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Bottom line: The Board found that “snack foods” in Class 30 are not related to “pizzas” in Class 30.

The applicant applied for a standard character mark KUTSUROGI in hiragana designating confectionery, spices, cereal preparations in Class 30 and amended the list to shrimp-based snack foods, potato-based snack foods, corn-based snack foods during the examination process.

The examiner’s citation was an identical mark KUTSUROGI in hiragana also in standard character designating pizzas, instant confectionery mixes, seasonings.

The case was brought to the Appeal Board.  The marks at issue are literally identical.  So the question is whether snack foods are related to pizzas (according to the Examination Guidelines of Goods and Services, snack foods are not related to instant confectionery mixes, seasonings).

Snack foods and pizzas are presumed similar in the Guidelines under the same similarity code 30A01.  However, this presumption can be rebutted as the Guidelines also says:

…, it should be noted that in examining the similarity of goods or services specifically and individually, or based on the changing actual circumstances of business and economies, there could be some cases in which goods and services that are presumed to be similar according to these guidelines might be recognized to be dissimilar; while goods and services that are not deemed to be similar based on these guidelines might in fact be regarded as similar.

While acknowledging that snack foods and pizzas are both daily and common food products, the Board made detailed examination as follows:

1. Nature of goods: Pizza is intended for meal or snack, sold at pizza parlors and bakeries, or sold as frozen or chilled foods to be heated at home, whereas snack food, most popularly potato-based snack foods, is shelf-stable, easy to carry around and not necessary to be heated up.  These two items are food products in common, but has no relatedness in its category and nature, and are different in intended purpose.

2. Ingredients: Pizza is a baked bread dough made from flour, topped with various toppings such as sausage, cheese and tomato.  Snack food is made from ingredients such as shrimps or potatoes, sliced and fried or kneaded and puffed.  These items do not share the main ingredients in common.

3. Distribution channel: Pizza is sold directly at makers’ own stores, or at bakery section or frozen/chilled food section of supermarkets and convenience stores through wholesalers, whereas snack food is sold at confectionery section of various retail stores, such as supermarkets and convenience stores through wholesalers.  The distribution channel of the items do not overlap.

4. Consumers: Consumers of these items are not different as pizza and snack food are both food products.  However, consumers are generally the same for every food and beverage products except for those specific items such as alcoholic beverages, and it is not appropriate to rely solely on the fact that consumers are in common when determining the similarity of goods.  Further in view of the above-mentioned differences in category, nature and intended purpose of pizza and snack food, the purpose of purchasing each item is different.

Accordingly, the Board concluded “shrimp-based snack foods, potato-based snack foods, corn-based snack foods” of the applied-for mark is not related to “pizzas” of the cited mark and that confusion is not likely even an identical or similar mark is used respectively due to the difference of manufacturing section, distribution channel, ingredients, intended purpose, etc.

And so the Board reversed the refusal.