Luigi Lavazza S.p.A.v.Favazza’s, Inc.

Trademark Trial and Appeal Board

Feb 16, 2016

No. 91210050 (T.T.A.B. Feb. 16, 2016)

This Opinion is Not a
Precedent of the TTAB

Hearing: November 19, 2015 February 16, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____
Luigi Lavazza S.p.A.

v.

Favazza’s, Inc.
_____

Opposition No. 91210050
to Application Serial No. 85666504
_____

Leo M. Loughlin of Rothwell Figg Ernst & Manbeck PC,
for Luigi Lavazza S.p.A.

Morris E. Turek of Yourtrademarkattorney.com,
for Favazza’s, Inc.

Before Quinn, Goodman and Heasley,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Favazza’s, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark FAVAZZA’S (in standard characters) for “bar services; catering services;
restaurant services” in International Class 43.1

1 Application Serial No. 85666504, filed July 2, 2012, based upon Applicant’s allegation of
first use and first use in commerce of December 1977 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a).
Opposition No. 91210050

2

Luigi Lavazza S.p.A. (“Opposer”) has opposed registration of Applicant’s mark on
the ground that Applicant’s mark, when used in connection with Applicant’s
services, so resembles Opposer’s previously-used and registered mark LAVAZZA
(typed drawing) for “a wide variety of goods and services including restaurant
services, bars and catering services” as to be likely to cause confusion.2 Opposer
specifically claimed ownership of the registration LAVAZZA for “coffee shops, bars,
restaurants, cafeterias, self-service restaurants, pubs, catering services” in
International Class 42.3 By its answer, Applicant denied the salient allegations in
the notice of opposition.
I. The Parties
A. Opposer
Opposer is an Italian coffee company that established its wholly-owned U.S.
subsidiary in 1989.4 It sells traditional roasted whole bean coffee, ground coffee and
single-serve capsule coffee to the “home market” consumer, single-serve all-capsule
coffee to the “office coffee market,” and whole bean coffee, ground coffee, single serve
coffee, and single serve coffee equipment to the “out of home” hospitality market
which includes restaurants, cafés, cruise ships, casinos, and hotels.5 Opposer
operates a limited franchise of Lavazza Expression cafés in Austin Texas, Chicago

2 1 TTABVUE 3.
3 Registration No. 2236996, in typed drawing form, Section 2(f); issued April 6, 1999;
renewed. Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. § 2.52, was amended
to replace the term “typed” drawing with “standard character” drawing.
Opposer submitted as an exhibit to the notice of opposition a copy of its pleaded
registration from the USPTO TSDR database showing current status of and title.
4 15 TTABVUE 6-7, 13.
5 Id. at 10-12, 16, 42.
Opposition No. 91210050

3

and California, but for the most part, Opposer is not in the business of operating
cafés.6
B. Applicant
Applicant owns a single location Italian restaurant in St. Louis, Missouri that
has been in continuous operation since 1978.7 In addition to its restaurant services,
Applicant provides catering, banquet and bar services.8 On average, Applicant
serves 150,000 customers a year, including individuals who reside outside of the St.
Louis metropolitan area.9
II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved application. In addition, Opposer
introduced the trial testimony of Ennio Ranaboldo, CEO and Executive Vice
President of Lavazza Premium Coffee Corp., the U.S. subsidiary of Opposer, and a
notice of reliance on USPTO TSDR printouts of fifteen additional LAVAZZA and
LAVAZZA-formative registrations owned by Opposer that were not pleaded in the
notice of opposition.10 Applicant introduced the trial testimony of Vito A. Favazza,
Jr., President and managing officer of Applicant.

6 Id. at 67, 87.
7 17 TTABVUE 7-9.
8 Id. at 7.
9 Id. at 12-13.
10 14 TTABVUE. Applicant did not object to the introduction of these registrations, and
considers them part of the record. 22 TTABVUE 6 n.1. We consider the unpleaded
registrations to have been tried by implied consent pursuant to Fed. R. Civ. P. 15(b) and
deem the notice of opposition amended to assert the registrations. As indicated infra, our
focus will be on Registration No. 2236996; therefore, we need not provide the details of
these other registrations. We do note that with the exception of one LAVAZZA-formative
Opposition No. 91210050

