Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE APPETITO PROVISIONS CO. INC.
Serial No. 423,405
July 1, 1987
Hearing: April 15, 1987
Jan Alan Brody and Antonio Inacio for applicant
Ellen M. Devine
Trademark Examining Attorney
Law Office 2
(John C. Demos, Managing Attorney)
Before Rice, Allen and Cissel
An application has been filed by Appetito Provisions Co., Inc. to register the mark APPETITO and Design, [FN1] as reproduced below, for Italian sausage:
Registration has been refused by the Trademark Examining Attorney under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) (1976), on the basis that applicant's mark is likely to cause confusion or mistake, or to deceive if used contemporaneously with the registered marks A APPETITO'S [FN2] and A APPETITO'S INC. and sandwich design, [FN3] both of which are reproduced below, for restaurant services:
Applicant has appealed, contending that differences in the marks, and in the goods and services in connection with which they are used make confusion unlikely. [FN4] The Trademark Examining Attorney maintains that the dominant element is identical in both marks and that Italian sausage is sufficiently related to restaurant services to make confusion likely. In support of this relationship, she has submitted evidence intended to demonstrate that food and restaurant services are marketed by the same proprietors under identical marks.
Although marks must be compared in their entireties, where they are used on goods and services offered to the general public, emphasis must also be placed on the recollection of the average purchaser, who normally retains a general rather than a specific impression of them. In evaluating the similarities of marks, a particular feature or portion of a mark can thus be accorded greater weight if it would make an impression upon purchasers that would be remembered and relied upon to identify the goods or services. In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986). Thus, if one of the marks 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. Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). The principle is especially important in cases involving restaurant services in view of the propensity of persons to try restaurants based on word-of-mouth recommendations.
The dominant element of both marks is the word APPETITO. Because it is prominently displayed between the broad stripes of applicant's mark, and enhanced in registrant's marks by the capitalized letter A referring to its first letter, the word APPETITO makes an impression upon which purchasers would rely. The abbreviation 'Inc.' and the design of a sandwich featured in registrant's mark are less likely to be remembered because they merely describe its business form and the kind of food served in its restaurants. Therefore, because applicant's mark shares with registrant's mark that element responsible for creating its overall commercial impression, the marks are confusingly similar.
*2 Likelihood of confusion is supported if the goods and services are related in some manner or, because of marketing circumstances, the marks are likely to be encountered by the same persons under conditions that could give rise to the mistaken belief that they are in some way associated with the same source. In re Kangaroos U.S.A., 223 USPQ 1025, 1026 (TTAB 1985). In this regard, the predecessor of the Court above once broadly held that there existed such an intimate relationship between any food and food services that confusion is likely where the same or confusingly similar marks are used by different entities on those goods and services. In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ 347 (CCPA 1961) [smoked and cured meats and food catering services]; See also, In re Three Chefs Corp., 175 USPQ 177 (TTAB 1972), following the Seiler rule. Recent decisions have emphasized, however, that this relationship does not rise to the level of a presumption, but must be evaluated according to the facts presented by each particular case. Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982); In re Farm Fresh Catfish Co., 231 USPQ 495 (TTAB 1986); In re Best Western Family Steak House, Inc., 222 USPQ 827 (TTAB 1984). The Examining Attorney argues that the unrestricted nature of the registrations merits concluding that Italian sausages are served in registrant's restaurants, and that purchasers will assume that the marketing of these food products and restaurant services under similar marks implies an association of source.
The evidence submitted by the Examining Attorney regarding the issue of the relatedness of the goods and services involved herein comprises a package of frozen soup bearing the mark STOUFFER'S and an excerpt from the 1984 District of Columbia Yellow Pages listing of the mark, STOUFFER'S CONCOURSE HOTEL, as a restaurant. In addition, two excerpts concerning a company named Benihana from PR NEWSWIRE, a proprietary service available through the LEXIS/NEXIS Research Database, have been submitted. The latter provide in relevant part as follows:
[T]he summer and early fall months are the low point of frozen food sales throughout the industry and that, inasmuch as this part of Benihana's business has become such a significant factor in the company's overall performance . . . [FN5].
Benihana National Corp. owns and operates 16 teppanyaki-style restaurants under license from its parent, Benihana of Tokyo, Inc. . . . [FN6].
These excerpts may fail to indicate the mark under which these goods and services are marketed, but even though evidence of their sale under the same mark would make a stronger case, the fact that both food products and restaurant services originate with a common source is probative of the perceptions of individuals in the trade. Sterling Drug Inc. v. Sebring, 515 F.2d 1128, 185 USPQ 649, 652 (CCPA 1975). Further we find that the frozen food package and telephone directory listing establish that similar marks, in this case STOUFFER'S and STOUFFER'S CONCOURSE HOTEL, are used for both food products and restaurant services.
