Anthony's Pizza Holding Co., Inc. v. Anthony's Pizza & Pasta International, Inc. , 415 F. App'x 222 ( 2010 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
(Opposition No. 91171509 &
Cancellation No. 92045956)
ANTHONY’S PIZZA HOLDING COMPANY, INC.,
Appellant,
v.
ANTHONY’S PIZZA & PASTA INTERNATIONAL,
INC.,
Appellee.
__________________________
2010-1191
__________________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board.
___________________________
Decided: November 18, 2010
___________________________
STEWART J. BELLUS, Collard & Roe, P.C., of Roslyn,
New York, for appellant.
GARRETT M. TUTTLE, Ballard Spahr LLP, of Denver,
Colorado, for appellee. With him on the brief was
JEFFREY J. COWMAN.
ANTHONY PIZZA HLDG v. ANTHONY PIZZA 2
__________________________
Before RADER, Chief Judge, LOURIE and MOORE, Circuit
Judges.
PER CURIAM.
The Trademark Trial and Appeal Board (“Board”)
granted the petition of Anthony’s Pizza & Pasta Interna-
tional, Inc. (“APPI”) to cancel Anthony’s Pizza Holding
Company, Inc.’s (“APHC’s”) mark ANTHONY’S COAL-
FIRED PIZZA (Reg. No. 3,073,126). The Board also
sustained APPI’s opposition to APHC’s application for the
mark ANTHONY’S COAL-FIRED PIZZA + Design (Serial
No. 78/547,686). Because the Board correctly discerned
that the newer marks are likely to cause confusion, this
court affirms.
I.
APPI sought to register the mark ANTHONY’S PIZZA
& PASTA for restaurant services on December 15, 2000.
The mark issued as Reg. No. 2,661,703 on December 17,
2002.
On January 14, 2005, APHC applied to register the
mark ANTHONY’S COAL-FIRED PIZZA, in standard
character form, for restaurant services. The mark issued
as Reg. No. 3,073,126 on March 26, 2006. APHC also
applied to register the mark ANTHONY’S COAL-FIRED
PIZZA and Design, shown below, also for restaurant
services.
3 ANTHONY PIZZA HLDG v. ANTHONY PIZZA
The text “Coal-Fired Pizza” appears in the cross-bar of the
letter “A.”
APPI thereafter petitioned to cancel APHC’s registra-
tion and filed a notice of opposition against APHC’s
application on the ground of likelihood of confusion. In
particular, APPI alleged that through its predecessor-in-
interest, licensees, and franchisees, APPI has continu-
ously used the mark ANTHONY’S PIZZA & PASTA for
restaurant services for more than twenty-three years and
that APHC’s marks are likely to cause confusion with
APPI’s mark. The proceedings were consolidated on April
8, 2007.
The Board issued its opinion on November 10, 2009,
holding that APPI’s mark has priority over both of
APHC’s marks. Anthony’s Pizza & Pasta Int’l, Inc. v.
Anthony’s Pizza Holding Co., 95 U.S.P.Q.2d 1271, 1276
(T.T.A.B. 2009). The Board also determined that APHC’s
marks are likely to cause confusion with APPI’s mark. Id.
at 1283. Accordingly, the Board sustained APPI’s opposi-
tion to APHC’s application and granted APPI’s petition to
cancel APHC’s mark. Id. APHC appeals from these
determinations. This court has jurisdiction under 28
U.S.C. § 1295(a)(4)(B).
ANTHONY PIZZA HLDG v. ANTHONY PIZZA 4
II.
This court reviews legal conclusions of the Board
without deference and factual findings for substantial
evidence. In re Pacer Tech., 338 F.3d 1348, 1349 (Fed.
Cir. 2003). Likelihood of confusion constitutes a legal
determination based on underlying findings of fact. In re
Chatam Int’l, Inc., 380 F.3d 1340, 1342 (Fed. Cir. 2004).
