The Naples Group

Trademark Trial and Appeal Board

Sep 4, 2008

No. 78767372 (T.T.A.B. Sep. 4, 2008)

Mailed: September 4, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Naples Group
________

Serial No. 78767372
_______

Craig Johnson and Jennifer F. Wisniewski of Kutak Rock for
The Naples Group.

Sara N. Thomas, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Quinn, Grendel and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

The Naples Group has filed an application on the
Principal Register for the mark shown below for “restaurant
services” in International Class 43.1

1 Application Serial No. 78767372 was filed on December 6, 2005,
based upon applicant’s assertion of November 21, 2005 as a date
of first use of the mark in commerce. Applicant disclaimed
“PIZZA & MUSSELS.” Applicant further submitted the following
description of the mark: “The mark consists of the words
‘SISTERS PIZZA & MUSSELS’ inside a stylized slice of pizza facing
downward into an open mussel shell. The word ‘SISTERS’ is gold,
the pizza slice is red, the mussel is black, the rectangle is
green and the wording ‘PIZZA & MUSSELS’ is white.”
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78767372
2

Registration has been finally refused pursuant to
Trademark Act §2(d), 15 U.S.C. §1052(d), on the ground that
applicant’s mark so resembles the mark displayed below in
Registration No. 2799650,2 issued to Woman’s Club Reception
Facility, Inc., for “food services, namely catering
business meetings, banquets and wedding receptions” in
International Class 42;

and the mark
SORELLA CAFFE (standard characters)
in Registration No. 2813426,3 issued to John Molloy for
“restaurant services” in International Class 43, as to be
likely, if used on or in connection with the identified

2 Issued on December 30, 2003, with a disclaimer of “ESTABLISHED
1976” and “CATERING COMPANY.”
3 Issued on April 12, 2005 with a disclaimer of “CAFFE.” The
registration includes the following translation: “The English
translation of SORELLA CAFFE is SISTER CAFÉ or SISTER COFFEE.”
Ser No. 78767372
3
services, to cause confusion, to cause mistake, or to
deceive. Applicant and the examining attorney have filed
main briefs on the issue under appeal. In addition,
applicant filed a reply brief.
Evidentiary Matters
With its main brief, applicant submitted for the first
time an exhibit consisting of a specimen of use from the
application underlying cited Registration No. 2799650. In
addition, with its reply brief, applicant submitted for the
first time exhibits consisting of search summaries from the
Google Internet search engine as well as printouts from
various Internet websites. Applicant also submitted with
its reply brief dictionary definitions of “cater,”
“company,” “mussel” and “pizza” from an unspecified edition
of Webster’s Dictionary. Applicant requests that the above
evidence be entered into the record and that we take
judicial notice of the referenced dictionary definitions.
As has often been stated, the record in the
application should be complete prior to the filing of an
appeal. See Trademark Rule 2.142(d). The exhibits
attached to applicant’s main brief and reply brief were not
made of record during examination. Accordingly, their
submission therewith is untimely, and we have not
considered this evidence in reaching our decision. See
Ser No. 78767372
4
Trademark Rule 2.142(d) and TBMP §1203.02(e) (2d ed. rev.
2004) and the authorities cited therein.
Further, inasmuch as we have not relied upon the
proffered dictionary definitions of “pizza,” “company” or
“mussel” in our determination herein, we decline to take
judicial notice thereof.4 However, we will exercise our
discretion to take judicial notice of the following
definition of “cater” submitted by applicant: “to provide
food and service, as for parties.”5 In addition, we hereby
take judicial notice of the following definition of
“restaurant” submitted by the examining attorney with her
brief: “a business establishment where meals or
refreshments may be purchased.”6 The Board may take
judicial notice of dictionary definitions, including online
dictionaries which exist in printed format. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB
2002). See also 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).
Finally, during examination of the application at
issue, applicant submitted copies of third-party

4 We hasten to add that even if we considered this evidence in
our determination herein, the result would be the same.
5 Webster’s Dictionary, p. 73 (unspecified Ed.).
6 Merriam-Webster Online, www.merriam-webster.com.

