Likelihood of Confusion - Strength of a Mark



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  • Case Finding: The TTAB cannot tell from the evidence how many "Anthony's" restaurants are in the same trading areas which would indicate that consumers are likely to encounter multiple "Anthony's" restaurants and, therefore, learn to distinguish among them by looking to features other than the name "Anthony's." Nevertheless, we have considered the restaurant listings for what they show on their face (i.e., that "Anthony's" has been extensively featured in the name of restaurants).
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Also, we cannot tell from the evidence how many "Anthony's" restaurants are in the same trading areas which would indicate that consumers are likely to encounter multiple "Anthony's" restaurants and, therefore, learn to distinguish among them by looking to features other than the name "Anthony's." Nevertheless, we have considered the restaurant listings for what they show on their face (i.e., that "Anthony's" has been extensively featured in the name of restaurants).
  • Telephone listings may be found to carry a presumption that a portion of the at-issue mark is being used by third parties in connection with their services.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Finally, defendant introduced electronic versions of telephone directories, both White Pages and Yellow Pages, for numerous restaurants listed under variations of the name "Anthony's" in cities located throughout the United States. Many of the listings also included a word indicating a focus on "pizza" (e.g., ANTHONY'S PIZZA, ANTHONY'S PIZZERIA). The telephone listings carry a presumption that the name "Anthony's" is being used by third parties in connection with their restaurant services. Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993).
  • Expired and/or cancelled registrations generally are evidence only of the fact that the registrations issued.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • FOOTNOTE 32 "Expired and/or cancelled registrations generally are evidence only of the fact that the registrations issued. In its briefs, plaintiff did not make any distinction between active and expired and/or cancelled registrations with respect to the substance of these expired and/or cancelled registrations, and we therefore shall consider them for whatever probative value they may have. However, we did not consider Registration No. 1541917 for the mark ANTHONY'S THE WORLD'S GREATEST and design because it was owned by the same company that registered Registration No. 2193501 noted above for essentially the same mark and for the same services, and we did not consider Registration No. 1111104 for the mark MAD ANTHONY'S for gift store services because those services are not related to restaurant services."
  • Likelihood of confusion is to be avoided, as much between ‘weak' marks as between ‘strong' marks, or as between a ‘weak' and ‘strong' mark.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • However, "likelihood of confusion is to be avoided, as much between ‘weak' marks as between ‘strong' marks, or as between a ‘weak' and ‘strong' mark." King Candy Co. v. Eunice King's Kitchen, Inc., 182 USPQ at 109.
  • A registrant is not entitled to a broad scope of protection that it is a bar to the registration of every mark comprising, in whole or in part, a common term, it will only bar the registration of marks as to which the resemblance to registrant's mark is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • In other words, plaintiff's mark ANTHONY'S PIZZA & PASTA is not entitled to such a broad scope of protection that it is a bar to the registration of every mark comprising, in whole or in part, the name "Anthony's"; it will only bar the registration of marks "as to which the resemblance to [plaintiff's mark] is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two." Id. Compare In re Broadway Chicken, Inc., 38 USPQ2d at 1566 (wide-spread third-party use supported the finding that the marks were not likely to cause confusion because "at least half, if not more, of the third-party telephone directory listings of enterprises whose trade name names/marks contain the term BROADWAY have listed addresses on a street, road, avenue, etc., named ‘BROADWAY.' To purchasers familiar with these enterprises, the term BROADWAY will have geographic significance").
  • The testimony, third-party registrations, and telephone listings may be sufficient to show that a term has been extensively adopted, registered and used as a trademark and therefore that the mark has a significance in the industry.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • The testimony, third-party registrations, and telephone listings are sufficient to show that the name "Anthony's" has been extensively adopted, registered and used as a trademark for restaurant services, in particular for Italian restaurants and pizzerias, and therefore that "Anthony's" has a significance in this industry. Thus, the evidence corroborates the testimony that "Anthony's" suggests an Italian restaurant or even a New York style Italian restaurant. As a result, a mark comprising, in whole or in part, the name "Anthony's" in connection with restaurant services should be given a restricted scope of protection. Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983).
  • Third-party reigstrations and yellowpages listings are of limited probative value because they do not demonstrate that the public is aware of the businesses, or the number of their customers, or their trading area.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • These listings are of limited probative value, however, because they do not demonstrate that the public is aware of the businesses, or the number of their customers, or their trading area. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1284 n.5 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565 n.16 (TTAB 1996).
