Bertucci

Trademark Trial and Appeal Board

Jul 9, 2008

No. 76646021 (T.T.A.B. Jul. 9, 2008)

Mailed:
July 9, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bertucci
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Serial No. 76646021
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Nathan E. Debaun of Ungaretti & Harris LLP for Denise A.
Bertucci.

Nelson B. Snyder III, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Hairston, Drost, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

On September 1, 2005, Denise A. Bertucci, an
individual, filed an application to register the mark
FABULOUS FREDDIES ITALIAN EATERY (in standard characters)
for “restaurants; namely restaurants providing take-out and
fast food services” in International Class 43. The terms
FABULOUS and ITALIAN EATERY are disclaimed. The
application also contains a statement that “the name
‘Frederick Bertucci’ identifies a living individual whose
consent is of record.” The application is based on an
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 76646021
2
allegation that applicant has a bona fide intent to use the
mark in commerce.
The examining attorney refused to register the mark
under Section 2(d) of the Trademark Act based on a prior
registration for the mark FABULOUS FREDDY’S for, inter
alia, “retail store services featuring convenience store
items and gasoline” in International Class 35. 15 U.S.C. §
1052(d).1
After the examining attorney made the refusal final,
this appeal followed.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant
to the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973).
However, as indicated in Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976), in any likelihood of confusion analysis, two key
considerations are the relatedness of the goods/services at

1 Registration No. 3098172, issued May 30, 2006. The
registration also covers services in International Class 37;
however, the examining attorney concentrated his refusal based on
a likelihood of confusion only with registrant’s retail
convenience store services. Section 8 affidavit accepted and
Section 15 declaration acknowledged for the cited registration.

Serial No. 76646021
3
issue and the similarity or dissimilarity of the respective
marks in their entireties.
We first consider the marks at issue. In doing so, we
examine the similarities and dissimilarities of the marks
in their appearance, sound, meaning, and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). The test, under the first du
Pont factor, is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of
their overall commercial impression that confusion as to
the source of the goods offered under the respective marks
is likely to result. The focus is on the recollection of
the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). Furthermore, although the marks at issue must be
considered in their entireties, it is well-settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re Chatam International Inc., 380 F.3d
Serial No. 76646021
4
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
In applying the aforementioned principles, we waste no
time in discerning that the dominant element in applicant’s
mark is the phrase FABULOUS FREDDIES inasmuch as the
remaining phrase ITALIAN EATERY is descriptive, if not
generic, for applicant’s services and is disclaimed. See
In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987) (JM
ORIGINALS with ORIGINALS disclaimed confusingly similar to
JM COLLECTABLES). Although the term FABULOUS is laudatory
(and also disclaimed), it is joined with FREDDIES due, in
part, to the alliterative element. While we have not
disregarded the ITALIAN EATERY phrase in our comparison of
the respective marks, it is entitled to less weight than
the arbitrary phrase FABULOUS FREDDIES. See In re Chatam
International Inc., 380 F.3d 1340; In re National Data
Corp., 753 F.2d 1056.
The dominant portion of applicant’s mark, FABULOUS
FREDDIES, is identical phonetically and very similar in
appearance, connotation and commercial impression to the
registered mark, FABULOUS FREDDY’S. The commercial
impression created by both marks is that of touting a
positive image (“fabulous”) of a person (or persons) named
“Freddy,” who owns or has a connection to the services,
Serial No. 76646021
5
whether true in actuality or not. Although applicant’s
mark utilizes the plural form of the nickname “Freddy,”
whereas the registered mark takes the possessive form of
the same nickname, this will have little, if any,
significance for consumers in distinguishing the parties’
marks. Because of the very nature of applicant’s and
registrant’s services, i.e., fast food services and retail
convenience store services, we must assume that these
services will reach ordinary consumers who will also likely
be pressed for time. And, in determining likelihood of
confusion, due to the normal fallibility of human memory
over time, ordinary consumers retain a general rather than
a specific impression of trademarks encountered in the
marketplace. In re Research and Trading Corp., 793 F.2d
1276, 230 USPQ 49 (Fed. Cir. 1986). Such fallibility is
increased when the consumers are pressed for time and,
again, the respective services are by their very nature
catered to those who are pressured time-wise. Accordingly,
upon viewing the marks, it is far more likely that
consumers of applicant’s and registrant’s services will
likely only retain the same general overall commercial
impression from the two marks, that is, involving a
“fabulous” person named “Freddy”, rather than
Serial No. 76646021
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distinguishing between one having a plural and the other
having a possessive tense for the nickname.
We therefore find that the factor involving similarity
of the marks weighs in favor of finding a likelihood of
confusion.
We turn now to the similarity or dissimilarity of
registrant’s retail convenience store services and
applicant’s fast food and take-out restaurant services. In
this regard, the examining attorney has attached a
substantial amount of evidence that establishes a
relationship between the respective services.
Specifically, he has introduced several online articles and
ample third-party website evidence demonstrating
persuasively that many convenience stores, including those
that also sell gasoline, will also provide fast food
services or otherwise sell take-out meals.2 One of these
articles (from 2001) describes the idea of “placing
restaurants inside convenience store/gas stations” as “one
of the hottest trends of the fast-food industry.”3 Some
excerpts from other articles submitted by the examining
attorney include the following:

2 Attached to Office Actions dated April 23, 2007 and October 27,
2007.
3 From The Clarion-Leader (Jackson, MS), March 8, 2001.

Serial No. 76646021
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Subway first started broadening its location base in
the early 1990s when it began opening restaurants
inside convenience stores.

[The Wall Street Journal, September 1, 2006]

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[discussing a fire-damaged McDonald’s restaurant]…The
planned restaurant would have been inside a
convenience store, not a free-standing building, in a
grouping that includes a gas station.

[The Oregonian, July 11, 2005]

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Putting a quick-serve restaurant inside a convenience
store also makes people stay longer, instead of just
dashing in and out to pay for gas or buy a snack.

[Portland Press (Maine), March 16, 2002]

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In April, they started construction on the $ 1.4
million gas station and convenience store. Taco
Maker, Jake’s Over the Top and Mayan Jamma Juice
restaurants are inside the convenience store,
accessible from U.S. 60 or Interstate 77….
[Charleston Gazette (West Virginia), December 25,
2000]

Putting a branded fast-food restaurant inside a
convenience store may be a good way for c[onvenience]
stores to boost traffic and for fast-food chains to
gain prime real-estate sites, but some local
convenience store operators – such as Wawa and Sheetz
– have gone a long way in developing their own
reputable foodservice brands.
[Nation’s Restaurant News, January 6, 1997]

One of the third-party websites shows how a
convenience store expanded by selling gasoline and now
touts its ability to compete with fast-food restaurants:
Serial No. 76646021
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Sheetz is a family owned convenience store chain based
in Altoona, Pennsylvania. …One year later [in
1973],Sheetz added gasoline pumps and introduced self-
serve gasoline to central Pennsylvania. …Sheetz has
grown...with more than 330 locations across six
states. …It is popular belief that you can’t get good
tasting food at a convenience store. At Sheetz, we
like to turn such conventions on their heads. We have
developed a made-to-order program that rivals any
quick serve restaurant you’ve ever visited.
[from www.sheetz.com]
The articles and third-party website evidence
demonstrates that consumers are not unaccustomed to
receiving fast-food service in convenience stores. In some
cases, the convenience stores will host a scaled down,
separately-branded restaurant, whereas in other cases, the
convenience store will render its own fast-food restaurant
service. In either case, the convenience stores will be
competing with fast-food restaurants by offering similar
food items and vying for consumers who are seeking a quick
meal.
The examining attorney also introduced thirty-nine
(39) use-based third-party registrations which show that
various entities have adopted a single mark under which
they provide retail convenience store (or gasoline)
services as well as restaurant services akin to
registrants.4 Third-party registrations which individually

4 Attached to Office Actions dated August 30, 2006; April 23,
2007; and October 27, 2007.
Serial No. 76646021
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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. In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993). These third-party registrations support
a finding that applicant’s restaurant services are related
to registrant’s retail store services featuring convenience
store items and gasoline.
In view thereof, we find that there is clearly a
relationship between the cited registrant’s convenience
store services and applicant’s fast-food restaurant
services. Consequently, the factor involving the
similarity of the applicant’s and registrant’s services
favors a finding of a likelihood of confusion.
As alluded to, we find that there is also an overlap
in trade channels and consumers of the applicant’s and
registrant’s services. Again, we are persuaded by the
evidence of record that fast-food restaurant and
convenience store services are commonly offered together –
under the same roof. And, the same consumers who are
seeking fast-food service may easily be lured to a
convenience store offering such service.

Serial No. 76646021
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In summary, weighing all the relevant du Pont factors,
we conclude that consumers who are familiar or otherwise
acquainted with registrant's FABULOUS FREDDY’S mark for
"retail store services featuring convenience store items
and gasoline” would be likely to believe, upon encountering
applicant's substantially similar FABULOUS FREDDIES ITALIAN
EATERY mark for “restaurants; namely restaurants providing
take-out and fast food services” that the respective
services emanate from, or are sponsored by or affiliated
with, the same source.
Decision: The examining attorney's refusal to register
under Section 2(d) is affirmed.