Ser No. 78767372
5
registrations and listings of additional third-party
registrations obtained from the United States Patent and
Trademark Office’s (USPTO) Trademark Electronic Search
System (TESS) database. We note that the examining
attorney did not advise applicant that such listing was
insufficient to make the additional third-party
registrations of record at a point when applicant could
have corrected the error. Accordingly, applicant’s request
that we deem the list of additional registrations to have
been stipulated into the record is granted. See TBMP
§1208.03 (2d ed. rev. 2004) and the authorities cited
therein. However, we will only consider the information
that applicant has provided in the list of additional
third-party registrations for such probative value as it
may possess. See Id.
Likelihood of Confusion
Our determination under Trademark Act §2(d) is based
upon an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
Ser No. 78767372
6
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999), and cases
cited therein.
We review the relevant du Pont factors as they apply
to this case.
The Services
Turning to our consideration of the recited services,
we must determine whether consumers are likely to
mistakenly believe that they emanate from a common source.
It is not necessary that the services at issue be similar
or competitive, or even that they move in the same channels
of trade, to support a holding of likelihood of confusion.
It is sufficient instead that the respective services are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the services are
Ser No. 78767372
7
such that they would or could be encountered by the same
persons under circumstances that could, as a result of
similarity of the marks, give rise to the mistaken belief
that they originate from the same producer. See In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, applicant’s “restaurant services” are
identical to the services recited in Registration No.
2939414.
The services recited in Registration No. 2799650 are
“food services, namely, catering business meetings,
banquets and wedding receptions.” As noted above, “cater”
is defined as “to provide food and service, as for
parties.” “Restaurant” is defined above as “a business
establishment where meals or refreshments may be
purchased.” Thus, as identified, applicant’s services are
related to those recited in Registration No. 2799650 in
that both concern the provision of food or meals to
customers.
In addition, the examining attorney has made of record
twenty-four use-based third-party registrations which show
that various entities have adopted a single mark for
services that are identified in both applicant’s
Ser No. 78767372
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application and cited Registration No. 2799650. See, for
example:
Registration No. 3041484 for “restaurant, bar and
catering services;”

Registration No. 3288710 for “restaurant services
and catering services;”

Registration No. 3283685 for “catering,
restaurant services;”

Registration No. 3287988 for “restaurant and
catering services” and

Registration No. 3222887 for “restaurant
services, carry-out and delivery restaurant
services, catering services, food preparation
services.”

Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993). In this case, the evidence of record supports a
finding that the same marks are used to identify both
applicant’s services and those recited by registrant in
Registration No. 2799650.
Applicant’s reliance upon In re Coors Brewing Co., 343
F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003) and Jacobs v.
International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641
(CCPA 1982) in support of its contention that restaurant
Ser No. 78767372
9
services are unrelated to catering services is misplaced.
Both Coors and Jacobs involved the relationship between
restaurant services on the one hand and beverage products,
respectively, beer and tea, on the other. Neither case
addresses the relationship between restaurants and catering
services. Nor does applicant cite to any authority that
the analysis or evidentiary showings relevant to those
cases applies to a determination regarding the relationship
between restaurants and catering services.
Thus, based upon the recitations thereof and the
evidence of record, applicant’s services are identical to
and closely related to the respective services in the cited
registrations, and this du Pont factor favors a finding of
likelihood of confusion.
Channels of Trade
Neither applicant’s services nor those of registrant
recites any restrictions as to the channels of trade in
which they are distributed or the class of purchasers to
whom they are marketed. It is settled that in making our
determination regarding the channels of trade, we must look
to the services as identified in the involved application
and cited registrations. See Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990); and Paula Payne Products v.
Ser No. 78767372
10
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973). Because there are no restrictions recited either in
the involved application or cited registrations as to
channels of trade, both applicant’s and registrant’s
services are presumed to move in all normal channels of
trade therefor and be available to all normal classes of
potential consumers. See In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). Because applicant’s services are identical to
the restaurant services in Registration No. 2939414, and
have been found to be related to the catering services in
Registration No. 2799650, the services must be deemed to
move in the same channels of trade and encountered by the
same classes of purchasers. Accordingly, this du Pont
factor further favors a finding of likelihood of confusion.
Conditions of Sale
Applicant contends that purchasers of the catering
services recited in Registration No. 2799650 are
sophisticated. Even assuming arguendo that purchases of
such services would involve a deliberate decision, this
does not mean that the purchasers are immune from confusion
as to the origin of the respective services, especially
when, as we view the present case, the similarity of the
marks and the relatedness of the services outweigh any
sophisticated purchasing decision. See HRL Associates,
Ser No. 78767372
11
Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989),
aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902
F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) [similarities of
goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods]. See also In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970) [“Human memories even of discriminating
purchasers...are not infallible.”]. As a result, we find
this du Pont factor to neutral or to slightly favor a
finding of likelihood of confusion.
Actual Confusion
Another du Pont factor discussed by applicant and the
examining attorney is that of the lack of instances of
actual confusion. We do not accord significant weight to
applicant's contention, unsupported by any evidence, that
there have been no instances of actual confusion despite
contemporaneous use of the respective marks for the past
three years. The Federal Circuit has addressed the
question of the weight to be given to an assertion of no
actual confusion by an applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we
agree with the Board that Majestic's
uncorroborated statements of no known instances
Ser No. 78767372
12
of actual confusion are of little evidentiary
value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating
that self-serving testimony of appellant's
corporate president's unawareness of instances of
actual confusion was not conclusive that actual
confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if
not conclusive, of a high likelihood of
confusion. The opposite is not true, however.
The lack of evidence of actual confusion carries
little weight, [citation omitted], especially in
an ex parte context.

In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003).
Accordingly, while examples of actual confusion may
point toward a finding of a likelihood of confusion, an
absence of such evidence is not as compelling in support of
a finding of no likelihood of confusion. Thus, we cannot
conclude from the lack of instances of actual confusion
that confusion is not likely to occur.
Moreover, the test under Section 2(d) is not actual
confusion but likelihood of confusion. See In re Majestic
Distilling Co. supra. See also In re Kangaroos U.S.A., 223
USPQ 1025 (TTAB 1984); and In re General Motors Corp., 23
USPQ2d 1465 (TTAB 1992). As a result, we find this du Pont
factor, to the extent that it is applicable in this case,
to be neutral.
Strength of the Cited Marks
Ser No. 78767372
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Applicant contends that the term SISTERS is common in
the food and restaurant industry and that, as a result,
consumers are accustomed to distinguish between marks
containing SISTERS in connection with restaurant and food
services. In support of its contention, applicant has made
of record twelve third-party registrations for SISTERS-
formative and SORELLA marks for restaurants as well as
food-related goods and services.7 The following examples
are illustrative:
Registration No. 2682979 for the mark shown below
for “restaurant services;”

Registration No. 2892958 for the mark THE COURT
OF TWO SISTERS for “restaurant services;”

7 Applicant further made of record several registrations based
upon Section 44 of the Trademark Act. Because these
registrations are not based on use in commerce they have no
probative value in showing the relatedness of the services, and
they have not been considered. See In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993). Applicant has also included
several marks that have not registered. These applications are
irrelevant. In re Phillips-Van Heusen Corp., 63 USPQ2d 1047,
1049 n.4 (TTAB 2002) (“While applicant also submitted a copy of a
third-party application …, such has no probative value other than
as evidence that the application was filed”).
In addition, and as noted above, applicant submitted listings
of third-party applications and registrations. Such listings of
registrations have almost no probative value because there is no
indication of whether the marks identified thereby are based on
use in commerce; or which goods or services are identified
thereby. In accordance with the above authority, listings of
pending applications are without probative value.

