Primo Emporio s.n.c. di Giovanni Provitera & C.

Trademark Trial and Appeal Board

Apr 8, 2009

No. 79028117 (T.T.A.B. Apr. 8, 2009)

Mailed:
April 8, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Primo Emporio s.n.c. di Giovanni Provitera & C.
________

Serial No. 79028117
_______

Dennis H. Cavanaugh of D H Cavanaugh Associates for Primo
Emporio s.n.c. di Giovanni Provitera & C.

Edward Fennessy, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Zervas, Walsh and Taylor, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Primo Emporio s.n.c. di Giovanni Provitera & C.
(applicant) has filed an application to register the mark
shown here on the Principal Register for goods now
identified as “perfumery, namely, perfumes and eau de
toilette, essential oils for body, cosmetics, hand soaps”
in International Class 3.1

1 Application Serial No. 79028117, filed February 10, 2006, as an
extension of protection under the Madrid Protocol pursuant to Trademark
Act Section 66, 15 U.S.C. § 1141f.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 79028117
2

The USPTO electronic record related to the application
includes the following statements:
The mark consists of two overlapping pitchforks.

Color is not claimed as a feature of the mark.

and

The foreign wording in the mark translates into
English as first emporium.

In the response, dated November 26, 2007, to the first
Office action, applicant amended the application to insert
the following statements:
No claim is made to the exclusive right to use
EMPORIO apart from the mark as shown.

and

The mark consists of two overlapping pitchforks,
below which appear the words “PRIMO EMPORIO.”

These amendments were not entered into the electronic
record of the application. Furthermore, in the Office
actions which followed this response, the Examining
Attorney has not indicated whether these amendments were
accepted, although the Examining Attorney discusses the
Serial No. 79028117
3
disclaimer as if it were part of the record. Prior to
publication of the application, the record must be
clarified to indicate which statements are operative and
which statements should be printed. This ambiguity has no
effect on the issues before us in this appeal.
The Examining Attorney has issued a final refusal
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on
the grounds that applicant’s mark is likely to be confused
with the mark PRIMO! which is registered on the Principal
Register in typed form in Registration No. 1652860 for
goods identified as “perfumes and cologne” in International
Class 3. The registration issued on August 6, 1991, and it
has been renewed. The registration claims first use of the
mark anywhere and first use of the mark in commerce on
April 1, 1985.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We reverse.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion…” 15 U.S.C. § 1052(d).
The opinion in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
Serial No. 79028117
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factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods and
services in the application and the cited registration.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[and services] and differences in the marks.”). We will
consider each of the factors as to which applicant or the
examining attorney have presented evidence or arguments.
With respect to the goods, the Examining Attorney
argues that the goods are, in part, identical and otherwise
related. Most notably, both the application and the cited
registration cover “perfumes.” Applicant has not argued
that the goods differ. Therefore, we conclude that the
goods are, in part, identical and otherwise related for
purposes of our analysis here. We likewise conclude that
the channels of trade for the respective goods are the same
because the goods are, in part, identical and because
neither the application nor the cited registration specify
any limitations in the channels of trade. Here too,
applicant has not argued otherwise.
Serial No. 79028117
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Applicant’s arguments focus nearly exclusively on the
marks. In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005).
The Examining Attorney argues that the marks are
similar because PRIMO is the dominant element in both
applicant’s mark and the cited mark. The Examining
Attorney argues that PRIMO is dominant because EMPORIO,
which applicant has disclaimed, means “store” and therefore
is merely descriptive. The Examining Attorney also
discounts the importance of the design element in
applicant’s mark.
The Examining Attorney also provided a dictionary
entry to show that EMPORIO means “store” and examples of
third-party registrations where “emporium,” the English
equivalent of EMPORIO, has been disclaimed. In addition,
the Examining Attorney notes cases where “emporium” was
found to be merely descriptive. See, e.g., Builders
Square, Inc. v. Wickes Companies, Inc., 227 USPQ 644 (C.D.
Cal. 1985).
Applicant does not dispute the fact that EMPORIO means
store. Applicant has translated its mark as “first
Serial No. 79028117
6
emporium”; applicant has argued on the basis that its mark
also means “first store”; and applicant has disclaimed
EMPORIO.2 Instead, applicant argues that the Examining
Attorney has dissected its mark rather than viewing the
marks in their entireties in determining whether or not the
marks are similar. Applicant states, “… Applicant’s mark
consists of two words that constitute a unitary connotation
and create a unitary commercial impression.” Applicant’s
Brief at 3.
Applicant argues further that “Applicant’s mark convey
(sic) ‘first store’ as in first in importance, style or
renown.” Id. Applicant asserts that the Examining
Attorney fails to recognize this unitary meaning and
impression by concentrating unduly on the fact that EMPORIO
is descriptive and disclaimed. Applicant also notes that
disclaimed terms in a mark must be considered in evaluating
overall similarity, citing cases, such as, In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
Applicant also contends that PRIMO could be perceived
as a first name or surname when it precedes EMPORIO.
Applicant asserts further that the pitchfork design also
serves to distinguish the marks.

