GlobaConnect Inc. and Nicola International LLC

Trademark Trial and Appeal Board

Jun 4, 2021

88776035 (T.T.A.B. Jun. 4, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: June 4, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re GlobaConnect Inc. and Nicola International LLC
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Serial No. 88776035
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Gene Bolmarcich of Law Office of Gene Bolmarcich,
for GlobaConnect Inc. and Nicola International LLC.
Melissa Sturman, Trademark Examining Attorney, Law Office 125,
Heather Biddulph, Managing Attorney.
_____

Before Greenbaum, Goodman and Heasley,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
GlobaConnect Inc. and Nicola International LLC (“Applicants”) seek registration
on the Principal Register of the mark AIELLO (in standard characters) for
Edible oils; Olive oil for food; Olive pastes; Olives,
preserved; Pickled cucumbers; Pickled onions; Pickled
peppers; Pickled vegetables; Pickles; Canned processed
olives; Dill pickles; Flavored olive oil for food; Processed
olive puree; Processed olives with peppercorns; Processed
stuffed olives in International Class 29.1

1 Application Serial No. 88776035 was filed on January 28, 2020 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicants’ claim of first use anywhere and
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The Trademark Examining Attorney has refused registration of Applicants’ mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the following registered marks owned by the same entity:
(Registration No. 2407984, “Italian Spaghetti Sauce”
disclaimed), (Registration No. 3339104), and AIELLO’S
(Registration No. 3425412) all for “Edible food products, namely, cooked, frozen pasta;
tomato based pasta sauce and cream based pasta sauce, but not restaurant services”
in International Class 30.2

first use in commerce since at least as early as February 2, 2002. Section 2(f) claimed.
The application was amended to include a claim of ownership of Registration No. 3839756.

Page references to the application record refer to the online database of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs on appeal
refer to the Board’s TTABVUE docket system. Applicants’ brief is at 4 TTABVUE. The
Examining Attorney’s brief is at 6 TTABVUE.

2 The registrations have all been renewed. However, the renewal period for Registration No.
2407984, expired November 28, 2020 and no renewal has been filed during the six-month
grace period that ended on May 28, 2021.
The standard character mark, Registration No. 3425412, issued under Section 2(f).
Registration No. 2407984 includes a statement that “The mark is lined for the colors-green,
yellow and red.”
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When the refusal was made final, Applicants appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed.3 We affirm the refusal to register.
I. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
an analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for which
there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
In every Section 2(d) case, two key factors are the similarity or dissimilarity of the
marks and the goods or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by
§ 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.”).

Registration No. 3339104 includes the following description of the mark: “The mark consists
of the word ‘Aiello’s’ in white on a red ribbon.” The colors red and white are claimed as a
feature of the mark.
3 The Examining Attorney had also refused registration under Section 2(e)(4), 15 U.S.C.
§ 1052(e)(4), but that refusal was considered “obviated” on reconsideration due to Applicants’
statement of distinctiveness of the mark based on at least five years prior use. January 12,
2021 Denial of Reconsideration at TSDR 1.
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In this case, we shall focus our Section 2(d) likelihood of confusion findings and
decision on one of the cited registrations, Registration No. 3425412 for the standard
character mark AIELLO’S. A finding of likelihood of confusion between Applicants’
mark and this previously-registered mark would suffice by itself to bar registration
of Applicants’ mark under Section 2(d); we need not find likelihood of confusion as to
the other cited registrations. See In re Max Cap. Grp. Ltd., 93 USPQ2d 1243, 1245
(TTAB 2010). On the other hand, if we do not reach that conclusion, we would not
find likelihood of confusion as to the composite marks either.
A. Similarity or Dissimilarity of the Marks
We turn to the first DuPont factor, which requires us to determine the similarity
or dissimilarity of the marks when viewed in their entireties in terms of appearance,
sound, connotation and overall commercial impression. Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005). The test under the first DuPont factor is not whether the marks can
be distinguished when subjected to a side-by-side comparison, but whether the marks
are sufficiently similar in terms of their overall commercial impression that confusion
as to the source of the goods or services offered under the respective marks is likely
to result. Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801
(Fed. Cir. 2018).
Applicants’ mark is AIELLO and Registrant’s mark is AIELLO’S. The marks are
virtually identical and differ only by Registrant’s inclusion of an apostrophe ‘S’ that
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may be viewed as the possessive form of AIELLO.4 The absence of the possessive form
in Applicants’ mark AIELLO has little if any significance for consumers in
distinguishing it from the cited mark. See In re Hyper Shoppes, 837 F.2d 463, 6
USPQ2d 1025, 1025 (Fed. Cir. 1988) (BIGG’s for general merchandise store services
is likely to cause confusion with BIGGS for furniture); In re Binion’s 93 USPQ2d 1531,
1534 (TTAB 2009) (BINION’s and BINION not distinguishable by use of the
possessive form); In re Curtices-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986)
(McKENZIE is virtually identical to McKENZIE’S).
Therefore, we find the marks are nearly identical in sound, appearance,
connotation and commercial impression. This DuPont factor weighs heavily in favor
of a finding of likelihood of confusion.
B. Similarity or Dissimilarity of the Goods
We next consider the second DuPont factor, “[t]he similarity or dissimilarity and
nature of the goods or services as described in an application or registration.” DuPont,
177 USPQ at 567. Our analysis under this factor is based on the identifications of
goods in the application and in the cited registration. In re Detroit Ath. Co., 903 F.3d
1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018). It is sufficient for a finding of
likelihood of confusion as to a particular class if relatedness is established for any
item of identified goods or services within that class in the application or cited

