Antica Pasteria S.p.A.

Trademark Trial and Appeal Board

Jun 26, 2001

No. 75231061 (T.T.A.B. Jun. 26, 2001)

06/26/01
Paper No. 15
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Antica Pasteria S.p.A.
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Serial No. 75/231,061
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Michael Schwarz of The Ruchelman Law Firm for Antica
Pasteria S.p.A.
Linda M. King, Trademark Examining Attorney, Law Office 101
(Jerry Price, Managing Attorney).
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Before Seeherman, Hohein and Chapman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Antica Pasteria S.p.A. has appealed from the final
refusal of the Trademark Examining Attorney to register the
mark ANTICA PASTERIA and design, shown below, for “pasta,
flour, processed cereals, breads, biscuits, cakes and
pastry.”1 The English translation of the Italian word
“antica” is “old.”
1 Application Serial No. 75/231,0061, filed January 24, 1997,
and asserting a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/231,061
2
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), on the ground of
likelihood of confusion with the mark ANTICO PASTIFICIO and
design, reproduced below, which is registered for “pasta.”
The registered mark includes a disclaimer of the word
PASTIFICIO and the statement that “antico pastificio” may
be translated as “old pasta factory.” It is the Examining
Attorney’s position that applicant’s mark so resembles the
mark ANTICO PASTIFICIO and design that, if used on
applicant’s identified goods, it would be likely to cause
confusion or mistake or to deceive.
Applicant and the Examining Attorney have filed appeal
briefs. An oral hearing was not requested.
Our determination is based on an analysis of all of
the probative facts in evidence that are relevant to the
factors set forth in In re E. I. du Pont de Nemours & Co.,
Ser. No. 75/231,061
3
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 similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The goods in the cited registration are pasta, and
pasta is one of the items listed in applicant’s
identification of goods. The goods, then, are in part
identical and, as such, are deemed to be sold in the same
channels of trade and to the same classes of purchasers.
Such purchasers, in the case of these common consumer
products, would include the public at large.
We turn then to a consideration of the marks, keeping
in mind that “when marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
We find that both marks convey very similar commercial
impressions. Both begin with the virtually identical word
ANTICA/ANTICO. As applicant acknowledges, this is the same
word, which translates as “old,” and the final letter “A”
or “O” merely reflects whether the word is modifying a
Ser. No. 75/231,061
4
feminine or masculine noun. Thus, those consumers who are
familiar with Italian will view the words as the same,
while those who do not understand Italian are unlikely to
notice the difference in the final letter, particularly
because of the type styles used in these special form
drawings. The second word of each mark begins with the
letters “PAST” and, for those not familiar with Italian,
both PASTERIA and PASTIFICIO, when used in connection with
pasta, will suggest PASTA. Although the endings of the
words are different, these differences are overridden by
the strong similarities in the marks as a whole. The
design elements, too, although not accorded as much weight
as the words, reinforce the similarities between the marks
because they both depict sheaves of wheat.
Thus, although differences between the marks may be
seen when they are viewed side by side, under actual
marketing conditions purchasers ordinarily do not have the
opportunity for such careful scrutiny. Thus, the focus
must be on the general recollection produced by a
purchaser’s encounter with applicant’s mark and the mental
impression and mental comparison with opposer’s mark. See
Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255
(TTAB 1980).
Ser. No. 75/231,061
5
Applicant and the Examining Attorney have discussed at
some length the meaning of the word PASTERIA, with the
Examining Attorney contending that it means a place where
pasta is served, while applicant asserts that it has no
generally accepted meaning. The record shows that
applicant is correct that the word “pasteria” is not listed
in any English or Italian dictionaries. However, the Nexis
evidence submitted by the Examining Attorney shows that
“pasteria” has been used in a number of articles appearing
in newspapers in the United States to refer to a restaurant
serving, inter alia, pasta.2 These articles indicate that
the authors expect the public to understand “pasteria” to
mean a pasta restaurant, and also indicate that the public
has been exposed to this meaning of the word.
The fact that some customers who understand Italian
will know that PASTIFICIO means pasta factory, or that
others will understand PASTERIA to mean a pasta restaurant,
does not have a strong impact on our finding of likelihood
of confusion. For those who are unaware of these meanings,
2 See, for example: “Don’t think for a moment that this is your
average neighborhood pasteria. Despite its commonplace
nomenclature, Pasta Pasta is a romantic candlelit hideaway….”
“Newsday,” December 20, 1996; “…Pasta Pasta Pasta an eat-in,
take-out pasteria in North Cherry Creek.” “Denver Rocky Mountain
News,” June 7, 1995; and “Pappardelle are wide, flat noodles, and
the recommended meat sauce is a delicate veal ragu that I’d say
rivals that of most accomplished pasterias.” “Los Angeles
Times,” April 8, 1994.
Ser. No. 75/231,061
6
both words will simply look like highly similar terms based
on the word PASTA. For those who are aware of one or both
of the meanings, they are likely to view the marks, because
of the other similarities in the marks, as variations of
each other. That is, consumers who are familiar with the
ANTICO PASTIFICIO and design mark used on pasta are likely
to assume, upon encountering the ANTICA PASTERIA and design
mark on pasta, that the latter mark is a variant of the
former, and that both products emanate from the same
source. It must also be remembered that pasta is a low
cost item, and therefore purchasers are not likely to
examine carefully the trademarks to check for slight
differences between them, or to undertake a great deal of
analysis as to whether any slight differences indicate
different sources of the goods. They are far more likely
to assume, given the overall similarities between the
marks, that the products they identify emanate from the
same source.
Applicant also argues that the words ANTICO/ANTICA are
weak, and that PASTIFICIO is descriptive. In support of
this argument, applicant has submitted copies of third-
party registrations which include the word ANTICA.3 We note
3 These registrations, made of record with applicant’s response
to the first Office action, were taken from a private search
Ser. No. 75/231,061
7
that six of these registrations have been cancelled, and
several are for goods other than food products. Applicant
has also pointed out that the word PASTIFICIO in the cited
registration has been disclaimed. However, even if we
accept that the cited mark is weak, and therefore entitled
to a more limited scope of protection, that protection
still extends to prevent the registration for identical
goods of a mark which contains not only the term ANTICA,
but is followed by a word very similar in appearance to
PASTIFICIO, and is used with a design that also includes
wheat sheaves.
Decision: The refusal of registration is affirmed.
service’s records, and therefore normally would not be acceptable
as evidence of such registrations. However, because the
Examining Attorney did not object to them, we have deemed them to
have been stipulated into the record.