This court assesses a likelihood of confusion based on the
factors set forth in In re E.I. DuPont de Nemours & Co.,
476 F.2d 1357, 1361 (CCPA 1973). “The likelihood of
confusion analysis considers all DuPont factors for which
there is record evidence but ‘may focus . . . on dispositive
factors, such as similarity of the marks and relatedness of
the goods.’” Herbko Int’l, Inc. v. Kappa Books, Inc., 308
F.3d 1156, 1164 (Fed. Cir. 2002) (quoting Han Beauty,
Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336 (Fed. Cir.
2001)).
On appeal, APHC challenges the Board’s conclusion
on likelihood of confusion, arguing that the Board erred
by ignoring its finding that “Anthony’s” is a commonly
used name for pizza and Italian restaurants. APHC
stresses that (1) APPI is not the first Italian restaurant to
use the name Anthony’s; (2) the PTO has issued fifteen
third-party registrations incorporating the name “An-
thony’s” for restaurant or food products; (3) “Anthony’s”
had been adopted, in whole or in part, as the name of at
least twenty-nine different restaurants; and (4) a prior
registration for ANTHONY’S THE WORLD’S GREATEST
PIZZA pre-dates APPI’s application.
This court must assess these contentions, however,
through the lens of the other DuPont factors, as these
clarify the likelihood of consumer confusion between
APPI’s prior mark and APHC’s marks. The first two
DuPont factors are “[t]he similarity or dissimilarity of the
5 ANTHONY PIZZA HLDG v. ANTHONY PIZZA
marks in their entireties as to appearance, sound, conno-
tation and commercial impression” and “[t]he similarity or
dissimilarity and nature of the goods or services as de-
scribed in an application or registration or in connection
with which a prior mark is in use.” 476 F.2d at 1361.
Notably, the Board found that APPI’s and APHC’s “ser-
vices are legally identical.” 95 U.S.P.Q.2d at 1278.
“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 Am., 970 F.2d 874, 877
(Fed. Cir. 1992) (citations omitted).
With respect to the similarity of the marks, the Board
found that ANTHONY’S is the dominant element of
APPI’s mark and both of APHC’s marks. 95 U.S.P.Q.2d
at 1279-80. Indeed, the record shows that consumers
were likely to shorten or abbreviate both ANTHONY’S
PIZZA & PASTA and ANTHONY’S COAL-FIRED PIZZA
to “Anthony’s” or “Anthony’s Pizza.” Each of the marks
also includes weaker descriptive terms: “Pizza & Pasta”
or “Coal-Fired Pizza.” With respect to APHC’s composite
mark, the design features comprise the letter “A” in
“Anthony’s” and the primary commercial impression
engendered thereby is the name “Anthony’s.” The phrase
“COAL-FIRED PIZZA” and the fire design are incorpo-
rated into the “A,” are smaller than the word
ANTHONY’S, and have little or no source-indicating
significance because they describe goods and the way they
are made. See In re Nat’l Data Corp. 753 F.2d 1056, 1058
(Fed. Cir. 1985) (“That a particular feature is descriptive
or generic with respect to the involved goods or services is
one commonly accepted rationale for giving less weight to
a portion of a mark.”). Thus, substantial evidence sup-
ports the Board’s finding that the marks are similar.
ANTHONY PIZZA HLDG v. ANTHONY PIZZA 6
This court does not perceive that the Board violated
the anti-dissection rule by focusing on the ANTHONY’S
element, particularly as that term is used by other sellers
in the market. The Board properly analyzed the marks in
their entireties, while appropriately focusing on the
dominant element. “[T]here is nothing improper in stat-
ing 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. Indeed, this type of analysis appears to
be unavoidable.” Id. (footnote omitted).
Other DuPont factors reinforce the likelihood of con-
fusion between the marks. For example, APPI offered
evidence that consumers of pizza and related items at
APPI’s and APHC’s price points are making an “impulse”
decision. Because such products are generally purchased
without care, consumers devote limited attention to their
purchase and thus are more susceptible to confusion. See
Dupont, 476 F.2d at 1361.
This court also considered other cases with similar
elements that did not result in a likelihood of confusion.
