Thomas Konicki

Trademark Trial and Appeal Board

Sep 9, 2008

No. 78867416 (T.T.A.B. Sep. 9, 2008)

Mailed: September 9, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Thomas Konicki
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Serial No. 78867416
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Forrest L. Collins, Esq. for Thomas Konicki.

Steven M. Perez, Trademark Examining Attorney, Law Office
101, Ronald R. Sussman, Managing Attorney.
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Before Zervas, Cataldo, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Thomas Konkcik seeks registration of the mark ANGIE’S
PIZZA (in standard characters) for “pizza delivery,” in
International Class 39.1
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 marks LITTLE ANGIE’S2

1 Filed August 10, 2006, based on the allegation of first use and
use in commerce as of October 1, 1976. Applicant submitted a
disclaimer of “PIZZA” apart from the mark as shown.
2 Registration No. 1920522, issued September 19, 1995. Post-
registration filings pursuant to Trademark Act §§ 8, 9, and 15
accepted, granted and acknowledged.
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78867416
2
and ANGIE’S CANTINA AND GRILL,3 both for “restaurant and bar
services, and carry-out restaurant services” in
International Class 42, as to be likely, if used in
connection with the identified services, to cause
confusion, to cause mistake, or to deceive. Trademark Act
§ 2(d); 15 U.S.C. § 1052(d). Both registrations are owned
by the same entity.
Applicant and the examining attorney filed briefs.
After careful consideration of the record, we affirm.
I. Applicable Law
Our determination under Trademark Act § 2(d) is based
on 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,
65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Rests. 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

3 Registration No. 2613327, issued August 27, 2002. “CANTINA AND
GRILL” disclaimed.
Serial No. 78867416
3
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 Rest. Enters.,
Inc., 50 USPQ2d 1209 (TTAB 1999).
II. Discussion
A. Evidentiary Objection
The examining attorney objects to an exhibit attached
to applicant’s brief, namely, a list of third-party
registrations, on the grounds that the list had not been
timely submitted and that such a list is not sufficient to
make the listed registrations of record. Ex. Att. Br. at
2-3. Applicant submitted the list in an apparent attempt
to show that the term ANGIE or ANGIE’S is weak. App. Br.
at 11.
The examining attorney’s objection is sustained, and
we have given no consideration to applicant’s list or the
listed registrations. “The record in the application
should be complete prior to the filing of an appeal. The
... Board will ordinarily not consider additional evidence
filed after the appeal....” Trademark Rule 2.142(d).
Furthermore, “the Board does not take judicial notice of
registrations that reside in the Patent Office, and ... the
Serial No. 78867416
4
submission of a list of registrations is insufficient to
make them of record.” In re Duofold Inc., 184 USPQ 638,
640 (TTAB 1974).
B. The Similarity Or Dissimilarity of the Marks in
Their Entireties as to Appearance, Sound,
Connotation and Commercial Impression.

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692. While we must consider the marks in their
entireties, it is entirely appropriate to accord greater
importance to the more distinctive elements in the marks.
In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). As has often been stated, the first word
of a compound mark is often more likely to make a stronger
impact on consumers and the way they remember the mark.
E.g. Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629, 1639
(TTAB 2007). Further, descriptive terms in a mark are weak
and are generally entitled to lesser weight in
distinguishing similar marks. In re Equitable
Bancorporation, 229 USPQ 709, 711 (TTAB 1986).
As noted, applicant’s mark is ANGIE’S PIZZA in
standard characters,4 while the marks in the cited prior

