Venchi S.p.A. v. Plant-Smart, LLC

This Opinion is Not a
Precedent of the TTAB
Mailed: June 22, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Venchi S.p.A.
v.
Plant-Smart, LLC
_____
Opposition No. 91291490
_____
Leo M. Loughlin and Davide F. Schiavetti of Rothwell, Figg, Ernst & Manbeck, P.C.,
for Venchi S.p.A.
Plant-Smart, LLC., pro se.1
_____
Before Wellington, Allard, and Brock,
Administrative Trademark Judges.
Opinion by Brock, Administrative Trademark Judge:
1 Documents were filed by Alex Maverick, its owner/member. See 5 TTABVUE 2. Citations in
this opinion to the briefs and other materials in the case docket refer to TTABVUE, the
Board’s online docketing system. See New Era Cap Co. v. Pro Era, LLC, No. 91216455, 2020
TTAB LEXIS 199, at *1-5 n.1. The number preceding TTABVUE corresponds to the docket
entry number, and any numbers following TTABVUE refer to the page(s) of the docket entry
where the cited materials appear.

No. 91291490
- 2 -
Plant-Smart, LLC (“Applicant”) seeks registration on the Principal Register for
the mark CHOCOVA in standard characters for the following goods in International
Class 30:2
Chocolate bars; Chocolate confectionery; Chocolate
confections; Chocolate covered cocoa nibs; Chocolate
desserts; Chocolate for toppings; Chocolate glaze;
Chocolate mousse; Chocolate paste; Chocolate spreads
containing nuts; Chocolate sweets; Chocolate topping;
Chocolate-based beverages; Chocolate-based snack bars;
Chocolate-based snack food; Chocolate-based spreads;
Chocolates; Cocoa spreads; Hot chocolate; Hot chocolate
mixes; Snack foods, namely, chocolate-based snack foods;
Vegan hot chocolate.
Venchi S.p.A. (“Opposer”) opposes registration of Applicant’s mark under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d),3 on the ground of priority and
likelihood of confusion with its registered marks listed below:
2 Application No. 98123192 was filed on August 8, 2023, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), claiming a date of first use anywhere of April 21, 2023 and use in
commerce of August 7, 2023.
3 1 TTABVUE 4-5.
In its main brief, Opposer asserts unpleaded claims of prior common law use (Opposer “has
priority of use and registration,” 13 TTABVUE 13) and dilution (“[w]hether Plant-Smart’s
CHOCOVA mark so resembles Venchi’s CHOCOVIAR mark as to create a likelihood of
confusion, mistake or deception, and a likelihood of dilution,” id. at 9). Opposer did not assert
common law rights in the notice of opposition. Its statement that “Venchi unquestionably has
priority of use since its pleaded U.S. Registrations … predate Applicant’s alleged date of first
use” contains no allegation of actual prior use and thus is not an assertion of common law
rights. 1 TTABVUE 5. Similarly, Opposer did not plead dilution grounds. Applicant
addresses neither Opposer’s alleged priority based on common law use nor its dilution claims
in its brief. 14 TTTABVUE.
Generally, parties in proceedings before the Board may not rely on unpleaded claims, issues,
or defenses, and the Board will not consider them. See Kohler Co. v. Baldwin Hardware Corp.,
No. 92041434, 2007 TTAB LEXIS 3, at *3 n.3 (raising claim for first time in plaintiff's brief
is manifestly untimely; belated fraud claim given no further consideration). As we reach a
decision here on the ground of likelihood of confusion based on Opposer’s pleaded
registration, we need not consider potential additional grounds nor issues stemming