4

The parties filed briefs, and each party was represented by counsel at an oral
hearing held before this panel.
III. Evidentiary Matters
A. Motion to Strike
Opposer has raised objections to the testimony of Applicant’s witness, Mr.
Favazza, and seeks to strike the testimony on the basis of relevance.
The Board is “capable of weighing the relevance and strength or weakness of the
objected-to testimony and evidence, including any inherent limitations,” precluding
the need to strike the testimony. Inter Ikea Sys. B.V. v. Akea, LLC, 110 USPQ2d
1734, 1737 (TTAB 2014). Accordingly, we decline to strike Applicant’s testimony on
this basis; rather, we will consider it and give it whatever probative value it merits.
IV. Standing
Opposer has properly made its pleaded registration of record by attaching a copy
of it obtained from the USPTO TSDR database to the notice of opposition, and by
making the fifteen other registrations of record by way of notice of reliance and by
testimony. Trademark Rule 2.122(d)(1)-(2), 37 C.F.R. §§ 2.122(d)(1)-(2). In view
thereof, we find Opposer has established its personal interest in this proceeding and
proven its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000); Lincoln Nat'l Corp. v. Anderson, 110 USPQ2d 1271,
1274 (TTAB 2014). See also Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d

mark for restaurant services, the majority of these registrations are for coffee, and/or coffee
blends and coffee extracts, and related equipment such as percolators.
Opposition No. 91210050

5

1024, 213 USPQ 185, 189 (CCPA 1982). Applicant has not contested Opposer’s
standing.
V. Priority
Because Opposer has made its sixteen registrations of record and shown they are
valid and subsisting, priority is not an issue in this case as to the LAVAZZA and
LAVAZZA-formative marks for the goods and services recited in those registrations.
King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). In addition, in its brief on the case, Applicant concedes “as a matter of
law” Opposer’s priority based on those registrations.11
VI . Likelihood of Confusion
We now turn to the merits of the notice of opposition. Our determination under
Trademark Act Section 2(d), 15 U.S.C. § 1052, is based on an analysis of all of the
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). Opposer must establish that there is a likelihood of confusion by a
preponderance of the evidence. We focus on Opposer's Registration No. 2236996 for
the typed mark LAVAZZA for “coffee shops, bars, restaurants, cafeterias, self-
service restaurants, pubs, catering services” because if we do not find a likelihood of
confusion with that mark and the associated services, then there would be no
likelihood of confusion with the marks in the other pleaded registrations. See In re
Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).

11 22 TTABVUE 7.
Opposition No. 91210050

6

We note Applicant's argument in its brief that because LAVAZZA is a “‘family
name,’” and registered under Section 2(f), it is “not entitled to the broad scope of
protection reserved for arbitrary and fanciful marks.”12 However, the fact that
LAVAZZA may be a surname does not mean that Opposer’s LAVAZZA mark is
automatically weak or otherwise entitled to a narrower scope of protection. Wet
Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1639 n.20 (TTAB 2007). It is
well settled that “Section 2(d) ... does not set forth special rules regarding the
registration of marks involving surnames in determining the issue of likelihood of
confusion.” Hunt Foods & Indus., Inc. v. Gerson Stewart Corp., 367 F.2d 431, 151
USPQ 350, 352 (CCPA 1966). While surnames per se, because of their proliferation
of use, are generally considered to fall within the designation of “weak” marks,
nevertheless, it is recognized that such names can, through extensive use and
exposure over a period of years, acquire distinctiveness and serve as a strong
indication of origin for the goods or services of a particular producer. G. H. Tennant
Company v. Wyandotte Chemicals Corporation, 154 USPQ 453, 455 (TTAB 1967).
As noted by Applicant, Registration No. 2236996 for the mark LAVAZZA is
registered on the Principal Register under the provisions of Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f). Having acquired distinctiveness, the mark
LAVAZZA is entitled to the same trademark protection as any other validly
registered trademark under Trademark Act Section 7(b), 15 U.S.C. § 1057(b),
including the right to preclude the registration by others of marks comprising not
only the identical designation but any similar designation that may be used on

12 22 TTABVUE 9.
Opposition No. 91210050

7

identical or related goods or services if confusion is likely to occur. See E. I. du Pont
de Nemours & Co. v. Societe S.T. Dupont, 161 USPQ 489, 491 (TTAB 1969)
(surname that has acquired distinctiveness afforded same protection as if it were
arbitrary, technical mark).
We now turn to consideration of the relevant du Pont factors in the proceeding
now before us.
A. The Services, Channels of Trade, Purchasers and Conditions of Sale
We begin by considering the second, third, and fourth du Pont factors, similarity
or dissimilarity of the parties’ services, channels of trade, purchasers, and the
conditions of sale. In re E. I. du Pont, 177 USPQ at 567. Applicant, in its brief on the
case, “is willing to concede” the following:13
1) “[t]he services recited in Opposer’s Registration No. 2,236,996 are legally
identical to the services recited in Applicant’s Application Serial No. 85666504”;

