Figaro Coffee Company, Inc.

Trademark Trial and Appeal Board

Jul 1, 2008

No. 78857540 (T.T.A.B. Jul. 1, 2008)

Mailed:
July 1, 2008
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Figaro Coffee Company, Inc.
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Serial No. 78857540
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Gregory C. Smith of Garvey Smith Nehrbass & North, L.L.C.
for Figaro Coffee Company, Inc.

John M. Wilke, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
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Before Seeherman, Bucher and Kuhlke, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Figaro Coffee Company, Inc. seeks registration on the
Principal Register of the following mark:

for goods and services identified in the application as,
“coffee, tea, cocoa, sugar, rice, tapioca,
sago, artificial coffee and flour;
preparations made from cereals, bread,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78857540
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pastry and confectionery, namely, cereal
based snack bars; flavored ices, honey and
treacle; condiments, namely, yeast, baking
powder, salt, mustard, vinegar; sauces,
spices; ice” in International Class 30; and

“serving food and drinks; restaurant and
cafe services” in International Class 43.1
This case is now before the board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark
Examining Attorney has found that applicant’s mark, if used
in connection with the identified goods and services, so
resembles the following three marks, all owned by the same
party:
FIGARO'S for “restaurant and take out services” in
International Class 42;2

1 Application Serial No. 76632896 was filed on April 10, 2006
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce. No claim is made to the words “Coffee
Company” apart from the mark as shown. Applicant has provided
the following description of the mark: “The words ‘Figaro Coffee
Company’ and the cup, saucer and spoon are black on a coffee-
colored oval shaped background, having a black border, with the
word ‘Figaro’ written in script as streaming above the coffee
cup, and the words ‘Coffee Company’ written in black letters
along the lower edge of the coffee-colored oval.” The colors
brown and black are claimed as a feature of the mark.

2 Registration No. 2086079 issued on August 5, 1997; renewed.
Serial No. 78857540
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FIGARO'S for “baked and unbaked freshly prepared pizza and
breadsticks; unbaked freshly prepared calzone,
lasagna and garlic bread” in International Class
30;3 and
FIGARO for “chocolate; non-chocolate confectionery,
namely, marshmallows, candy, chewing gum, honey,
flavored ices, and sweetened pretzels” in
International Class 30;4

as to be likely to cause confusion, to cause mistake or to
deceive.
The Trademark Examining Attorney and applicant have
filed briefs in the case. We affirm the refusal to
register.
In arguing for registrability, applicant contends that
the word “Figaro” is not the dominant feature of its mark,
and that its mark has a different commercial impression
from registrant’s marks; and that registrant’s listing of
food items is quite limited and would appear to be sold
only through registrant’s own Italian restaurant.
By contrast, the Trademark Examining Attorney contends
that the word “Figaro” is clearly the most dominant feature
of applicant’s mark in terms of creating a commercial
impression in the minds of consumers; and that the goods

3 Registration No. 2433573 issued on March 6, 2001; Section 8
affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

4 Registration No. 2850038 issued on June 8, 2004.
Serial No. 78857540
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and services of applicant and registrant are closely-
related and even overlapping.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood
of confusion is based upon our analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on this issue. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In this case,
applicant and the Trademark Examining Attorney have focused
exclusively on the two key considerations in any likelihood
of confusion analysis, namely, the similarities between the
marks and the relationship between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
The Marks
We turn first to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
Serial No. 78857540
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entireties as to appearance, sound, connotation and
commercial impression. See Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (Fed. Cir. 2005).
The analysis is not whether the marks can be
distinguished when compared side-by-side. Rather, we must
determine whether the marks are sufficiently similar that
there is a likelihood of confusion as to source and, in
making this determination, we must consider the
recollection of the average purchaser who normally retains
a general, rather than specific, impression of trademarks.
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975). Further, while it is correct that we must
view the mark in its entirety, Kangol Ltd. v. KangaROOS
U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992),
it is also well settled that “there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of the mark, provided
[that] the ultimate conclusion rests on consideration of
the marks in their entireties. Indeed, this type of
analysis appears to be unavoidable.” In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 750-51 (Fed. Cir.
1985).
Serial No. 78857540
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As was noted by the Trademark Examining Attorney,
although applicant’s composite mark is contained within an
oval background and features the image of a coffee cup and
spoon, the literal portions are generally the dominant and
most significant features of marks because consumers will
call for the goods or services in the marketplace by that
portion. In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987). We consider that principle to be applicable
to this case, and we give greater weight to the wording
rather than to the design elements and stylization in
applicant’s mark.
Additionally, the word
“Figaro” in applicant’s composite
mark dominates over the disclaimed
words “COFFEE COMPANY.” The
dominant portion of applicant’s mark, FIGARO, is identical
to registrant’s mark, FIGARO, and virtually identical to
registrant’s FIGARO’S mark. The disclaimed words “Coffee
Company” in applicant’s mark, and the possessive form in
one variation of registrant’s mark (FIGARO’S), are not
differences sufficient to distinguish the marks.
In view thereof, we find that applicant’s mark is
quite similar in connotation and commercial impression when
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compared with registrant’s cited marks, such that it
overcomes any dissimilarity in sound and appearance between
applicant’s mark and registrant’s marks. Thus, with regard
to the first du Pont factor, we find that the marks are
similar, favoring a finding of likelihood of confusion.
The Goods and Services
We turn then to a consideration of the goods and
services identified in the application and the cited
registrations.
In order to affirm a refusal, it is only necessary
that we find likelihood of confusion with respect to at
least one item in each class of applicant’s goods or
services. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)
[“[L]ikelihood of confusion must be found if the public,
being familiar with [opposer’s] use of MONOPOLY for board
games and seeing the mark on any item that comes within the
description of goods set forth by appellant in its
application ….”]. Accordingly, we note that “honey” and
“flavored ices” in applicant’s application are identical to
the “honey” and “flavored ices” identified in the ’038
Registration, and “restaurant services” recited in
applicant’s application is identical to the “restaurant
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services” recited in the ’079 Registration. Further,
applicant’s “bread” must be considered, at the very least,
closely related to the “baked and unbaked freshly prepared
breadsticks” and “unbaked freshly prepared garlic bread”
identified in the ’573 Registration. See Helene Curtis
Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB
1989). Thus, with regard to this critical du Pont factor,
we find that the goods and services are in part identical
or closely related, also favoring a finding of likelihood
of confusion.
Additionally, although applicant argues that
registrant’s goods appear to be sold only through
registrant’s own Italian restaurant, we must consider the
cited registrant’s goods as they are described in the
registration, and we cannot read limitations, for example,
into the “honey” and “flavored ices” listed therein. See
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc.
v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1987). If the cited registration describes
goods and services broadly, and there is no limitation as
to the nature, type, channels of trade or class of
purchasers, it is presumed that the registration
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encompasses all goods and services of the type described,
that they move in all channels of trade normal for these
goods and services, and that they are available to all
classes of purchasers for the described goods and services.
See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).
Further, even if we treat registrant’s baked and unbaked
freshly prepared breadsticks and unbaked freshly prepared
garlic bread as being sold only from restaurant premises,
consumers encountering bread in supermarkets that is sold
under applicant’s very similar mark are likely to believe
that the registrant has expanded its sales to supermarkets.
Conclusion
In summary, we find that applicant’s goods and
services are in part identical to registrant’s goods and
services, and that the marks are confusingly similar.
Decision: The refusal to register this mark under
Section 2(d) of the Lanham Act is hereby affirmed.