No. 91291490
- 3 -
• CHOCOVIAR for “Cereal bars; cocoa-based beverages; coffee-based
beverages; chocolate-based beverages; cocoa beverages with milk;
chocolate-based beverages with milk; cookies; sweetmeats as candies; cocoa;
coffee; caramels; chocolate; confectionery, namely, candies; chocolate
decorations for cakes; confectionery for decorating Christmas trees; ice
cream; chocolate-coated nuts; pastries; chocolate bars; tea; frozen yogurt”
in International Class 30;4 and
• (“75%” disclaimed) for “Cereal bars; cocoa-based beverages;
coffee-based beverages; chocolate-based beverages; cocoa beverages with
milk; chocolate-based beverages with milk; cookies; sweets; cocoa; coffee;
caramels; chocolate; confectionery, namely, confectionery made of sugar,
confectionery, namely, chocolate, and cocoa-based confectionery, namely,
chocolate chips for decoration; chocolate decorations for cakes;
confectionery for decorating Christmas trees; ice cream, chocolate-coated
nuts; pastries; chocolate bars; tea; frozen yogurt as confectionery ices, all of
the aforementioned goods containing at least 75% cocoa” in International
Class 30.5
In its answer, Applicant denies the salient allegations of the notice of opposition
and asserts five “affirmative defenses.”6 The first (crowded field), second (the marks
look and sound different), third (the marks create different commercial impressions),
and fifth (the goods are different) are amplifications of Applicant’s denials, not true
affirmative defenses, and are treated as such. See, e.g., DeVivo v. Ortiz, No. 91242863,
2020 TTAB LEXIS 15, at *3. applicant’s denials not considered as separate
affirmative defenses). The fourth “affirmative defense” ―that Opposer lacks
therefrom. See Venture Out Props. LLC v. Wynn Resorts Holdings, LLC, No. 91167237, 2007
TTAB LEXIS 1, at *24.
4 Registration No. 6208106 issued December 1, 2020.
5 Registration No. 6465739 issued August 31, 2021.
6 4 TTABVUE.

No. 91291490
- 4 -
“standing,” now referred to as entitlement to a statutory cause of action― is not an
affirmative defense; rather, Opposer must prove its entitlement s a threshold element
of its claim. Austl. Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370,
1373-74 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc.,
572 U.S. 118, 125-26 (2014)). Last, under a separate heading, Applicant “reserves the
right to assert additional affirmative defenses,” is also not a true affirmative defense,
Monster Energy Co. v. Jones, No. 91284247, 2024 TTAB LEXIS 368, at *26, and at
any rate, Applicant did not pursue additional defenses during trial. The purported
affirmative defenses are therefore given no further consideration.
Both parties filed briefs and Opposer filed a rebuttal brief.7 For the reasons
discussed herein, we sustain the opposition.
I. The Record
The record consists of the pleadings, and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file history of the involved application. In
addition, Opposer introduced the following evidence:
7 Opposer’s main brief, 13 TTABVUE; Applicant’s brief, 14 TTABVUE; Opposer’s rebuttal
brief, 15 TTABVUE.
Applicant’s brief is improperly formatted because it is single-spaced. See Trademark Rule
2.126(a)(1), 37 C.F.R. § 2.126(a)(1) (“Text in an electronic submission must be filed in at least
11-point type and double-spaced.”). “Without prior leave of the … Board, a brief shall not
exceed twenty-five pages in length in its entirety …” Trademark Rule 2.142(b)(2). Although
Applicant’s main brief is single-spaced, we accept it because it is five pages; if it were properly
double-spaced, it would fall within the page limitation. See In re University of Miami, No.
86616382, 2017 TTAB LEXIS 171, at *3 n.2 (Board exercised its discretion to consider
applicant’s appeal brief and reply that were not double-spaced because it appeared that they
would fall within the applicable page limits had they been double-spaced).

No. 91291490
- 5 -
• Registration Nos. 6208106 and 6465739 for the CHOCOVIAR and
CHOCOVIAR 75% design mark depicted above;8
• Testimony Declaration of Niccolò Doni, Chief Financial Officer of Opposer’s
U.S. subsidiary, Venchi U.S., Inc., dated June 17, 2025 with accompanying
exhibits 1-5 (“Doni Declaration”);9 and
• Notice of Reliance on Applicant’s responses to discovery requests, namely,
Opposer’s First Set of Admissions, Opposer’s First Set of Requests for
Production of Documents, and Opposer’s First Set of Interrogatories.10
Applicant did not introduce any evidence, but it is under no requirement to do so.
Yazhong Inv. Ltd. v. Multi-Media Tech. Ventures, Ltd., No. 92056548, 2018 TTAB
LEXIS 168, at *12, n.13 (defendant in inter partes proceeding is under no obligation
to file evidence).
II. Entitlement to a Statutory Cause of Action
As noted above, establishing an entitlement to a statutory cause of action is a
threshold requirement in every inter partes case. See Corcamore, LLC v. SFM, LLC,
978 F.3d 1298, 1303 (Fed. Cir. 2020); Austl. Therapeutic, 965 F.3d at 1373. Opposer
must prove its entitlement by a preponderance of the evidence, see, e.g., Made in
Nature, LLC v. Pharmavite LLC, No. 91223352, 2022 TTAB LEXIS 228, at *8, by
demonstrating that it has: (1) an interest falling within the zone of interests protected
by the statute, and (2) a reasonable belief in damage proximately caused by the
registration of the mark. Curtin v. United Trademark Holdings, Inc., 137 F.4th 1359,
1367 (Fed. Cir. 2025) (citing Lexmark, 572 U.S. at 129-134).
8 1 TTABVVUE 7-12. Opposer properly made the registrations of record by submitting status
and title copies with its notice of opposition. Trademark Rule 2.122(d)(1).
9 12 TTABVUE.
10 11 TTABVUE.

