Fernandes Distillers International Ltd.v.Tequilas Rancho Viejo SA de CV

Trademark Trial and Appeal Board

Dec 10, 2012

No. 92049848 (T.T.A.B. Dec. 10, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
December 10, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Fernandes Distillers International Ltd.
v.
Tequilas Rancho Viejo SA de CV
_____

Cancellation No. 92049848
_____

Janet F. Satterthwaite of Venable LLP for Fernandes Distillers International Ltd.

Albert S. Penilla of Martine Penilla & Gencarella, LLP for Tequilas Rancho Viejo
SA de CV.
_____

Before Wellington, Ritchie, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:

Fernandes Distillers International Ltd. has petitioned to cancel Registration
No. 3257244 on the Supplemental Register, owned by respondent Tequila Rancho
Viejo SA de CV. The registration is for LOS FERNANDEZ in standard characters
for “alcoholic beverages, namely tequila” in International Class 33.
As grounds for cancellation, petitioner alleges priority of use and likelihood of
confusion under Trademark Act Section 2(d), 15 U.S.C. § 2(d), with its mark
Cancellation No. 92049848

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FERNANDES, previously used and registered for “distilled alcoholic beverages;
namely, rum” in International Class 33.
Respondent denied the salient allegations in the petition and asserted several
affirmative defenses. Petitioner filed a motion for summary judgment, which was
denied. At trial, only petitioner submitted evidence and filed a brief.
Record
The evidence of record automatically includes the pleadings and the file of
the subject registration. Petitioner submitted transcripts of the testimony
depositions of Alexander Thomas, then senior manager of export for Angostura
Limited AG, petitioner’s parent company, and Sarah C. Hendon, a paralegal with
Venable LLP, the law firm representing petitioner. Petitioner also filed eight
notices of reliance on the following materials:
• A printout from the TESS database of petitioner’s pleaded Registration
No. 1686639, registered on the Principal Register on May 12, 1992
based on acquired distinctiveness under Trademark Act Section 2(f);
• Petitioner’s First Set of Interrogatories to Registrant and Registrant’s
Responses;
• Documents relating to Opposition No. 91185993 and Cancellation
No. 92018678, both brought by the petitioner in this case against third
parties;
• Printouts of pages from petitioner’s website relating to its products
associated with the FERNANDES mark;
• Printouts of pages from the website of a restaurant named Eva’s
Caribbean Kitchen;
• Printouts of pages from the website of distributor Southern Wine &
Spirits;
• A copy of the Board opinion in Varela Hermanos, S.A. v. EGD Business
Solutions, Inc., Opposition No. 91152633 (Sept. 6, 2006)
(nonprecedential); and
• Printouts from the online blog Alcademics.com.
Cancellation No. 92049848

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Respondent, on the other hand, did not submit any evidence during its
assigned trial period; nor did it file a trial brief.1 However, we are cognizant that
the burden rests with the petitioner to establish that there is a likelihood of
confusion by a preponderance of the evidence.
Standing
Petitioner submitted a TESS printout of its Registration No. 1686639 for the
mark FERNANDES. Petitioner has shown that it is the owner of its pleaded
registration and that the registration is valid and subsisting. Because petitioner’s
registration is of record, petitioner has established its standing. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
Priority
Because petitioner’s pleaded registration is of record, uncontested and on the
Principal Register, in contrast to respondent’s Supplemental Register registration,
priority is not an issue.2 King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974); J. C. Hall Co. v. Hallmark Cards, Inc., 340
F.2d 960, 144 USPQ 435, 437 (CCPA 1965). Nonetheless, petitioner has established
priority through deposition testimony that it has used the mark in the United
States in association with rum continuously since the 1940s. Deposition transcript

1 Respondent’s affirmative defenses are thus waived. Moreover, we have not considered at
final hearing evidence submitted by the parties only in connection with the motion for
summary judgment. See Land O’ Lakes Inc. v. Hugunin, 88 USPQ2d 1957, 1960 n.7 (TTAB
2008); University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1469 n.4 (TTAB 2008).
2 A registration on the Supplemental Register is not entitled to any statutory presumptions
under Section 7(b) of the Trademark Act and is incompetent as evidence of use. See
Trademark Act Section 26; In re Federated Dep’t Stores Inc., 3 USPQ2d 1541, 1543 (TTAB
1987). It also is not entitled to a constructive use date as of the filing date. Trademark Act
Section 7.
Cancellation No. 92049848

