Bernatello’s Pizza opposed an application to register the mark LOTSA STONE FIRED PIZZA for restaurant services (STONE FIRED PIZZA disclaimed), alleging a likelihood of confusion with the registered marks LOTZZA MOTZZA for frozen pizza (and LOTZZA HOTZZA for pizza). It found the involved goods and services to be related, concluding that the “something more” test of Jacobs v. International Multifoods Corp. Corp. because “Opposer’s goods, pizza, are the same type of food offered at Applicant’s restaurants, as announced by Applicant’s involved mark LOTSA STONE FIRED PIZZA.” But what about the marks? How do you think this came out? Bernatello’s Pizza, Inc. v. Colmont Restaurant Group, LLC, Opposition No. 91241107 (December 16, 2020) [not precedential] (Opinion by Judge Michael B. Adlin).
The Board focused on the LOTZZA MOTTZA mark. Based on a dictionary definition and applicant’s own testimony, the Board found that “LOTSA strongly suggests that Opposer’s frozen pizza features ‘lots of’ Wisconsin mozzarella cheese.” Third-party use corroborate the the highly suggestive nature of LOTZZA. Moreover, the obvious meaning of MOTZZA is reinforced by Opposer’s see-through packaging, “which draws attention to how much mozzarella Opposer puts on its pizza:”

Opposer submitted evidence of commercial success: sales of about $305 million and promotional expenditures of some $9 million. However, there was no direct evidence that consumers recognize the mark or that the mark has received media attention.

The Board agreed with Opposer that LOTSA is the dominant portion of applicant’s mark. However, considering the involved marks as a whole, they obviously differ in appearance and sound. The meanings are somewhat similar.

Ultimately, we find that even though the marks convey somewhat similar meanings, and begin with terms which sound the same and look somewhat similar, they are not likely to result in consumer confusion due to the conceptual weakness of Opposer’s mark and the shared term LOTSA/LOTZZA. *** In fact, consumers will perceive the marks’ first terms as merely laudatory, strongly suggesting that Opposer provides lots of mozzarella with its pizza and that Applicant’s restaurants serve lots of pizza. Some consumers are also aware that LOTSA and variations thereof is used by unrelated food providers, perhaps especially those which offer Italian food, including pizza.

The Board found the first du Pont factor dispositive, concluding that even if the involved goods and services were identical and the channels of trade and classes of consumers overlapping, confusion is unlikely, despite the goods and services being subject to impulse purchase. In short, “Opposer should not be able to prevent others from registering marks which share with Opposer’s mark only the term LOTSA or variations thereof, even for pizza.”

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Text Copyright John L. Welch 2020.