Hungry Howie’s Pizza & Subs, Inc.v.Neil Diamond

Trademark Trial and Appeal Board

Sep 20, 2001

No. 91111879 (T.T.A.B. Sep. 20, 2001)

9/20/01

Paper No. 18
TJQ

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Hungry Howie’s Pizza & Subs, Inc.
v.
Neil Diamond
_____

Opposition No. 111,879
to application Serial No. 75/267,017
filed on March 31, 1997
_____

Julie A. Greenberg of Gifford, Krass, Groh, Sprinkle,
Anderson & Citkowski for Hungry Howie’s Pizza & Subs,
Inc.

Donna A. Tobin of Cooper & Dunham for Neil Diamond
______

Before Cissel, Quinn and Hohein, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application has been filed by Neil Diamond to
register the mark FRUZZATTI for “gelato; ice cream;
frozen yogurt; sandwiches; pizza; salads, namely, pasta,
macaroni and rice salads.”1

1 Application Serial No. 75/267,017, filed March 31, 1997, based
on an allegation of a bona fide intention to use the mark in
commerce. In response to the Examining Attorney’s inquiry
during examination of the application, applicant indicated that
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 111,879
2
Registration has been opposed by Hungry Howie’s
Pizza & Subs, Inc. under Section 2(d) of the Trademark
Act on the ground that applicant’s mark, if used in
connection with applicant’s goods, would so resemble
opposer’s previously used and registered mark FRUZZA for
pies2 as to be likely to cause confusion.
Applicant, in his answer, denied the salient
allegations of likelihood of confusion.
The record consists of the pleadings; the file of
the involved application; a certified copy of opposer’s
pleaded registration that accompanied the amended notice
of opposition; the testimony, with related exhibits, of
Robert Cuffaro, opposer’s director of franchise
development; and applicant’s responses to opposer’s
interrogatories, introduced by way of opposer’s notice of
reliance.3 Applicant neither took testimony nor
introduced any other evidence. Only opposer filed a
brief on the case. Opposer requested an oral hearing,
but after learning that applicant would not appear,
waived the hearing.