2) “[t]he restaurant, bar and catering services of Applicant and Opposer could
theoretically be rendered in the same channels of trade”;

3) “[t]he restaurant, bar, and catering services of Applicant and Opposer could
theoretically be provided to, and purchased by, the same class of consumers”;

4) “[t]he restaurant, bar, and catering services of Applicant and Opposer could
theoretically be advertised through the same media channels”; and

5) “[a]t least some of the purchasers of the restaurant, bar, and catering services
offered by Applicant and Opposer are of ordinary sophistication and would
exercise ordinary care in selecting and purchasing such services.”

Based on these concessions, we find that Applicant’s recited services are identical
to Opposer’s services, rendered in the same channels of trade and provided to the
same class of purchasers, and the purchasers of the services are ordinary consumers

13 Id. at 9.
Opposition No. 91210050

8

who would exercise nothing more than ordinary care in their purchasing decision.
These factors weigh heavily in favor of a finding of likelihood of confusion.
B. Similarity of the Marks
As to the first du Pont factor, “similarity or dissimilarity of the marks,” we
analyze “the marks in their entireties as to appearance, sound, connotation and
commercial impression.” In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) quoting In re E.I. du Pont, 177 USPQ at 567. See also Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting In re E.I. du Pont, 177 USPQ at
567). “The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning, LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Inter IKEA Sys., 110 USPQ2d at 1740;
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
With regard to the similarities of the marks, Applicant “concedes that the only
differences in appearance and sound between the Parties’ marks are (1) they begin
with different letters, and (2) Applicant’s mark incorporates an ‘apostrophe S’ at the
end.”14 However, Applicant argues in its brief that

14 Id. at 10.
Opposition No. 91210050

9

[B]ased on how individuals generally perceive surnames in our society
... likelihood of consumer confusion between the two marks is remote at
best ... it is indisputable that consumers would recognize the parties’
marks as Italian surnames and nothing else. ... [I]n light of the
differences between the marks and the fact that both are primarily
merely Italian surnames which are easily distinguishable from one
another [by the minor differences in leading letters] and possess no
other readily apparent meaning or connotation, this du Pont factor
clearly favors Applicant.15

As Applicant acknowledges, as to appearance and sound, both marks contain the
six letters AVAZZA, differing only by the first letter in each mark and by the
concluding apostrophe and “S” in Applicant’s mark that may be viewed as the
possessive form of FAVAZZA.16 The parties’ marks are visually similar because they
both contain AVAZZA and there is little, if any, trademark significance in the
addition of the apostrophe and letter “S” in Applicant’s mark. In re Binion, 93
USPQ2d 1531, 1534 (TTAB 2009) (“The absence of the possessive form in
applicant’s mark BINION has little, if any, significance for consumers in
distinguishing it from the cited mark.”) (internal citations omitted). The difference
in the leading letters “L” and “F” in each party’s mark does little to distinguish the
marks, and is outweighed by the shared element AVAZZA. As to similarity of sound,
it is reasonable to conclude that the marks may be pronounced similarly because
they share a similar structure and could well be accorded a similar sound and
cadence. Thus, when the marks are compared in their entireties, they are strikingly
similar in appearance and sound, and the differences are not sufficient to
distinguish the marks visually or phonetically. See Krim-Ko Corp. v. Coca-Cola

15 Id at 11.
16Id.
Opposition No. 91210050

10

Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (BEEP and VEEP
phonetically similar and visually similar); American Cyanamid Co. v. United States
Rubber Co., 356 F.2d 1008, 148 USPQ 729, 730 (CCPA 1966) (CYGON and
PHYGON phonetically similar in sound and similar in spelling); Apple Computer v.
TVnet.net Inc., 90 USPQ2d 1393, 1396 (TTAB 2007) (letter “v” is insufficient to
distinguish the dominant portions of the parties’ ITUNES and VTUNES marks).
Most consumers are not likely to note or long remember any differences between the
parties’ marks. See Interlego AG v. Abrams/Gentile Entertainment Inc., 63 USPQ2d
1862, 1863 (TTAB 2002) (many adults and children would not notice the very minor
difference between LEGO and MEGO).
As for connotation, it is not clear whether consumers would ascribe any meaning
to the marks, but rather would see both marks either as invented foreign words or
as surnames.17 We find it highly unlikely that consumers would view one mark as a
surname and the other as an invented foreign word. Thus, regardless of whether
consumers would view the marks as invented foreign words or surnames, the
connotation is the same.
As a result of the similarities between the marks, both marks convey similar
overall commercial impressions. We therefore find that the marks are highly similar
in sound, appearance, connotation, and commercial impression.

17 Mr. Favazza testified that Favazza is his family name and that he founded the
restaurant in 1978 with his parents and named it “Favazza’s” because it is “our family
name.” 17 TTABVUE 6-7, 9. Mr. Ranaboldo testified that Opposer was founded by Luigi
Lavazza who “started off with a small grocery store in Torino, [Italy].” 15 TTABVUE 11-12.
He further testified that “[Lavazza] is a family name. Luigi Lavazza S.P.A., the founder,
was named Lavazza. …” Id. at 85.
Opposition No. 91210050

11

C. Fame and Scope of Protection
Inasmuch as Opposer has argued in its brief that its LAVAZZA mark is famous,18
we direct our attention to the fifth du Pont factor, “fame of the prior mark.” In re E.
I. du Pont, 177 USPQ at 567.
Fame, if it exists, plays a dominant role in the likelihood of confusion analysis.
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000).
In the absence of direct evidence of fame, “[t]he fame of a mark may be measured
indirectly, among other things, by the volume of sales and advertising expenditures
of the goods traveling under the mark, and by the length of time those indicia of
commercial awareness have been evident.” Bose Corp. v. QSC Audio Products, Inc.,
293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002). In addition, some context in
which to place raw statistics may be necessary. Id. at 1309. Further, because of the
extreme deference that we accord a famous mark in terms of the wide latitude of
legal protection it receives, and the dominant role fame plays in the likelihood of
confusion analysis, “the party asserting that its mark is famous has the burden to
prove it.” See Coach Servs., 101 USPQ2d at 1720 (citing Leading Jewelers Guild,
Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)).
Mr. Ranaboldo testified that ten to fifteen years prior to establishing its U.S.
subsidiary in 1989, Opposer sold its coffee sporadically through distributors.19 With
respect to its products and services, in 2014, Opposer spent “[a]nywhere between

18 19 TTABVUE 20.
19 15 TTABVUE 13, 96.
Opposition No. 91210050

12

five and ten million” on advertising in the United States.20 Opposer had net sales in
the United States of $69 million in 2013 and $75 million in 2014.21 However, Mr.
Ranaboldo testified that he did not have information as to the percentage of
advertising directed to LAVAZZA-branded cafés versus LAVAZZA-branded
products nor could he provide a breakdown of sales for LAVAZZA-branded cafés by
distribution channels.22 Mr. Ranaboldo testified generally regarding a confidential
2014 United States brand awareness study as to the “coffee category” and “specialty
coffee sub segment,” stating that “[w]e are in the same bracket of some famous
brands. …”23 Notably, this study is limited to coffee, and does not pertain to
restaurants.
We find that Opposer’s evidence falls short of clearly proving fame. Coach Servs.,
101 USPQ2d at 1720. For example, we have no context for Opposer's advertising
and sales figures such as how the figures for Opposer’s goods and services compare
with that of other brands of like goods or services, and what portion of these figures
are attributed to coffee versus restaurants. Bose Corp., 63 USPQ2d at 1309. We
also have relatively little specific evidence about Opposer's use of the various
LAVAZZA and LAVAZZA-formative marks in the United States; there is no
specific testimony as to how long these particular marks have been used, or the
sales made under each of the marks, or advertising expenditures for each of these
particular marks. Opposer and its sole witness have in general referred to

20 Id. at 73.
21 Id. at 72, 82.
22 Id. at 98-100. Mr. Ranaboldo testified: “We do not break down sales by channel of
distribution, meaning we don’t make that information available.”
23 Id. at 71.
Opposition No. 91210050

13

“LAVAZZA marks” without specifying any particular LAVAZZA mark, and have
focused on use of the marks on coffee and use by third parties in the national
chain/hospitality sector who are supplied LAVAZZA coffee products, equipment
and point of sale branding materials. Mr. Ranaboldo’s testimony is lacking context,
and not specific enough to support a finding of fame for individual products and
services or for any particular LAVAZZA or LAVAZZA-formative mark. See e.g.,
Inter IKEA Sys., 110 USPQ2d at 1740 (testimony not specific enough to support
finding of fame of mark for individual products and listed services, other than retail
stores); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1506 (TTAB 2007)
(“non-specific testimony about sales and advertising might not be sufficient to
demonstrate the fame of a mark in the typical case”).
Overall, we find that the record evidence relevant to the strength of Opposer's
mark is not sufficient to reach the level where the renown of the mark plays a
dominant role in the process of balancing the du Pont factors. Moreover, even if we
were to find that the mark LAVAZZA is strong for coffee, which on this record we
do not, that does not mean that the mark also is strong for restaurants for
purposes of a likelihood of confusion analysis.
D. Extent of Concurrent Use and Actual Confusion
The seventh and eighth du Pont factors are “the nature and extent of any actual
confusion,” and “the length of time during and conditions under which there has
been concurrent use without evidence of actual confusion.” In re E. I. du Pont, 177
USPQ at 567.
Opposition No. 91210050

14

Where the parties have coexisted in the marketplace under circumstances where
there has been an opportunity for confusion to have occurred, the lack of any
reported instances of confusion is a factor that the Board may consider. Mr. Hero
Sandwich Systems, Inc. v. Roman Meal Co., 781 F.2d 884, 228 USPQ 364, 367 (Fed.
Cir. 1986) (while lack of evidence of confusion is not dispositive, the concurrent use
of the marks for 19 years without any reported instances of confusion suggests that
the marks are not likely to cause confusion); King Candy Co. v. Eunice King's
Kitchen, Inc., 182 USPQ at 110 (absence of confusion for over 20 years supports
finding that confusion is not likely).
In this case, Applicant points to the testimony of Applicant’s witness, Mr.
Favazza, and Opposer’s witness, Mr. Ranaboldo, both of whom testified that they
are personally unaware of instances of actual confusion.24 Applicant argues in its
brief that
…Applicant’s FAVAZZA’s mark and Opposer’s LAVAZZA mark have
coexisted with each other for between 30 and 35 years. [emphasis in
original] … there has been plenty of opportunity for actual consumer
confusion to have arisen … there are consumers residing in the St.
Louis metropolitan area who are familiar with Applicant’s FAVAZZA’S
restaurant and who have been exposed to Opposer’s LAVAZZA-
branded products/services and the nationwide advertising of those
products/services. Yet there is still no actual confusion anywhere to be
found.25

We find on this record that there is no meaningful way to gauge the absence of
actual confusion given the fact that we do not know the extent of Opposer’s use of
LAVAZZA or LAVAZZA-formative marks in connection with cafés. Although Mr.

24 17 TTABVUE 14-15; 15 TTABVUE 93.
25 22 TTABVUE 12, 15.
Opposition No. 91210050

15

Ranaboldo provided some general testimony related to its LAVAZZA-branded
cafés,26 he focused his testimony primarily on Opposer’s use of LAVAZZA or
LAVAZZA-formative marks in connection with coffee. We are unable to ascertain,
therefore, whether there has been a meaningful opportunity for actual confusion to
have occurred in the marketplace between Opposer’s cafes and Applicant’s
restaurant. In any event, the applicable test here is likelihood of confusion, not
actual confusion, and, as often stated, it is unnecessary to show actual confusion in
establishing likelihood of confusion. Herbko Int'l, Inc. Kappa Books, Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002).
VII. Conclusion
We have considered all of the evidence pertaining to the relevant du Pont factors,
as well as the parties’ arguments with respect thereto (including any evidence and
arguments not specifically discussed in this opinion). In balancing the relevant du
Pont factors, we conclude that the similarity of the marks, the identity of the
services, overlapping trade channels and consumers, and conditions of sale favor a
likelihood of confusion with the services identified in Registration No. 2236996.27 In
view thereof, we need not consider the issue of likelihood of confusion with respect
to Opposer’s other pleaded registrations. Max Capital, 93 USPQ2d at 1248.
Decision: The opposition is sustained on the basis of likelihood of confusion with
the mark LAVAZZA in Registration No. 2236996, and registration to Applicant is
refused.

26 15 TTABVUE 57, 67 and 93.
27 We deem the other du Pont factors neutral.