David Lilenfeld Blog The intellectual property blog of David Lilenfeld


Trademark Office: FAVAZZA’S Is Confusingly Similar to LAVAZZA

By David Lilenfeld on February 22, 2016

Favazza’s, Inc. seeks registration on the trademark FAVAZZA’S for bar, catering, and restaurant services. Luigi Lavazza S.p.A. opposed registration of Favazza’s trademark on the ground of likelihood of confusion with the registered trademark LAVAZZA for coffee shops, bars, restaurants, cafeterias, pubs and catering services. 

The main argument made by the applicant is that because LAVAZZA is a family name and registered under Section 2 (f) it is “not entitled to the broad scope of protection reserved for arbitrary and fanciful marks.” Just because LAVAZZA could be a surname does not automatically weaken or narrow the scope of protection for opposer’s LAVAZZA trademark. The Trademark Trial Appeal Board recognized that opposer’s trademark was registered under Section 2 (f) but noted that the trademark is still “entitled to the same trademark protection as any other validly registered trademark.”

Applicant agreed that the services provided by the trademark FAVAZZA’S and the trademark LAVAZZA are identical and are in the same channels of trade to the same classes of consumers who exercise merely ordinary care in their buying decisions. These factors weigh heavily in favor of a finding of likelihood of confusion.

The factors set out in In re E. I. du Pont, 177 USPQ at 567 provide a framework for analyzing likelihood of confusion. The first du Pont factor is similarity or dissimilarity of the trademarks. Applicant argued that customers would know the trademark as Italian surnames that can easily be differentiated. The Trademark Trial Appeal Board, however, disagreed and held the trademarks to be “visually similar because they both contain AVAZZA and there is little, if any, trademark significance in the addition of the apostrophe and letter “S” in applicant’s trademark.” When the trademarks are compared as a whole, they are very similar in both appearance and sound. The slight differences are not enough to distinguish the trademarks from one another.

Regarding connotation, it is unclear whether customers would give meaning to the trademarks or view the trademarks as invented Italian words or surnames. The Trademark Trial Appeal Board found it unlikely that customers would regard one trademark as a surname and the other trademark as an invented Italian word. Hence, the Trademark Trial Appeal Board found the trademarks similar in sound, appearance, connotation and commercial impression. 

Opposer argued that its LAVAZZA trademark is famous but failed to provide sufficient evidence to support this claim.  It failed to prove what portion of its sales figures were attributable to restaurant services or what portion of its sales figures related to sales under the trademark LAVAZZA alone.

The last few du Pont factors are the nature and extent of any actual confusion and the length of time during and conditions under which there has been concurrent use without evidence of actual confusion. Applicant noted a lack of actual confusion of the trademarks despite coexisting with each other for between 30 and 35 years. However, because of the lack of evidence supporting opposer’s use of the LAVAZZA trademark, the Trademark Trial Appeal Board was unable to decipher whether there had been a meaningful opportunity for actual confusion.

In light of the relevant du Pont factors, the Trademark Trial Appeal Board found confusion likely and sustained the opposition to the trademark FAVAZZA’S.

Comments (2219) Trackbacks (54)
  1. Hey I know this is off topic but I was wondering if you knew of any widgets I could add to my blog
    that automatically tweet my newest twitter updates.

    I’ve been looking for a plug-in like this for quite some time and was hoping maybe you would have some
    experience with something like this. Please let me know if you run into anything.
    I truly enjoy reading your blog and I look forward to your new updates.

  2. Thank you for sharing your info. I truly appreciate your efforts and I will be waiting for your further post
    thank you once again.

  3. I believe this is one of the most significant info for me.
    And i am satisfied studying your article. However want to remark on some common issues, The web site taste is perfect, the articles is truly great : D.
    Just right activity, cheers

  4. I could not resist commenting. Well written!

  5. Hello! I’m at work surfing around your blog from my new iphone 4!
    Just wanted to say I love reading your blog and
    look forward to all your posts! Keep up the excellent work!

