Papa-n-Son’s, LLCv.Pie Town Pizza

Trademark Trial and Appeal Board

Jun 2, 2009

No. 91187394 (T.T.A.B. Jun. 2, 2009)

jk Mailed: June 2, 2009

Opposition No. 91187394

PAPA-N-SON'S, LLC

v.

PIE TOWN PIZZA, INC.

Before Hairston, Rogers and Bergsman,
Administrative Trademark Judges.

By the Board:
Pie Town Pizza, Inc. (“applicant”) seeks to register the
mark PIE TOWN PIZZA A BITE OF CHICAGO (PIZZA and CHICAGO
disclaimed), as shown below, for “restaurant; restaurant
services” in International Class 43.1

On November 7, 2008, Papa-n-Son’s, LLC (“opposer”) filed a
notice of opposition to registration, asserting the grounds of
priority of use and likelihood of confusion under Trademark Act
Section 2(d), and pleading ownership of application Serial No.
77481009, filed under Trademark Act Section 1(a), whereby

1 Application Serial No. 77480123 filed May 21, 2008, alleging a
bona fide intent to use the mark under Trademark Act Section
1(b).
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451 THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91187394

2
opposer seeks registration of the mark A BITE OF CHICAGO, in
standard characters (CHICAGO disclaimed), for “cafe and
restaurant services; cafe-restaurants; carry-out restaurants;
fast-food restaurants; provision of food and drink in
restaurants; restaurant; restaurant and cafe services;
restaurant and catering services; restaurant services;
restaurant services featuring sandwiches; restaurant services,
including sit-down service of food and take-out restaurant
services; restaurants; take-out restaurant services.” The
application was filed May 22, 2008 (a day after applicant’s
filing date), but listed May 13, 2008 (a date prior to
applicant’s filing date) as the date of first use and first use
of the mark in commerce.
In its answer, applicant denied the salient allegations in
the notice of opposition.
This proceeding is before the Board for consideration of
opposer’s motion (filed April 3, 2009) for summary judgment
under Fed. R. Civ. P. 56, as well as applicant’s cross motion
(filed April 20, 2009) for summary judgment. The motions are
fully briefed.
In moving for summary judgment,2 opposer proffers, with
respect to priority, that its date of first use predates
applicant’s first use date of July 7, 2008 asserted in
paragraph 4 of applicant’s answer to the notice of opposition.

2 In its motion, opposer affirmatively states that it served its
initial disclosures pursuant to Trademark Rule 2.127(e)(1). See
Compagnie Gervais Danone v. Precision Formulations LLC, 89 USPQ2d
1251, 1255 n.7 (TTAB 2009) (if a party moves for summary judgment
Opposition No. 91187394

3
Specifically, opposer relies on a first use date of April 3,
2008, asserting that such use is demonstrated both in its
specimen of use filed with a July 31, 2008 pre-examination
preliminary amendment to its application, and in the
declarations of three individuals, namely its sole Member, its
Manager and a customer, who were present at the April 3, 2008
event at which opposer assertedly used its mark on restaurant
service signage.
With respect to likelihood of confusion, opposer argues
that “(B)oth marks pertain to the same goods and services,” and
that “(B)oth marks contain the wording ‘A Bite of Chicago.’”
In its response, captioned “counter-motion” for summary
judgment, applicant seeks summary judgment, asserting, in

prior to the deadline for making initial disclosures it should
indicate in its motion that the disclosures have been made).
Opposition No. 91187394

