Confusion Likely by More than One Hometown Pizza

Pizza Inn, Inc. filed an application to register the mark AMERICA’S HOMETOWN PIZZA PLACE (standard characters) for “restaurant services; carry-out restaurant services.” The company voluntarily disclaimed PIZZA PLACE; thus, admitting that AMERICA’S HOMETOWN was the dominant portion of its mark. The Trademark Office refused registration of Pizza Inn’s mark on the ground that it was likely to cause confusion with the prior registered mark HOWTOWN PIZZA (standard characters) for “restaurant services.”

This application was facing an uphill battle from the beginning. The services descriptions were identical, so less similarity between the marks is necessary in order for a likelihood of confusion to exist. And the descriptions are not technical or vague, so it would be inappropriate for the Trademark Office to consider any extrinsic evidence of the use of the mark in the marketplace. Finally, the cited mark – HOMETOWN PIZZA – was incorporated in its entirety in Pizza Inn’s proposed mark.

The only chance the Applicant had was to argue that HOMTOWN PIZZA was so conceptually weak that the addition of AMERICA’S and PLACE were sufficient to avoid confusion. Pizza Inn offered eight third-party registrations that were for or included the term HOMETOWN for “restaurant services.” And of those eight third-party registrations, two were dead registrations, which are given no consideration during the examination of a trademark application. So Pizza Inn really only had six, third-party registrations.

Pizza Inn was four registrations shy of the ten mark where the Trademark Office has found a crowded field exists for a particular term. And the Trademark Trial and Appeal Board found that the third-party registration evidence offered by Pizza Inn was insufficient to establish that HOMETOWN PIZZA was conceptual weak; thus, entitled to a narrow scope of protection. What Pizza Inn should have done was offer evidence of third-party use not registrations of HOMETOWN PIZZA. A simple Internet search reveals numerous restaurants called HOMETOWN PIZZA.

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