Bueno Alimentos, S.A. de C.V.

Trademark Trial and Appeal Board

May 29, 2012

No. 76676618 (T.T.A.B. May. 29, 2012)

Hearing: Mailed:
December 7, 2011 May 29, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bueno Alimentos, S.A. de C.V.
________

Serial No. 76676618
_______

Theodore A. Breiner of Breiner & Breiner, L.L.C. for Bueno
Alimentos, S.A. de C.V.

S. Michael Gaafar, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Kuhlke, Bergsman and Wellington,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Bueno Alimentos, S.A. de C.V. (“applicant”) filed an
intent-to-use application for the mark COCO LOCO, in
standard character form, for “fruit juices,” in Class 32.
Applicant provided an English translation for “Coco Loco”
as “The Crazy Coconut.”
The examining attorney refused registration under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), on the ground that applicant’s mark, when used
in connection with the fruit juices, so resembles the
registered mark THE CRAZY COFFEE COMPANY COCO LOCO ESRESSO
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 76676618
2
and design, shown below, for “coffee; tea,” in Class 30, as
to be likely to cause confusion.1

The registration includes the following translation
statement: “The foreign wording in the mark [COCO LOCO
ESPRESSO] translates into English as ‘CRAZY COFFEE.’”
Also, registrant disclaimed the exclusive right to use
“Coffee,” “Coco,” and “Espresso.”
Preliminary Issue
In the first Office action (August 24, 2007), the
examining attorney noted two prior filed applications
listed below that may be a Section 2(d) bar to
registration:
1. Serial No. 77012018 for the mark THE CRAZY COFFEE
COMPANY COCO LOCO ESPRESSO and design for “coffee; tea,” in
Class 30, and “coffee shops,” in Class 43, filed on
October 2, 2006;2 and

1 Registration No. 3589548, issued March 17, 2009. The
registration also includes “coffee shops,” in Class 43, but the
examining attorney did not include the services in the likelihood
of confusion refusal.
2 The mark in this application was ultimately cited as a Section
2(d) bar to registration and is the subject of this appeal.
Serial No. 76676618
3
2. Serial No. 78382691 for the mark COCOLOCO, in
standard character form, for “alcoholic liquors, namely,
coconut liqueur,” in Class 33, filed on March 11, 2004.
In its February 25, 2008 response, applicant argued
that the marks in the noted applications do not so resemble
applicant’s mark as to be likely to cause confusion.
In the next Office action (March 11, 2008), the
examining attorney suspended action in the application
pending the disposition of application Serial No. 78382691
(the earliest filed application). The examining attorney
did not reference application Serial No. 77012018.
On July 16, 2009, applicant notified the examining
attorney that application Serial No. 78382691 was abandoned
and requested that its application be approved for
publication.
In an Office action dated August 17, 2009, the
examining attorney notified applicant that application
Serial No. 77012018 had been registered as Registration No.
3589548 and cited the mark THE CRAZY COFFEE COMPANY COCO
LOCO ESPRESSO and design as a Section 2(d) bar to
registration.
In applicant’s February 17, 2010 response, applicant
argued that when the examining attorney suspended action in
the application based on the disposition of application
Serial No. 76676618
4
Serial No. 78382691 without referencing application Serial
No. 77012018, the examining attorney implicitly “withdrew
the possible citation to the mark in the ‘548 registration
in the Office action mailed March 11, 2008. Accordingly,
the trademark attorney had previously considered the issue
and agreed that there is no likelihood of confusion between
applicant’s mark and the mark in the ‘548 registration.”3
The examining attorney did not address this argument in his
next Office action (March 17, 2010). Applicant renewed the
argument in its September 17, 2010 response. The examining
attorney did not address the argument in his October 14,
2010 Office action. Applicant renewed the argument in its
brief and the examining attorney addressed the issue, for
the first time, in his brief.
Trademark Rule 2.83(a), 37 CFR § 2.83(a), provides
that “[w]henever an application is made for registration of
a mark which so resembles another mark or marks pending
registration as to be likely to cause confusion or mistake
or to deceive, the mark with the earliest effective filing
date will be published in the Official Gazette for
opposition if eligible for the Principal Register, or
issued a certificate of registration if eligible for the
Supplemental Register.”

3 February 17, 2010 Office action, p. 4.
Serial No. 76676618
5
Trademark Rule 2.83(c) provides that “[a]ction on the
conflicting application which is not published in the
Official Gazette for opposition … will be suspended by the
Examiner of Trademarks until the published or issued
application is registered or abandoned.”
The Trademark Manual of Examining Procedure (8th ed.
2011) discusses in general terms the process examining
attorneys should follow when there are pending applications
of marks that may be likely to cause confusion, but it does
not explicitly direct examining attorneys to identify all
such applications in the suspension order.4
In the circumstances before us, application Serial No.
78382691 had a filing date of March 11, 2004 and
application Serial No. 77012018 had a filing date of
October 2, 2006. When the examining attorney suspended
action in the application at issue pending the disposition
of Serial No. 78382691, without referencing the other
pending application, the examining attorney may have just
listed the first filed application. Moreover, the
examining attorney may have determined that applicant’s
mark was more likely to cause confusion with COCOLOCO for
coconut liqueurs than with THE CRAZY COFFEE COMPANY COCO

