Elektra Entertainment Group, Inc.v.Elektra Trading & Consulting Group, S.A. de C.V.

Trademark Trial and Appeal Board

Jul 18, 2012

No. 91190824 (T.T.A.B. Jul. 18, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: July 18, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Elektra Entertainment Group, Inc.
v.
Elektra Trading & Consulting Group, S.A. de C.V.
_____

Opposition No. 91186906
to application Serial No. 77010715
and
Opposition No. 91190824
to application Serial No. 770107631
_____

Andrew I. Gerber of Kilpatrick Townsend & Stockton LLP for
Elektra Entertainment Group, Inc.

Thomas A. Zeigler of AlvaradoSmith APC for Elektra Trading &
Consulting Group, S.A. de C.V.
______

Before Quinn, Cataldo and Mermelstein,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Elektra Trading & Consulting Group, S.A. de
C.V., filed two applications to register on the Principal
Register the mark displayed below for
Retail stores featuring general consumer goods
such as home appliances, electronics, electric
appliances, furniture and household goods; and
advertising, namely, the commercialization of

1 These proceedings were consolidated in a Board order issued on
August 24, 2009.
Opposition Nos. 91186906 and 91190824
2
goods such as home appliances, electronics,
electric appliances, furniture and household
goods,

in International Class 35;2 and
publicity, commercial business management,
commercial business administration, office work

in International Class 35.3

Registration has been opposed by Elektra International
Group, Inc. (“opposer”). As grounds for opposition, opposer
asserts that it is the owner of numerous ELEKTRA and
ELEKTRA-formative marks, including the mark ELEKTRA (typed
or standard characters), previously used and registered on
the Principal Register for
prerecorded phonograph records, audio and video
tapes, cassettes, and compact disks featuring
entertainment

in International Class 9.4
In its notices of opposition, opposer alleges that its
ELEKTRA and ELEKTRA-formative marks are well-known and

2 Application Serial No. 77010715, filed under Section 44(e) of
the Trademark Act, based upon Mexican Registration No. 587847.
3 Application Serial No. 77010763, filed under Section 44 (e) of
the Trademark Act, based upon Mexican Registration No. 583608.
4 Registration No. 1633872 issued on February 5, 1991. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Second
renewal.
Opposition Nos. 91186906 and 91190824
3
strong; that applicant’s marks and opposer’s previously used
and registered marks are highly similar; that applicant’s
services and opposer’s goods are closely related; and that,
as a result, confusion, mistake and deception are likely
among consumers as to the source thereof under Trademark Act
Section 2(d); and that opposer will be damaged thereby.5
Applicant’s answers consist of a general denial of the
allegations in the notice of opposition.6
Evidentiary Matters
Applicant objects to evidence introduced by opposer in
its Notice of Reliance Nos. 5, 6, 9, 10, 12, 14 and 15,
primarily on the ground of relevance. We note, however,
that none of the evidence sought to be excluded is outcome
determinative. Given this fact, coupled with the number of
objections, we see no compelling reason to discuss the
objections in a detailed fashion. Suffice it to say, we
have considered all of the testimony and exhibits submitted
by the parties. In doing so, we have kept in mind the

5 In its brief, opposer also raises a cursory argument that
applicant lacks a bona fide intent to use its applied-for marks
in commerce. Applicant, in its brief, makes an equally cursory
response thereto. However, such issue was not pleaded. Further,
we find that the parties’ treatment thereof does not give rise to
a finding that it was tried by their express or implied consent.
See Fed. R. Civ. P. 15(a) and (b). As a result, the parties’
arguments in this regard have been given no consideration, except
to the extent that they may relate to the pleaded ground of
priority and likelihood of confusion.
6 Applicant also asserted certain affirmative defenses but did
not pursue them by motion or at trial. Accordingly, they are
deemed waived, except to the extent that they may be construed as
Opposition Nos. 91186906 and 91190824
4
various objections raised by the parties, and we have
accorded whatever probative value the subject testimony and
exhibits merit.
The Record
The record consists of the pleadings, and the files of
the involved applications. In addition, opposer took the
depositions, with accompanying exhibits, of Jac Holzman,
founder of Elektra Records and currently senior advisor to
the chairman of Warner Music Group; and Ariel Taitz, senior
vice president of business affairs and development for
Warner Elektra Atlantic Corp. Opposer also filed notices of
reliance.
Applicant took the testimony deposition, with exhibits,
of Enrique Rodrigues Macias, its chief of business.
Applicant also filed notices of reliance.7
Opposer and applicant filed main briefs on the case,
and opposer filed a reply brief.
Opposer’s Standing
Opposer has properly made of record copies of its
pleaded registrations.8 Opposer further has shown, by its

amplifications of its denial of the allegations in the notices of
opposition.
7 Both parties have designated portions of their testimony
depositions and evidence as “confidential.” In this decision, we
will endeavor to discuss those portions of the parties’ testimony
and evidence that contain confidential information only in
general terms.
8 Opposer’s Second Notice of Reliance.

Opposition Nos. 91186906 and 91190824
5
use and registration of marks that are at least arguably
similar to applicant’s marks, that it has a legitimate
commercial interest in this matter and a reasonable belief
in damage. Accordingly, we find that opposer has
established its standing to oppose registration of
applicant’s marks. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Priority of Use
Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case as to the
marks therein and goods identified thereby. See King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974).
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
Opposition Nos. 91186906 and 91190824
6
1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
For purposes of the du Pont factors that are relevant
to this case we will consider applicant’s involved marks and
opposer’s ELEKTRA mark in typed or standard characters that
is the subject of its Registration No. 1633872. Opposer’s
other pleaded registrations feature the term ELEKTRA along
with designs and/or additional wording. If likelihood of
confusion is found as to the mark and goods in this
registration, it is unnecessary to consider opposer’s other
pleaded registrations for marks which are less similar to
applicant’s involved marks than opposer’s ELEKTRA mark.
Conversely, if likelihood of confusion is not found as to
the mark and goods in this registration, we would not find
likelihood of confusion as to the marks and goods in
opposer’s other pleaded registrations.
Strength of Opposer’s ELEKTRA Mark
While opposer does not argue that its ELEKTRA mark is
famous as contemplated by the fifth du Pont factor, it
nonetheless has presented the following arguments and
evidence that its mark is distinctive and strong.9 The
ELEKTRA mark has been in continuous use since 1951 in
connection with musical sound recordings. Opposer’s
products under the ELEKTRA mark are distributed throughout

9 Holzman testimony and Taitz testimony, and exhibits thereto.
Opposition Nos. 91186906 and 91190824
7
the United States by such companies as Apple iTunes, Amazon,
AT&T, Verizon, Wal-Mart, Best Buy and Target. Opposer and
its retailers advertise opposer’s goods under the ELEKTRA
mark through billboards, general interest publications such
as The New Yorker, music magazines and music trade
publications, catalogs and the internet. Opposer has
released recordings for well-known and popular artists such
as The Doors, Queen, Eagles, The Cars, AC/DC, The Beach Boys
and Bruno Mars. Opposer has sold hundreds of millions of
copies of musical recordings under its ELEKTRA mark,
including 75 million copies of musical recordings by the
band The Doors. Opposer has received extensive, unsolicited
media attention for its artists and goods under the ELEKTRA
mark, including articles in The Wall Street Journal, Los
Angeles Times, Daily Variety, The New York Times, USA Today,
and Reuters News. The founder of Elektra Records, Jac
Holzman, was inducted into the Rock and Roll Hall of Fame in
2011 in recognition of his and Elektra’s influence and
contribution to the music industry. Sales of opposer’s
goods under the ELEKTRA mark are quite substantial.
Applicant, for its part, argues and introduces evidence
that opposer’s ELEKTRA mark is weak in light of third-party
registrations for various ELEKTRA marks for such goods as
comic books, watches, espresso machines, rechargeable
Opposition Nos. 91186906 and 91190824
8
batteries, boats and snowshoes.10 Certain of these
registrations are cancelled and, contrary to applicant’s
contentions, possess no probative value. See Action
Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563,
10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] cancelled
registration does not provide constructive notice of
anything”). We further note that these third-party
registrations recite goods that are dissimilar from those
identified in opposer’s pleaded registrations,
notwithstanding applicant’s contention that they include
“electronic-related goods.” In any event, while third-party
use of the same or similar mark is a relevant consideration,
third-party registrations are not evidence of the use of
such marks, or that consumers are familiar with them. AMF
Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ
268, 269-70 (CCPA 1973); and Smith Bros. Mfg. Co. v. Stone
Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 462-63 (CCPA 1973)
(the purchasing public is not aware of registrations
reposing in the USPTO). Such registrations are therefore of
little or no relevance in determining the strength of a
registration. Olde Tyme Foods Inc. v. Roundy's Inc., 961
F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992). As a
result, we cannot say that these registrations demonstrate

10 Applicant’s First Notice of Reliance.
Opposition Nos. 91186906 and 91190824
9
that ELEKTRA is a weak mark that is entitled to a limited
scope of protection.
Based upon the evidence of record, we find that
opposer’s ELEKTRA mark has achieved significant recognition
and strength in the musical recording market and that the
mark therefore is entitled to a broader scope of protection
than might be accorded a less distinctive mark.
The Marks
We now turn our attention to a comparison of the marks.
In determining the similarity or dissimilarity of the marks,
we must compare the marks in their entireties as to
appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005). 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
their entireties that confusion as to the source of the
goods and services offered under the respective marks is
likely to result.
In comparing opposer’s ELEKTRA mark with applicant’s
marks,

Opposition Nos. 91186906 and 91190824
10
we note that applicant’s marks incorporate the entirety of
opposer’s mark. Likelihood of confusion is often found
where the entirety of one mark is incorporated within
another. In re Denisi, 225 USPQ 624, 626 (TTAB 1985)
(PERRY’S PIZZA for restaurant services specializing in pizza
and PERRY’S for restaurant and bar services); Johnson
Publishing Co. v. International Development Ltd., 221 USPQ
155, 156 (TTAB 1982) (EBONY for cosmetics and EBONY DRUM for
hairdressing and conditioner); and In re South Bend Toy
Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB 1983)
(LIL’ LADY BUGGY for toy doll carriages and LITTLE LADY for
doll clothing). Thus, the word portion of applicant’s marks
is identical to opposer’s mark in sound and connotation and
nearly identical in appearance.
We further find that ELEKTRA is the dominant element of
applicant’s marks – and the only element in opposer’s ‘872
Registration - and accordingly it is entitled to the
greatest weight in our analysis. It is a well-established
principle that, in articulating reasons for reaching a
conclusion on the issue of likelihood 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 a
consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Opposition Nos. 91186906 and 91190824
11
Cir. 1985). Applicant’s marks comprise both a word and a
design. In such a case, the word portion of the marks is
normally accorded greater weight because it would be used by
purchasers to request the services identified thereby. In
re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). For
these reasons, we consider ELEKTRA to be the dominant
feature of applicant’s marks.
As discussed above, the term ELEKTRA as it appears in
applicant’s marks is nearly identical to opposer’s mark.
Applicant’s mere addition of a design to a term that
comprises the totality of opposer’s mark is insufficient to
create a commercial impression that is distinct therefrom.
We thus find the marks are highly similar in appearance,
sound and connotation and that, when viewed in their
entireties, they convey highly similar commercial
impressions. As a result, this du Pont factor favors a
finding of likelihood of confusion.
The Goods and Services
Turning to our consideration of the recited goods and
services, we must determine whether consumers are likely to
mistakenly believe that they emanate from a common source.
It is not necessary that the goods and services at issue be
identical or competitive, or even that they move in the same
channels of trade, to support a holding of likelihood of
confusion. It is sufficient instead that the respective
Opposition Nos. 91186906 and 91190824
12
goods and services are related in some manner, and/or that
the conditions and activities surrounding the marketing
thereof are such that they would or could be encountered by
the same persons under circumstances that could give rise to
the mistaken belief that they originate from the same
producer. See In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, opposer’s goods are
prerecorded phonograph records, audio and video
tapes, cassettes, and compact disks featuring
entertainment.

Applicant’s services in its application Serial No. 77010715
are
Retail stores featuring general consumer goods
such as home appliances, electronics, electric
appliances, furniture and household goods; and
advertising, namely, the commercialization of
goods such as home appliances, electronics,
electric appliances, furniture and household
goods;

and the services in its application Serial No. 77010763 are
publicity, commercial business management,
commercial business administration, office work.

Applicant has testified and submitted evidence demonstrating
that its retail stores are similar to a Wal-Mart or Best Buy
directed toward a Hispanic market featuring, inter alia,
several major brands of consumer electronic goods, including
MP3 players, full-size and compact stereos that play radio,
Opposition Nos. 91186906 and 91190824
13
CDs and MP3s, and accessories therefor.11 Presently,
applicant does not appear to sell electronic goods that are
themselves branded with its applied-for mark; however,
applicant’s retail stores, which along with its internet
website are identified by the applied-for mark, provide
electronic goods manufactured by such third parties as Sony,
Panasonic, LG, Samsung, Motorola, HP and Daewoo.12 Opposer
has submitted evidence corroborating this.13 In addition,
applicant acknowledges that “some of Opposer’s goods may be
compatible with some of the goods sold in Applicant’s retail
stores or through its catalogs”14 while arguing nonetheless
that “they are not competitive or intrinsically related.”15
Opposer further made of record 46 third-party
registrations reciting both opposer’s goods and applicant’s
services. Third-party registrations which individually
cover a number of different items and which are based on use
in commerce may serve to suggest that the listed goods are
of a type that may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1469 (TTAB 1988),
aff'd (unpublished) No. 88-1444 (Fed. Cir. Nov. 14, 1988).
We find that most of these registrations are not probative

11 Macias Testimony and exhibits thereto.
12 Id.
13 Opposer’s Ninth Notice of Reliance.
14 Applicant’s brief, p. 22.
15 Id.
Opposition Nos. 91186906 and 91190824
14
because they are not based upon use in commerce. See Albert
Trostel, 29 USPQ2d at 1785-86. We nonetheless find the
following 8, use-based registrations to be probative on the
issue of the relatedness of the parties’ goods and services:
Registration No. 3339943 reciting, inter alia,
audio recordings featuring music, prerecorded
video cassettes featuring musical artists,
prerecorded video tapes featuring musical artists,
video discs featuring musical artists;
video stores;
advertising and publicity services … ;

Registration No. 3386278 reciting, inter alia,
compact discs featuring music;
online retail store services featuring music
related items;

Registration No. 3949140 reciting, inter alia,
pre-recorded CD-ROMs, DVDs, compact discs, and
video discs, featuring entertainment related to
films, games and music;
retail store and computerized on-line retailing
and ordering services featuring books and strategy
guides, apparel, toys, collectibles, gadgets,
posters and art, interactive software, computer
game software, interactive video games and
interactive computer games;

Registration No. 3587093 reciting, inter alia,
audio recordings, prerecorded CDs, video tapes
and DVDs featuring music, musical sound
recordings, musical video recordings;
on-line retail store services featuring a wide
variety of consumer goods, namely, … audio
recordings, prerecorded CDs and DVDs featuring
music;

Registration No. 3805259 reciting, inter alia,
prerecorded music and videos on CD, DVD and
other prerecorded media …,
advertising and information distribution
services …, online retail store services reaturing
digitized products including … sound recordings,
videos, media players, protable media players,
video equipment and audio equipment …;

Opposition Nos. 91186906 and 91190824
15
Registration No. 3555356 reciting, inter alia,
audio digital tapes featuring music, film,
television, audio discs featuring music, film,
television, audio recordings featuring music,
film, television, audio tapes featuring music,
film, television;
advertising and marketing, business management
consultation with relation to strategy, marketing,
production, personnel and retail sale matters;

Registration No. 3227562 reciting, inter alia,
Compact discs, DVDs, vinyl phonograph records
featuring music, prerecorded video discs featuring
music;
Online retail store services featuring music-
related consumer products; and

Registration No. 3292474 reciting, inter alia,
audio and video discs featuring music, music
videos and movies;
retail store services featuring pre-recorded
audio-video products, namely, audio and video
tapes, discs, compact discs and video discs … .

Based upon the testimony and evidence of record, we
find that opposer has established that its various audio and
video phonographs, tapes, cassettes and discs featuring
entertainment are related to applicant’s retail store
services featuring, inter alia, electronic goods that may be
used to play opposer’s goods. Indeed, applicant’s own
testimony and evidence supports such a finding, and the
eight registrations noted above further suggest that such
goods and services are related in that they are of a type
which may emanate from a single source. As a result, we
find that opposer’s goods and applicant’s services in its
Opposition Nos. 91186906 and 91190824
16
application Serial No. 77010763 are related for purposes of
our likelihood of confusion determination.16
However, we find that opposer has failed to establish
that its goods are related to applicant’s services recited
in application Serial No. 77010763. Opposer has made of
record two use-based, third-party registrations reciting
goods and services similar to those in its pleaded
registration and applicant’s involved application Serial No.
77010763. There is little, if any, additional testimony or
evidence of record to support a finding that the goods and
services are related in such a way that consumers
encountering them under the marks at issue here would likely
be confused. We find this evidence to be insufficient to
support opposer’s contention that the goods and services are
related.
In its brief, opposer argues it has used “the ELEKTRA
Marks for decades to publicize and promote its goods and

16 Because we find that applicant’s “Retail stores featuring
general consumer goods such as home appliances, electronics,
electric appliances, furniture and household goods” are related
to the goods in opposer’s pleaded registration, we need not also
determine the similarity or dissimilarity of opposer’s goods to
the other services identified in applicant’s application Serial
No. 77010715, i.e., “advertising, namely, the commercialization
of goods such as home appliances, electronics, electric
appliances, furniture and household goods.” Similarity as to any
of the goods or services identified in the application and
pleaded registration will suffice as a basis for finding the
respective goods and services to be similar for purposes of the
second du Pont factor. See, for example, Tuxedo Monopoly, Inc.
v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981).
Opposition Nos. 91186906 and 91190824
17
services”17 and that, because application Serial No.
77010763 contains no limitations on the type of publicity or
business management provided, “it must be presumed that
[applicant’s] services would be in connection with
Applicant’s claimed retail stores which seek to sell
electronics and other goods.”18 However, a service is an
activity performed for the benefit of others, e.g., In re
Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970) (“It
is well settled that promoting the sale and use of one’s
goods is not, per se, a service within the meaning of the
statute”), and opposer neither explains how publicizing and
promoting its own goods is a service nor provides any
evidence to support its presumption that applicant intends
to simply publicize and provide business management for its
own retail stores. Simply put, opposer’s arguments are
based more upon speculation than evidence, and fail to
support a finding that its goods are related to the services
in application Serial No. 77010763.
We find, as a result, that the du Pont factor of
relatedness of the goods and services favors a finding of
likelihood of confusion as to application Serial No.
77010715 but favors a finding of no likelihood of confusion
as to application Serial No. 77010763.

17 Opposer’s brief, p. 28.
18 Id.

Opposition Nos. 91186906 and 91190824
18
Channels of Trade
Because there are no recited restrictions as to the
channels of trade or classes of purchasers of the services
identified in application Serial No. 77010715 or the goods
identified in opposer’s registration, we must assume that
the goods and services are available in all the normal
channels of trade to all the usual purchasers for such goods
and services. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that 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 regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed.”). See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”). As such,
the parties’ goods and services are presumed to be marketed
to the general public through all normal trade channels
therefor. Furthermore, the goods and services of both
parties, as identified, are the type of goods and services
Opposition Nos. 91186906 and 91190824
19
that are offered to the general public and, therefore, the
classes of consumers are the same.
In addition, the evidence of record discussed above
demonstrates that applicant’s retail stores carry products
such as cassette and compact disc players that allow users
to play opposer’s goods. Thus, there is at least some
overlap in the purchasers of the parties’ goods and
services. Thus, we are not persuaded by applicant’s
arguments that its services are directed solely “towards
Hispanic consumers in the U.S. and other consumers
previously familiar with its business and goodwill in
Mexico… .”19 Simply put, we will not impose trade channel
limitations not present in applicant’s recitation of
services.
However, as discussed above we have found insufficient
evidence that opposer’s goods are related to applicant’s
services in its application Serial No. 77010763. Similarly,
we have insufficient evidence that the goods and services
would be marketed in the same channels of trade to the same
classes of purchasers.
As a result of the foregoing, we find that this du Pont
factor also favors a finding of likelihood of confusion as
to application Serial No. 77010715, but not application
Serial No. 77010763.

19 Applicant’s brief, p. 25.
Opposition Nos. 91186906 and 91190824
20
Actual Confusion
Another du Pont factor discussed by the parties is the
lack of instances of actual confusion. Applicant asserts
that the absence of evidence of actual confusion between the
marks despite co-existence “since at least 1986 in the
Mexican market”20 suggests no likelihood of confusion.
Nonetheless, trademarks are territorial in nature, and
applicant seeks registration of its mark in the United
States. Our determination of registrability must thus be
based on whether relevant consumers in the U.S. market are
likely to be confused, not whether consumers in the Mexican
market are likely to experience such confusion. But even to
the extent this argument is relevant, applicant fails to
provide any evidence of lack of confusion among “the
countless Mexican citizens who have immigrated in the U.S.
over the last 25 years who are undoubtedly familiar with
Applicant’s retail store.”21 Nor is there any evidence in
the record reflecting the extent and nature of opposer’s
business in the Mexican market. Cunningham, 55 USPQ2d at
1847 (absence of actual confusion not significant unless
accompanied by evidence demonstrating that in light of the
parties’ actual business activities, confusion, if likely,
would have occurred). Applicant’s mere assertions regarding

20 Id. at 31.

21 Id.
Opposition Nos. 91186906 and 91190824
21
the familiarity with its mark among Mexican citizens living
in the United States and the absence of confusion with
opposer’s mark by such individuals provide no evidence upon
which we may base such a finding.
Furthermore, it is not necessary to show actual
confusion in order to establish likelihood of confusion.
See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d
1546, 223 USPQ 1025 (Fed. Cir. 1990). See also Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001 (Fed. Cir. 2002). Evidence of actual confusion often
is very difficult to obtain, and while such evidence may
support a finding of likelihood of confusion, the absence
thereof does not necessarily suggest that confusion is
unlikely.
Accordingly, this du Pont factor must be considered to
be neutral.
Conclusion
We have carefully considered all of the evidence
pertaining to the relevant du Pont factors, as well as all
of the parties’ arguments with respect thereto, including
any evidence and arguments not specifically discussed in
this opinion. We conclude, in view thereof, that opposer
has proven its standing and priority of use.
We also find that opposer has proven that a likelihood
of confusion exists between its mark and goods and the mark
Opposition Nos. 91186906 and 91190824
22
and services in application Serial No. 77010715. We make
this finding based primarily on the similarities between the
parties’ marks, the goods and services identified thereby,
and the presumption that such goods and services move in the
same channels of trade and are marketed toward the same
classes of purchases.
However, we find that opposer has failed to prove that
a likelihood of confusion exists between its mark and goods
and the mark and services in application Serial No.
77010763. We make this finding primarily on the basis of
the lack of evidence of a similarity between the parties’
goods and services or their channels of trade.
Decision: The oppositions are sustained as to
application Serial No. 77010715 and dismissed as to
application Serial No. 77010763.