4
regard to priority, that applicant “has acknowledged that its
first use date in commerce is at least as early as July 7,
2008” and that its mark “was otherwise in use, at least as
early as May 15, 2008.” In support of its claim of use as of
May 15, 2008, applicant submits the declaration of an employee
of an advertising and marketing firm which applicant hired.
Applicant further argues that it is entitled to judgment as a
matter of law because “(A) first user of a mark may pre-empt a
subsequent user from receiving national protection, but only if
it is the first to apply for federal registration,” (emphasis
in original) and that “(E)ven assuming Opposer’s allegations
are correct, and Opposer was the first to use its mark in
commerce, Applicant remains the first to apply for federal
registration.” Applicant, in essence, argues that it “has a
superior right to federal registration” based on its earlier
application filing date.
Analysis
Summary judgment is appropriate when the record shows
that there is no genuine issue of material fact and that the
moving party is entitled to judgment as a matter of law.
See Fed. R. Civ. P. 56(c). A dispute as to a material fact
issue is genuine only if a reasonable fact finder viewing
the entire record could resolve the dispute in favor of the
nonmoving party. See Olde Tyme Foods Inc. v. Roundy’s Inc.,
961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). In
deciding a motion for summary judgment, the Board must view
Opposition No. 91187394

5
the evidence in the light most favorable to the nonmovant
and must draw all reasonable inferences from underlying
facts in favor of the nonmovant. Id. Thus, in regard to
each party’s motion for summary judgment, we draw inferences
in favor of the adverse party.
A party seeking summary judgment bears the initial burden
of informing the Board of the basis for its motion and
identifying those portions of the record which it believes
demonstrates the absence of a genuine issue of material fact.
See Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548
(1986). When the moving party’s motion is supported by
evidence sufficient, if unopposed, to indicate that there is
no genuine issue of material fact, and that the moving party
is entitled to judgment, the burden shifts to the nonmoving
party to demonstrate the existence of specific genuinely
disputed facts which must be resolved at trial. The nonmoving
party may not rest on mere allegations of its pleadings and
assertions of counsel, but must designate specific portions of
the record, or produce additional affidavit evidence, showing
the existence of a genuine issue of material fact for trial.
If the nonmoving party does not so respond, summary judgment,
if appropriate, shall be entered in the moving party’s favor.
See Fed. R. Civ. P. 56(e).
To prevail on the asserted ground of likelihood of
confusion, opposer must demonstrate that there is no genuine
Opposition No. 91187394

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issue of fact that it has prior trademark rights in its mark,
and that applicant’s mark, when used in connection with
applicant’s services, is likely to cause confusion with
opposer’s pleaded mark.
With respect to priority of use, each party may rely,
without further proof, on the filing date of its application
as a “constructive use” date for purposes of conferring a
right of priority, provided the application matures into a
registration. See Trademark Act Section 7(c). In this case,
applicant filed the opposed application on May 21, 2008, one
day before opposer filed its pleaded application. This is the
operative priority date on which applicant may rely because
applicant has not submitted evidence demonstrating use of its
mark prior to the May 21, 2008 filing date of its intent-to-
use application.3 See Zirco Corp. v. American Telephone and

3 The testimony of Suzanne Vara, Managing Director/Partner of an
advertising and marketing agency applicant hired to develop
marketing products and/or plans, does not support applicant’s use of
its mark prior to the filing date of its application. Ms. Vara
testified that she began using applicant’s mark “for advertisement
purposes” on May 15, 2008, that she placed applicant’s mark on
applicant’s “coming soon” home page on May 16, 2008, that “t-shirts
were printed and received” on or about June 12, 2008, and that
“business cards were printed, received and distributed” on or about
July 4, 2008. Such testimony, and the corroborating exhibits, are
of limited value to applicant in establishing a date of first use of
its mark. It is not clear from the record that the use which Ms.
Vara attests to having taken place on May 15, 2008 constitutes use
by the applicant rather that mere use by her, a third party, in the
usual course of developing marketing and advertising materials
and/or plans. In the absence of more detailed evidence regarding
who actually used the mark, and the specific manner in which it was
used, we cannot presume that applicant used its mark as a service
mark in interstate commerce in the advertising or sale of its
restaurant services on May 15, 2008. In any event, May 15, 2008,
the earliest date on which applicant attempts to establish priority
Opposition No. 91187394