4 Regarding the marks, Applicants submit that their “peaceful coexistence” “can only be
explained” by one mark being AIELLO and the other mark being AIELLO’s. 4 TTABVUE 5-
6.
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registration. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981).
Applicants’ goods are “Edible oils; Olive oil for food; Olive pastes; Olives,
preserved; Pickled cucumbers; Pickled onions; Pickled peppers; Pickled vegetables;
Pickles; Canned processed olives; Dill pickles; Flavored olive oil for food; Processed
olive puree; Processed olives with peppercorns; Processed stuffed olives.” Registrant’s
goods are “Edible food products, namely, cooked, frozen pasta; tomato based pasta
sauce and cream based pasta sauce, but not restaurant services.”
As evidence of relatedness, the Examining Attorney introduced printouts from
third-party Internet websites for companies Goya, DeLallo, Shur Fine, Bertolli, Cora,
Napoli, DeLaurenti, Stonewall Kitchen, Williams Sonoma, Alifood, and Western
Family. April 24, 2020 Office Action at TSDR 13-34; November 10, 2020 Office Action
at TSDR 11-101.
For example, Goya offers olive oil, stuffed olives, pasta sauce, pickled peppers, and
canned and jarred peppers; DeLallo offers pasta sauces, canned and jarred olives,
canned and stuffed olives, and jarred peppers; Western Family offers canned and
jarred olives, dill pickles, jarred cocktail onions, canned and jarred jalapeno peppers,
frozen pasta, and pasta sauce; Stonewall Kitchen offers pasta sauce, olives, pickled
vegetables, dill pickles, stuffed olives, edible oils, and olive oils; and Cora offers olive
oil, jarred and canned olives, stuffed olives, jarred peppers, pasta sauce, and frozen
pasta.
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Applicants argue that the cited marks cover “Italian food” while “Applicants
marks do not.”5 4 TTABVUE 6. While we do not read limitations into the
identification of goods as to the type of cuisine featured in Registrant’s mark, as the
Examining Attorney points out, even if the food items identified in Registrant’s
registration are considered types of “Italian” food, the evidence reflects that
Applicants’ food items also are offered by providers of Italian food. 6 TTABVUE 9-10.
Additionally, Applicants’ identification of goods is not limited to any particular food
style, and is broad enough to encompass Italian-style food items.
Based on the third-party website evidence, we find that Applicants’ and
Registrant’s goods are related. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198,
1203 (TTAB 2009).
This DuPont factor supports a finding of likelihood of confusion.
C. Similarity or Dissimilarity of the Channels of Trade and Classes of
Consumers
We now turn to the third DuPont factor. This factor considers “the similarity or
dissimilarity of established, likely-to-continue trade channels.” DuPont, 177 USPQ at

