Food Venture Capital Group, Ltd.

Trademark Trial and Appeal Board

Mar 25, 2003

No. 75573201 (T.T.A.B. Mar. 25, 2003)

Mailed: March 25, 2003
Paper No. 24
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Food Venture Capital Group, Ltd.
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Serial Nos. 75/573,201 and 75/573,203
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Christine Haight Farley and David B. Goldstein of
Rabinowitz, Boudin, Standard, Krinsky & Lieberman, P.C. for
Food Venture Capital Group, Ltd.
Michael L. Engel, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
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Before Hairston, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Food Venture Capital Group, Ltd. has filed two
applications to register the marks SERAFINA ON THE RUN and
SERAFINA for “restaurant services.” Both applications were
filed on October 20, 1998, based on a bona fide intention
to use the marks in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/573,201 and 75/573,203
2
The Trademark Examining Attorney has finally refused
registration in each application under Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark so resembles the stylized mark SERAFINI’S,
shown below and previously registered for restaurant
services,1 that, if used on or in connection with
applicant’s services, it would be likely to cause confusion
or mistake or to deceive.
Applicant has appealed in each application. In both
appeals, applicant and the Examining Attorney have filed
main briefs, and applicant filed a reply brief. Oral
hearings were not requested. Because both appeals present
the same issue and similar facts, we have considered the
appeals together and issue a single opinion. We affirm the
refusal to register in each application.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
1 Registration No. 1,112,499 issued January 30, 1979; renewed for
a period of ten years from May 13, 1999.
Ser No. 75/573,201 and 75/573,203
3
confusion issue. See In re E. I. duPont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the
analysis of likelihood of confusion in this case, two key
considerations are the similarities between the marks and
the similarities between the services. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976); and In re Azteca Restaurant Enterprises,
Inc., 50 USPQ2d 1209 (TTAB 1999) and the cases cited
therein.
The services set forth in applicant’s two applications
are identical to those set forth in the cited registration.
Applicant argues that there are differences in the nature
of applicant’s and registrant’s restaurant services and
their geographic locations. According to applicant, its
restaurant is “upscale” in nature and located in New York
City, whereas registrant operates a restaurant and catering
service in Erie, Pennsylvania. These purported differences
are immaterial to our determination of likelihood of
confusion because neither the applications nor the cited
registration contain any such limitations to the
recitations of services. It is well settled that “[t]he
question of likelihood of confusion must be determined
based on analysis of the mark as applied to the goods
and/or services recited in an applicant’s application vis-
Ser No. 75/573,201 and 75/573,203
4
à-vis the goods and/or services in [the] registration,
rather than on what the evidence shows the goods and/or
services to be.” Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
Moreover, neither applicant’s nor registrant’s
recitation of services contains any limitations as to
channels of trade or classes of customers. Thus, we must
presume that the services of applicant and registrant are
offered in all of the normal channels of trade to all of
the usual customers of restaurant services. See Canadian
Imperial Bank v. Wells Fargo, supra. In other words, we
conclude that the channels of trade and class of customers
of applicant’s and registrant’s services are the same.
Turning to the marks, we note, “When marks 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).
The Examining Attorney contends that SERAFINA is the
dominant portion of each of applicant’s marks; that the
phrase ON THE RUN in application Serial No. 75/573,201
simply conveys that applicant’s services are designed for
people on the go and thus has little source-indicating
Ser No. 75/573,201 and 75/573,203
5
significance; and that SERAFINA and SERIFINI’S are
substantially similar in sound, appearance, connotation and
overall commercial impression.
Applicant, in urging reversal of the refusals to
register, contends that the marks must be viewed in their
entireties; that the Examining Attorney has improperly
dissected its SERAFINA ON THE RUN mark; that the marks are
further distinguished by the stylized format of the
registered mark; and that there is no evidence that
registrant’s mark is famous. Moreover, applicant contends
that the registered mark, SERAFINI’S, is likely to be