the mark has no meaning or significance other than as a
trademark.
2 Registration No. 1,773,791, issued May 25, 1993. See
discussion, infra.
3 The other items accompanying opposer’s notice of reliance were
stricken by the Board’s order dated March 3, 2001. These items,
of course, have not been considered in reaching our decision.
Opposition No. 111,879
3
With respect to the issue of priority, opposer
submitted, as noted above, a certified copy of its
pleaded registration. A check of Office records shows,
however, that the registration was cancelled on December
29, 2000 as a result of opposer’s failure to file a
Section 8 affidavit. When a Federal registration owned
by a party has been properly made of record in an inter
partes proceeding, and there are changes in the status of
the registration between the time it was made of record
and the time the case is decided, the Board, in deciding
the case, will take judicial notice of, and rely upon,
the current status of the registration, as shown by the
records of the Office. Royal Hawaiian Perfumes, Ltd. v.
Diamond Head Products of Hawaii, Inc., 204 USPQ 144 (TTAB
1979). See also, TBMP §703.02.
Inasmuch as the pleaded registration is no longer
subsisting, opposer must rely on whatever common law
rights it has in its mark. Thus, we turn to Mr.
Cuffaro’s testimony and related exhibits. Mr. Cuffaro
testified that opposer began its use of the mark FRUZZA
in 1991. The mark is used in connection with a dessert
item served at opposer’s 30 restaurants located in 19
states. More specifically, the dessert item is an oven-
baked fruit pie (apple, cherry or peach) that is in the
Opposition No. 111,879
4
shape of a pizza. Mr. Cuffaro described it as “mainly
just a dessert item that’s served on a pizza shell; it
looks like a pizza; it’s actually round like a pizza.”
(dep., p. 6)
Mr. Cuffaro’s testimony establishes opposer’s use of
the mark FRUZZA prior to the earliest date upon which
applicant can rely, which in this case is the filing date
of the involved application. Lone Star Manufacturing
Co., Inc. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ
368 (CCPA 1974) and Columbia Steel Tank Co. v. Union Tank
& Supply Co., 277 F.2d 192, 125 USPQ 406 (CCPA 1960).
We next turn to consider the merits of opposer’s
likelihood of confusion claim. Our determination under
Section 2(d) is based on an analysis of all of the facts
in evidence that are relevant to the factors bearing on
the likelihood of confusion issue. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, two key
considerations are the similarities or dissimilarities
between the marks and the similarities or dissimilarities
between the goods. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Insofar as the parties’ goods are concerned, we
start with the premise that they need not be identical or
Opposition No. 111,879
5
even competitive to support a holding of likelihood of
confusion. It is sufficient that the goods are so
related or that
conditions surrounding their marketing are such that they
would be encountered by the same persons who, because of
the relatedness of the goods and the similarities between
the marks, would believe mistakenly that the goods
originate from or are in some way associated with the
same producer. Hercules Inc. v. National Starch and
Chemical Corp., 223 USPQ 1244, 1247 (TTAB 1984).
Opposer’s and applicant’s goods are related in a
general sense in that they can be classified broadly as
“food products.” In finding that the goods are related,
we recognize that there is no per se rule in likelihood
of confusion cases involving foods that all food products
are related. Interstate Brands Corp. v. Celestial
Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 153 (CCPA
1978). More specifically here, however, opposer’s pies
are related to applicant’s gelato, ice cream and frozen
yogurt in that all are “sweets” that are served as
desserts. Moreover, it is common knowledge that frozen
Opposition No. 111,879
6
confections such as ice cream are often served as a
complementary item to pie (“pie a la mode”)4.
Further as to the goods, the dessert items are
likely to move through the same or similar channels of
trade (e.g., restaurants) to the same classes of
purchasers. Also, the goods are relatively inexpensive
and are the subjects of impulse purchases. See:
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPQ 1281, 1282 [when both products are
relatively inexpensive, comestible goods subject to
frequent replacement, purchasers of such products have
been held to a lesser standard of purchasing care].
With respect to the marks, opposer’s FRUZZA and
applicant’s FRUZZATTI are similar in appearance. The
first six letters in applicant’s mark are identical to
the entirety of opposer’s mark, with the only difference
being the addition of the letters “TTI” in applicant’s
mark. The marks are also similar in sound, both having
an Italian ring.
As to meaning, Mr. Cuffaro testified that opposer’s
mark is “kind of [a] play on the word pizza using fruit

4 In this connection, we take judicial notice of the dictionary
definition of the term “a la mode”: “topped or accompanied by a
serving of ice cream--used of an individual portion of dessert
(as a pie).” Webster’s Third New International Dictionary
(unabridged ed. 1993).
Opposition No. 111,879
7
combined.” (dep., p. 7) Both marks are somewhat
suggestive of “fruit,” and both marks, as noted above,
have an Italian feel. Notwithstanding this similar
suggestiveness, the record is devoid of evidence of any
third-party uses or registrations of similar marks in the
food industry.
In sum, the general overall commercial impressions
engendered by the marks FRUZZA and FRUZZATTI are
substantially similar. It is the general overall
commercial impression engendered by the marks that must
determine, due to the fallibility of memory and the
consequent lack of perfect recall, whether confusion as
to source or sponsorship is likely. The proper emphasis
is thus on the recollection of the average purchaser, who
normally retains a general, rather than a specific,
impression of trademarks. In re United States
Distributors, Inc., 229 USPQ 237, 239 (TTAB 1986). The
contemporaneous use of the respective marks in connection
with such closely related food products as applicant’s
gelato, ice cream and frozen yogurt and opposer’s fruit
pies sold in its restaurants is accordingly likely to
cause confusion as to the source or sponsorship thereof.
To the extent, however, that there may be any doubt
on our finding of likelihood of confusion, we resolve
Opposition No. 111,879
8
that doubt, as we must, in favor of the prior user.
Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 395 (Fed. Cir. 1983).
Decision: The opposition is sustained, and
registration to applicant is refused.