5 Applicants also have pointed out that the goods they seek to register in the involved
application, and those in its prior registrations are in the same class, “which the cited
registrations do not include” and that “[a]lthough classification is not necessarily a
substantive matter, it would seem to be in this case.” 4 TTABVUE 6. However, the
classification of goods by the Office is a purely administrative determination and has no
bearing on the issue of likelihood of confusion. See National Football League v. Jasper
Alliance Corp., 16 USPQ2d 1212, 1216 n.5 (TTAB 1990) (citation omitted) (“The classification
system was established for the convenience of the Office rather than to indicate that goods
in the same class are necessarily related or that classification in different classes indicates
that they are not related.”). See also In re Detroit Ath., 128 USPQ2d at 1051 (“Classification
is solely for the ‘convenience of Patent and Trademark Office administration,’ and ‘is wholly
irrelevant to the issue of registrability under section 1052(d).”’) (citations omitted).
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567. Our analysis under this factor is based on the identifications of goods in the
application and the identification of goods in the cited registration. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-
63 (Fed. Cir. 2014) citing Octocom Sys., Inc. v. Houston Comp. Servs. Inc., 918 F.2d
937, 942 (Fed.Cir.1990).
Registrant’s identification of goods include a limitation that its edible food
products do not include “restaurant services.” Although there is a restriction as to
trade channels for distribution of Registrant’s goods to or by restaurants, nothing
otherwise limits Registrant’s distribution of the goods. Therefore, these goods may be
otherwise offered in all the other normal trade channels for such goods, which could
include grocery or specialty food stores, warehouse stores, institutions, or online. In
such trade channels, Registrant’s goods would be purchased by all the usual
purchasers for such goods, which would include ordinary consumers.
Applicants’ goods are unrestricted as to trade channels. We must presume that
the goods move in all channels of trade usual for these goods and that they are
purchased by the usual classes of purchasers which, in this case, would include
ordinary consumers. See, Kangol Ltd. v. KangaROOS U.S.A., 974 F.2d 161, 23
USPQ2d 1945, 1946 (Fed Cir. 1992). Therefore, we may assume that Applicants’
trade channels would also include online stores, grocery and specialty food stores,
warehouse stores and institutions, and to that extent, the channels of trade and class
of purchasers of Applicants’ and Registrant’s goods would overlap.6

6 Applicants did not address the channels of trade in their brief.
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In addition, the Examining Attorney’s third-party website evidence shows that
the trade channels for Applicants’ and Registrant’s goods are the same and
overlapping. See, e.g., In re Davey Prods., 92 USPQ2d at 1203-04; In re Toshiba Med.
Sys. Corp., 91 USPQ2d 1266, 1272-73 (TTAB 2009) (website evidence shows same or
overlapping channels of trade and classes of customers). Therefore, we find the
channels of trade and classes of consumers will overlap.
The third DuPont factor favors a finding of likelihood of confusion.
D. Concurrent use without actual confusion
The eighth DuPont factor “examines the ‘length of time during and conditions
under which there has been concurrent use without evidence of actual confusion.”’
DuPont, 177 USPQ at 567. Applicants argue that “[c]learly, there is a peaceful
coexistence of two sets of trademarks covering many types of common grocery items
in Classes 29 and 30.” 4 TTABVUE 5. To the extent this is an argument directed to
the eighth DuPont factor, there is nothing in the record about actual market
conditions. See In re Guild Mort. Co., 2020 USPQ2d 10279, at *6 (TTAB 2020). The
“absence of any reported instances of actual confusion would be meaningful only if
the record indicated appreciable and continuous use by [Applicant] of its mark for a
significant period of time in the same markets as those served by [Registrant] under
its marks.” Gillette Can. Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
This record does not reveal the extent, duration, or location of Applicants’ and
Registrant’s use of their marks on their respective goods, so we are unable to
determine whether their use has been “concurrent,” within the meaning of the eighth
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DuPont factor. See, e.g., Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 889 F.2d 1070, 12
USPQ2d 1901, 1903 (Fed. Cir. 1989) (finding that the absence of evidence of actual
confusion was of very little, if any, probative value because, among other reasons, “no
evidence was presented as to the extent of [applicant’s] use of [its] mark on the
merchandise in question during prior years”). Therefore, we find this DuPont factor
neutral.
E. Thirteenth DuPont Factor
The thirteenth DuPont factor examines “any other established fact probative of
the effect of use.” DuPont, 177 USPQ at 567. Typically, cases involving prior
registrations under the thirteenth factor determine whether substantially similar
marks should be allowed to co-exist because of an applicant’s prior registration of a
similar mark. See e.g., Strategic Partners, 102 USPQ2d 1397 TTAB 2012) (finding no
likelihood of confusion due to coexistence of prior registration). The thirteenth
DuPont factor is intended to accommodate “the need for flexibility in assessing each
unique set of facts.” Id. at 1399.
In Strategic Partners, applicant owned a registered mark that was substantially
similar to its applied-for mark; both the existing registration and the application
covered identical goods. Applicant’s registered mark coexisted with the cited mark for
over five years, and because applicant’s prior registration was over five years old, it
was not subject to attack by the owner of the cited registration based on a claim of
likelihood of confusion. Id. Under this “unique situation,” the Board found that the
thirteenth DuPont factor applied and outweighed the other DuPont factors. Id.
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(finding that similarity between applicant’s prior registration of the mark
ANYWEARS and its applied-for mark ANYWEAR (stylized) prevents likelihood of
confusion with third-party cited mark ANYWEAR BY JOSIE NATORI and design).
Applicants refer to three registrations in connection with their argument under
the thirteenth DuPont factor: Registration Nos. 6053441, 3839756, and 2106348.7
During prosecution, Applicants only submitted a copy of the certificate of registration
for Registration No. 3839756 and did not submit copies of Registration Nos. 6053441
and 2106348. However, because the Examining Attorney discusses all of the
registrations mentioned by Applicants in the final office action and in the brief
without objection, Registrations Nos. 6053441 and 2106348 are treated as stipulated
into the record. In re 1st USA Realty Prof’ls Inc., 84 USPQ2d 1581, 1583 (TTAB 2007).
The Board has considered these registrations based on the information provided by
Applicants in the charts incorporated in their brief. Id.
We first consider Applicants’ cancelled Registration No. 2106348 for the mark
AIELLO for “edible food products, namely, processed olives, processed olive oil,
processed vegetables and processed grape leaves.” This registration, for the same
mark as the applied-for mark, covers some of the same goods as the applied-for-mark,
and co-existed with one of the cited registrations for about five years before it was
cancelled in 2005; the other cited registrations issued after this mark’s cancellation.

7 The owner for Registration Nos. 3839756, and 2106348 is identified as Nicola International
Inc., which differs from Applicant Nicola International LLC by entity status. The relationship
between these two entities is unexplained.
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Unlike Strategic Partners, Applicants’ earlier registration is not an “existing
registered mark.” 102 USPQ2d at 1400. The earlier registration has been cancelled
for fifteen years and is not entitled to any of the presumptions of Section 7(b) of the
Trademark Act, 15 U.S.C. § 1057(b). See Anderson, Clayton & Co. v. Krier, 478 F.2d
1246, 178 USPQ 46, 47 (CCPA 1973) (“Whatever benefits a registration conferred
upon appellee were lost by him when he negligently allowed his registration to
become canceled.”); In re Hunter Publ’g Co., 204 USPQ 957, 963 (TTAB 1979)
(cancellation “destroys the Section [7(b)] presumptions and makes the question of
registrability ‘a new ball game’ which must be predicated on current thought.”).
Therefore, as to this earlier, now cancelled registration, we find the special
circumstances and “unique situation” of Strategic Partners are not present. 102
USPQ2d at 1400.
We also find the circumstances surrounding this prior registration are not similar
to In re Allegiance Staffing, 115 USPQ2d 1319, 1325 (TTAB 2015).
In Allegiance Staffing, applicant’s mark had inadvertently expired, and within
two weeks of expiration, applicant reapplied for registration for the identical mark
and identical services. During the period of eleven years when applicant’s registration
was in effect, six third-party registrations issued, and two additional applications
were approved for registration. The Board took into consideration in the likelihood of
confusion analysis that several examining attorneys found the “now-cited
registrations were not likely to cause confusion” with applicant’s prior registered
mark during its existence, and that applicant promptly refiled the application for the
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identical mark and identical services once the registration lapsed. 115 USPQ2d at
1324.
By contrast, in this case, once Registration No. 2106348 cancelled, Applicants did
not reapply for registration, and only one of the cited registrations issued during
Registration No. 2106348’s pendency. Therefore, we find Allegiance Staffing
inapplicable because the “unusual” circumstances identified in that case are not
present here.
We next consider Applicants’ incontestable Registration No. 3839756 (issued in
2010) for the mark AIELLO for “processed greek-style nonfrozen vegetables, namely,
processed grape leaves and artichokes, all sold in cans or jars and all sold to
distributors and warehouse stores.” This registration issued in 2010 after the cited
registrations issued (2000, 2007 and 2008) and coexisted with all of the cited marks
for about ten years. However, this registration does not show in Applicants’ chart that
it has been renewed, and in fact, it was cancelled during the pendency of the appeal.
It is, therefore, no longer an “existing registered mark.” Strategic Partners, 102
USPQ2d at 1400. Also, unlike Strategic Partners, Applicants’ current application
identifies goods that are not identical to the goods in this now cancelled registration,
compelling a different result. Cf. In re Inn at St. John’s, LLC, 122 USPQ2d 1742, 1748
(TTAB 2018) (declining to extend Strategic Partners where an applied-for mark was
“partially” similar to the mark in an existing registration owned by that applicant
although the services were identical). Therefore, for the reasons set forth and for the
same reasons previously discussed (as to Applicants’ other cancelled registration), we
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find that this now cancelled registration also does not support Applicants’ argument
for application of the thirteenth DuPont factor under Strategic Partners.
Last, we consider Applicants’ Registration No. 6053441 for the mark AIELLO for
“Berries, preserved; Cabbage rolls stuffed with meat; Compote; Jams; Jams and
marmalades; Preserved berries; Cranberry compote; Dried okra; Frozen celery
cabbages; Fruit preserves; Jellies and jams; Jellies, jams, compotes; Processed
cabbage; Processed okra.” This registration issued in May 2020 and is for related food
items, but not for the same goods at issue.8
We find Strategic Partners also is not applicable in this instance, because the
registration has co-existed for a very short time, is not incontestable, and therefore is
still subject to a cancellation action by Registrant based on likelihood of confusion.
In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 (TTAB 2017)
(the co-existence of a registration less than five years old “represents a key factual
distinction from Strategic Partners”). Additionally, the co-existing registration does
not cover identical goods. Cf. In re Inn at St. John’s, LLC, 122 USPQ2d at 1748
(declining to extend Strategic Partners where an applied-for mark was “partially”
similar to the mark in an existing registration owned by that applicant although the
services were identical).

8 The Examining Attorney points out in her brief that Applicants were “only permitted to
register after applicant deleted the goods that it is now trying to register in the instant
application,” referencing a specific portion of the application file for this prior registration.
Examining Attorney’s brief, 6 TTABVUE 11. However, this portion of the prior registration
application file is not in the record.
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Therefore, while the coexistence of this prior registration and the cited
registration is a relevant consideration, it does not outweigh the other DuPont factors
in this case. In re USA Warriors Ice Hockey Program, 122 USPQ2d at 1793. The
issuance of Applicants’ current registration does not require the approval of a second
registration if, on the facts of the case, it would be improper to do so under the
governing legal standard. Id. at 1793, n.10 citing In re Cordua Rests., Inc., 823 F.3d
594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016).
Thus, Applicants’ ownership of this existing registration is neutral in our analysis
under the thirteenth DuPont factor.
II. Conclusion
We have considered all of the arguments and evidence of record and all relevant
DuPont factors. We find the cited standard character mark is nearly identical to
Applicants’ mark, the goods are related and move in overlapping channels of trade,
and are offered to the same class of consumers. The eighth and thirteen DuPont
factors are neutral. As a result we find confusion likely.
Decision: The refusal to register Applicants’ mark AIELLO is affirmed.