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Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1992).
Because owners of unregistered marks are not entitled to
the presumptions established by statute under Trademark Act
Section 7(b), to prevail on its grounds for opposition, it is
opposer's burden to demonstrate use of its mark prior to
applicant's first use of its mark. See Trademark Act § 2(d).
See also, e.g., Life Zone Inc. v. Middleman Group, Inc., 87
USPQ2d 1953, 1959 (TTAB 2008).
Opposer’s pleaded application, filed under Trademark Act
Section 1(a), recites May 13, 2008 as the date of first use of
its mark anywhere and the date of first use in commerce.
Opposer’s mere recitation of these dates does not, however,
constitute evidence of the mark’s use, and evidence of use
must be presented in any inter partes proceeding. More
importantly, a party who seeks to prove a date earlier than
the first use date alleged in its application must prove the
earlier date by “clear and convincing” evidence, because the
party is making a change of position from that asserted in its
application.4 Hydro-Dynamics Inc. v. George Putnam & Company

of use, is subsequent to April 3, 2008, the date on which opposer
has properly and adequately established its actual use of its
service mark for restaurant services. See the discussion of
opposer’s first use below.

4 Applicant’s assertion, in paragraph 2 of its answer to the
notice of opposition, that “(O)pposer filed a Preliminary
Amendment on July 31, 2008 changing the original first use
anywhere and the first use in commerce date from May 13, 2008 to
July 31, 2008,” is incorrect. In the preliminary amendment filed
on July 31, 2008, opposer submitted substitute specimens of use,
but reasserted the May 13, 2008 dates of first use anywhere and
Opposition No. 91187394

8
Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987);
Bass Pro Trademarks LLC v. Sportsman's Warehouse Inc., 89
USPQ2d 1844, 1855-1856 (TTAB 2008).
In its brief, opposer asserts that it first used its mark
in commerce on April 3, 2008, and in support thereof submitted
declarations from three individuals attesting to first-hand
knowledge of displays of opposer’s mark on signage used in the
sale and advertising of food at a sporting event which took
place on April 3, 2008. This documentary evidence includes
corroborating averments that are clear, consistent, and
sufficiently specific and definite so as to enable us to
conclude that opposer made actual common law use of its mark
in commerce on April 3, 2008.
Finally, applicant’s assertion that a first user of a
mark “may pre-empt a subsequent user from receiving national
protection” only if the first user is also the first to file
an application for registration is incorrect. While the
filing date of an application controls for purposes of

first use in commerce. Said amendment neither included nor
effectuated an amendment to opposer’s asserted dates of use.
Opposition No. 91187394

9
determining publication for opposition, it is actual use of a
mark that creates rights in and priority over another user or
other users. A “constructive use” date of first use can
always be defeated where another party puts forth sufficient
evidence of prior actual use. See, e.g., Johnny Blastoff Inc.
v. Los Angeles Rams Football Co., 188 F.3d 427, 51 USPQ2d
1920, 1925 (7th Cir. 1999).
Accordingly, on the basis of the record before us, we
find that there is no genuine issue as to opposer’s priority.
Turning to the question of likelihood of confusion under
Trademark Act Section 2(d), such a determination is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors set forth in In re E.I. du Pont de
Nemours & Co., 177 USPQ 563, 567 (CCPA 1973). The two key
considerations are the similarities between the goods and/or
services, and the similarities between the marks. See
Federated Foods, Inc. v. Fort Howard Paper Company, 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
With respect to the similarity of the services, the three
declarations submitted by opposer indicate that on April 3,
2008, opposer sold concessions at a sporting event using the
mark A BITE OF CHICAGO “prominently displayed on signs
associated with the sale of food.” Such services are clearly
in the nature of restaurant services. Accordingly, there is no
genuine issue that the involved services are identical or at
Opposition No. 91187394

10
least are closely related.5 Moreover, applicant, in paragraph
6 of its answer, admits that “the marks pertain to the same
goods and services,” and does not contend otherwise in its
motion.
Inasmuch as restaurant services encompass the sale of
inexpensive foods at concession locations, and inasmuch as
restaurant services are a type of service widely and commonly
used by many consumers, we construe the services of both
parties to be available to the same class of consumers, namely,
any member of the general public looking for a restaurant meal,
whether of the eat-in or carry-out kind. These are not
typically services in connection with which consumers exercise
a high degree of care in making their purchasing decisions.
Under these circumstances, consumers are held to a lesser
standard of purchasing care and thus are considered more likely
to be confused as to the source of the services. See Recot
Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899
(Fed. Cir. 2000).
With respect to the similarity of the marks, we look to
the marks in their entireties and to their appearance, sound,
connotation, and commercial impression. In re E.I. du Pont de
Nemours & Co., supra. The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but