Ser No. 78767372
14

Registration No. 2963240 for the mark WINE
SISTERS USA for “providing classes and seminars
in the filed [sic] of wine and food tasting,
organizing and conducting wine tasting events;”

Registration No. 2683435 for the mark 3 SISTERS’
for “candy;”

Registration No. 2991974 for the mark SORELLA
(translated into English as “sister”) for
“wines”; and

Registration No. 2791894 for the mark SORELLA
(translated into English as “sister”) for “cheese
and edible oils.”

However, applicant’s evidence of third-party
registrations is entitled to limited probative value. The
registrations are not evidence of use of the marks shown
therein. Thus, they are not proof that consumers are
familiar with such marks so as to be accustomed to the
existence of the same or similar marks in the marketplace.
See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004,
177 USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc. v.
Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). Moreover,
the probative value of many of the third-party
registrations is diminished by virtue of the fact that the
trademarks cover a wide variety of goods (candy, wine,
cheese and edible oils), which are not as closely related
to the services identified in the cited registrations as
applicant’s services. See Spoons Restaurants Inc. v.
Ser No. 78767372
15
Morrison Inc., 23 USPQ2d 1735, 1740 (TTAB 1991), aff’d
unpub., (Appeal No. 92-1086, Fed. Cir., June 5, 1992). In
any event, even if we were to find, based on applicant’s
evidence, that registrants’ marks are weak and entitled to
a narrow scope of protection, the scope is still broad
enough to prevent the registration of a highly similar mark
for identical or closely related services. See In re Farah
Manufacturing Co., Inc., 435 F.2d 594, 168 USPQ 277, 278
(CCPA 1971).
In addition, applicant submitted Internet evidence of
fourteen third-party uses of SISTERS-formative marks for
restaurants. The following examples are illustrative:
THREE SISTERS CAFÉ, a restaurant located in
Oakhurst, California
(www.threesisterscafe.com);

SWEET SISTERS CAFÉ, a restaurant located in
Pleasant Hill, California
(www.sweetsisterscafe.com);

SISTER’S HOMESTYLE CAFÉ, a restaurant located in
Phoenix, Arizona
(www.azcentral.com);

TWO SISTERS CAFÉ, a restaurant located in Babb,
Montana
(www.visitmt.com);

MY SISTER’S CATERING AND CAFÉ, a restaurant and
caterer located in Kenosha, Wisconsin
(www.mysisterscateringandcafé.com); and

SISTERS’ CAFÉ, a restaurant located in Honolulu,
Hawaii
(www.thehawaiichannel.com).
Ser No. 78767372
16

Similarly, the probative value of this evidence is
very limited because applicant presented no evidence
concerning the extent to which these third-party
designations are used in commerce. See Palm Bay Imports,
supra. Moreover, unlike other cases in which the Board has
found a term to be weak as a result of applicant’s
submission of evidence that, for example, “hundreds of
restaurants and eating establishments” (brief, p. 22) use a
particular term, applicant in this case has introduced only
fourteen examples of use by third-parties of designations
that include some form of the term SISTERS. Cf. In re
Broadway Chicken, Inc., 38 USPQ2d 1559 (TTAB 1996). Thus,
applicant’s evidence does not establish that there is
widespread use of similar marks on restaurants and catering
services such that registrants’ marks are weak and entitled
to only a narrow scope of protection. This factor,
therefore, also favors a finding of likelihood of
confusion.
The Marks
We now turn to the similarities or dissimilarities
between applicant’s mark and those in the cited
registrations. In coming to our determination, we must
compare the marks in their entireties as to appearance,
Ser No. 78767372
17
sound, connotation and commercial impression. See Palm Bay
Imports, supra. The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
their entireties that confusion as to the source of the
goods offered under the respective marks is likely to
result.
We further note that while we must base our
determination on a comparison of the marks in their
entireties, we are guided, equally, by the well established
principle that, in articulating reasons for reaching a
conclusion on the issue of confusion, “there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Registration No. 2799650
Turning first to Registration No. 2799650 for the mark