No. 91291490
- 6 -
Opposer is the owner of pleaded registrations for the marks CHOCOVIAR and
CHOCOVIAR 75% (with a design) for various chocolate goods and both registrations
are properly of record.11 It has thus established its entitlement to a statutory cause
of action under Section 2(d) of the Trademark Act. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 945 (Fed. Cir. 2000); see also Corcamore, 978 F.3d at 1306.
III. Priority and Likelihood of Confusion
“Because Opposer properly made of record its valid and subsisting pleaded
registrations, and Applicant did not counterclaim to cancel Opposer’s pleaded
registrations, priority is not at issue for the marks and goods … identified therein.”
Heil Co. v. Tripleye GmbH, No. 91277359, 2024 TTAB LEXIS 494, at *44 (citing King
Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1402-03 (CCPA 1974)).
Now, we turn to Opposer’s likelihood of confusion claim. “The Trademark Act
[under Section 2(d)] prohibits registration of a mark that so resembles a registered
mark as to be likely, when used on or in connection with the goods or services of the
applicant, to cause confusion [or] mistake, or to deceive.” In re Charger Ventures LLC,
64 F.4th 1375, 1379 (Fed. Cir. 2023) (cleaned up). Our determination under Section
2(d) is based on an analysis of all of the probative facts in evidence that are relevant
to the factors bearing on likelihood of confusion set forth in In re E. I. DuPont de
Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”), cited in B&B
Hardware, Inc. v. Hargis Ind., Inc., 575 U.S. 138, 144 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003). In considering the evidence of
11 1 TTABVUE 7-12.

No. 91291490
- 7 -
record on these factors, we keep in mind that “[t]he fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 1103 (CCPA 1976).
Here, we have considered these DuPont factors, as well as any other factor that is
relevant and for which there is evidence and argument of record. See In re Guild
Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019). Varying weight, however, may be
assigned to each DuPont factor depending on the evidence presented. See Citigroup
Inc. v. Cap. City Bank Grp. Inc., 637 F.3d 1344, 1355 (Fed. Cir. 2011); In re Shell Oil
Co., 992 F.2d 1204, 1206 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play
more or less weighty roles in any particular determination.”). We weigh the factors
together to determine if, on balance, they indicate that confusion is likely. See, e.g.,
Charger Ventures, 64 F.4th at 1381; Majestic Distilling, 315 F.3d at 1319. Ultimately,
“each case must be decided on its own facts and the differences are often subtle ones.”
Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 1199 (CCPA 1973).
We focus our analysis on Opposer’s pleaded standard character mark
CHOCOVIAR in Registration No. 6208106 for, inter alia, “cocoa-based beverages; …
chocolate-based beverages; cocoa beverages with milk; chocolate-based beverages
with milk; … cocoa; … chocolate; confectionery, namely, candies; … chocolate bars;
…” (“the CHOCOVIAR Registration”) because this mark is closest to Applicant’s
CHOCOVA mark for, inter alia, “Chocolate bars; Chocolate confectionery; Chocolate
confections; … Chocolate sweets; … Chocolate-based beverages; … Chocolates; … Hot

No. 91291490
- 8 -
chocolate; Hot chocolate mixes; … Vegan hot chocolate”. See Sock It to Me, Inc. v. Fan,
No. 91230554, 2020 TTAB LEXIS 201, at *20-21 (confining Section 2(d) analysis to
most similar pleaded mark). If we find a likelihood of confusion as to the
CHOCOVIAR mark, we need not find it as to the composite CHOCOVIAR 75% mark
in Registration No. 6465739; conversely, if we do not find a likelihood of confusion as
to these marks, we would not find it as to the other pleaded registration either. Id. at
*21.
A. Identity of Goods, Trade Channels, and Classes of Consumers
We begin by considering the second and third DuPont factors. Under the second
DuPont factor, we consider “[t]he similarity or dissimilarity and nature of the goods
or services as described in an application or registration.” DuPont, 476 F.2d at 1361.
We base our analysis on the identifications in the application and cited registration.
See In re Detroit Ath. Co., 903 F.3d 1297, 1306, 1306 (Fed. Cir. 2018) (“The relevant
inquiry in an ex parte proceeding focuses on the goods and services described in the
application and registration, and not on real-world conditions.”) (emphasis in
italics in original changed to bold here); Stone Lion Cap. Partners, L.P. v. Lion Cap.
LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014) (“‘the question of registrability of an
applicant’s mark must be decided on the basis of the identification of goods set forth
in the application’”) (quoting Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918
F.2d 937, 942 (Fed. Cir. 1990)).
The application identifies “chocolate bars” and “chocolate-based beverages,” and
the CHOCOVIAR Registration identifies the same “chocolate bars” and “chocolate-

