DiLegge

Trademark Trial and Appeal Board

Sep 26, 2000

No. 75425118 (T.T.A.B. Sep. 26, 2000)

Paper No.
13
GDH/gdh
9/26/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re DiLegge
________
Serial No. 75/425,118
_______
Jamie J. Fitzgerald of Cummings & Lockwood for William
DiLegge.
Jennifer D. Richard, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Simms, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
William DiLegge has filed an application to register
the mark "PASTA COSI" for "pasta sauces, namely, tomato-based
sauces."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant's mark, when applied to his goods, so resembles

1 Ser. No. 75/425,118, filed on January 28, 1998, which alleges a
bona fide intention to use the mark in commerce. The word "COSI"
means "LIKE THIS" in English and the term "PASTA" is disclaimed.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/425,118
2
the mark "COSI," which is registered for "restaurant
services,"2 as to be likely to cause confusion, mistake or
deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal to
register.
Turning first to consideration of the respective
goods and services, it is well settled that that the issue of
likelihood of confusion must be determined on the basis of the
goods and services as they are set forth in the involved
application and cited registration. See, e.g., CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983);
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983); and Paula Payne Products Co. v. Johnson Publishing
Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Thus,
where the goods and services in the application at issue and
in the cited registration are broadly described as to their
nature and type, it is presumed in each instance that in scope
the application and registration encompass not only all goods
and services of the nature and type described therein, but
that the identified goods and services move in all channels of

2 Reg. No. 2,046,483, issued on March 18, 1997, which sets forth
dates of first use of February 17, 1996. The word "COSI" means "LIKE
THIS" in English.
Ser. No. 75/425,118
3
trade which would be normal for such goods and services and
that they would be purchased by all potential buyers thereof.
See, e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Applicant, contrary to the above, contends that his
"PASTA COSI sauce is intended for home use" and would be "sold
in supermarkets and food stores," while registrant's "COSI
sandwich shops do not in fact sell sauces and never have."3
According to applicant, "COSI is not even an Italian
restaurant, nor, more to the point, are its services
identified as such in its registration." Instead, and notably
without any evidentiary support, applicant asserts that "COSI
is simply the name of a very small restaurant chain" and,
because "[t]he Examiner has offered no proof that COSI
restaurant is any more likely to sell spaghetti sauces than
Burger King is," insists that "[t]he channels of trade are
different, [and] the customers are different." However, why
customers for applicant's tomato-based pasta sauces would not
also have occasion to patronize registrant's restaurant
services is never explained.
Applicant, although again without citation to
relevant authority, is nevertheless on firmer ground in
arguing that there is no per se rule that all food products

3 Presumably, applicant bases such argument on the fact that the
owner of the cited registration is listed as "Wainwright Sandwich
Partners."
Ser. No. 75/425,118
4
and restaurant services are related for purposes of
determining whether contemporaneous use of marks respectively
associated therewith is likely to cause confusion. As our
principal reviewing court has held in Jacobs v. International
Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA
1982), "[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."
Here, notwithstanding the evidence (discussed below) made of
record by the Examining Attorney in support of her position,
applicant "disputes the Examining Attorney's argument that
because some restaurants may sell their own private label food
products, all food products are therefore 'related' to all
restaurant services for purposes of the likelihood of
confusion analysis."
Specifically, applicant urges that "[t]he Examining
Attorney's scanty evidence does not warrant leaping to the
conclusion that 'consumers familiar with registrant's COSI
restaurant services would be likely to conclude, upon seeing
applicant's PASTA COSI pasta sauce in a grocery store, that
the pasta sauce was manufactured or sponsored by the
registrant.'" According to applicant:

Ser. No. 75/425,118
5
This is not only rigidly academic, but
implausible. There are relatively few
consumers familiar with registrant's
localized operations.
Applicant readily admits that there
are some famous restaurant marks, e.g.,
McDonald's to Lutêce, from Hard Rock Café
to Zabar's, that are used in connection
with many types of food and restaurant
products and services and even other
merchandise. Applicant further concedes
that because those marks are strong, the
use of a highly similar mark on most types
of food products would cause confusion.
However, COSI is not such a mark, and the
Examining Attorney has offered no proof
that it is. PASTA COSI is different from
COSI. The relevant consumers would neither
recognize nor expect that either mark is
used in connection with both restaurants
and sauces. ....
As the Examining Attorney correctly observes, the
issue of likelihood of confusion must be determined in part by
whether applicant's tomato-based pasta sauces are related in a
commercial sense to the "restaurant services" identified in
registrant's registration, an identification which necessarily
includes Italian restaurant services. Here, the Examining
Attorney has made of record 15 use-based third-party
registrations of marks which are registered for "pasta
sauces," "Italian sauces, "tomato sauces" or other "sauces"
(which would include tomato-based pasta sauces) on the one
hand and "restaurant services" on the other. Four of such
registrations, in fact, plainly encompass both tomato-based
pasta sauces and Italian restaurant services. Although the
Ser. No. 75/425,118
6
third-party registrations are admittedly not evidence that the
different marks shown therein are in use or that the public is
familiar with them, they nevertheless have some probative
value to the extent that they serve to suggest that the goods
and services listed therein are of the kinds which may emanate
from a single source. See, e.g., In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at n. 6.
In addition, the Examining Attorney has made of
record excerpts from newspapers and magazine articles which,
as pointed out by the Examining Attorney, "demonstrate a trend
for restaurants to offer or license food items bearing their
restaurant mark for sale in grocery stores." Such evidence,
we further note, indicates that the opposite is also occurring
in that producers of food products are expanding to open
restaurants under the same marks as utilized in connection
with their food items. The following examples are
representative:
"Some confused shoppers wheeling down
supermarket aisles might mistakenly think
they're at their favorite chain restaurant.
Big chains from Taco Bell to Starbucks
are virtually lining up to license their
names for products sold at the grocery
store.
With a wave of consumer interest in
familiar brand names, restaurant chains
could amass more than $1 billion in
additional revenue within three years,
simply by licensing their brand names to
Ser. No. 75/425,118
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everything from ice cream to salsa makers,
projects restaurant industry consultant Ron
Paul." -- USA TODAY, undated (article
headlined: "Restaurant brands fill
supermarkets");
"The supermarket display case, once
the preserve of just a few branded
restaurant products, has exploded as dozens
of restaurant chains fill the shopping
aisles with food from their menus.
....
Just nine months into a test market
program ..., Taco Bell has ... penetrate[d]
more than 2,000 supermarkets--mainly in the
Midwest and South--with its branded line of
salsa, taco sauce, taco shells, refried
beans and other products. In most of the
test markets where the test is under way,
Taco Bell is the No. 1 label in the Mexican
foods and snack category, spokesmen said.
....
Once viewed as a gimmicky out-of-field
marketing opportunity tht [sic] was long
associated with White Castle hamburgers or
the steak sauce of Lawrys The Prime Rib
steak house, the placement of signature
menu items by restaurants has become a
thriving enterprise for Chi-Chi's,
Friendly's, Cucina! Cucina!, Chicago
Brothers Pizza, Marie Callender, T.G.I.
Friday's[,] Sonny's Barbecue, Bennigan's,
Skyline Chili, Bob Evans and Nathan's
Famous.
....
Foodservice operators aren't alone in
their efforts to cross-merchandise their
product. Branded consumer foods suppliers
are taking what is for them a non-
traditional route to diversify their
revenue streams by opening restaurants.
In the Atlanta Airport, for example, a
year ago Oscar Mayer launched a prototype
of a foodservice outlet it intends to
license nationwide, featuring its weiners
[sic] and other products.
More recently, the Monterey Pasta Co.,
a popular fresh-pasta label in West Coast
Ser. No. 75/425,118
8
supermarkets, is opening mall-based
restaurants. Both efforts came years after
Haagen-Dazs and Ben and Jerry's ice-cream
manufacturers branded out with
restaurants." -- Nation's Restaurant News,
November 15, 1993;
"Consumers now can have their
'celebration of food' at home with new Chi-
Chi Restaurant Style San Antonio Chile.
Retailing for $1.79 in supermarkets
nationwide are 15-oz. cans." -- New Product
News, October 12, 1993; and
"Tumbleweed Chile Con Queso, cheese
dip from Tumbleweed restaurants that sells
for about $2.80 in supermarkets." --
Courier-Journal, April 24, 1989.
Clearly, rather than constituting what applicant
dubs "scanty evidence," the above proof is more than
sufficient to show the requisite "something more" between
tomato-based pasta sauces and restaurant services, including
in particular Italian restaurants. See, e.g., In re Azteca
Restaurant Enterprises Inc., 50 USPQ2d 1209, 1211 (TTAB 1999).
We consequently concur with the Examining Attorney that the
respective goods and services are so closely related that, if
marketed under the same or similar marks, confusion as to
their source or sponsorship would be likely to occur.4