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of Alex Thomas (“Thomas Tr.”) at 9:15-18. There is no evidence of record showing
use in commerce for respondent’s mark before this date.
Likelihood of Confusion
A registration on the Supplemental Register may be canceled at any time if
the registrant is found to be not entitled to registration. Trademark Act Section 24;
see also Blanchard Importing & Distrib. Co. v. Societe E. Blanchard et fils, 402 F.2d
797, 159 USPQ 520, 523 (CCPA 1968); Bruce Foods Corp. v. B.F. Trappey’s Sons,
Inc., 192 USPQ 725, 727 (TTAB 1976). As in all claims under Section 2(d) of the
Trademark Act, likelihood of confusion is determined by focusing on whether the
purchasing public would mistakenly assume that the respondent’s goods originate
from the same source as, or are associated with, petitioner’s goods. In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
Our determination under Section 2(d) is based on an analysis of all 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 USPQ 563, 567
(CCPA 1973).
In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976). We have considered each of the du Pont factors as to which the
parties submitted argument or evidence. To the extent that any other du Pont
factors for which no evidence or argument was presented may nonetheless be
applicable, we treat them as neutral.
Cancellation No. 92049848

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A. Similarity of the Marks
We turn first 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 USPQ at 567. In comparing
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 their overall commercial impression so
that confusion as to the source of the goods offered under the respective marks is
likely to result. San Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff’d, No. 92-1086 (Fed. Cir. June 5, 1992).
Slight differences in marks do not normally create dissimilar marks. See In re
Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985); U.S. Mineral Prods.
Co. v. GAF Corp., 197 USPQ 301, 306 (TTAB 1977); In re Bear Brand Hosiery Co.,
194 USPQ 444, 445 (TTAB 1977).
Here, petitioner’s pleaded mark is FERNANDES, and registrant’s mark is
LOS FERNANDEZ. Aside from the definite article “LOS,” translated as “THE,” the
parties’ respective marks consist of the surnames FERNANDES and FERNANDEZ,
which obviously differ only in the final consonants “S” and “Z.”
Although LOS is the first term in registrant’s mark, its meaning is the
Spanish-language equivalent of the definite article THE and would be recognized as
such by a significant portion of ordinary consumers, even those without special
knowledge of the Spanish language. This renders the term relatively insignificant.
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See In re Narwood Prods., Inc., 223 USPQ 1034, 1034 (TTAB 1984) (noting the
insignificance of the word “the” in comparison of THE MUSIC MAKERS and
MUSICMAKERS); accord Jay-Zee, Inc. v. Hartfield-Zodys, Inc., 207 USPQ 269, 271-
72 (TTAB 1980); U.S. Nat’l Bank of Oregon v. Midwest Savs. & Loan Ass’n, 194
USPQ 232, 236 (TTAB 1977). The parties disputed the pronunciation of
“Fernandez” and “Fernandes” at the summary judgment stage, but submitted no
evidence at trial as to the pronunciation of either term by U.S. consumers.3 In the
absence of evidence to the contrary, we assume that these two terms can be
pronounced identically, or nearly so.
We find the marks to be highly similar in sight, sound, connotation, and
commercial impression. Therefore, the first du Pont factor supports a conclusion
that confusion is likely.
B. Similarity of the Goods, Channels of Trade, and Classes of Purchasers
We turn next to the second, third, and fourth du Pont factors, i.e., the
similarities or differences between opposer’s and applicant’s goods, as well as
between trade channels and classes of purchasers of the parties’ goods. It is settled
that in making our determination regarding the relatedness of the parties’ goods,
we must look to the goods as identified in respondent’s registration and petitioner’s
pleaded registration. See Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

3 Petitioner submitted testimony that its target market, Trinidadians, would pronounce
“Fernandes” with a final “Z” sound, but this testimony related to use in Trinidad. Thomas
Tr. at 17:16-22.
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The goods need not be identical or even competitive in order to support a
finding of a likelihood of confusion. Rather, it is enough that the goods 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 of the parties’ goods. In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering Corp. v. Alza Corp., 207
USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201
USPQ 851, 854 (TTAB 1978).
Here, respondent’s goods are tequila and petitioner’s goods are rum.
Petitioner’s export manager testified that both tequila and rum are 40% alcohol,
come in white and gold varieties, and act as mixers in the spirits business. Thomas
Tr. at 18:6-10. Rum and tequila both are usually consumed either as mixers – for
example, with soft drinks or juice – or in cocktails. Id. at 26:11-19. White tequila
and white rum compete in the white spirit segments. Id. at 25:23-25. Petitioner
also submitted via its fifth notice of reliance printouts from the website of a
restaurant in California offering both petitioner’s rums and third-party tequilas.
Based on the evidence of record, we find that the goods are closely related.4

4 Although there is no per se rule that all alcoholic beverages are related, In re White Rock
Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009), the Court of Appeals for the Federal
Circuit and the Board repeatedly have found that different types of alcoholic beverages are
related goods for purposes of a Trademark Act Section 2(d) analysis. See, e.g., In re Chatam
Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1947-48 (Fed. Cir. 2004) (holding JOSE
GASPAR GOLD for tequila likely to be confused with GASPAR’S ALE for beer and ale); In
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With regard to the channels of trade and classes of purchasers, because there
are no limitations to either registration, we must presume that the parties’ goods
travel through all ordinary channels of trade and are offered to all ordinary
purchasers of those goods. See Paula Payne Prods. Co. v. Johnson Publ’g Co., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973). In this regard, petitioner presented
testimony that tequila and rum “go through [the] exact same channels, which are
liquor stores and retail and then in the on premise, bars and restaurants and so on.
So it is more commonplace, is a tequila brand and rum brand in the exact same
location.” Id. at 17:23-18:16.
Respondent’s tequila is distributed by Southern Wine and Spirits, Inc.
Response to Interrogatory No. 2. Petitioner’s rum was distributed by Southern
Wine and Spirits in the 2000s, and that distributor will carry its products again.
Thomas Tr. at 18:22-19:13. Mr. Thomas testified that the same types of consumers
purchase rum and tequila. Id. at 25:18-26:20. Although we base our conclusions on

re Majestic Distilling Co., 65 USPQ2d at 1207 (holding RED BULL for tequila likely to be
confused with RED BULL for malt liquor); In re Salierbrau Franz Sailer, 23 USPQ2d 1719,
1720 (TTAB 1992) (holding CHRISTOPHER COLUMBUS for beer likely to be confused
with CRISTOBAL COLON and design for sweet wine); Somerset Distilling Inc. v. Speymalt
Whisky Distribs. Ltd., 14 USPQ2d 1539, 1542 (TTAB 1989) (holding JAS. GORDON and
design for scotch whiskey likely to be confused with GORDON’S for distilled gin and
vodka); Schieffelin & Co. v. Molson Cos., 9 USPQ2d 2069, 2073 (TTAB 1989) (holding
BRADOR for malt liquor, beer and ale likely to be confused with BRAS D’OR for brandy);
Bureau Nat’l Interprofessionel Du Cognac v. Int’l Better Drinks Corp., 6 USPQ2d 1610, 1617
(TTAB 1988) (holding COLAGNAC for cola liqueur likely to be confused with certification
mark COGNAC for brandy); Rosenblum v. George Willsher & Co., 161 USPQ 492, 492-93
(TTAB 1969) (holding RED BULL for scotch whiskey likely to be confused with TORO
ROJO for rum). The Board and the Federal Circuit Court of Appeals also have repeatedly
found that different types of alcoholic beverages share identical trade channels and classes
of purchasers. See, e.g., In re Chatam Int’l Inc., 71 USPQ2d 1944 at 1948; In re Majestic
Distilling Co., 65 USPQ2d at 1204; Monarch Wine Co. v. Hood River Distillers, Inc., 196
USPQ 855, 857 (TTAB 1977); In re AGE Bodegas Unidas, S.A., 192 USPQ 326, 326 (TTAB
1976).
Cancellation No. 92049848

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the respective identifications of goods and not on the actual use of the parties’
products, this testimony further evidences that the identified goods are of a nature
that consumers would expect to be distributed via the same channels of trade.
We find that the parties’ rum and tequila travel through the same channels
of trade to the same classes of consumers. Petitioner and respondent have used the
same distributor, demonstrating that their channels of trade overlap and that retail
consumers could encounter FERNANDES rum and LOS FERNANDEZ tequila in
close proximity to each other.
Based on the record evidence, du Pont factors two, three, and four weigh in
favor of a likelihood of confusion.
Conclusion
In summary, we have carefully considered the evidence and arguments of
record relevant to the du Pont likelihood of confusion factors, including other
evidence and arguments not discussed herein. We find that petitioner has met its
burden of proof to establish that there is a likelihood of confusion between
petitioner’s and respondent’s marks for their respective goods.
Decision: The petition to cancel is granted and Registration No. 3257244 will
be cancelled in due course.