No. 91291490
- 9 -
based beverages.” Therefore, the parties’ identified goods are in-part identical.
Additionally, in its responses to Opposer’s discovery requests, Applicant admitted
that its “chocolate-based beverages” and “chocolate bars” are identical to the same
goods in Opposer’s pleaded registrations.12 The second DuPont factor weighs strongly
in favor of a conclusion of likely confusion.
Under the third DuPont factor we consider “the similarity or dissimilarity of
established, likely-to-continue trade channels.” DuPont, 476 F.2d at 1361; Detroit
Ath. Co., 903 F.3d at 1306, 1308; Sabhnani v. Mirage Brands, LLC, No. 92068086,
2021 TTAB LEXIS 464, at *20 (TTAB 2021). Because neither Opposer nor Applicant
have limited their channels of trade or classes of consumers for their identified goods,
we must presume that the in-part identical goods will be offered in the same trade
channels to the same classes of consumers. See Detroit Ath. Co., 903 F.3d at 1306,
1308 (when there are no restrictions on channels of trade or classes of consumers in
the identifications of an application or registration, it is presumed that the goods are
sold in “all normal trade channels to all the normal classes of purchasers”); In re
Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012) (“it is well established that, absent
restrictions in the application and registration, goods and services are presumed to
travel in the same channels of trade to the same class of purchasers.”) (quotation
omitted). This factor also weighs heavily in favor of a likelihood of confusion.
12 11 TTABVUE 9.

No. 91291490
- 10 -
B. The Conditions Under Which Sales Are Made, i.e. “Impulse” vs.
Careful, Sophisticated Purchasing
The fourth DuPont factor considers the “conditions under which and buyers to
whom sales are made, i.e. ‘impulse’ v. careful, sophisticated purchasing.” DuPont, 476
F.2d at 1361. Purchaser sophistication or degree of care may tend to minimize
likelihood of confusion; conversely, impulse purchases of inexpensive items may tend
to have the opposite effect. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 1376 (Fed. Cir. 2005). We base our decision on the
least sophisticated potential purchasers. Stone Lion, 746 F.3d at 1325.
Applicant argues that
Opposer’s evidence emphasizes premium, indulgent, and
luxury-oriented products associated with confections and
specialty chocolate offerings. Applicant’s goods, by
contrast, are positioned and described differently, with
emphasis on composition and functional characteristics.
These distinctions affect how consumers encounter and
perceive the goods in the marketplace.13
Because both parties identify “chocolate bars” and “chocolate-based beverages,”
which are unrestricted as to classes of purchasers, the nature and type of chocolate,
and pricing, we can assume that these chocolate products are offered not only to
sophisticated buyers but also to the general public, and include both expensive and
inexpensive varieties. Indeed, the broadly identified “chocolate bars” includes any
type of chocolate bar, including those sold generally to consumers with sophisticated
palates, i.e., gourmet chocolates, or those sold to confectioners, as well as inexpensive
13 14 TTABVUE 4-5.

No. 91291490
- 11 -
chocolate bars that may be purchased by members of the general public on impulse
in the grocery store check-out.
Keeping in mind that Board precedent requires us to consider the “least
sophisticated consumer in the class,” Stone Lion, 746 F.3d at 1325, and that the
consumers here include members of the general public, we conclude that the fourth
DuPont factor also weighs in favor of finding a likelihood of confusion. Heil, 2024
TTAB LEXIS 494, at *88 (fourth factor weighs in favor of confusion where goods were
identical).
C. Strength of Opposer’s Mark
Because it affects the scope of protection to which it is entitled, we next consider
the strength or weakness of Opposer’s registered CHOCOVIAR mark. “Two of the
DuPont factors (the fifth and sixth) consider strength.” Spireon, Inc. v. Flex LTD, 71
F.4th 1355, 1362 (Fed. Cir. 2023). The “fifth DuPont factor enables Opposer to prove
that its pleaded marks are entitled to an expanded scope of protection by adducing
evidence of ‘[t]he fame of the prior mark (sales, advertising, length of use)’,” while
“the sixth DuPont factor allows Applicant to contract that scope of protection by
adducing evidence of ‘[t]he number and nature of similar marks in use on similar
goods.’” Made in Nature, 2022 TTAB LEXIS 228, at *23-24 (quoting DuPont, 476 F.2d
at 1361).
“There are two prongs of analysis for a mark’s strength under the sixth factor:
conceptual strength and commercial strength. Conceptual strength is a measure of a
mark’s distinctiveness” along the spectrum of distinctiveness from generic terms to