we find that such mark is similar to
applicant’s mark
Ser No. 78767372
18

in that both contain the word SISTERS as the most prominent
feature thereof. SISTERS, as it appears in both marks, is
identical in sound and meaning, and similar in appearance.
We do not find that the presence of the apostrophe in
registrant’s mark results in a significant difference
between SISTERS’ therein and SISTERS as it appears in
applicant’s mark. Moreover, SISTERS appears to have the
connotation in applicant’s mark of a food establishment
operated by sisters, and there is nothing in registrant’s
mark that suggests a different connotation.
The word SISTERS in applicant’s mark is clearly the
dominant element. It is displayed at the top of the mark
and thus is the first word encountered therein. In
addition, it is the only distinctive word in applicant’s
mark, PIZZA & MUSSELS being disclaimed and obviously
descriptive of food products. Disclaimed wording typically
is less significant in determining the similarity between
marks. See In re National Data Corp, supra. Further, the
simple and rather abstract pizza slice and mussel shell
design acts primarily as a carrier for the disclaimed
Ser No. 78767372
19
wording in applicant’s mark and makes less of a visual
impression than SISTERS. It is settled that if a mark
comprises both a word and a design, then the word is
normally accorded greater weight because it would be used
by purchasers to request the goods or services. See In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Thus, SISTERS is the portion of applicant’s mark to
which the viewer is drawn, the portion that the viewer is
most likely to remember, and the portion by which
consumers will refer to or request the identified services.
See In re Appetito Provisions Co., supra. For these
reasons, we consider SISTERS to be the dominant feature of
the applied-for mark.
With regard to the mark in the cited registration, the
word SISTERS’ is also the dominant element. It is visually
most prominent, and it is likely to be most noted and
remembered inasmuch as it is the sole distinctive term in
the mark. The disclaimed wording CATERING COMPANY appears
in relatively smaller script below the word SISTERS’ and is
generic as applied to registrant’s services and thus has
little, if any, source identifying significance.
Similarly, the disclaimed wording ESTABLISHED 1976 appears
in very small script compared to the rest of the wording in
the mark, and also has little, if any, source identifying
Ser No. 78767372
20
significance. Accordingly, it is by the word SISTERS’ that
customers would recognize and request the identified
services. See In re Appetito Provisions, supra.
We noted above that SISTERS, the word which the marks
share in common, and the only distinctive word element in
either mark, is also the first word in the marks. It is “a
matter of some importance since it is often the first part
of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered.” Presto Products, Inc.
v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988).
See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 73 USPQ2d at 1692 (“The presence of
this strong distinctive term as the first word in both
parties’ marks renders the marks similar, especially in
light of the largely laudatory (and hence non-source
identifying) significance of ROYALE.”). For the reasons
articulated above, the disclaimed wording in both marks and
the design elements in that of applicant are far less
prominent than the word SISTERS. Consumers are likely to
regard these elements of the marks as less important, and
thus will refer to both marks as SISTERS, instead of
pronouncing the remaining wording. See Big M. Inc. v.
United States Shoe Corp., 228 USPQ 614, 616 (TTAB
Ser No. 78767372
21
1985)(“[W]e cannot ignore the propensity of consumers to
often shorten trademarks.”)
Viewing the marks in the involved application and
cited registration as a whole, we find that the identity of
the dominant feature, namely, the word SISTERS, in sound,
meaning and connotation results in the marks’ conveying
similar overall commercial impressions. We note that the
test under the first du Pont factor is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather 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.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Accordingly, this du
Pont factor favors a finding of likelihood of confusion as
to the mark in Registration No. 2799650.
Registration No. 2939414
Next we turn to the mark SORELLA CAFFE in Registration
No. 2939414, bearing in mind that where, as here, the
