IP Law Daily, TRADEMARK—TTAB.: FAVAZZA’S likely to be confused with LAVAZZA, (Feb 18, 2016)

By Greg Hammond, J.D.

The Trademark Trial and Appeal Board refused the registration of the mark FAVAZZA’S for “bar services; catering services; [and] restaurant services” on the basis of likelihood of confusion with the mark LAVAZZA (Luigi Lavazza S.p.A. v. Favazza’s, Inc., February 16, 2016, Goodman, C.).

Luigi Lavazza S.p.A. opposed registration of Favazza’s, Inc.’s mark on the ground that FAVAZZA’S, when used in connection with Favazza’s restaurant services, so resembles Lavazza’s previously-used and registered mark LAVAZZA—for “coffee shops, bars, restaurants, cafeterias, self-service restaurants, pubs, [and] catering services”—that the mark would likely cause confusion.

Likelihood of confusion. The Board first found that, based on certain concessions, Favazza’s recited services are identical to Lavazza’s services, rendered in the same channels of trade and provided to the same class of purchasers, and the purchasers of the services are ordinary consumers who would exercise nothing more than ordinary care in their purchasing decisions. These factors, according to the Board, weighed heavily in favor of a finding of likelihood of confusion.

Both marks were also found to be highly similar in sound, appearance, connotation, and commercial impression. In particular, the Board determined that: (1) the differences between the marks—including that the marks begin with different letters and Favazza’s mark incorporates an “apostrophe S” at the end—are not sufficient to distinguish the marks visually or phonetically; (2) it is highly unlikely that consumers would view one mark as a surname and the other as an invented foreign word; and (3) due to the similarities between the marks, both marks convey similar commercial impressions.

Lavazza’s evidence, however, fell short of proving that the LAVAZZA mark is famous. Although Lavazza presented evidence that it netted sales in the United States of $69 million in 2013 and $75 million in 2014, there was no context for these figures. Specifically, there was no explanation for how Lavazza’s goods and services compare with other brands of like goods or services, or what portion of these figures are attributed to coffee versus restaurants. There was also no specific testimony concerning how long the LAVAZZA marks have been used, the sales made under each of the marks, or advertising expenditures for each of the particular marks.

Nevertheless, the Board concluded that the similarity of the marks, identity of the services, overlapping trade channels and consumers, and conditions of sale favor a finding of likelihood of confusion with the services identified by Favazza’s. Registration of the FAVAZZA’S mark was therefore refused.

The case is Serial No. 85666504.

Attorneys: Leo M. Loughlin (Rothwell Figg Ernst & Manbeck PC) for Luigi Lavazza S.p.A. Morris E. Turek (Yourtrademarkattorney.com) for Favazza’s, Inc.

Companies: Luigi Lavazza S.p.A.; Favazza’s, Inc.

Cases: Trademark USPTO