  6. I am not sure where you’re getting your info, but great topic.
    I needs to spend some time learning more or understanding
    more. Thanks for great info I was looking for this information for my mission.

  7. Nice post. I was checking constantly this blog and I am impressed!

    Extremely helpful information specially the last part :)
    I care for such information much. I was seeking this particular info for a very long time.
    Thank you and best of luck.

  8. Excellent weblog right here! Additionally your site so
    much up fast! What host are you the use of? Can I am getting your affiliate hyperlink onn
    your host? I want my site loaded uup as quickly as yours lol

  9. It’s truly a great and helpful piece of info. I’m happy that you simply shared
    this useful info with us. Please stay us up to date like this.
    Thanks for sharing.

  10. I know this if off topic but I’m looking into starting my own weblog and was wondering what all is required to get set up?

    I’m assuming having a blog like yours would cost a pretty penny?

    I’m not very web savvy so I’m not 100% sure. Any
    recommendations or advice would be greatly appreciated.

  11. Hello, i think that i noticed you visited my web site so i got here to return the want?.I’m trying to in finding issues to
    improve my site!I assume its adequate to use some of your

  12. Hello there, You have done an excellent job. I will definitely digg it and personally suggest to my friends.
    I’m confident they’ll be benefited from this website.

  13. Lowest Prices For Cialis Tadalafil Prix cheapest cialis Propecia Completo Who Invented Amoxicillin

  14. I’d like to find out more? I’d like to find out more details.

  15. Howdy, There’s nno doubt that your blog may be having internet browser
    compatibilitty problems. When I look at your website in Safari, it looks fine however when oopening in I.E., itt hass
    some overlapping issues. I just wanted to provide you with a quick hesds up!
    Aside from that, excellent blog!

  16. It’s awesome to visit this site and reading the views of aall friends on the topic
    of this piece of writing, hile I am also eager of getting know-how.

  17. For latest information you have tto visit the weeb and on web I
    found this website as a most excellent site for latest updates.

  18. I know thos if off topic but I’m looking intto starting my owwn blog and was wondering what all is needed
    to gget set up? I’m asuming having a blog like yours would costt a pretty penny?
    I’m not very web savvy so I’m not 100% certain. Any tips or advice would be greatly appreciated.
    Thank you

  19. Admiring thee hard work you pput into your blog and detailed information you provide.
    It’s good to come across a blog every once inn a while that isn’t the same old rehashed
    information. Excellent read! I’ve bookmarked your site and I’m including your RSS feeds to my Google account.

  20. Piece of writing writing is also a fun, if you be
    familiar with then you can write or else it is complex to write.

  21. Thanks for finally writing about >Trademarkk Office:
    FAVAZZA’S Is Confusingly Similar to LAVAZZA < David Lilenfeld Blog <Loved it!

  22. Very good write-up. I definitely appreciate this site.
    Stick with it!

  23. Do you mind if I quote a couple of your posts as long as
    I provide ctedit and sources back to your blog?
    My wrbsite is in the very same niche as yours and mmy
    uswers would genuinely benefiit from a lot of the information you provide here.
    Please let me know if this alright wth you. Cheers!

  24. magnificent put up, very informative. I wonder why the opposite experts of this sector do not notice this.
    Youu should proceed your writing. I’m confident, you
    have a great readers’ base already!

  25. Hello there! Thhis is kind of off topic but I need some guidance from an established
    blog. Is it very difficult to set up your own blog?

    I’m noot very techincxal but I can figure things out pretty fast.

    I’m thinking about setting up my own but I’m not sure where to start.
    Do yoou have any points or suggestions? Appreciate it

  26. continuously i used tto read smaller ardticles which
    as well clear theior motive, and that is also happening with this paragraph which I am reading att this

  27. Hi would you mind sharing which blog platform you’re
    using? I’m planning to start my own blog oon but I’m having a tough time electing between BlogEngine/Wordpress/B2evolution aand Drupal.

    The reason I aask is because your layout seems different then most blogs andd I’m looking for something unique.
    P.S Apologies for being off-topic but I had to ask!