  • Third-party registrations to show that registrant's mark is a weak mark may be unpersuasive if they are for different goods and services.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • Applicant submitted copies of numerous registrations for marks comprising or containing the word "Wave" for a variety of goods and services, none of which is for trailers. Applicant submitted these third-party registrations to show that registrant's mark THE WAVE is a weak mark entitled to only a narrow scope of protection or exclusivity of use. Applicant's argument is unpersuasive.
  • Third-party registrations may be of limited probative value where the goods identified in the registrations appear to be in far removed fields.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • In this case, the third-party registrations are of limited probative value because the goods identified in the registrations appear to be in fields which are far removed from trailers and recreational vehicles. Key Chemicals, Inc. v. Kelite Chemicals Corp., 464 F.2d 1040, 175 USPQ 99, 101 (CCPA 1972).
  • While third-party registrations may be considered to show that a registered mark is weak because it is descriptive or suggestive, the indiscriminate citation of third-party registrations without regard to the goods involved cannot be indicative of descriptive or suggestive connotations.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • While third-party registrations may be considered to show that a registered mark is weak because it is descriptive or suggestive, the indiscriminate citation of third-party registrations without regard to the goods involved cannot be indicative of descriptive or suggestive connotations. In re Jane P. Seamans, 193 USPQ 725, 726-727 (TTAB 1977).
  • The scope of protection afforded such highly suggestive marks is necessarily narrow.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • Although the marks convey the same idea, petitioner's highly suggestive mark is "weak" and entitled to only a limited scope of protection. See The Drackett Company v. H. Kohnstamm & Co., Inc., 404 F.2d 1399, 160 USPQ 407, 408 (CCPA 1969) ("The scope of protection afforded such highly suggestive marks is necessarily narrow.") The highly suggestive nature of petitioner's mark weighs against finding a likelihood of confusion.
  • Case Finding: Although "Morgan Creek" is not an invented term, and the various Morgan Creek company listings may be derived from creeks named Morgan, the mark MORGAN CREEK and design for motion pictures is a strong mark.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • None of this evidence shows use of the name or mark "Morgan Creek" for motion pictures or DVDs or CDs; on the contrary, the goods and services of the third-party uses are very different, while we may infer from the geographic evidence that "Morgan Creek" is not a well-known or frequently used place name. Therefore, although "Morgan Creek" is not an invented term, and the various Morgan Creek company listings may be derived from creeks named Morgan, we treat opposer's mark MORGAN CREEK and design for motion pictures as a strong mark.
  • In terms of demonstrating the strength of a mark, absent evidence of actual use, third-party registrations have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • In terms of demonstrating the strength of a mark, absent evidence of actual use, third-party registrations have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of registrations reposing in the U.S. Patent and Trademark Office). See also In re Hub Distributing, Inc., 218 USPQ at 285.
        "[I]t would be sheer speculation to draw any inferences about which, if any of the marks subject of the third party (sic) registrations are still in use. Because of this doubt, third party (sic) registration evidence proves nothing about the impact of the thirdparty marks on purchasers in terms of dilution of the mark in question or conditioning of the purchasers as their weakness in distinguishing source."
        In re Hub Distributing, Inc., 218 USPQ at 286.
Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009) Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009) In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009) In re Mark Thomas, Serial No. 78334625, (TTAB 2006) Grand Total
Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280 (TTAB 1998) 1
In re Broadway Chicken Inc., 38 USPQ2d 1559 (TTAB 1996) 1
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993) 1
Andrew Jergens Co. v. Sween Corp., ` (TTAB 1986) 1
In re Hub Distributing Inc., 218 USPQ 284, 285-86 (TTAB 1983) 1
Pizza Inn, Inc. v. Russo, 221 USPQ 281 (TTAB 1983) 1
In re Jane P. Seamans, 193 USPQ 725 (TTAB 1977) 1
King Candy Co. v. Eunice King's Kitchen Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974) 1
Smith Brothers Manufacturing Co. v. Stone Manufacturing Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973) 1
Key Chemicals, Inc. v. Kelite Chemicals Corp., 464 F.2d 1040, 175 USPQ 99 (CCPA 1972) 1
The Drackett Company v. H. Kohnstamm & Co., Inc., 404 F.2d 1399, 160 USPQ 407 (CCPA 1969) 1
Grand Total 5 1 4 1 11
No Statutes Listed