2 Although applicant has translated the mark as “first emporium” in the
record, applicant also argues/concedes that its mark means “first
store” in its brief. Applicant’s Brief at 3.
Serial No. 79028117
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In concluding that the marks are not similar, we first
note that PRIMO, the term common to both marks, is a weak
term, one which is suggestive in a laudatory sense, both in
English and Italian. As to the English meaning, Merriam-
Webster’s Collegiate Dictionary (11th ed. 2003) defines the
adjective “primo” as meaning “chief, first” or “of the
finest quality: EXCELLENT.”3 Cassell’s Italian Dictionary
(1958) defines the adjective “primo” as meaning “first,
chief, foremost; principal; leading, opening.”4 Thus, it is
apparent that PRIMO, whether one might perceive it as an
English term or an Italian term, would convey a suggestive,
laudatory meaning. Knight Textile Corp. v. Jones
Investment Co., 75 USPQ2d 1313, 1316 (TTAB 2005).
Next, we conclude that PRIMO EMPORIO would be viewed
as a linked phrase, most likely, as a phrase in another
language (Italian). The agreement of PRIMO, the adjective,
with EMPORIO, the noun it modifies, lends further support
to this perception in this case. As we noted, applicant
has translated its mark as a phrase, meaning “first
emporium.” The Trademark Manual of Examining Procedure (5th
ed.) (TMEP) provides the following relevant guidance:

3 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
4 Id.
Serial No. 79028117
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… if a term that appears in the English
dictionary appears in a mark as part of an
idiomatic phrase or other unitary expression, a
translation of the idiomatic phrase or unitary
expression is required. It would be illogical to
break the phrase into its individual word
elements and to translate only the individual
words that do not appear in the English
dictionary. Such a translation would serve no
useful purpose because it would not convey the
true commercial impression of the phrase.

TMEP § 808.03. The TMEP also provides “fiesta grande” as
an example of such an expression. It would be illogical to
translate “grande” alone. It would likewise be improper to
dissect the phrase in any comparison with a potentially
conflicting mark.
The guidance applies in this case, and the translation
in the record conforms to this guidance, that is, PRIMO
EMPORIO is translated as “first emporium.” Furthermore, in
our evaluation of the similarity between the respective
marks, here too, we must look to the phrase, and its
connotation and commercial impression. When we view PRIMO
EMPORIO in that light, and we consider the
suggestive/laudatory nature of PRIMO, we find that PRIMO
EMPORIO is sufficiently distinct from PRIMO! and that the
marks are not similar under Section 2(d). See Champagne
Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47
USPQ2d 1459 (Fed. Cir. 1998) (CRISTAL for champagne held
not confusingly similar to CRYSTAL CREEK for wine); In re
Serial No. 79028117
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Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238 (Fed. Cir. 1992)
(VARGAS GIRL for calendars held not confusingly similar to
VARGAS for posters, calendars, greeting cards, paintings,
limited edition prints, books of images and art work, and
art prints).
The cited mark, PRIMO!, suggests excellence or
preeminence. As a laudatory term, the scope of protection
afforded the cited mark is somewhat limited. Knight
Textile Corp. v. Jones Investment Co., 75 USPQ2d at 1316.
The exclamation point reinforces this connotation. On the
other hand, we concur with applicant in concluding that its
mark, PRIMO EMPORIO, suggests/connotes “first store.” We
find the marks sufficiently distinct under the particular
circumstances of this case. The pitchfork design, though
less significant, also helps to distinguish the marks.
Applicant also argues that the purchasers for the
goods are sophisticated, and as such, not likely to be
confused. In this regard, applicant asserts that the goods
are highly personal items which would be purchased with
care. Applicant also argues that these items “… often tend
to be relatively ‘expensive.’” Applicant’s Brief at 11.
We do not have any evidence regarding the actual cost
of the relevant goods, nor are there any limitations in
either the application or the cited registration which
Serial No. 79028117
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would limit the goods to a particular price category.
Furthermore, the goods identified in the application and
cited registration could vary in price from the relatively
inexpensive to the expensive. Also, the purchasers may
include most of the general public. While the goods may
not fall within the category of goods which are pure
impulse purchases, we conclude that only an ordinary degree
of care would attend the purchase. Accordingly, on balance
we conclude that a modicum of care would generally be
present in the purchase of the relevant goods, but not
necessarily a high level of care or sophistication. Also,
as the examining attorney argues, even sophisticated
purchasers are not immune from trademark confusion. In re
Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983).
Finally, we conclude that purchaser sophistication is not a
significant factor in this case.
In conclusion, after considering all evidence and
arguments bearing on the du Pont factors, including those
not specifically discussed here, we find that there is not
a likelihood of confusion between applicant’s PRIMO EMPORIO
and design mark when used in connection with “perfumery,
namely, perfumes and eau de toilette, essential oils for
body, cosmetics, hand soaps” and the cited PRIMO! mark when
used in connection with “perfumes and cologne.”
Serial No. 79028117
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Decision: We reverse the refusal under Trademark Act
Section 2(d).