4 As the Examining Attorney accurately notes in her brief:
It has often been held that food products and
restaurant services are closely related. In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988) ...
(likelihood of confusion between MUCKY DUCK with duck
design used on mustard and MUCKY DUCK with duck design
used on restaurant services); In re Appetitio Provisions
Ser. No. 75/425,118
9
Turning, therefore, to consideration of the marks at
issue, applicant argues that while the marks "PASTA COSI" and
"COSI, when considered in their entireties," "overlap in the
word COSI, ... that alone does not give rise to a per se
likelihood of confusion" and that, overall, such marks "create
sufficiently different commercial impressions ... so that
there is no likelihood of confusion." According to applicant,
"[t]he fact that the word PASTA is disclaimed does not render
it invisible"; rather, the presence thereof in applicant's
mark "creates a strong impression, such that the overall

Co. Inc., 3 USPQ2d 1553 (TTAB 1987) (likelihood of
confusion between APPETITO and design used on [I]talian
sausage and A APPETITO'S with sandwich design used on
restaurant services); In re Best Western Family Steak
House, Inc., 222 USPQ 827 (TTAB 1984) (likelihood of
confusion between BEEFMASTER used on restaurant services
and BEEF MASTER used on frankfurters and bologna); Roush
Bakery Products Co. Inc. v. Ridlin, 190 USPQ 445 (TTAB
1976) (likelihood of confusion between HILLBILLY and
design used on bread and HILLBILLY RESTAURANT used on
restaurant services); ... In re Three Chefs Corp., 175
USPQ 177 (TTAB 1972) (likelihood of confusion between IT'S
WISHBONE SWEET used on restaurant and carryout food
services and WISHBONE used on frozen poultry); The Dog
House, Inc. v. The Dawg House, Inc., 138 USPQ 466 (TTAB
1963) (likelihood of confusion between THE DOG HOUSE and
design used on restaurant services and DAWG HOUSE used on
food products); [and] Arnold Baker's, Inc. v. Food
Catering, Inc., 123 USPQ 511 (TTAB 1959) (likelihood of
confusion between THE BRICK OVEN and design used on
restaurant services and BRICK OVEN or BRICKOVEN and design
used on cookies and other baked goods).
Ser. No. 75/425,118
10
significance of the mark as a whole is distinct from that of
[registrant's mark] COSI."5

