V & R Pizzeria, Inc.

Trademark Trial and Appeal Board

Nov 3, 1997

No. 74520422 (T.T.A.B. Nov. 3, 1997)

THIS DISPOSITION IS NOT CITABLE AS PRECEDENT
OF THE TTAB NOV 3, 97
Hearing: Paper No. 14
March 5, 1997 PTH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re V & R Pizzeria, Inc.
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Serial No. 74/520,422
_______
Thomas M. Galgano of Galgano & Burke for V & R Pizzeria,
Inc.
Charles L. Jenkins, Trademark Examining Attorney, Law Office
105 (Thomas Howell, Managing Attorney).
_______
Before Quinn, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
This is an appeal from the Trademark Examining
Attorney’s final refusal to register the mark set forth
below,
Ser No. 74/520,422
2

Ser No. 74/520,422
3
for pizzeria restaurant services including carryout
services.1 Registration has been finally refused under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant’s mark, when applied to its
services, so resembles the registered mark DANTES for
restaurant and cocktail lounge services2 as to be likely to
cause confusion.
Both applicant and the Trademark Examining Attorney
have filed briefs and were present at the oral hearing.
Turning first to a consideration of the services,
applicant argues that its restaurant services which feature
pizza and soda are very different from registrant’s higher
priced restaurant services which feature American/Fondue
cuisine. However, for purposes of our analysis of
likelihood of confusion, we must compare the services as
they are identified in the application and the cited
registration. Registrant’s services are broadly defined in
its registration and we must assume that such services
encompass all types of restaurant services including
pizzeria restaurant services. In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). Thus, the services of applicant and
registrant, for purposes of our likelihood of confusion

1 Application Serial No. 74/520,422 filed May 6, 1994 claiming a
date of first use and a date of first use in commerce of
January 1, 1994. Applicant has disclaimed “FAMIGLIA PIZZA AND
PASTA” apart from the mark as shown.
2 Registration No. 1,976,707 issued November 1, 1977; Sections 8
& 15 affidavit filed.
Ser No. 74/520,422
4
determination, are legally identical. Further, the services
are assumed to travel in the same channels of trade and to
be bought by the same purchasers, namely the general public.
Turning next to a consideration of the marks, we begin
our analysis of whether confusion is likely by keeping in
mind two propositions set forth by the Court of Appeals for
the Federal Circuit. First, “when marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). Second, in articulating reasons for
reaching a conclusion on the issue of likelihood 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., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
In comparing registrant’s mark DANTES with applicant’s
mark DANTE FAMIGLIA PIZZA AND PASTA and design, we find the
commercial impressions engendered by the marks to be
sufficiently similar that, when the marks are used in
connection with the identified services, consumers are
likely to be confused. In the present case, applicant’s
Ser No. 74/520,422
5
mark is clearly dominated by the word DANTE which is
substantially similar to registrant’s mark DANTES.
Applicant has disclaimed exclusive rights to use FAMIGLIA
PIZZA AND PASTA, thereby acknowledging the descriptiveness
of these terms. The design of the gondola on a canal is
subordinate and less likely to be remembered by consumers.
The word DANTE would be used by purchasers in referring to
applicant’s pizzeria restaurant and carryout services. In
re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987).
See In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997) [THE DELTA CAFE and design for
restaurant services is likely to cause confusion with DELTA
for hotel, motel, and restaurant services].
Applicant, however, contends that marks consisting of
or containing the word DANTE are weak marks which are
therefore entitled to only a limited scope of protection.
Specifically, applicant maintains that the term DANTE is so
frequently used in marks for restaurant services that no one
party may claim exclusive rights to DANTE used in connection
with such services. In support of its position, applicant
submitted with its appeal brief copies of third-party
federal registrations; a search report of state
registrations; two search reports of company names from the
Dunn & Bradstreet and CORESEARCH databases; and yellow page
and white page business directory listings. Under Trademark
Ser No. 74/520,422
6
Rule 2.142(d), evidence submitted for the first time with a
brief on appeal is normally considered by the Board to be
untimely and is usually given no consideration. In view
thereof, and because the Examining Attorney properly
objected to the third-party federal registrations and the
search report of state registrations, we have not considered
these materials in reaching our decision. However, the
Examining Attorney did not object to the search reports of
company names and the yellow and white page business
listings. Thus, we have considered these materials. The
Dunn & Bradstreet and CORESEARCH search reports revealed
approximately 100 entities providing restaurant services,
bar services and related services under names containing
DANTE; and the yellow and white pages excerpts revealed
approximately 20 listings for restaurants containing DANTE
in their names.
These materials, however, are of limited probative
value. Search reports are not evidence of use, and the
telephone listings, while evidence of service mark use, do
not establish when the marks listed therein were first used
or the extent of their use. Here, notwithstanding any
alleged weakness in the word DANTE, applicant’s mark is
still substantially similar in commercial impression to the
cited mark and the parties’ services are legally identical.
Ser No. 74/520,422
7
Finally, applicant argues in its reply brief that an
investigation into registrant’s use of the cited mark
reveals that registrant does not currently use DANTES per
se, but instead uses DANTES DOWN THE HATCH. Although
applicant has submitted with its reply brief various
materials in support of this argument, as noted previously,
evidence submitted for the first time with a brief on appeal
is normally considered by the Board to be untimely and
usually given no consideration. At the oral hearing, the
Examining Attorney properly objected to this evidence as
untimely. Thus, we have not considered this evidence. More
importantly, however, it is irrelevant to our determination
of likelihood of confusion that registrant may use the words
DOWN THE HATCH in association with DANTES. We must compare
the parties’ marks as they are set forth in the application
and cited registration, and not as how they may be actually
used. See e.g., Blue Cross and Blue Shield Association v.
Harvard Community Health Plan, Inc., 17 USPQ2d 1075 (TTAB
1990) and Aloe Creme Laboratories, Inc. v. Helena
Rubinstein, Inc., 188 USPQ 515 (TTAB 1975).
In sum, we conclude that consumers familiar with
registrant’s mark DANTES for restaurant and cocktail lounge
services would be likely to believe, upon encountering
applicant’s mark DANTE FAMIGLIA PIZZA AND PASTA and design
for pizzeria restaurant services including carryout
Ser No. 74/520,422
8
services, that the services originated with or were somehow
associated with or sponsored by the same entity.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.
T. J. Quinn
G. D. Hohein
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board