services identified in the involved application are
identical to those identified in an existing registration,
Ser No. 78767372
22
“the degree of similarity necessary to support a conclusion
of likely confusion declines.” Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992).
Under the doctrine of foreign equivalents, foreign
words from common languages are translated into English to
determine similarity of connotation with English word
marks. See Palm Bay Imports, supra. The doctrine is
applied when it is likely that “the ordinary American
purchaser would ‘stop and translate [the term] into its
English equivalent.’” Id. at 1696, quoting In re Pan Tex
Hotel Corp., 190 USPQ 109, 110 (TTAB 1976).
The “ordinary American purchaser” in this context
refers to the ordinary American purchaser who is
knowledgeable in the foreign language. See J.T. McCarthy,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, §23:36 (4th ed.
2006). In this case, such a purchaser would be
knowledgeable in Italian. In addition, in In re Ithaca
Industries, Inc., 230 USPQ 702, 703 (TTAB 1986), we found
that “it does not require any authority to conclude that
Italian is a common, major language in the world and is
spoken by many people in the United States” in our
determination that the doctrine of foreign equivalents is
applicable where the foreign word is in Italian.
Ser No. 78767372
23
As noted above, the cited registration includes a
translation of the mark SORELLA CAFFE as SISTER CAFÉ or
SISTER COFFEE. In addition, the examining attorney
submitted a translation from an Internet-based dictionary
which agrees with the translation of SORELLA provided by
registrant. Based upon the above evidence and authorities,
we find that Italian is a modern language which is not
obscure. We further find that every translation made of
record agrees that SORELLA means SISTER. We find, in view
of the foregoing, not only that the Italian term SORELLA is
the exact translation of “SISTER,” but further that the
mark would be translated by those who are familiar with the
Italian language. This situation, thus, differs from those
cases in which it was found that the mark would not be
translated because of the inherent nature of the mark. Cf.
In re Tia Maria, Inc., 188 USPQ 524 (TTAB 1984); and Le
Continental Nut Co. v. Le Cordon Bleu S.A.R.L., 494 F.2d
1395, 181 USPQ 646 (CCPA 1974) (finding that CORDON BLEU,
while literally translated as BLUE RIBBON, would not be
translated by the American public because the two terms
create different commercial impressions, CORDON BLEU having
been adopted into the English language and acquiring a
different meaning from BLUE RIBBON).
Ser No. 78767372
24
Accordingly, we find that the doctrine of foreign
equivalents applies, and that the word SORELLA, while
differing somewhat from the word SISTERS in sound and
appearance, is identical in meaning conveys a highly
similar, if not identical, commercial impression. We
further find that the disclaimed word CAFFE in registrant’s
mark appears at best to be highly descriptive as applied to
its services and thus possesses little, if any, source
identifying significance. Thus, in accordance with the
above discussion, the dominant portion of applicant’s mark,
namely, SISTERS, is identical to the dominant portion of
registrant’s mark, namely, SORELLA, in meaning and nearly
so in commercial impression. The fact that the marks have
same meaning, resulting in a highly similar overall
commercial impression, is sufficient for us to conclude
that confusion is likely, despite the differences in their
appearance and sound. See In re American Safety Razor Co.,
2 USPQ2d 1459 (TTAB 1987). This is particularly the case
given that the marks both are used to identify legally
identical restaurant services. See Century 21 Real Estate
Corp. v. Century Life of Am., supra.
Finally, to the extent that any of the points raised
by applicant raise a doubt about likelihood of confusion,
that doubt is required to be resolved in favor of the prior
Ser No. 78767372
25
registrants. See In re Hyper Shoppes (Ohio), Inc., 837
F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ
1289 (Fed. Cir. 1984).
Decision: Based upon the foregoing, and in
particular, considering the similarities between
applicant’s mark and the marks in the cited registrations,
as well as the identity and close relationship between the
services recited therein, the refusal to register under
Trademark Act § 2(d) is affirmed both as to the mark in
Registration No. 2799650 and as to the mark in Registration
No. 2939414.