No. 91291490
- 12 -
fanciful marks, Spireon, 71 F.4th at 1362 (citations omitted), while commercial
strength “‘is the marketplace recognition value of the mark.’” Id. at 1363 (quoting 2
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:80).
We will consider the conceptual and commercial strength of Opposer’s CHOCOVA
mark, and then Applicant’s argument as to its weakness.
1. Asserted Strength of Opposer’s Mark
a. Conceptual Strength
Conceptual or inherent strength is a measure of a mark’s distinctiveness. In re
Chippendales USA, Inc., 622 F.3d 1346, 1352-54 (Fed. Cir. 2010). As discussed above,
we focus our analysis on the Opposer’s registered CHOCOVIAR mark. Opposer
asserts that its “CHOCOVIAR mark is inherently strong and therefore fanciful on
the spectrum of distinctiveness.”14 Because Opposer’s mark is registered on the
Principal Register, with no claim of acquired distinctiveness under Section 2(f), we
presume it is inherently distinctive. 15 U.S.C. § 1057(b) (registration is “prima facie
evidence of the validity of the registered mark”); see also New Era, 2020 TTAB LEXIS
199, at *29-30.
b. Commercial Strength/Fame
Next, we consider Opposer’s arguments regarding the commercial strength or
fame of its mark, i.e., the extent to which a significant portion of the relevant public
recognizes a mark as denoting a single source. Joseph Phelps Vineyards, LLC v.
14 Id. at 16.

No. 91291490
- 13 -
Fairmont Holdings, LLC, 857 F.3d 1323, 1324-25 (Fed. Cir. 2017) (per curiam). Here,
the relevant consumers are purchasers of chocolate. In the likelihood of confusion
context, commercial strength is not an “all-or-nothing measure,” but rather involves
placing a mark on a “spectrum,” which ranges from “very strong to very weak.” Id.
(quoting In re Coors Brewing Co., 343 F.3d 1340, 1344 (Fed. Cir. 2003)). The stronger
the mark, the greater the scope of protection. Kenner Parker Toys Inc. v. Rose Art
Indus., Inc., 963 F.2d 350, 352 (Fed. Cir. 1992) (“[S]trong marks enjoy a wide latitude
of legal protection.”).
“Commercial strength is a question of whether consumers in fact associate the …
mark with a unique source, and can be shown by, for instance, exclusive use of a mark
in the marketplace, advertising and marketing, and sales.” Spireon, 71 F.4th at 1363
(citing Bridgestone Ams. Tire Opers., LLC v. Fed. Corp., 673 F.3d 1330, 1336 (Fed.
Cir. 2012) (“The prolonged exclusive use of these marks, the extensive promotion and
marketing, the billions of dollars in sales, of tires bearing these marks, shows
commercial strength.”)). Commercial strength may also be measured indirectly by
“other factors such as … widespread critical assessments; notice by independent
sources of the [goods and services] identified by the mark []; and the general
reputation of the [goods and services].” Tao Licensing, LLC v. Bender Consulting Ltd.,
No. 92057132, 2017 TTAB LEXIS 437, at * 42; see also Bose Corp. v. QSC Audio
Prods. Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002).

