Fabrica de Jabon La Corona, S.A. de C.V.

Trademark Trial and Appeal Board

Sep 14, 2006

No. 76330764 (T.T.A.B. Sep. 14, 2006)

Mailed: September 14, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Fabrica de Jabon La Corona, S.A. de C.V.
___________

Serial No. 76330764
___________

Edwin H. Keusey of Keusey, Tutunjian & Bitetto for Fabrica
de Jabon La Corona, S.A. de C.V.

Zhaleh Delaney, Trademark Examining Attorney, Law Office 116
(M.L. Hershkowitz, Managing Attorney).
____________

Before Seeherman, Walters and Drost, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Fabrica de Jabon La Corona, S.A. de C.V. has filed an
application to register the mark shown below on the
Principal Register for “vegetable oils, namely corn oil.”1
The application includes a disclaimer of PURE CORN OIL and a
statement that the stippling shown in the drawing on the
ears of corn is for shading purposes only

1 Serial No. 76330763, filed October 29, 2001, based on use of the mark
in commerce, alleging first use and use in commerce as of June 11, 2001.

THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76330764

2

The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the standard character mark MONARCH and the design mark
MONARCH, as shown below, both previously registered by the
same entity for butter,2 that, when used on or in connection
with applicant’s goods, it is likely to cause confusion or
mistake or to deceive.

Applicant has appealed. Both applicant and the
examining attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The examining attorney contends that confusion is
likely because MONARCA is the Spanish word for “monarch,”

2 Registration Nos. 0652490 and 0652493, respectively, both issued
October 1, 1957, to Saramar Corporation, in International Class 29.
“Ice cream” has been deleted from the identifications of goods in both
registrations. [Both registrations have been renewed; Section 15
affidavits for both registrations have been acknowledged.]

Serial No. 76330764

3
making the marks identical in meaning, as well as being
quite similar in sound and appearance. She asserts that the
CORN OIL portion of applicant’s mark is generic and the word
PURE and the corn design portion of the mark are highly
descriptive; that the rectangular design in applicant’s mark
is merely a border and of little consequence in the mark;
and, thus, that MONARCA is the dominant portion of
applicant’s mark; that the design portion of the mark in the
stylized cited registration is small and below the wording
and, thus, MONARCH is the dominant portion of that mark; and
that there is no indication in the record that MONARCH is a
weak term in connection with the identified goods.
Regarding the respective goods, the examining attorney
contends that corn oil and butter “are very closely related
‘edible fats’ that are used for the same overall purpose in
cooking and baking, and are essentially substitutes for each
other in this context.” (Brief, unnumbered p. 9.) In
support of her position, the examining attorney submitted
excerpts from numerous websites with recipes wherein the
list of ingredients specifies “butter or vegetable oil”;
copies of three registrations also owned by the cited
registrant for a wide variety of food items, including both
“butter” and “edible oils”; three third-party registrations
for a wide variety of food items, including both “butter”
and “edible oils”; nine third-party registrations for a more
Serial No. 76330764

4
limited list of food items including both “butter” and
“edible oils”3; and excerpted articles from various websites
about butter and light butter and comparing butter and
margarine.
Applicant “acknowledges that MONARCA is translated from
Spanish [as] MONARCH” but contends that “while the names
MONARCH and PURE MONARCA CORN OIL may bear a passing
resemblance, the commercial impressions generated by MONARCH
and PURE MONARCA CORN OIL differ greatly” (brief, p. 4).
Applicant contends the respective goods are different, which
should prevent confusion among relevant consumers, asserting
that they are found in different areas within a supermarket,
butter being found in the refrigerated section, and corn oil
being found in the baking dry goods aisle; that the products
are physically different, noting that butter is a solid made
from milk fats whereas corn oil is a liquid made from corn;
that butter is the preferred edible fat and substituting
corn oil for butter in baking results in “undesirable taste
and texture” (brief, p. 6). In support of its position,
applicant submitted excerpts from several websites about
butter, from other websites about cooking oils, and one

3 The examining attorney also submitted evidence of third-party
registrations including butter and other solid edible fats in the list
of goods. We do not consider these registrations to be relevant to this
case involving corn oil and have not considered them in reaching our
decision.

Serial No. 76330764

5
website excerpt about new formulations for replacing butter
and saturated oils with unsaturated oils.
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 likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
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 Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 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, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
We turn, first, to a determination of whether
applicant’s mark and the registered marks, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression.
Serial No. 76330764

6
Applicant’s mark consists in part of the word
“monarca,” which both applicant and the examining attorney
agree translates from Spanish to English as “monarch.” This
Spanish meaning of the word is reinforced by the crown
design appearing above the “O” in “MONARCA.” Thus, we find
this an appropriate situation for applying the doctrine of
foreign equivalents and concluding that the MONARCA portion
of applicant’s mark is identical to registrant’s word mark
and to the MONARCH portion of registrant’s design mark. The
Federal Circuit recently stated that "[u]nder the doctrine
of foreign equivalents, foreign words from common languages
are translated into English to determine ... similarity of
connotation in order to ascertain confusing similarity with
English word marks." Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d supra at
1377, 73 USPQ2d supra at 1696 (2005). The doctrine is
applied when it is likely that "the ordinary American
purchaser would 'stop and translate [the term] into its
English equivalent.'” Palm Bay, 396 F.3d supra at 1377, 73
USPQ2d supra at 1696, quoting In re Pan Tex Hotel Corp., 190
USPQ 109, 110 (TTAB 1976). The “ordinary American
purchaser" in this context refers to the ordinary American
purchaser who is knowledgeable in the foreign language. See
Trademarks and Unfair Competition, at 23:26 (McCarthy, 4th
ed.) ("The test is whether, to those American buyers
Serial No. 76330764

7
familiar with the foreign language, the word would denote
its English equivalent."). There is no question that
Spanish is a common foreign language spoken by an
appreciable segment of the population.
When we evaluate the similarities between an English
word mark and a mark containing a foreign word, we must, as
in the comparison of two marks containing all English words,
consider the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. 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 their overall commercial
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Serial No. 76330764

8
We agree with the examining attorney that MONARCA is
the dominant portion of applicant’s mark. Of the literal
portion of the mark, it appears in the largest letters and,
in relation to corn oil, it is arbitrary, whereas the phrase
PURE CORN OIL in the mark is highly descriptive, if not
generic in its entirety. Similarly, the cornhusk design is
merely descriptive of the type of oil. A “‘descriptive
component of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion.’” Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed.
Cir. 2000), quoting, In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 752 (Fed. Cir. 1985). The design
elements, i.e., the font, the corn husk design and the
border, have less significance in the overall commercial
impression of applicant’s mark than the word portions of the
mark, particularly when the mark is spoken. CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)
“([M]inor design features do not necessarily obviate
likelihood of confusion arising from consideration of the
marks in their entireties. Moreover, in a composite mark
comprising a design and words, the verbal position of the
mark is the one most likely to indicate the origin of the
goods to which it is affixed”).
Therefore, we find that applicant’s mark is
substantially similar to the word mark MONARCH in cited
Serial No. 76330764

9
registration no. 0652490. With respect to the design mark
in cited registration no. 0652493, there is no question in
our minds that the word MONARCH is the dominant portion of
that mark. The font used is common and unlikely to stand
out on its own and the circle design is much smaller than
and below the wording, and the actual design within the
circle is impossible to discern. We find that applicant’s
mark is also sufficiently similar to registrant’s design
mark that, if used in connection with similar or related
goods, confusion as to source is likely.
We note that, for the first time in its brief,
applicant argues that the term MONARCH in the registered
marks is likely to connote, in connection with butter, a
monarch butterfly rather than a ruler. Applicant has
provided no evidence or justification for this argument and
we find it unpersuasive.
Turning to consider the goods involved in this case, we
note that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
Serial No. 76330764

10
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein.
In the case before us, applicant and the examining
attorney spend a great deal of their time and evidence
distinguishing butter from vegetable oil, which includes
corn oil; distinguishing both products from margarine; and
discussing the relative merits of each for health, cooking
and baking. However, this is relevant only to the extent
that discussions of the relative merits of butter versus
vegetable oil would appear to indicate that they are
generally accepted as interchangeable ingredients. We note,
particularly, applicant’s contention that purchasers will
not confuse the respective products and remind applicant
Serial No. 76330764

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that the issue is not whether purchasers will confuse the
goods themselves, but rather whether purchasers are likely
to be confused as to the source of the goods. The facts
before us establish that both butter and corn oil are edible
fats; that corn oil is a vegetable oil; that both butter and
vegetable oil are used in cooking and baking; and that, in
the vast majority of the many recipes submitted by the
examining attorney, butter and vegetable oil are
interchangeable. The manner in which the two products are
stored is not significant; and, although they may be found
in different areas within a store, both are likely to be
found in the same stores and sold to the same consumers,
often for the same, related or complementary end use.
The examining attorney also submitted a significant
number of third-party registrations, all based on use in
commerce, that include both butter and vegetable or corn oil
among the goods listed. Although third-party registrations
which cover a number of differing goods and/or services, and
which are based on use in commerce, are not evidence that
the marks shown therein are in use on a commercial scale or
that the public is familiar with them, such registrations
nevertheless have some probative value to the extent that
they may serve to suggest that such goods or services are of
a type which may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and
Serial No. 76330764

12
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB
1988). While the few registrations that cover a wide range
of food products are not probative, there were a significant
number of registrations that had limited lists of goods,
with butter and vegetable oil listed with mostly dairy
products in these registrations. We also note the
registrations owned by the registrant, not cited by the
examining attorney but of record, that include among the
listed goods both butter and vegetable oil. Therefore,
viewing the evidence together, we find strong support for
finding butter and corn oil to be closely related products.
With regard to applicant’s assertion that it is aware
of no instances of actual confusion occurring as a result of
the contemporaneous use of the marks of applicant and
registrant, we note that, while a factor to be considered,
the absence or presence of actual confusion is of little
probative value where we have little evidence pertaining to
the nature and extent of the use by applicant and
registrant. Moreover, the test under Section 2(d) is not
actual confusion but likelihood of confusion. See, In re
Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984); and In re
General Motors Corp., 23 USPQ2d 1465 (TTAB 1992).
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, and registrant’s two marks, their contemporaneous use
Serial No. 76330764

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on the closely related goods involved in this case is likely
to cause confusion as to the source or sponsorship of such
goods.
Decision: The refusal under Section 2(d) of the Act is
affirmed.