Although those cases can give some guidance, the deter-
mination of likelihood of confusion is specific to the facts
and circumstances of each case. Dupont, 476 F.2d at
1361. Moreover, this court did not perceive that those
other cases required a different result than that reached
by the Board. For example, in In re Broadway Chicken,
Inc., 38 U.S.P.Q.2d 1559 (T.T.A.B. 1996), which APHC
characterizes as particularly “on point,” the Board found
no likelihood of confusion between applicant’s mark
BROADWAY CHICKEN and preexisting registrations for
BROADWAY PIZZA and BROADWAY BAR & PIZZA.
The Board characterized Broadway Chicken as a “very
close case,” but found that the marks were sufficiently
distinguished by the terms “Chicken” and “Pizza” to
7 ANTHONY PIZZA HLDG v. ANTHONY PIZZA
permit consumers to recognize one restaurant as special-
izing in chicken and the other specializing in pizza. Id. at
1566. In contrast, the common term “PIZZA” in the
marks in this case connotes restaurants that specialize in
similar services.
This court also considered the record evidence that
APPI may not have adequately policed its mark. The
record, however, did not disclose any evidence of a mark
confusingly similar to APPI’s mark either registered with
the PTO or used in an overlapping geographic area. See
Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358,
364 (2d Cir. 1959). Moreover, the record shows that APPI
sought to minimize potential confusion with a previously
registered third-party mark through its participation in a
co-existence agreement that sought to establish distinct
channels of trade. APPI also established a watch service
for potentially similar marks—which led to this proceed-
ing. Thus, the record does not show a reticence to protect
the mark.
This court is also aware that the founder and current
owner of APHC is named Anthony, while no one associ-
ated with APPI has the name “Anthony.” But APHC’s
good faith in adopting its marks does not change the
likelihood of confusion among members of the public. See
Bourjois, Inc. v. Cheatham Chem. Co., 47 F.2d 812, 814
(CCPA 1931). Indeed, a junior user’s right to use his
name “must give way to the more compelling public and
private interests involved in avoiding likelihood of confu-
sion . . . .” Ford Motor Co. v. Ford, 462 F.2d 1405, 1407
(CCPA 1972). Notably, the cases relied on by APHC
involve marks incorporating a person’s full name or last
name, while the instant marks do not. See, e.g., Bren-
nan’s, Inc. v. Brennan’s Restaurant, L.L.C., 360 F.3d 125,
128, 135 (2d Cir. 2004) (no likelihood of confusion between
TERRACE BRENNAN’S and BRENNAN’S).
ANTHONY PIZZA HLDG v. ANTHONY PIZZA 8
The Board also considered properly APPI’s co-
existence agreement with the owner of the mark
ANTHONY’S PIZZA THE WORLD’S GREATEST. This
court has specifically endorsed coexistence agreements
that accept the parties’ reasonable appraisal of market-
place conditions. Bongrain Int’l (American) Corp. v.
Delice de France Inc., 811 F.2d 1479, 1484-85 (Fed. Cir.
1987). APPI’s coexistence agreement limited the use of
ANTHONY’S PIZZA THE WORLD’S GREATEST to
military bases where active duty military personnel are
present and assigned to duty, and prevented APPI from
opening restaurants on such installations. As such, it
reflected the parties’ agreement to avoid confusion by
limiting their operations to distinct channels of trade.
That subsequent evidence revealed actual confusion
between these marks highlights the challenge in distin-
guishing marks containing both the words “Anthony’s”
and “Pizza.”
Finally, the Board did not grant APPI exclusive rights
to the term “Anthony’s.” Nor did it grant APPI exclusive
right to the terms “Anthony’s” and “Pizza.” The Board
merely found that APPI’s relatively weak mark bars the
registration of marks “as to which the resemblance to
[APPI’s mark] is striking enough to cause one seeing it to
assume that there is some connection, association, or
sponsorship between the two.” 95 U.S.P.Q.2d at 1278
(citation omitted). That is precisely consistent with the
intent of the Lanham Act, which prevents registration of
marks likely to cause confusion.
Accordingly, this court affirms.
AFFIRMED
9 ANTHONY PIZZA HLDG v. ANTHONY PIZZA
COSTS
No costs.