No. 91291490
- 14 -
Opposer asserts that its CHOCOVIAR mark is commercially strong, and relies on
the testimony offered by its witness, Mr. Doni,15 who states that:
• Opposer, a 140-year-old Italian chocolate confectionary, opened its first
U.S. location in 2018, a Venchi “ChocoGelateria” boutique, in New York
City.16 Since then, it opened two more stores in New York City, and a
location in New Jersey.17 Six more locations “were scheduled for the latter
half of 2023” in New York, Pennsylvania, Florida, New Jersey, and
California (2) and “aiming to increase Venchi’s U.S. presence to 15
ChocoGelaterias,”18
• Opposer and its products were featured in a number of U.S. publications,
including “Vogue, US Weekly, WTOP, Country Living, and San Francisco
Chronicle ... [which] reached millions of consumers across the U.S.”19
• Opposer “widely advertised the CHOCOVIAR Mark through various
platforms … Italy, the UK, the US, and Asia”20 beginning in November
2022. It “regularly advertises and receives coverage on its Mark in
magazines such as Forbes, DC Eater, The Travel, ABC, Westfair Business
Journal, Westchester Magazine and social media platforms such as
Instagram, TikTok and Facebook.”21
• Opposer promoted the CHOCOVIAR mark at events including “the San
Jose Opera 40th Anniversary, Sons of Italy Gala (Washington D.C.), Italian
Design Week Gala (Washington D.C), La Scuola d’Italia Gala (New York
City, NY), Lenox Hill Hospital Nurse Appreciation Week (New York City,
NY).”22
• Opposer’s chocolates are sold in “several channels of trade in the United
States, including but not limited to, its own boutiques, online sales,
distributors and authorized retailers such as, Goldbelly, Italianway,
15 Id. at 9-12.
16 Doni Declaration, 12 TTABVUE 4-5, §§3, 6, 8.
17 Id. at 5-6, §9.
18 Id. at 6, §§10.
19 Id. at 6, §11; Exhibit 1, at 19, 28, 29, 50, 60-2, 66-8, 76-7, 87-8, 91-2, 93-4, and 95-9.
20 Id. at 6, §12.
21 Id. at 6, §14.
22 Id. at 12, §15.

No. 91291490
- 15 -
Chocosphere, Madison Fare New York.”23 The CHOCOVIAR mark appears
in the attached exhibits for each listed store.24
• Opposer’s U.S. sales of CHOCOVIAR products increased from $5,755 in
2020 to $969,064 in 2024.25
• As to advertising, “Venchi also spends portions of its budget each year on
promoting and advertising its CHOCOVIAR products worldwide.
Specifically, Venchi spends a portion of that in the United States. Venchi
has advertised its products under the CHOCOVIAR Marks from the time
the products were initially offered through to the present. Below are the
total annual dollar amounts Venchi has spent on advertising and
promotional expenditures in the United States from 2020 to 2024.”26 These
annual totals begin with $51,461 in 2020 and increase to $927,207 in 2024.
We review this evidence in turn. As to the retail locations, it is unclear as to how
many boutiques actually opened in the U.S. and how consumers are exposed to the
CHOCOVIAR mark. First, Mr. Doni signed the declaration in 2025, so he should have
known by then if the additional locations opened in 2023; it is also unclear how Mr.
Doni arrived at 15 locations and whether Venchi reached that number. Mr. Doni also
did not explain how many people visit the Venchi stores or how many consumers are
exposed to the CHOCOVIAR mark. We are also missing context; there are 15
locations across the U.S. but five are in New York. Moreover, the mark at issue is not
the store name (Venchi), but rather CHOCOVIAR, and Mr. Doni does not testify as
to how consumers were exposed to the CHOCOVIAR mark and how many may have
been so exposed.
23 Id. at 8, §19.
24 Id. at 105-36.
25 Id. at 9, §24. Mr. Doni refers to these numbers as “the representative annual dollar volume
amounts of Venchi’s sales of its CHOCOVIAR products,” but it is unclear what
“representative” means in this context.
26 Id. at 9-10, §25.

No. 91291490
- 16 -
Regarding the press exposure that reached “millions of consumers across the
U.S.,”27 although there are five articles attached to Exhibit 1 of Mr. Doni’s
declaration, only one mentions the CHOCOVIAR mark, and that mention is
somewhat buried in text.28 It is Opposer Venchi, not its CHOCOVIAR mark, that was
featured in “Vogue, US Weekly, … Country Living, and San Francisco Chronicle ...
[which] reached millions of consumers across the U.S.”29
As to its advertisements, for which Opposer “receives coverage on its
[CHOCOVIAR] Mark,”30 of those six articles in Exhibit 2, only three appear to
reference the CHOCOVIAR mark,31 and there is no evidence as to the reach of the
news station or websites (thetravel.com, abc27.com, and westfaironline.com) where
the mark was advertised. We are also lacking context and scope for the screenshots
of social media posts on Facebook,32 Instagram,33 and TikTok.34 They display the
27 Id. at 6, §11. Exhibit 1, at 19, 28-9, 50, 60-2, 66-8, 76-7, 87-8, 91-2, 93-4, and 95-9.
28 Id. at 29, wtop.com (“Venchi is known for the creative names it gives it chocolates, such as
Chocoviar, Gianduiotti and Cremino.”).
29 Id. at 6, §11; Exhibit 1, at 19, 28, 29, 50, 60-2, 66-8, 76-7, 87-8, 91-2, 93-4, and 95-9.
30 Id. at 6, §14.
31 Id. at 87 (showing an Instagram post from “venchi1878”, with a photograph captioned,
inter alia, “[a]dd a little crunch … with our delicious Chocoviar grains.”), 91 (“The new Venchi
location offers a wide variety of authentic Italian sweets, which consist of their famous
Chocoviar, Gianduiotti …”), 93 (“Chocolates here come in all shapes and sizes, with the
Chocoviar (short for chocolate with caviar) bonbons being among the most popular, the
‘caviar’ actually being the sprinkles that adorn these jewel-like miniatures.”). If we have
missed a reference to the CHOCOVIAR mark, this tends to show that the appearance in the
article is not significant.
32 Id. at 100.
33 Id. at 101, 103.
34 Id. at 102.

