HomeMade Pizza Company, L.L.C.

Trademark Trial and Appeal Board

Feb 10, 2009

No. 78950896 (T.T.A.B. Feb. 10, 2009)

Mailed:
10 February 2009
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re HomeMade Pizza Company, L.L.C.
________

Serial Nos. 78950896 and 78958832
_______

Kathleen A. Lyons of Rockey, Depke & Lyons, LLC for
HomeMade Pizza Company, L.L.C.

John D. Dalier, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Holtzman, Drost, and Taylor, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 12, 2006, HomeMade Pizza Company, L.L.C.
(applicant) filed an application to register the mark
“Cutie Pie Kit” (in standard character form) on the
Principal Register for goods ultimately identified as
“pizza making kits for children, namely kits comprised
primarily of uncooked pizza, pizza sauce and toppings but
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 78950896 and 78958832
2
also containing hats and aprons” in Class 30.1 Applicant
has disclaimed the word “Kit.”
Subsequently, on August 23, 2006, applicant filed
another application for the mark “Cutie Pie” (in standard
character form) for goods ultimately identified as “unbaked
mini-sized pizza for children sold at HomeMade Pizza Co.®
restaurants” in Class 30.2
The examining attorney has refused to register
applicant’s marks under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of prior registrations for
the marks CUTIE PIE, in typed or standard character form,3
and the other with the design shown below,4 owned by the
same entity (Horizon Snack Foods, Inc.).

1 Serial No. 78950896. The application contains an allegation of
a date of first use anywhere and in commerce of 1997. With its
reply brief, applicant attempted to amend its identification of
goods to “pizza making kits for children sold at HomeMade Pizza
Co.® restaurants, namely, kits comprised primarily of uncooked
pizza, pizza sauce, and toppings but also containing hats and
aprons, sold as a unit.” On October 28, 2008, the board denied
applicant’s belated attempt to amend its identification of goods.
2 Serial No. 78958832. The application contains an allegation of
a date of first use anywhere and in commerce of 1997.
3 Registration No. 2740531, issued July 22, 2003, affidavits
under Sections 8 and 15 accepted and acknowledged.
4 Registration No. 2747324, issued August 5, 2003.
Ser Nos. 78950896 and 78958832
3
Both registrations are for the same goods, “turnover
fruit pies” in Class 30.
When the refusals were made final, applicant filed
these appeals. While the applications have been processed
separately, because the issues and the facts are similar,
we have chosen to issue a single opinion that addresses
both applications.
Inasmuch as the issue in these appeals is likelihood
of confusion, we will consider the facts as they relate to
the relevant factors set out in In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973). See also In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot, Inc.
v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir.
2000). In considering the evidence of record on these
factors, we must keep in mind that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We first look at the similarities and dissimilarities
of the marks in the applications and registrations.
Applicant’s marks are CUTIE PIE and CUTIE PIE KIT and
Ser Nos. 78950896 and 78958832
4
registrant’s marks are CUTIE PIE and CUTIE PIE and design.
Applicant’s and registrant’s CUTIE PIE marks are legally
identical because there are no differences between the
marks. Inasmuch as both marks are shown in typed or
standard character form, we must assume that they can be
displayed in the same stylization. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir.
2000) (“Registrations with typed drawings are not limited
to any particular rendition of the mark and, in particular,
are not limited to the mark as it is used in commerce”);
Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376,
1378, 170 USPQ 35, 36 (CCPA 1971) ("The drawing in the
[opposed] application shows the mark typed in capital
letters, and … this means that [the] application is not
limited to the mark depicted in any special form");
ProQuest Information and Learning Co. v. Island, 83 USPQ2d
1351, 1359 (TTAB 2007)(Applicant’s mark “is shown in
standard character format. Hence, we must consider that
applicant’s mark is not limited to any special form or
style as displayed on its goods”); and In re Cox
Enterprises Inc., 82 USPQ2d 1040, 1044 (TTAB 2007)(“We must
also consider that applicant’s mark, presented in typed or
standard character form, is not limited to any special form
or style as displayed on its goods”).
Ser Nos. 78950896 and 78958832
5
The only difference between applicant’s mark CUTIE PIE
KIT and registrant’s mark CUTIE PIE is the addition of the
disclaimed term “kit,” which is at least highly descriptive
of applicant’s pizza making kits. This minor difference
would not lead prospective purchasers to rely on this term
to distinguish the goods. Disclaimed matter is often “less
significant in creating the mark’s commercial impression.”
In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB
2001). See also Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed.
Cir. 1985) (“Regarding descriptive terms, this court has
noted that the ‘descriptive component of a mark may be
given little weight in reaching a conclusion on the
likelihood of confusion.’”).
We add that registrant’s addition of a design of a
little girl in one registration does not significantly
change the mark because the term “cutie pie” is still
prominently featured and it would be the term customers
would use to identify the goods. See In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed.
Cir. 1997) (Federal Circuit held that, despite the addition
of the words “The” and “Cafe” and a diamond-shaped design
to registrant’s DELTA mark, there still was a likelihood of
Ser Nos. 78950896 and 78958832
6
confusion). See also In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988) (BIGG’S
(stylized) for grocery and general merchandise store
services found likely to be confused with BIGGS and design
for furniture); Wella Corp. v. California Concept Corp.,
558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA
CONCEPT and surfer design likely to be confused with
CONCEPT for hair care products). Also, the picture in
registrant’s mark simply reinforces the definitions of the
words in the mark CUTIE PIE.
Besides the examining attorney’s definition of “cutie
pie” as “beauty” (see Final Office Actions), the term is
also defined as “darling; sweetheart sweetie (often used as
a term of endearment)” and “cutie,” which is defined as “a
charmingly attractive or cute person, esp. a girl or young
woman.” The Random House Dictionary of the English
Language (unabridged) (2d ed. 1987). We take judicial
notice of these definitions. University of Notre Dame du
Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596
(TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983). We simply cannot agree with applicant that most
purchasers will ignore the common meaning of the term CUTIE
PIE and view the term as “two separate words – ‘cutie’
meaning youthful and ‘pie’ meaning pizza or a traditional
Ser Nos. 78950896 and 78958832
7
Italian open pie.” ‘832 brief at 6. Even if they did, it
is not clear why these purchasers would not attribute a
similar meaning to registrant’s turnover fruit pies.
Another important point is that the mark CUTIE PIE
appears to be an arbitrary, unitary term that is not weak
when applied to food items.5 Applicant’s evidence of three
other registrations for CUTIE PIE for various baby items
such as baby hats, bibs, and diaper bags are not relevant.
The ownership of these three registrations (Nos. 2902885,
2394174, and 1729369) is claimed by one entity and the
goods are unrelated to the goods at issue in these appeals.6
In re Melville Corp., 18 USPQ2d 1386, 1388-89 (TTAB 1991)
(“Registrations for goods unrelated to the clothing field
are irrelevant to our discussion”); SBS Products Inc. v.
Sterling Plastic & Rubber Products Inc., 8 USPQ2d 1147,
1149 n.6 (TTAB 1988) (“[E]ven if evidence of such third-
party use were submitted, it would be of no aid to
respondent herein where the third-party usage was for goods

5 The word “pie” by itself would have an obvious generic or
descriptive meaning for turnover pies and pizza.
6 Applicant’s statement (‘832 Brief at 6) that there are
“applications and registrations that contain the terms ‘cutie’
and ‘pie,’ or some phonetically equivalent variation, that are
available for review on the federal trademark database” is not
evidence that we can consider. In re Carolina Apparel, 48 USPQ2d
1542, 1542 n.2 (TTAB 1998) (“The Board does not take judicial
notice of third-party registrations, and the mere listing of them
is insufficient to make them of record”).
Ser Nos. 78950896 and 78958832
8
unrelated to either petitioner’s skin care products or
respondent’s stuffing box sealant”); and Anderson, Clayton
& Co. v. Christie Food Products Inc., 4 USPQ2d 1555, 1557
n.7 (TTAB 1987) (“The other third-party registrations
relating to marks in unrelated fields are of no probative
value”).
Furthermore, the fact that one of applicant’s marks is
identical with one of registrant’s marks is a significant
factor in favor of finding a likelihood of confusion in
that case. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“Without a doubt the word
portion of the two marks are identical, have the same
connotation, and give the same commercial impression. The
identity of the words, connotation, and commercial
impression weighs heavily against the applicant”).
Applicant argues that “[e]ven if the marks are
identical, the presence of the Appellant’s house mark or
company name … paired with the mark CUTIE PIE, decreases
the likelihood of confusion.” ‘832 Brief at 5. See also
‘896 Brief at 8. However, applicant has not sought
registration of its house mark with the term CUTIE PIE so
we cannot distinguish the marks on this basis. Blue Cross
and Blue Shield Association v. Harvard Community Health
Plan Inc., 17 USPQ2d 1075, 1077 (TTAB 1990) (“It need
Ser Nos. 78950896 and 78958832
9
hardly be said that ‘in determining the applicant’s right
to registration, only the mark as set forth in the
application may be considered; whether or not the mark is
used with an associated house mark is not controlling.’
Frances Denney v. Elizabeth Arden Sales Corp., 263 F.2d
347, 120 USPQ 480, 481 (CCPA 1959)”).
We conclude that applicant’s CUTIE PIE mark is
identical to registrant’s CUTIE PIE mark and very similar
to registrant’s CUTIE PIE and design mark and that
applicant’s CUTIE PIE KIT is likewise very similar to these
same marks.
Regarding the goods, the examining attorney argues
that the goods “are of a kind that may emanate from a
single source under the same mark.” ‘896 and ‘832 Briefs
at 6. In support of his argument, the examining attorney
submitted several registrations to show that the goods,
pizza and turnovers, along with other items, are registered
under a common mark.
2183404 (ALL KITCHENS OF AMERICA) for pizza,
turnovers, cakes, pies cookies and various other items
such as tarter sauce and soy sauce

2528073 (BAKERSOURCE) for frozen bakery dough for …
pizza crust … turnovers

2630041 (MOOSEWOOD) for frozen bakery desserts, namely
… turnovers … pizzas

Ser Nos. 78950896 and 78958832
10
2755688 (SALVAGGIO'S SAVOR THE TRADITION) for apple
turnovers … fruit pies … pizza

3105946 (SUGARPLUM BAKERY & TREATS) for fruit bars and
turnovers, pizzas…

3147882 (A DELICIOUS ADVENTURE) and 3089855 (OH SO
YUMMY!)for fruit bars and turnovers, pizza…7

3167641 (DELI EXPRESS) for pizza, muffins, cakes,
cookies, rolls, turnovers, donuts

These registrations support the examining attorney’s
argument that the goods are related. In re Infinity
Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB
2001) (“The registrations show that entities have
registered their marks for both television and radio
broadcasting services. Although these registrations are
not evidence that the marks shown therein are in use or
that the public is familiar with them, they nevertheless
have probative value to the extent that they serve to
suggest that the services listed therein, including
television and radio broadcasting, are of a kind 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
at n. 6 (TTAB 1988)").

7 These registrations are commonly owned.
Ser Nos. 78950896 and 78958832
11
Furthermore, we note that it “has often been said that
goods or services need not be identical or even competitive
in order to support a finding of likelihood of confusion.
Rather, it is enough that goods or services are related in
some manner or that circumstances surrounding their
marketing are such that they would be likely to be seen by
the same persons under circumstances which could give rise,
because of the marks used thereon, to a mistaken belief
that they originate from or are in some way associated with
the same producer or that there is an association between
the producers of each parties’ goods or services.” In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). See also
Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650,
1661 (TTAB 2002). The Federal Circuit has held that “goods
that are neither used together nor related to one another
in kind may still ‘be related in the mind of the consuming
public as to the origin of the goods. It is this sense of
relatedness that matters in the likelihood of confusion
analysis.’” Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d
1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (citing Recot, Inc.
v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir.
1992)).
Here, there are no restrictions in registrant’s
identification of goods so they would include all types of
Ser Nos. 78950896 and 78958832
12
turnover fruit pies, including those that would be marketed
to appeal to children and these pies can be sold in all the
normal channels of trade. Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”). Therefore, we
cannot accept applicant’s statement that appears to limit
registrant’s goods to those “sold in schools and grocery
stores.” ‘832 brief at 7. Turnover fruit pies could also
be sold, inter alia, in convenience stores, delis, and
take-out restaurants.
Applicant’s goods are specifically identified as being
for children and thus the potential purchasers (children
and their parents) would at least be overlapping.
Furthermore, applicant’s pizza kits and unbaked pizza are
not designed to be consumed on the premises of a
restaurant. Thus, applicant’s pizza and registrant’s
turnover dessert could be consumed by the same children and
their parents at children’s parties. See Applicant’s
Ser Nos. 78950896 and 78958832
13
Briefs at 2 (Applicant “sells uncooked pizza for customers
to take home and bake at their own convenience”).8 Parents
familiar with applicant’s carry out and bake-at-home pizza
are likely to assume that there is some association with
registrant’s turnover pies when they encounter them
marketed under an identical or very similar mark in a
store. This association of the sources of the goods would
lead these customers to believe that the goods were related
even if they were not sold in the same stores. In
addition, fruit turnovers would not be expensive items and
they could be purchased without much thought or
deliberation. See www.horizonholdings.com (Registrant
“produces 3 oz. snack pies” with some selling for less than
$1 for “families and especially kids”).
In this case, applicant’s mark CUTIE PIE is identical
to one of registrant’s marks and identical to the words in
registrant’s other mark. Applicant’s CUTIE PIE KIT is very
similar to registrant’s CUTIE PIE marks. There is no
evidence that registrant’s mark is a weak mark for turnover
pies. Indeed, the term appears to be arbitrary. These
marks are either identical or very similar in sound,

8 We have also taken into consideration the fact that applicant’s
goods are uncooked pizzas and pizza making kits. However, both
types of goods are pizzas that would be purchased by the same
purchasers and consumed at such events as a child’s birthday
party.
Ser Nos. 78950896 and 78958832
14
appearance, meaning and commercial impression when they are
considered in their entireties. Applicant’s goods, unbaked
mini-sized pizza for children sold in applicant’s
restaurants and pizza making kits for children, are related
to registrant’s fruit turnover pies. The goods could be
purchased by parents and children for children’s parties or
similar occasions. See www.homemadepizza.com (HomeMade
Cutie Pie Kit – “Perfect for kids’ birthday parties,
amateur chefs, or just good old family fun”). Purchasers
familiar with applicant’s pizza kits for home preparation
are likely to assume that when, the identical or very
similar marks, are used on fruit turnovers, there is some
association between the sources of the goods. Under these
circumstances, confusion is likely.
To the extent that we have any doubts about the
likelihood of confusion here, we have resolved them in
favor of the registrant. In re Pneumatiques, Caoutchouc
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918,
179 USPQ 729, 729-30 (CCPA 1973). See also In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1948
(Fed. Cir. 2004).
Decision: The examining attorney’s refusals to
register applicant’s marks on the ground that they are
likely to cause confusion with the cited registered marks
Ser Nos. 78950896 and 78958832
15
used in connection with the identified goods under Section
2(d) of the Trademark Act are affirmed.