  28. Hey There. I found your blog using msn. This is an extremely well written article.
    I will make sure to bookmark it and return to read more of your useful information. Thanks for the post.
    I will definitely comeback.

  29. I visjted many sites except the audio quality for audio songs
    present at this site is genuinely superb.

  30. Hi, i think that i saw youu visited my website so i came to “return tthe favor”.I’m
    attempting to find things to enhance my website!I suppose its ok to use
    some oof your ideas!!

  31. Woow that was odd. I just wrote ann incredibly long comment but after I clicked submit
    my comment didn’t show up. Grrrr… well I’m not writing all hat over again. Anyhow, just wanted to say fantaastic blog!

  32. I all the time used to study piece of writing in news papers but now as I am a user of internet thus from now I am using
    net for posts, thanks to web.

  33. Hello there! Do you use Twitter? I’d like to follow you if
    that would be okay. I’m definitely enjoying your blog and look forward to new updates.

  34. Its like you read my mind! You seem to know a lot about this, like
    you wrote the book in it or something. I think that you could do with
    a few pics to drive the message home a bit, but instead of that, this is magnificent blog.
    A great read. I’ll certainly be back.

  35. Your style is unique compared to other folks I’ve read stuff from.
    I appreciate you for posting when you’ve got the opportunity, Guess I’ll just bookmark this site.

  36. You could definitely see your skills within the
    work you write. The sector hopes for more passionate
    writers like you who aren’t afraid to mention how they believe.
    Always follow your heart.

  37. That is a goood tip particularly to those new to thee blogosphere.
    Brief but very precise info… Thanks for sharing this one.
    A must read article!

  38. Wonderful blog! I found it while searching on Yahoo News.
    Do you have any tips on how to get listed in Yahoo News?
    I’ve been trying for a while but I never seem to get there!
    Appreciate it

  39. Pretty nice post. I just stumbled upon your weblog and wished
    to say that I’ve truly enjoyed surfing around your blog posts.
    In any case I’ll be subscribing to your feed
    and I hope you write again very soon!

  40. It’s really a nice and helpful piece of information. I’m glad that youu just shared this helpful info with us.
    Please keep us up to date like this. Thanks for sharing.

  41. Have you ever considered writing an ebook or guest authoring on other websites?

    I have a blog based on the same information you discuss and would
    really like to have you share some stories/information. I know my visitors
    would enjoy your work. If you are even remotely interested, feel free to send me an email.

  42. Hi there! I could have sworn I’ve visited this website before but after looking at some of the posts I
    realized it’s new to me. Nonetheless, I’m definitely pleased I found it and I’ll
    be book-marking it and checking back regularly!

  43. I do agree with all the ideas you’ve introduced on your post.
    They are really convincing and can certainly work.
    Still, the posts are too brief foor novices. May just you
    please pprolong them a bit from subsequent time?
    Thanks for the post.

  44. What’s up, the whole thing is going nicely here and ofcourse every one is sharing facts,
    that’s truly excellent, keep up writing.

  45. Its like you read my mind! You appear to know a lot about this,
    like you wrote the book in it or something. I think that you could do with a few pics to drive the
    message home a little bit, but instead of that, this is magnificent blog.

    A fantastic read. I will definitely be back.

  46. Take into account investments that offer fast annuities.

  47. It’s really very complicated in this full of activity life to listen news on TV, so I simppy use internet for that reason, and take the latest news.

  48. We’re a gaggle of volunteers and starting a brand new scheme in oour community.
    Your site provided us with valuable info to work on. You have performed an impressive job and our whole group will be thankful to

  49. Wow, wonderful blog layout! How lengthy have you ever been blogging for?
    you make blogging look easy. The full look of your website is fantastic, as
    neatly as the content!

  50. This design is wicked! You definitely know howw to keep a reader amused.

    Between your wit and your videos, I was almost moved
    tto start my oown blog (well, almost…HaHa!) Wonderful job.

    I eally loved what you had to say, and more than that, how you
    presented it. Too cool!

Leave a comment


Go to top ↑