No. 91291490
- 17 -
CHOCOVIAR mark on product in two instances, but also in unverified subtitles in
another. One of the Instagram posts shows 163 “likes” but Mr. Doni does not testify
as to how many people saw any of these posts (presumably at least 163 people).
While we would usually rely on Mr. Doni’s testimony that Opposer promoted its
CHOCOVIAR mark at the five listed events, as the prior examples did not all include
the CHOCOVIAR mark upon close inspection, we hesitate to assume that the
CHOCOVIAR mark was promoted in each instance, as opposed to just the Venchi
mark. The attached photographs are much too small to determine whether the
CHOCOVIAR mark did, in fact, appear on the chocolate.35
Mr. Doni states that Opposer’s goods are sold through a number of channels, and
the referenced exhibits show five websites, including Opposer’s own, offering
CHOCOVIAR products.36
Over the five years of 2020-2024 inclusive, sales of CHOCOVIAR products in the
U.S. has increased from just under $6,000 to nearly $1M. Mr. Doni’s statements
regarding advertising spend, however, are not clear that the money spent is
advertising the CHOCOVIAR mark alone, or apart from Venchi as a whole. A
comparison of the annual numbers (sales v. advertising) suggests that these numbers
are total advertising for Venchi, not for CHOCOVIAR alone, as the advertising spend
is nearly equal to annual sales in 2024 and nearly ten times the annual sales in 2020:
• 2020: sales $5,755 / advertising $51,461
35 Id. at 104.
36 Id. at 105-36

No. 91291490
- 18 -
• 2021: sales $47,356 / advertising $187,529
• 2022: sales $160,993 / advertising $337,685
• 2023: sales $344,455 / advertising $588,842
• 2024: sales $969,064 / advertising $927,207.
Therefore, while the total sales of CHOCOVIAR products appears reliable, the
advertising spend for the CHOCOVIAR mark is less so. And again, we are missing
context for the sales data; while the sales are increasing and nearly doubling in many
years, we have no sense of what portion of the chocolate market $1M in sales
comprises.
Opposer’s mark may have acquired some degree of brand recognition strength, but
on this record, there are too many deficiencies in Opposer’s evidence that preclude us
from finding that the CHOCOVIAR mark is entitled to an expanded scope of
protection under the fifth DuPont factor for Opposer’s products. The fifth DuPont
factor is neutral.
2. Asserted Weakness of Opposer’s Mark
Next, under the sixth DuPont factor, we address whether the scope of protection
of Opposer’s CHOCOVIAR mark is limited. Spireon, 71 F.4th at 1362 (citing DuPont,
476 F.2d at 1361) (the sixth DuPont factor “is a measure of the extent to which other
marks weaken the assessed mark”). Applicant argues that “the ‘CHOCO-’ formative
[portion of Opposer’s mark] is weak and entitled to a narrow scope of protection”37
37 14 TTABVUE 4 (cleaned up).

No. 91291490
- 19 -
because it is “a commonly understood reference to chocolate.”38 However, Applicant
offered no evidence in support of this assertion. See Cai v. Diamond Hong, Inc., 901
F.3d 1367, 1371 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424
F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for
evidence.”)).39
As Applicant did not introduce any evidence in the form of third-party
registrations or dictionary definitions, for example, Applicant was unsuccessful in
diminishing the scope of protection of Opposer’s mark. Thus, the sixth DuPont factor
is neutral.
D. Similarity or Dissimilarity of Marks
Under the first DuPont factor, we consider the “similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.” DuPont, 476 F.2d at 1361; see also Stone Lion, 746 F.3d at 1319.
“Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Inn at St. John’s, LLC, No. 87075988, 2018 TTAB LEXIS
170, at *13 (citing In re Davia, No. 85497617, 2014 TTAB LEXIS 214, at *4), aff’d
mem., 777 F. App’x 516 (Fed. Cir. 2019). We do not predicate our analysis on a
dissection of the involved marks; we consider the marks in their entireties. Stone
Lion, 746 F.3d at 1321; Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 1007
(CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
38 Id.
39 To the extent that the CHOCO element has some conceptual weakness, we consider it
under connotation in Section III(D), infra.