4 Applicant contends that its mark consists of four parts: “the
given name Angie in its possessive form; the disclaimed language
Serial No. 78867416
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registrations are ANGIE’S CANTINA AND GRILL and LITTLE
ANGIE’S. We find that the dominant portion of all three
marks is the identical term, “ANGIE’S.” We note in this
regard that “ANGIE’S” is the first word of both applicant’s
mark and the mark in the ‘327 Registration. Moreover, the
term “PIZZA” in applicant’s mark and “CANTINA AND GRILL” in
the ‘327 Registration are descriptive of the identified
services, and have been disclaimed as such. As for the
mark in the ‘522 Registration, LITTLE ANGIE’S, we note that
the term “LITTLE” modifies the term “ANGIE’S,” and is
therefore of subordinate emphasis to the latter term.
While there are clearly differences between
applicant’s mark and each of the cited prior registrations,
they nonetheless share the identical dominant and
distinctive term, “ANGIE’S.” Considered in their
entireties, we find these marks to be substantially

Pizza in the same font as the given name Angie, a chef tossing a
pizza, and the language ‘Since 1955’ in a smaller font.” App.
Br. at 6. Applicant is incorrect as a matter of law. The mark
in an application is defined by the drawing of the mark, not the
applicant’s specimens of use. Trademark Rule 2.52. In this
case, applicant has applied to register the mark ANGIE’S PIZZA,
in standard character form, i.e., without regard to any
particular font, size, or color, and without any design element.
Although it is apparent from applicant’s specimens that it uses
its mark with the chef design and additional wording, applicant
may apply to register any portion of its mark which creates a
distinct and separate impression. But having chosen to apply for
registration of only the words ANGIE’S PIZZA, without any
additional elements, applicant cannot now contend that matter
extraneous to the applied-for mark distinguishes it from the
cited registration.
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similar, a fact which supports the examining attorney’s
refusal of registration.
C. The Similarity Or Dissimilarity And Nature Of The
Services

Applicant identifies its services as “pizza delivery,”
while the services in both cited registrations are recited
as “restaurant and bar services, and carry-out restaurant
services.” Applicant notes the obvious differences in the
services, noting that customers “will certainly recognize
the distinction between a pizza delivery service and a
public house that sells food.” App. Br. at 8.
Applicant’s argument misses the point. The issue is
not whether purchasers of the registrant’s services will
confuse such services with applicant’s. Rather, the
question is whether – when used in connection with similar
marks – the services are related in such a way that
potential purchasers will believe that they share a common
source or sponsorship. In re Total Quality Group, Inc., 51
USPQ2d 1474, 1476-77 (TTAB 1999).
As the examining attorney argues, the pizza delivery
services are clearly related to bar and restaurant and
carry-out restaurant services. Many restaurants –
particularly including pizza restaurants – also provide
delivery services. The examining attorney has submitted
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eleven trademark registrations covering restaurant services
on the one hand, and pizza delivery services on the other.
Third-party registrations which individually cover a number
of different items and which are based on use in commerce
may serve to suggest that the listed goods are of a type
that may emanate from a single source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1469 (TTAB 1988), aff'd
(unpublished) No. 88-1444 (Fed. Cir. Nov. 14, 1988).
Applicant further argues that its services are
unrelated to those of the cited registrant because the
registrant does not serve or deliver pizza.
Applicant’s argument is misplaced. In determining
registrability, we must limit our consideration to the
services as set out in the application and in the cited
registration. See In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). Regardless of the actual services or the consumers
to whom they are rendered, we may not read limitations into
the services as recited. Octocom Systems Inc. v. Houston
Computers Services Inc., 16 USPQ2d 1783, 1786-87 (Fed. Cir.
1990). In this case, the cited registrant’s restaurant and
carry-out services are not limited to any particular type
of food or menu. Accordingly, we must construe the cited
registration to encompass all of the usual types of
Serial No. 78867416
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restaurants and carry-out services, including pizza
restaurants and pizza take-out services.
We thus agree with the examining attorney that the
registrant’s services are closely related to the
applicant’s. This factor likewise favors refusal of
registration.
III. Conclusion
After careful consideration of the relevant evidence
and argument, we conclude that use of applicant’s mark on
or in connection with the identified services would pose a
likelihood of confusion with the mark in the cited prior
registration.
Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly affirmed.