5 The redundancies in the identification of goods in opposer’s
application are not relevant, and it is clear from the proffered
evidence that opposer is providing restaurant services.
Opposition No. 91187394

11
rather whether the marks are sufficiently similar in terms of
their overall commercial impression so that confusion as to the
source of the services offered under the marks is likely to
result. See San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corporation, 196 USPQ 1, 3 (CCPA 1977).
That the services of the parties are identical or closely
related is relevant to our analysis of the marks because the
greater the degree of similarity in the services, the lesser
the degree of similarity between the marks that is required to
support a finding that a likelihood of confusion exists. See
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert.
denied 506 U.S. 1034 (1992).
Opposer’s mark consists of the wording A BITE OF CHICAGO.
Applicant’s opposed mark incorporates this identical wording in
its entirety. Marks may be confusingly similar in appearance
where similar terms, or as in the case here, identical phrases,
appear in both marks. See e.g., Crocker National Bank v.
Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986),
aff’d 1 USPQ2d 1813 (Fed. Cir. 1987). Even though applicant’s
mark includes the words PIE TOWN PIZZA and a design, consumers
familiar with opposer’s A BITE OF CHICAGO restaurants, upon
encountering applicant’s PIE TOWN PIZZA A BITE OF CHICAGO
restaurants, may mistakenly believe that the restaurant
Opposition No. 91187394

12
services are somehow affiliated with each other because of the
use of the identical phrase A BITE OF CHICAGO.
Furthermore, with respect to the strength of opposer’s
mark, there is no evidence in the record that the wording A
BITE OF CHICAGO is weak or is for any other reason entitled to
only a limited degree of trademark protection when used in
connection with restaurant services.
In view of the foregoing, we find no genuine issue of
material fact that the marks at issue are highly similar in
their appearance and sound, that they have a highly similar
connotation because of their common use of the distinctive
phrase A BITE OF CHICAGO, and that the resulting overall
commercial impressions, when used in connection with the
involved restaurant services, are very similar. This, coupled
with the fact that the services are identical or closely
related, leads us to conclude that there are no genuine issues
of material fact regarding the du Pont likelihood of confusion
factors.
In summary, on the record presented, we find no genuine
issue with respect to opposer’s priority, no genuine issue as
to the identical or closely related nature of the services, and
no genuine issue that the marks are confusingly similar under
Trademark Act Section 2(d). Opposer has met its burden of
demonstrating that it is entitled to judgment as a matter of
law on its asserted ground for opposition. Fed. R. Civ. P.
56(c).
Opposition No. 91187394

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Accordingly, opposer’s motion for summary judgment is
hereby granted, the opposition is sustained, and registration
to applicant is refused.

NEWS FROM THE TTAB:

The USPTO published a notice of final rulemaking in the
Federal Register on August 1, 2007, at 72 F.R. 42242. By
this notice, various rules governing Trademark Trial and
Appeal Board inter partes proceedings are amended. Certain
amendments have an effective date of August 31, 2007, while
most have an effective date of November 1, 2007. For
further information, the parties are referred to a reprint
of the final rule and a chart summarizing the affected
rules, their changes, and effective dates, both viewable on
the USPTO website via these web addresses:
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalR
uleChart.pdf

By one rule change effective August 31, 2007, the Board's
standard protective order is made applicable to all TTAB
inter partes cases, whether already pending or commenced on
or after that date. However, as explained in the final rule
and chart, this change will not affect any case in which any
protective order has already been approved or imposed by the
Board. Further, as explained in the final rule, parties are
free to agree to a substitute protective order or to
supplement or amend the standard order even after August 31,
2007, subject to Board approval. The standard protective
order can be viewed using the following web address:
http://www.uspto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm