In re Productos Verdes Valle

• Decision Date: 25 July 2018
• Docket Number: 87110668
• Court: United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board
• Parties: In re Productos Verdes Valle, S.A. de C.V.

In re Productos Verdes Valle, S.A. de C.V.

No. 87110668

United States Patent and Trademark Office, Trademark Trial and Appeal Board

July 25, 2018

This Opinion is Not a Precedent of the TTAB

Alan S. Nemes of Husch Blackwell LLP, for Productos Veres Valle S.A. de C.V.

Parker Howard, Trademark Examining Attorney, Law Office 117, Travis Wheatley, Acting Managing Attorney.

Before Bergsman, Ritchie and Heasley, Administrative Trademark Judges.

OPINION

BERGSMAN, ADMINISTRATIVE TRADEMARK JUDGE:

Productos Verdes Valle, S.A. de C.V. ("Applicant") seeks registration on the Principal Register of the mark TAMAL TAMAYO and design, shown below, for "tamales," in Class 30.^[1]

(Image Omitted.)

The description of the mark in the application reads as follows:

The mark consists of a design of a chef standing behind a stock pot and holding the stock pot lid in his right hand. The chef is wearing a chef's bandana on his head and a t-shirt and apron. In front of the stock pot and the chef are the terms "TAMAL TAMAYO" in stylized font.

The application also provides that "[t]he English translation of TAMAL in the mark is tamale," and that "[t]he name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual."

The Trademark Examining Attorney refused to register Applicant's mark under Section 2(d) of the Trademark Act 15 U.S.C. § 1052(d), on the ground that Applicant's mark so resembles the mark TAMAYO (typed drawing format) for "restaurant services," in Class 42, registered on the Supplemental Register, as to be likely to cause confusion.^[2] The Trademark Examining Attorney has also required Applicant to disclaim the exclusive right to use the word "Tamal," which is the Mexican word for "Tamale," because it is merely descriptive of tamales.

I. Likelihood of Confusion

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 the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563, 567 (CCPA 1973) ("du Pont") cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S.Ct. 1293, 113 U.S.P.Q.2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 U.S.P.Q.2d 1201, 1203 (Fed. Cir. 2003). We have considered each du Pont factor that is relevant or for which there is evidence of record. See M2 Software, Inc. v. M2 Commc'ns, Inc., 450 F.3d 1378, 78 U.S.P.Q.2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 U.S.P.Q.2d 1232, 1242 (TTAB 2015) ("While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant."). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See In re Chatam Int'l Inc., 380 F.3d 1340, 71 U.S.P.Q.2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 U.S.P.Q. 24, 29 (CCPA 1976) ("The 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."); see also In re i.am.symbolic, llc, 866 F.3d 1315, 123 U.S.P.Q.2d 1744, 1747 (Fed. Cir. 2017) ("The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but 'may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods'") (quoting Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 U.S.P.Q.2d 1375, 1380 (Fed. Cir. 2002)).

A. The strength of the mark in the cited registration

Applicant argues that the mark in the cited registration (TAMAYO) is weak and entitled to a narrow scope of protection because it is primarily merely a surname registered on the Supplemental Register.^[3] Quoting the Board's opinion in In re Hunke & Jochheim, 185 U.S.P.Q. 188 (TTAB 1975), Applicant asserts that the scope of protection for a mark registered on the Supplemental Register is "limited to the substantially identical notation and/or to the subsequent use and registration thereof for substantially similar goods." 185 U.S.P.Q. at 189.^[4]

There is no categorical rule that citation of registrations on the Supplemental Register is limited to registrations of "'substantially identical' marks for 'substantially similar goods, '" or that a different test for likelihood of confusion should be applied in such cases. Towers v. Advent Software Inc., 913 F.2d 942, 16 U.S.P.Q.2d 1039, 1042 (Fed. Cir. 1990); In re Research and Trading Corp., 793 F.2d 1276, 230 U.S.P.Q. 49 (Fed. Cir. 1986) ("It is not material whether or not registration on the Supplemental Register implies that there is a degree of descriptiveness to that mark, as appellant argues. Such registration may be cited under section 2(d) in a determination of likelihood of confusion, an inquiry separate from that of descriptiveness.") (citing In re The Clorox Co., 578 F.2d 305, 198 U.S.P.Q. 337, 340 (CCPA 1978) (there is no basis for applying a different standard for determining likelihood of confusion for marks on the Supplemental Register)).

We do not read Hunke & Jochheim as limiting the citation of Supplemental Registrations or applying a different Section 2(d) analysis when one is cited. First, Hunke & Jochheim predated the appellate court's decisions in Research and Trading and Clorox, which settled the propriety of citing marks on the Supplemental Register as a bar to registration. But in case there was any doubt, the Board later expressly disavowed Applicant's theory.

[W]e have kept in mind that the cited mark is registered on the Supplemental Register. Applicant argues that the scope of protection to which the registrant's mark is entitled is narrower than a mark registered on the Principal Register, and that under this standard applicant's mark is sufficiently dissimilar from the cited registration to avoid confusion.

In re Smith & Mehaffey, 31 U.S.P.Q.2d 1531, 1533 (TTAB 1994). The Board went on to explain that the strength of the cited mark is-as always-relevant to assessing the likelihood of confusion under the du Pont framework. Most marks are on the Supplemental Register because they are descriptive, and the weaker the mark on the fanciful to generic continuum, the less its ability to preclude registration of a similar mark under Section 2(d). Id. (citing Clorox, 198 U.S.P.Q. at 341). But there is no categorical rule that citation of registrations on the Supplemental Register is limited to registrations of "'substantially identical' marks for 'substantially similar goods, '" or that a different test for likelihood of confusion should be applied in such cases. See In re Morinaga Nyugyo Kabushiki Kaisha, 120 U.S.P.Q.2d 1738, 1743-44 (TTAB 2016).

Nevertheless, because the cited mark is registered on the Supplemental Register, we find that it is not inherently distinctive. Cf. Clorox, 198 U.S.P.Q. at 340 (application for Supplemental Registration is an admission of descriptiveness); In re Future Ads LLC, 103 U.S.P.Q.2d 1571, 1574 (TTAB 2012) ("Registration on the Supplemental Register is prima facie evidence that, at least at the time of registration, the registered mark was merely descriptive."); In re Rosemount Inc., 86 U.S.P.Q.2d 1436, 1439 (TTAB 2008) ("because applicant seeks registration on the Supplemental Register, applicant has conceded that the marks are merely descriptive."). As noted above in footnote 9, Applicant and the Trademark Examining Attorney have stipulated that "TAMAYO" is primarily merely a surname.

Although the Trademark Examining Attorney asserts that "there are only two marks featuring the wording TAMAYO' on the register for food-related goods or services, namely, applicant's and registrant's, "^[5] there is no corroborating evidence (e.g., the results of a search inquiry from the USPTO TESS search engine). By the same token, Applicant did not introduce any evidence of third-party use or registration of TAMAYO in connection with restaurant services or food products. Accordingly, there is no evidence regarding the number and nature of similar marks in use on similar goods or services or third-party registrations consisting in whole, or in part, of the name "TAMAYO" or variations thereof. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 U.S.P.Q.2d 1671, 1675 (Fed. Cir. 2015) (the extent of third-party use or registrations may indicate that a term carries a suggestive or descriptive connotation and is weak for that reason).

Also, there is no evidence regarding the extent to which TAMAYO is perceived as a surname. See In re Olin Corp., 124 U.S.P.Q.2d 1327, 1330 (TTAB 2017) ("we first consider the frequency of, and public exposure to, the term OLIN's surname use.") (citing In re Etablissements Darty et Fils, 759 F.2d 15, 225 U.S.P.Q. 652, 653 (Fed. Cir. 1985) (considering the extent to which the term was used by others as a surname)).

In sum, because Registrant's mark TAMAYO is on the Supplemental Register, we find that it is not inherently distinctive and there is no countervailing evidence regarding the commercial strength of Registrant's mark. Thus, this weighs against finding a likelihood of confusion.

B. The similarity or dissimilarity of the marks.

We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. du Pont, 177 U.S.P.Q. at 567. "Similarity in any one of these elements may be sufficient to find the marks confusingly similar." In re Davia, 110 U.S.P.Q.2d 1810 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling C...