Related Goods Watch 2017

The Trademark Trial and Appeal Board in In re Palermo Villa, Inc. held that frozen pizzas are related to restaurant services. The Trademark Office offered Internet evidence showing restaurants that sold pizzas through their physical locations and frozen pizzas through other retailers under the same brand. The Trademark Office also offered evidence of third-party registrations covering both restaurant services and frozen pizzas.

Applicant, on the other hand, attempted to offer statistical evidence of the relatively few restaurants that offer both a restaurant service featuring pizza and a frozen pizza sold in other retailers. However, the Board found the Applicant’s statistical arguments concerning rarity to be flawed and have little probative value. The Board also down played Applicant’s evidence of numerous third-party marks for either frozen pizza or restaurant services, not both. The Board conveniently cited the following passage from In re G.B.I. Tile and Stone Inc., 92 USPQ 1366, 1370 (TTAB 2009):

“There is no requirement for goods to be found related that all or even a majority of the sources of one product must also be sources of the other product. Therefore, evidence showing only that the source of one product may not be the source of another product does not aid applicant in its attempt to rebut the evidence of the examining attorney.”

Once the again, the Board is willing to ignore the marketplace reality when it comes to the use of a mark and instead base a refusal on the minority of use cases to deny an applicant a registration. Just another reason why paying attention to prior case decisions on relatedness is important when assessing the availability of a mark.

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