ML Management

Trademark Trial and Appeal Board

May 30, 2007

No. 76564139 (T.T.A.B. May. 30, 2007)

Mailed:
May 30, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re ML Management, Inc.
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Serial No. 76564139
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Ira C. Edell of Edell, Shapiro & Finnan, LLC for ML
Management, Inc.

Ronald L. Fairbanks, Trademark Examining Attorney, Law
Office 117 (Loretta C. Beck, Managing Attorney).
_______

Before Grendel, Rogers and Bergsman,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Applicant ML Management, Inc. seeks registration of
the mark MAMMA LUCIA for "restaurant, catering and carry
out services featuring prepared and ready to eat Italian
cuisine; and bar services." Basing its application on
claimed use of the mark in commerce, applicant alleges
first use and first use in commerce as of 1976. Applicant
seeks registration of the mark in standard character form,
formerly referred to by the Office as "typed form."
This Decision is Not a
Precedent of the TTAB
Ser No. 76564139
2
The examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in
view of the prior registration of MAMA LUCIA in typed form
for "meatballs" (Registration no. 1667749). The cited
registration issued December 10, 1991 and recites first use
of the mark and first use in commerce since October 1987;
and the registration was renewed in January 2002.
This appeal followed the examining attorney's issuance
of a final refusal of registration. After applicant filed
its brief, the examining attorney sought and obtained a
remand to introduce new evidence, specifically, an
advertising circular promoting the goods of the cited
registration. Applicant responded to the Office action
introducing that new evidence and the Board previously
stated that such response would be considered a
supplemental appeal brief. The examining attorney also has
filed a brief.
We analyze the issue of likelihood of confusion using
the factors that were articulated by a predecessor of our
primary reviewing court, the Court of Customs and Patent
Appeals, in the case of In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1205 (Fed. Cir. 2003).
Ser No. 76564139
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In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)("The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[and services] and differences in the marks").
In this case, we compare applicant's mark MAMMA LUCIA
and the MAMA LUCIA mark in the cited registration by
considering similarity, or differences, in the appearance,
sound, connotations and overall commercial impressions of
the marks. In re Coors Brewing Co., 343 F.3d 1340, 68
USPQ2d 1059, 1062 (Fed. Cir. 2003) Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
395 (Fed. Cir. 1983).
We find the marks virtually identical. The single
letter difference in appearance might easily be overlooked
by consumers. See Interlego AG v. Abrams/Gentile
Entertainment Inc., 63 USPQ2d 1862, 1863 (TTAB 2002) ("many
adults would not notice [the] very minor difference in the
two marks" LEGO and MEGO). The repeated letter does not
change the identical sounds of the marks, identical
connotations of a mother named Lucia, and the identical
Ser No. 76564139
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overall commercial impressions that this mother is the
source of, or inspiration for, the respective foods of
registrant and applicant's restaurants and carryout
services. See In re Total Quality Group Inc., 51 USPQ2d
1474, 1476 (TTAB 1999) (STRATEGYN and STRATEGEN "marks
engender virtually identical commercial impressions, both
suggesting the idea of a strategy"). See also Maids to
Order of Ohio Inc. v. Maid-to-Order Inc., 78 USPQ2d 1899,
1909 (TTAB 2006) ("when considered in their entireties, the
marks MAIDS TO ORDER and MAID TO ORDER project essentially
the same commercial impression").
We do not find persuasive applicant's argument that
there is no likelihood of confusion because the respective
marks generally would be encountered by consumers only on
signs, menus, in advertisements, in short only in visual
media that would readily reveal the difference in the
marks, i.e., the additional M in applicant's mark. Brief,
p. 7. First, there is no limit on the ways in which the
marks may be used and radio advertising is certainly
possible for these goods and services. In addition, word
of mouth recommendations for the goods or services would
not provide individuals receiving such recommendations any
opportunity to become aware of the slight difference in the
marks. See In re Dixie Restaurants Inc., 105 F.3d 1405, 41
Ser No. 76564139
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USPQ2d 1531, 1534 (Fed. Cir. 1997) (restaurants are often
recommended by word of mouth); In re Appetito Provisions
Co. Inc., 3 USPQ2d 1553 (TTAB 1987) ("propensity of persons
to try restaurants based on word-of-mouth recommendations"
noted in case finding likelihood of confusion between
APPETITO and design for Italian sausage, on the one hand,
and the marks A APPETITO'S and A APPETITO'S INC. and
sandwich design for restaurant services, on the other).
Second, and more important, even when the marks are
presented in visual fashion, the only difference is a
repeated letter that appears in the middle of one of the
two common words. This difference will be even more
readily overlooked by consumers than the different leading
letters in the Interlego case (i.e., the LEGO "L" and the
MEGO "M").
Because the involved marks are virtually identical,
this "weighs heavily against applicant." In re Martin's
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289,
1290 (Fed. Cir. 1984). In such circumstances,
contemporaneous use of the marks can lead to the assumption
that there is a common source or sponsorship "even when
[the] goods or services are not competitive or
intrinsically related." In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993). Thus, when
Ser No. 76564139
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marks are so close, it is only necessary that there be a
viable relationship between the goods or services in order
to support a holding of likelihood of confusion. In re
Concordia International Forwarding Corp., 222 USPQ 355
(TTAB 1983). While mindful of these principles, we also
are mindful of decisions that have squarely dealt with the
question of the relationship of restaurant services and
food or beverage items.
"[T]he fact that restaurants serve food and beverages
is not enough to render food and beverages related to
restaurant services for purposes of determining the
likelihood of confusion." Coors, supra, 68 USPQ2d at 1063,
citing Jacobs v. International Multifoods Corp., 668 F.2d
1234, 212 USPQ 641 (CCPA 1982). Rather, "Jacobs provides
that '[t]o establish likelihood of confusion a party must
show something more than that similar or even identical
marks are used for food products and for restaurant
services.' Id. (emphasis added)." Coors, supra, 68 USPQ2d
at 1063.
The examining attorney has attempted to establish the
relatedness of the involved goods and services in two ways.
First, the examining attorney has entered in the record
various third-party registrations showing registration of a
single mark for both restaurant services and meatballs or
Ser No. 76564139
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foods containing meatballs (e.g., meatball subs or
sandwiches). Office action Feb. 8, 2005. Second, the
examining attorney argues that the "something more" nexus
is met in this case because of the relationship of
registrant's meatballs and applicant's Italian restaurants
that feature meatballs per se on their menus. Brief,
unnumbered pp. 10-11.
As to the first point, it is settled that third-party
registrations based on use of the respective marks in
commerce and which cover various goods or services may
serve to suggest that the listed goods and services are of
a type which consumers may expect to emanate from a single
source. In re Azteca Restaurant Enterprises, Inc., 50
USPQ2d 1209, 1211 (TTAB 1999); In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1469 (TTAB 1988), aff’d in unpublished
opinion No. 88-1444 (Fed. Cir. November 14, 1988). In the
case at hand, the examining attorney introduced use-based
registrations for six marks, each of which is registered
for restaurant services and specific food items. Four of
these are for marks which readily reveal that the
restaurant services feature Italian food: A S FINE FOODS
SINCE 1948 and design [including a map of Italy among the
design elements]; GINO'S PIZZA EXPRESS; GINO'S PIZZA AND
SPAGHETTI HOUSE; and PRIMA PIZZA. The registrations for
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each of these four marks also cover Italian food items.
Two of the six registrations, specifically, the A S FINE
FOODS SINCE 1948 and GUDTFOOD registrations, list not only
restaurant services but also meatballs as a discrete item.
As for the "something more" nexus required by the
Jacobs and Coors decisions and discussed in Azteca and
other Board decisions, applicant asserts that the nexus can
be established by showing the cited mark to be famous, as
in Jacobs, or the unique nature of the involved marks, as
in Mucky Duck, or that a registrant's mark covers food
items of a type served in an applicant's restaurant, as in
Azteca. However, applicant asserts that none of these
factors is present in the current appeal. We disagree and
find persuasive the examining attorney's contention that
the something more requirement is satisfied in this case.
Applicant is correct that there is nothing in the
record to establish that the mark in the cited registration
is famous and, therefore, the fame of the registered mark
cannot be the source of the something more nexus in this
case. Applicant's contention, however, that there is
nothing unique about the mark in the cited registration is
without any evidentiary support. Applicant contends that a
search on the GOOGLE search engine for "Mama Lucia"
retrieved 3,450 "hits" but only 46 pertained to the
Ser No. 76564139
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registrant. The contention has no support whatsoever in
the record. Applicant did not make copies of even the
search query or search results of record, not to mention
the web pages purportedly retrieved by the search. See In
re Bayer Aktiengesellschaft, No. 06-1279, slip op. at 9-10,
(Fed. Cir. May 24, 2007)(search engine search results alone
have little probative value). Nor are there any third-
party registrations of MAMA LUCIA, MAMMA LUCIA or any other
similar spelling, of record. Cf. Coors, supra, 68 USPQ2d
1062-63 (although it did not result in a finding of
weakness of the cited mark, applicant presented evidence of
third-party marks, registered or in use, that the Board
considered). In short, there is nothing to show that the
cited mark is weak and entitled to only a narrow scope of
protection. In the absence of evidence to the contrary, we
must consider the registered mark distinctive and unique.
More importantly, while applicant contends that this
case is unlike Azteca, we find the comparison apt. In that
case, the Board noted "a review of applicant's menu shows
that applicant serves a variety of Mexican fare, including
tacos, tortillas and salsa (that is, the very items listed
in the cited registrations)." Azteca, 50 USPQ2d at 1211.
Here, a review of applicant's menu shows that applicant
serves meatballs, the goods of the cited registration, not
Ser No. 76564139
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only as an element of certain entrees, but also as a
separately available item.
Applicant has acknowledged that the something more
requirement could be met by a showing that the cited mark
is unique or that the goods covered by the cited mark are a
type of cuisine that would be sold in applicant's
restaurant. Both factors are present here. We are not
persuaded that we should find to the contrary because of
applicant's argument that the meatballs in the cited
registration could be "Swedish, French, Italian, Spanish,
Asian, Mexican, Barbecue, etc.," because even this argument
acknowledges they could be Italian. In fact, registrant
does market Italian meatballs, as shown by the newspaper
advertisement made of record by the examining attorney.1
Nor do we find significant applicant's argument that its
meatballs would only be served cooked and ready to eat,

1 Applicant asserted that the advertisement does not establish
that the advertised MAMA LUCIA Italian meatballs are from
registrant. However, as the examining attorney noted in the
brief on appeal, the picture of the package in the ad shows the
MAMA LUCIA mark displayed in the same style of lettering and
color as on images of registrant's goods appearing on applicant's
web site. Further, in the same box in the grocery store circular
featuring the ad for meatballs is an inset box advertising
another product shown on registrant's website. Thus, we have no
doubt that the advertisement is for registrant's meatballs. We
hasten to add, however, that even without this advertisement,
Italian meatballs would be encompassed by registrant's
identification of goods and we would still find a likelihood of
confusion even if the advertisement were not in the record.

Ser No. 76564139
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whether served in one of applicant's restaurants or for
carry out, while registrant's meatballs would need to be
cooked or heated after purchase.
Applicant's only remaining arguments that there is no
likelihood of confusion focus on the different channels of
trade for restaurant services and food items and the
asserted lack of actual confusion. Brief, pp. 7 & 8. We
do not find either argument to aid applicant's position.
There can be no doubt that the same class of purchasers is
at issue, i.e., purchasers of Italian food, whether in
applicant's restaurants or in stores that would sell
registrant's meatballs. The divergence of channels of
trade actually contributes to a likelihood of confusion
because there would be no opportunity for consumers to
compare the marks on registrant's packaging with, for
example, applicant's menu. Given the fallibility of
memory, a diner having eaten in one of applicant's
restaurants, subsequently confronted with registrant's
goods while shopping in a supermarket would be hard-pressed
to note that registrant's mark employed one less letter "M"
than applicant's mark. As for the asserted absence of
instances of actual confusion, it has been frequently noted
that the absence of significant evidence of actual
confusion does not mean that there is no likelihood of
Ser No. 76564139
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confusion. See Majestic, 65 USPQ2d at 1205 (“The lack of
evidence of actual confusion carries little weight”). See
also Giant Food, 218 USPQ at 396. Moreover, in an ex parte
proceeding, “uncorroborated statements of no known
instances of actual confusion are of little evidentiary
value.” Majestic, 65 USPQ2d at 1205.
Decision: The refusal of registration under Section
2(d) of the Trademark Act is affirmed.