No. 91291490
- 20 -
piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”).
The issue is not whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are sufficiently similar in terms of
their overall commercial impression such that confusion as to the source of the goods
offered under the respective marks is likely to result. Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012). The marks must be considered
in their entireties, but “in articulating reasons for reaching a conclusion on the issue
of confusion, there is nothing improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their entireties.” Detroit Ath. Co.,
903 F.3d at 1305 (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir.
1985)). The focus is on the recollection of an ordinary consumer, who normally retains
a general rather than specific impression of trademarks. Geigy Chem. Corp. v. Atlas
Chem. Indus., Inc., 438 F.2d 1005, 1007 (CCPA 1971).
Applicant’s mark is CHOCOVA and the registered mark is CHOCOVIAR. Both
marks begin with the shared CHOCO- element and both marks next add the letter
V. Accordingly, in terms of appearance and sound, the first and visually largest part
of both marks, “CHOCOV-”, is identical.
Applicant does not address the shared V in the identical CHOCOV- portion of the
marks, focusing on the shared CHOCO- element. Applicant argues without evidence
that the shared CHOCO- “prefix is a common and diluted reference to chocolate and

No. 91291490
- 21 -
carries limited source-identifying significance”40 While we agree that CHOCO-
suggests chocolate, particularly when viewed in the context of the parties’ chocolate
goods, this component of the marks thus shares the same suggestive connotation.
Applicant urges that we instead consider the marks’ “differing endings, structure,
sound, appearance, and connotation,”41 and we do, in our consideration of the marks
as whole. Applicant further argues that the different “terminal potions … are critical
to consumer perception.”42
We agree with Applicant that the CHOCOVIAR mark may be perceived by
consumers as “evok[ing] the concept of ‘chocolate caviar,’”43 and this meaning is
absent from Applicant’s CHOCOVA mark. In contrast, Applicant asserts that its own
mark “is an arbitrary term that does not convey a specific semantic meaning beyond
a general association with chocolate-flavored goods.”44 Given the identical CHOCOV-
component in both marks (not just the suggestive CHOCO- component, but the
additional, shared V), we are not convinced that the different endings in the marks
are enough to overcome this similarity.
In sum, despite some differences in the last letters of the marks, the marks share
the leading CHOCO- (and even CHOCOV-) part of their marks, which has the same
40 14 TTABVUE 3. To the extent that Applicant is also making an argument as to the strength
of the registered mark, see our discussion, supra. Applicant did not introduce evidence under
the sixth DuPont factor.
41 Id.
42 Id.
43 Id.
44 Id.

No. 91291490
- 22 -
connotation. We also keep in mind that, “where, as here, the goods at issue are
identical, the degree of similarity necessary to support a conclusion of likely confusion
declines.” Viterra, 671 F.3d at 1363 (cleaned up; citation omitted). Here, some of the
goods are identical in part. When marks appear on identical goods, the degree of
similarity between the parties’ marks necessary to support a conclusion of likely
confusion declines. Bridgestone, 673 F.3d at 1337. We find that the marks as a whole
are similar in appearance, sound, meaning, and overall commercial impression, and
this weighs in favor of a conclusion of likely confusion.
E. Balancing the DuPont Factors
Having made our findings on the relevant likelihood of confusion factors, our final
step is to weigh the DuPont factors for which there has been evidence and argument;
“explain the results of that weighing;” and “the weight [we] assigned to the relevant
factors.” Charger Ventures, 64 F.4th at 1384. Opposer must prove this element of its
Section 2(d) claim by a preponderance of the evidence.
The fifth and sixth DuPont factors are neutral.
The second, third, and fourth DuPont factors considering the similarity or
dissimilarity of the goods, trade channels, and conditions of sale weigh in favor of
likely confusion, and heavily so for the second and third factors because the goods are
in-part identical and the trade channels overlap.
Last, the similarity of the marks under first DuPont factor, also weighs in favor
of a finding of likely confusion.

No. 91291490
- 23 -
As all relevant DuPont factors weigh in favor of likely confusion or are neutral and
no factors weigh against, there is a likelihood of confusion.
Decision: The opposition to Application Serial No. 98123192 on the basis of priority
and likelihood of confusion is sustained.