Frantoio Ulivi Di Liguria S.r.l.

Trademark Trial and Appeal Board

Feb 5, 2020

79250730 (T.T.A.B. Feb. 5, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: February 5, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Frantoio Ulivi Di Liguria S.r.l.
_____

Serial No. 79250730

_____

Nicholas D. Wells of Legends Law Group PLLC,
for Frantoio Ulivi Di Liguria S.r.l.

Sarah E. Steinpfad, Trademark Examining Attorney, Law Office 120,1
David Miller, Managing Attorney.
_____

Before Kuhlke, Ritchie, and Goodman,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Frantoio Ulivi Di Liguria S.r.l. (“Applicant”) seeks registration on the Principal
Register of the mark DUA and design, as shown below, for “Extra virgin olive oil for
food use; extra virgin olive oil for culinary use; olive oil for cooking; olive oil for food
use; processed vegetables in olive oil; olive paste; processed olive purée; prepared
olives; preserved olives; treated olives, namely, processed olives; canned processed

1 The case was reassigned to this Examining Attorney after the appeal was filed.
Serial No. 79250730
- 2 -
olives; tuna fish, not live; fish fillets; processed aubergine purée; preserved
artichokes; treated artichokes, namely, preserved artichokes; processed olives in
brine; processed peppers in olive oil; processed pickled aubergines; sun-dried
tomatoes; processed tomatoes in olive oil; hot chili pepper purée; edible olive oil,” in
International Class 29 and “Pesto sauce; condiments, namely, vinegar and sauces;
flavored vinegar,” in International Class 30:2

The application contains the following description of the mark:
Description of the Mark: The mark consists of the stylized term “DUA”
in front of the design of an olive branch.

Colors Claimed: Color is not claimed as a feature of the mark.

The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), as likely to cause confusion,
mistake, or to deceive, based on the mark DUA BELIBIS and design, as shown below,
for “Sauces in the form of condiments; savory sauces used as condiments; sweet

2 Serial No. 79250730, filed on July 19, 2018, pursuant to Section 66(a) of the Trademark Act,
15 U.S.C. § 1141f(a), as a Request for Extension of Protection for International Registration
No. 1446972.
Serial No. 79250730
- 3 -
sauces used as condiments; chili seasoning; chili sauce; chili paste for use as a
seasoning; chili oil for use as a seasoning or condiment; vinegar,” in International
Class 30:3

The registration contains the following additional information about the description,
colors, and translation:
Description of the mark: The mark consists of a graphical depiction of
two ducks in the colors green, gold and black surrounded by a gold arch
within a curved red carrier above the stylized wording “DUA BELIBIS”
in the color white.

Colors Claimed: The color(s) green, red, gold, black, and white are
claimed as a feature of the mark.

Translation: The English translation of “DUA BELIBIS” in the mark is
“TWO WHISTLING DUCKS.”

After the Examining Attorney made the Section 2(d) refusal final, Applicant filed
this appeal, which is fully briefed. For the reasons discussed herein, we reverse the
refusal to register.

3 Registration No. 4965841 issued May 24, 2016.
Serial No. 79250730
- 4 -
I. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence that are relevant to the factors set forth in 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., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods 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 Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We note,
nevertheless, that in a case where the marks are found to be sufficiently dissimilar,
this factor may be dispositive. See Kellogg Co. v. Pack’em Ent. Inc., 951 F.2d 330, 21
USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular case,
a single DuPont factor may not be dispositive.”)
A. Goods, Trade Channels, and Purchasers
The application identifies goods in both International Class 29 (“IC 29”) and
International Class 30 (“IC 30”). Several of the IC 30 goods overlap with the goods
identified in the cited registration. For example, the application identifies “pesto
sauce; condiments, namely, vinegar and sauces; flavored vinegar,” while the cited
registration identifies “savory sauces used as condiments;” as well as “vinegar.” The
goods in IC 30 are therefore identical in part.
As for Applicant’s IC 29 goods, there is an overlap with the “hot chili pepper puree”
identified by Applicant, and the “chili seasoning; chili sauce; chili paste for use as a
Serial No. 79250730
- 5 -
seasoning” in the cited registration. To further show the relatedness of Applicant’s IC
29 goods to the goods identified in the cited registration, the Examining Attorney
submitted web evidence showing numerous third parties, such as Cave Creek Olive
Oil Co.; Lucero; Fody; Sadaf; Mezzetta; Mediterra; Fiore; The OliveTap; Newman’s
Own; Seasons; Midtown Olive Oil; Gustiamo; Colavita; and Tassos,4 all of which offer
for sale various goods identified by Applicant, such as “olive oil for cooking; olive oil
for food use” along with goods identified in the cited registration, including “sauces
in the form of condiments; savory sauces used as condiments” and/or “vinegar.”
We find that the goods are identical-in-part and otherwise related. As for the
channels of trade, when as here, the goods are identical in part or legally identical,
they are presumed to travel in the same channels of trade to the same class of
purchasers. In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion). Thus, without regard to Applicant’s arguments regarding the
different origins of the goods and likely differences in the marketplace, we must
presume that the trade channels and classes of purchasers are the same.
The second and third du Pont factors favor finding a likelihood of confusion.

4 Attached to February 6, 2019 Office Action at 7-60, and April 3, 2019 Final Office Action,
at 3-84.
Serial No. 79250730
- 6 -
B. The Marks
We consider and compare the appearance, sound, connotation and commercial
impression of the marks in their entireties. Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). Applicant’s mark is , which contains the literal element
“DUA,” drawn across a design described as “an olive branch.” The mark in the cited
registration is , which contains the literal element “DUA BELIBIS,”
presented in a stylized form, underneath what Registrant describes as “a graphical
depiction of two ducks” in various colors.
Registrant has submitted a translation of its mark as “two whistling ducks.” In
this regard, to the extent the marks contain the same literal term “dua,” it would
likely be understood in Applicant’s mark as referring to two olive branches, or to the
“two” sides of the olive branch in the design of the mark. While the marks contain one
overlapping literal element, they differ significantly in appearance, connotation, and
commercial impression.
The first du Pont factor weighs against finding a likelihood of confusion.
C. Conclusion
After considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, we find that although the goods are identical in part and
Serial No. 79250730
- 7 -
otherwise related, and that they would be presumed to travel through similar and
overlapping channels of trade to general classes of consumers, we find the marks to
be so dissimilar in similar in sight, sound, connotation, and commercial impression
that there is no likelihood of confusion. See Kellogg Co. v. Pack’em 21 USPQ2d at
1145.
Decision: The Section 2(d) refusal to register Applicant’s mark is reversed.