4 See TMEP §§ 716.02(c), 1208.01 and 1208.02.

Serial No. 76676618
6
LOCO ESPRESSO and design mark. However, when application
Serial No. 78382691 was abandoned, the examining attorney
determined that the mark in the other application remained
a valid Section 2(d) bar.
In spite of the examining attorney not identifying
application Serial No. 78382691 as a basis for suspension,
applicant was not harmed by this omission. While the
better practice is for an examining attorney to list all
pending applications in the suspension order that may form
a basis for refusal, applicant was given an opportunity to
argue against a refusal based on the application that
matured into the cited registration. In sum, applicant was
not prejudiced by the omission of the application serial
number in the suspension order and there is no reason to
reverse the ultimate refusal to registration. Under these
circumstances, there is no reason to prohibit the examining
attorney from continuing to prosecute the application. In
other words, there is no estoppel. See In re Recorded
Books Inc., 42 USPQ2d 1275, 1280 n.5 (TTAB 1997).
During the prosecution of the application in Recorded
Books Inc., the examining attorney refused to register
applicant’s mark on the ground that it was merely
descriptive, but invited applicant to amend its application
to the Supplemental Register. When applicant amended its
Serial No. 76676618
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application to the Supplemental Register, the examining
attorney refused registration on the ground that the mark
was generic. The applicant in that case argued that the
examining attorney was estopped from refusing registration
on the ground that the mark is generic because the
examining attorney invited applicant to amend its
application to the Supplemental Register. Acknowledging
the inconsistency in examination, the Board declined to
find an estoppel where the examining attorney changed her
mind after further research. Likewise, in this case, the
examining attorney adapted to the changing circumstances
and issued what he thought was an appropriate refusal. In
this regard, the USPTO has a duty to issue valid
registrations and has broad authority to correct errors
made by examining attorneys. See Last Best Beef LLC v.
Dudas, 506 F.3d 333, 340, 84 USPQ2d 1699, 1704 (4th Cir.
2007) (“[F]ederal agencies, including the USPTO, have broad
authority to correct their prior errors.”); see also
BlackLight Power Inc. v. Rogan, 295 F.3d 1269, 63 USPQ2d
1534 (Fed. Cir. 2002) (affirming that USPTO officials acted
within their authority in a reasonable manner to withdraw a
patent from issuance in order to fulfill the USPTO’s
mission to issue valid patents, even after Notice of
Allowance, payment of the issue fee, and notification of
Serial No. 76676618
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the issue date, and with publication of the drawing and
claim in the Official Gazette). Thus, if the examining
attorney discovered that a mistake made during examination
would result in issuance of a registration in violation of
the Trademark Act or applicable rules, the examining
attorney must issue any necessary requirements or refusals,
even if they could or should have been previously raised.
Accordingly, we find that the examining attorney followed
proper examination procedure and the USPTO is not estopped
from refusing registration on the basis of likelihood of
confusion.
Likelihood of Confusion
Our determination of likelihood of confusion 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 likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Serial No. 76676618
9
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn first to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. In re E. I. du Pont De Nemours &
Co., 177 USPQ at 567. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1987). In analyzing the similarity or dissimilarity
of the marks, we are mindful that the test 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 overall commercial
impression so that confusion as to the source of the goods
offered under the respective marks is likely to result.
San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1835,
1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir.
June 5, 1992). In making this determination, we must
consider the recollection of the average purchaser who
normally retains only a general, rather than a specific,
Serial No. 76676618
10
impression of the marks. Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975). In this case, the
average purchaser is an average consumer who purchases
fruit juices, coffee and tea and frequents coffee shops.
The marks are similar to the extent that they both
include the term COCO LOCO. In fact, registrant’s mark,
THE CRAZY COFFEE COMPANY COCO LOCO ESPRESSO and design,
incorporates the entirety of applicant’s mark. While the
mere fact that the marks share common elements does not
compel us to find that the marks are similar, it is a
factor in comparing the overall commercial impressions
engendered by the marks as perceived by consumers. See
Helga, Inc. v. Helga Howie, Inc., 182 USPQ 629 (TTAB 1974)
(junior party’s mark HELGA so resembles the senior party’s
mark HELGA HOWIE as to be likely to cause confusion).
As indicated above, applicant translates COCO LOCO as
“The Crazy Coconut” and registrant translates COCO LOCO
ESPRESSO as “Crazy Coffee.” In the August 24, 2007 Office
action, the examining attorney submitted dictionary
definitions of the word “Coco” that is defined as “Plants
Food: Same as coconut.”5 The word “Loco” is defined as a

5 Encarta.msn.com/dictionary. See also Merriam-Webster OnLine
(m-w.com).
Serial No. 76676618
11
slang term for “an insane person; maniac.”6 We do not know
how registrant derived its translation of the term “Coco
Loco Espresso” as “Crazy Coffee” because “coffee” in
Spanish is “café.”7 Because “Crazy Coffee” is not a literal
translation of the term “Coco Loco Espresso,” we presume
that the “Crazy Coffee” translation is the commercial
impression that registrant seeks to engender with
consumers. In any event, the term COCO LOCO ESPRESSO, as
part of registrant’s mark, used in connection with coffee,
tea and coffee shops and the term COCO LOCO used in
connection with fruit juices are distinctive, memorable
terms when used in connection with their respective goods
and services and comprise strong elements of both marks.
Applicant argues that the term “The Crazy Coffee
Company” is the dominant element of registrant’s mark.
Applicant submitted the specimen of use filed by
registrant, shown below, during the prosecution of
registrant’s application.

6 The Random House Dictionary of the English Language
(Unabridged), p. 1129 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
7 Cassell’s Spanish Dictionary, p. 900 (1959).

Serial No. 76676618
12

According to applicant, “The wording ‘coco loco espresso’
are secondary features of the trademark and part of the
logo with the parrot design. This wording is merely
redundant of the wording ‘Crazy Coffee.’”8
Applicant’s argument assumes that there must be a
dominant element in registrant’s mark and does not take
into account the possibility that registrant’s mark is
comprised of two memorable and distinctive elements. In
this case, we find that registrant’s mark is comprised of

8 Applicant’s Brief, p. 9.
Serial No. 76676618
13
two such memorable and distinctive elements: the term THE
CRAZY COFFEE COMPANY and the COCO LOCO ESPRESSO logo.
When consumers encounter the memorable and distinctive
COCO LOCO marks at issue in this appeal, consumers are
likely to believe that the products and services emanate
from the same source because they will mistakenly believe
that COCO LOCO ESPRESSO is the coffee product line of the
COCO LOCO brand of products.
In view of the foregoing, when we compare the marks in
their entireties, we find that, despite their differences,
they are similar in terms of appearance, sound, meaning and
commercial impression.
B. The similarity or dissimilarity and nature of the
goods, channels of trade and classes of consumers.

It is well settled that applicant’s goods and the
registrant’s goods do not have to be identical or directly
competitive to support a finding that there is a likelihood
of confusion. It is sufficient if the respective products
are related in some manner and/or that the conditions
surrounding their marketing are such that they would be
encountered by the same persons under circumstances that
could, because of the similarity of the marks used in
connection therewith, give rise to the mistaken belief that
they emanate from or are associated with a single source.
Serial No. 76676618
14
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
To support his position that the applicant’s fruit
juices and the registrant’s coffee and tea products are
related, the Examining Attorney has submitted numerous use-
based, third-party registrations for goods listed in both
the application and registration at issue.9 Third-party
registrations which individually cover a number of
different goods that are based on use in commerce may have
some probative value to the extent that they serve to
suggest that the listed goods are of a type which may
emanate from the same source. In re Albert Trostel & Sons
Co., 29 USPQ2d at 1785-1786; In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The
registrations listed below are representative.10
Mark Reg. No. Goods/Services
O CO CO 2861019 Coffee; fruit juices
CALIFORNIA
PIZZA KITCHEN
3099870 Coffee, tea; fruit juices
ST-MARC CAFÉ 3576853 Coffee; fruit juices
ZAVIDA COFFEE 3593871 Coffee, tea; fruit juices
BERRY BOX 3139964 Coffee; fruit juices
YOVANA 3230950 Coffee, tea; fruit juices

9 March 17, 2010 Office action.
10 We have not included the entire description of goods for each
of the registrations. Only the goods in both applicant’s
application and registrant’s registration are listed.
Serial No. 76676618
15
The examining attorney also submitted excerpts from
various websites advertising the sale of tea and fruit
juices under the same mark (i.e., SNAPPLE, AriZona, SoBe,
TURKEY HILL, TURNER DAIRY FARMS, OAKHURST, SUNCUP, MAYER
BROS., MINUTE MAID, NANTUCKET NECTARS, SCHNEIDER’S, WINS
and RUBY KIST).11 This evidence shows that coffee, tea, and
fruit juices move in the same channels of trade and that
the goods are sold to the same classes of consumers.
Applicant argues that applicant’s fruit juices and
registrant’s coffee and tea products are completely
different. However, the issue is not whether consumers
would confuse the goods themselves, but rather whether they
would be confused as to the source of the goods. In re
Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). We find that
the evidence submitted by the examining attorney referenced
above shows that the goods of applicant and registrant are
sufficiently related that consumers would be likely to
assume, upon encountering the goods under the marks at
issue, that the goods originate from, are sponsored or
authorized by, or are otherwise connected to the same
source. In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re

11 October 14, 2010 Office action.

Serial No. 76676618
16
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); and In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In view of the foregoing, we find that applicant’s
fruit juices and registrant’s coffee and tea products are
related, move in the same channels of trade, and are sold
to the same classes of consumers.
D. Balancing the factors.
In view of the facts that the marks are similar, the
goods are related, move in the same channels of trade and
are sold to the same consumers, we find that applicant’s
mark COCO LOCO for “fruit juices” is likely to cause
confusion with the mark THE CRAZY COFFEE COMPANY COCO LOCO
ESPRESSO and design for “coffee; tea.”
Decision: The refusal to register is affirmed.