*3 In addition, this Board and the Court above has found relatedness of the goods and services and a likelihood of confusion in a number of cases involving food services and foods of the same kind as those involved here. See, e.g., In re H.J. Seiler Co., 289 F.2d at 674, 129 USPQ at 347 [Customers of SEILER'S food catering services held likely to believe that SEILER'S bacon, bologna, dried beef, boneless butts, ham, luncheon roll, meat loaf, pork roll, sausage and scrapple in the grocery store comes from the same source]; In re Best Western Family Steak House, Inc., 222 USPQ at 827 [Customers of BEEFMASTER restaurants held likely to believe that BEEF MASTER frankfurters and bologna originate with, are produced by or are in some way associated with the same source as that of the restaurants]; Marriott Corp. v. Top Boy International, Inc., 165 USPQ 642, 643 (TTAB 1970), aff'd 470 F.2d 641, 176 USPQ 209 (CCPA 1973) [It being common knowledge that hamburger sandwiches are sold in drive-in restaurants, the public is likely to assume an association between TOP BOY hamburger sandwiches and BIG BOY drive-in restaurants.]
In the most recent of our decisions, Best Western Family Steak House, we placed weight on the fact that there was no restriction in the identification of services in the BEEFMASTER restaurant services application and that, consequently, it could be fairly presumed that all kinds of foods were served in applicant's restaurants, including the same type of food as that named in registrant's registration. In that appellant's description is also unlimited, the same presumption is applicable here. Indeed, we cannot rule out the possibility that registrant's restaurants specialize in Italian sausage, the very product that appellant sells. See In re Denisi, 225 USPQ 624, 625 (TTAB 1985).
Appellant's argument that its sales of sausage are to 'grocery or supermarket level establishments' is to no avail. The identification 'Italian sausage' is also unrestricted as to trade channels, hence we must presume retail sales of sausage under the APPETITO mark are included.
We are not unaware of the fact that, to persons who understand the meaning of APPETITO, this term when applied to appellant's goods probably suggests 'appetizing Italian sausage.' However, presuming, as we must, that registrant's services include restaurants specializing in Italian dishes, [FN7] the commercial impression of the same mark applied to registrant's services, i.e. 'appetizing Italian restaurants,' is markedly similar. See, e.g., Mohawk Rubber Co. v. Mobiliner Tire Co., Inc., 217 USPQ 929, 933 (TTAB 1981).
Decision: The refusal of registration is affirmed.
J. E. Rice
D. B. Allen
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Application Ser. No. 423,405, filed April 27, 1983, claiming dates of first use and first use in commerce of July 1, 1966. The drawing is lined for the colors red and green. The word 'appetito' is an Italian word meaning 'appetite.'
FN2. Registration No. 1,250,699, issued September 6, 1983, claiming a date of first use of December 28, 1974 and a date of first use in commerce of January 1, 1980.
FN3. Registration No. 1,259,650, issued November 29, 1983, claiming a date of first use of December 28, 1974 and a date of first use in commerce of January 1, 1980. The abbreviation 'Inc.' and the design of a sandwich have been disclaimed.
FN4. Applicant also argues that registrant's activities in Arizona are geographically separate from its activities in the New York City metropolitan area, North Carolina, and Florida. Although this argument has merit in a dispute over the use of trademarks, it has none in a proceeding such as this involving the right to a geographically unrestricted registration because such a registration under the federal Trademark Act accords a registrant prima facie exclusive rights in the registered mark for the goods or services recited in the registration throughout the United States regardless of its actual extent of use. Trademark Act, Section 7(b) 15 USC § 1057(b) (1976; See e.g. Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70, 77 (TTAB 1981). As such, the geographical extent of applicant's and registrant's activities is not a proper factor for consideration here, and applicant's alternative request for a geographically restricted registration cannot be considered outside a concurrent use proceeding.
FN5. 'Benihana National Earnings, PR Newswire, November 15, 1985.
FN6. 'Benihana Earnings,' PR Newswire, November 27, 1985. The Board notes that these excerpts have not been authenticated by submitting documentation of the field of the computerized search. In re Gagliardi Bros., Inc., 218 USPQ 181 fn. 1 (TTAB 1983). In addition, because evidence from proprietary news services is not presumed to have circulated among the general public, its probative value regarding attitudes among purchasers is limited. In re Men's Professional Tennis Council, 1 USPQ 2d 1917 fn. 5 (TTAB 1987).
FN7. The validity of the presumption is reinforced by the fact that in one of the cited registrations there is depicted, as part of the mark, a sandwich which appears to be of the kind generally known as an Italian sub.