5 In his brief, applicant additionally raises the argument that
(italics in original):
COSI is also registered under No. 1,553,918 [sic] to
Nestle SA for "coffee and coffee extracts; coffee
substitutes and extracts of coffee substitutes" ... since
1989. If Nestle's COSI ... did not bar the registration
of COSI (the cited mark) for restaurant services ... a
decade latter, why should the registration ... now bar the
registration of PASTA COSI? Applicant recognizes that the
Examining Attorney is not bound by the vagaries of prior
registration decisions. On the other hand, surely an
applicant is entitled to rely on a certain degree of
consistency in decisions to register.
Coffee is invariably served in any sort of
establishment serving meals, yet the Commissioner had no
problem registering the cited COSI for restaurant services
in coexistence with the senior registration of COSI for
coffee. It therefore seems rather punitive and arbitrary
to now take the position that a mark as different as PASTA
COSI, for which registration is sought only for pasta
sauces ..., may not join the field.
While applicant also makes the statement, for which there is no proof
of record, that the mark "COSITA was recently allowed for use on
canned, jarred and frozen fruits and vegetables" by another third
party, the Examining Attorney dismisses applicant's reliance "on the
purported existence of third[-]party registrations" by noting that,
"[s]ince copies were not provided, these registrations are not part
of the record and have not been considered." However, the existence
of the Nestle registration (which is actually Reg. No. 1,552,918),
like that of the cited registration, was noted by applicant in the
application as filed, along with a statement that applicant believes
that his mark "is registrable over Reg. Nos.: 1,552,918 and
2,046,483, because there is no likelihood of confusion ...."
Consequently, as to the Nestle registration, the Examining Attorney
should have treated the fact of the existence thereof as being of
record. Nevertheless, we are not persuaded by applicant's argument
with respect thereto since, while consistency of examination is
certainly desirable, it is still the case that the existence of
third-party registrations of the same or similar marks has little
weight on the question as to whether the marks at issue, when viewed
as a whole, are confusingly similar in light of the respective goods
and services. The existence of third-party registrations for the
Ser. No. 75/425,118
11
The Examining Attorney, on the other hand, tellingly
notes that "applicant has not pointed to any specific
difference in meaning caused by the addition of the
descriptive term PASTA" to the word "COSI" in applicant's
mark. Thus, the Examining Attorney maintains that "the mere
addition of the word PASTA to the registered mark COSI does
not serve to obviate the likelihood of confusion caused by the
applicant's mark PASTA COSI."
We agree with the Examining Attorney that, when
considered in their entireties, the marks "PASTA COSI" and
"COSI" are substantially similar in sound, appearance,
connotation and commercial impression, given the shared term
"COSI" and that the sole difference is the addition of the
descriptive term "PASTA" in applicant's mark. While, as we
have done, the respective marks must be compared in their
entireties, it is nevertheless the case that, in articulating
reasons for reaching a conclusion on the issue of likelihood
of confusion, "there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided [that] the ultimate
conclusion rests on consideration of the marks in their

same or similar marks is not evidence of what happens in marketplace
or that customers are familiar with their use. In short, "the
existence of confusingly similar marks already on the register will
not aid an applicant to register another confusingly similar mark."
Ser. No. 75/425,118
12
entireties." In re National Data Corp., 753 F.3d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). For instance, "that a
particular feature is descriptive or generic with respect to
the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark ...."
224 USPQ at 751.
Here, as noted above, because the dominant and
distinguishing element of applicant's "PASTA COSI" mark, due
to the descriptiveness of the term "PASTA" for tomato-based
pasta sauces, is the arbitrary word "COSI," which is identical
to registrant's "COSI" mark and is likewise arbitrary for
restaurant services, the respective marks as a whole engender
substantially the same commercial impression. Accordingly, we
conclude that purchasers and prospective customers, familiar
with registrant's "COSI" mark for "restaurant services," would
be likely to believe, upon encountering applicant's
substantially similar "PASTA COSI" mark for "pasta sauces,
namely, tomato-based sauces," that such closely related
services and goods emanate from, or are otherwise sponsored by
or affiliated with, the same source. See, e.g., In re Azteca
Restaurant Enterprises Inc., supra at 1212-13. In particular,
and even if such consumers were to notice the difference in
the marks, in that applicant's mark includes the word "PASTA,"

Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406,
Ser. No. 75/425,118
13
they would still be likely to view applicant's "PASTA COSI"
tomato-based pasta sauces as a new product line from the same
source as the operators of registrant's "COSI" restaurants.
Decision: The refusal under Section 2(d) is
affirmed.
R. L. Simms
T. J. Quinn
G. D. Hohein
Administrative Trademark
Judges,
Trademark Trial and Appeal
Board

407 (CCPA 1967).