation for a mark. See Yamaha
International Corp. v. Stevenson, 196 USPQ 701 (TTAB
1977). Nonetheless, the nearly identical sounds which
will result from normal pronunciations of these two marks
which are composed of commonplace, readily recognized,
Opposition No. 108,652
13
words is quite obvious. “PEACE A” is almost identical in
pronunciation to “PIZZA” and when PEACE A PIZZA is
pronounced it sounds very much like PIZZA!PIZZA!.
Moreover, contrary to applicant’s argument that the
dominant portion of its mark is the peace sign and the
word PEACE, we find the entire word portion PEACE A PIZZA
to be the dominant portion. Clearly, the words “A PIZZA”
are as prominently displayed as the word “PEACE” and
consequently it is the entire word portion of the mark
which will be relied upon by customers in referring to
applicant’s restaurant services, rather than the design
portion. Thus, the word portion is that which will be
accorded more weight in determining the similarity of the
marks. See In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987). Therefore, we have considered the entire
word portion of applicant’s mark in making this
comparison of sound.
Furthermore, while the virtually indistinguishable
sounds of the marks involved in itself may not, in many
cases, be sufficient to support a holding of likelihood
of confusion, we find that the circumstances here are
such that this high degree of similarity in sound would
play a major role in causing a likelihood of confusion.
In the first place, opposer’s mark PIZZA!PIZZA! is
Opposition No. 108,652
14
presented aurally at the end of each of its television
commercials and thus the sound is implanted in consumers’
minds. Second, because it is common for consumers to
refer to a restaurant by its word name, it is reasonable
to assume that consumers would refer to applicant’s
restaurant by the name PEACE A PIZZA, which might well
bring to mind the nearly indistinguishable sounding
PIZZA!PIZZA!. See Giant Food, Inc. v. Nation’s Food
Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
1983). In fact the record shows that, when consumers
call the restaurant, applicant’s employees frequently
answer the telephone with the words PEACE A PIZZA.
(Howey deposition p. 72). Thus, on the basis of sound
alone, we find a high degree of similarity between the
respective marks.
Next we turn to a most significant factor in the
present case, the fame of the prior mark, namely
opposer’s mark PIZZA!PIZZA!. As stated by our principal
reviewing court in Kenner Parker Toys v. Rose Art
Industries, Inc., 963 F.2d 350, 353, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992), in its consideration of the fame of the
prior mark:
[A] mark with extensive public recognition and
renown deserves and receives more legal protection
than
an obscure or weak mark.
Opposition No. 108,652
15
Achieving fame for a mark in the marketplace
where
countless symbols clamor for public attention often
requires a very distinct mark, enormous advertising
investments, and a product of lasting value. After
earning fame, a mark benefits not only its owner,
but
the consumers who rely on the symbols to identify
the
source of a desired product.

We find the record here fully substantiates the fame
which opposer’s PIZZA!PIZZA! mark has achieved. The
length of use of the mark, the extensive advertising
featuring the mark and the high level of sales over the
years all point to the public recognition and renown of
the mark. Not only have opposer’s television commercials
reached a vast audience, but also those commercials have
been rated as being among the most memorable commercials
for several years. Moreover, the mark PIZZA!PIZZA!
clearly encapsulates the emphasis on value which opposer
strives to achieve and which emphasis has been realized
as shown by its rating as providing the best pizza value
in America for eight consecutive years. Its sales
figures establish the success of opposer’s advertising
investments and the widespread exposure of the public to
the PIZZA!PIZZA! mark.
Applicant’s arguments that opposer’s mark is weak
because of the frequent use of the word “pizza” in marks
in the field of restaurant services or because of the
Opposition No. 108,652
16
descriptive nature of the mark are to no avail.
Opposer’s mark is not simply the word “pizza,” but rather
a novel presentation of the word twice, in such a format
as to emphasize the offering of two pizzas for the price
of one. Moreover, it is well established that long and
continuous sales and advertising may transform even a
weak mark into a strong and distinctive one based on its
acquired secondary meaning as an indication of source.
See Miles Laboratories Inc. v. Naturally Vitamin
Supplements Inc., 1 USPQ2d 1445 (TTAB 1986) and cases
cited therein. Despite any suggestive significance which
the mark PIZZA!PIZZA! may originally have possessed, the
record clearly establishes the present status of the mark
as strong and distinctive.
As emphasized by the court in its recent decision in
Recot, Inc. v M.C. Becton, supra, with respect to the
significance of fame in the balancing of the du Pont
factors, the fame of the prior mark, when present, must
play a “dominant” role in the process. Thus it is that
famous marks enjoy a wide latitude of legal protection.
This broader protection is accorded because the marks are
more likely to be remembered and associated in the public
mind than a weaker mark. Id. at 54 USPQ2d 1897. In line
with this reasoning, we find that opposer’s famous
Opposition No. 108,652
17
PIZZA!PIZZA! mark, especially because it is often aurally
presented to the public, may well be called to mind when
consumers encounter applicant’s mark, which is dominated
by the words PEACE A PIZZA and which words are nearly
indistinguishable in sound from PIZZA!PIZZA!. We are
convinced that the broader scope of protection to be
accorded to a famous mark should extend to a mark which
is being used for identical restaurant services and which
is most likely to be indistinguishable in sound from the
well-known mark.
We are aware that applicant has pointed out the
absence of any evidence of record of known instances of
actual confusion, despite applicant’s actual use of its
mark since May 1996. The question arises, however,
whether there has been any real opportunity for
confusion. The absence of reported instances of actual
confusion would be meaningful only if the record showed
appreciable and continuous use by applicant of its mark
for a significant period of time in the same geographic
area as opposer. See Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768 (TTAB 1992). Only one of
applicant’s restaurants has been open since 1996, the
others opened later. The geographic market covered by
applicant’s restaurants is small. There is no evidence
Opposition No. 108,652
18
of record that opposer even operates restaurants in that
area. Accordingly, we can give little weight to the
evidence of an absence of actual confusion. In any
event, the issue is likelihood of confusion, not actual
confusion.
As a final consideration, we note opposer’s
contentions that applicant did not adopt its PEACE A
PIZZA and design mark in good faith. Despite the
evidence that applicant’s principals were familiar with
opposer’s mark, we do not find that the record supports
any determination that the adoption of the mark PEACE A
PIZZA and design was knowingly done with the intention of
trading on the goodwill of opposer’s PIZZA!PIZZA! mark.
Whether or not applicant’s principals are of an age as to
have personally experienced the peace movement or whether
their restaurants are in the locale of the original peace
movement is immaterial. The peace symbol is well
recognized even to this day. The adoption of the peace
movement motif as part of a double entendre on the word
“piece” appears to be a plausible business decision and
one free from any insinuations of bad faith. Certainly
on this record we can come to no other conclusion.
On the basis of the fame of opposer’s mark
PIZZA!PIZZA!, the legal identity of restaurant services
Opposition No. 108,652
19
in connection with which each party is using its mark,
and the virtually indistinguishable sound of the spoken
portion of applicant’s mark PEACE A PIZZA and design from
opposer’s mark PIZZA!PIZZA!, we find that confusion is
likely.
Decision: The opposition is sustained and
registration is refused to applicant.