understood by consumers as a surname; whereas, SERAFINA is
likely to be understood as the name of a Biblical angel.
In support of its position, applicant submitted an excerpt
purportedly from The Oxford English Dictionary of
“seraphim” and four declarations of residents of New York
City.2
2 These declarations indicate the opinions of the declarants
regarding likelihood of confusion, which is immaterial to our
determination. In addition, they indicate the declarants’
opinion regarding the connotations of “Serafini” and “Serafina.”
Ser No. 75/573,201 and 75/573,203
6
Our consideration of the marks is based on whether
each of applicant’s marks and the registered mark, when
viewed in their entireties, are similar in terms of
appearance, sound, connotation and commercial impression.
The test 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 services 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.3
3 As the Examining Attorney correctly points out, the mere fact
that the word SERAFINA in applicant’s marks is not identical to
the word SERAFINI’S in registrant’s mark does not render this
principle inapposite.
Ser No. 75/573,201 and 75/573,203
7
Considering applicant’s marks, SERAFINA is the
entirety of one of applicant’s mark and the other mark
consists of SERAFINA ON THE RUN. The phrase ON THE RUN is
highly suggestive of restaurant services connoting that the
services are for persons with a busy life style, i.e., “on
the run.” Thus, we agree with the Examining Attorney that
the phrase ON THE RUN has little source-indicating
significance. In view thereof, and because SERAFINA is the
first word in the mark, it is likely to be perceived as the
dominant portion of the mark.
We recognize that registrant’s mark is depicted in
stylized letters and in the possessive form. It further
differs from the word SERAFINA in applicant’s marks in the
final vowel. However, we find these differences to be
inconsequential. Rather, we are persuaded that SERAFINA in
each of applicant’s marks is substantially similar in
appearance and sound to the word SERAFINI because it
differs by only the final letter.4 Regarding the
4 When pronounced, the possessive “SERAFINI’S” is no different
from the plural “SERAFINIS.” Those who hear the involved marks
SERAFINI’S and SERAFINA, whether from word-of-mouth
recommendations, radio, or television, will likely think
SERAFINI’S is a possessive or plural form of SERAFINA. The Board
has held that the pluralization of a mark is generally not
significant. In re Pix of America, Inc., 225 USPQ 691 (TTAB
1985). Likewise, we do not find any great distinction between a
word and its possessive form.
Ser No. 75/573,201 and 75/573,203
8
connotation of the marks, neither the few declarations nor
the dictionary excerpt defining “seraphim” establish that
SERAFINA means seraphim or angel. Indeed, while
dictionaries we have referenced include listings of seraph
and seraphim, none includes serafina or serafin. In short,
the record does not support applicant’s contention, in
essence, that SERAFINA would be viewed as a variant of
“seraph” or “seraphim.” We believe it is more likely to be
perceived as a name, either a given name or a surname.
Likewise, we believe the connotation of the registered mark
is that of a name, especially because the mark is set forth
in the possessive form. Thus we find the connotations of
SERAFINA and SERAFINI’S very similar; and the connotation
of SERAFINA in SERAFINA ON THE RUN, while perhaps a double
entendre (SERAFINA, as a person, “on the run” and SERAFINA
restaurant services for patrons “on the run”) remains that
of a name.
Given the fallibility of consumers’ memories and the
fact that they are unlikely to encounter the marks at the
same time or side-by-side, we find that applicant’s two
marks and registrant’s mark, considered in their
entireties, are substantially similar in overall commercial
impression.
Ser No. 75/573,201 and 75/573,203
9
Finally, with respect to applicant’s contention that
there is no evidence that registrant’s mark is famous, the
absence of such evidence is of no consequence. This type
of evidence would not normally be of record in an ex parte
case and the lack of such evidence does not indicate that
there is no likelihood of confusion. See In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed.
Cir. 2003). (“Although we have previously held that the
fame of a registered mark is relevant to likelihood of
confusion, we decline to establish the converse rule that
likelihood of confusion is precluded by a registered mark’s
not being famous.”).
We find that in view of the substantial similarity in
the commercial impressions of applicant’s marks, SERAFINA
and SERAFINA ON THE RUN, and registrant’s stylized mark,
SERAFINI’S, their contemporaneous use in connection with
the identical services involved in this case is likely to
cause confusion as to the source or sponsorship of such
services.
Decision: The refusal to register in each application
is affirmed.