Juan Carlos Martinez

Trademark Trial and Appeal Board

Jun 6, 2013

No. 85476036 (T.T.A.B. Jun. 6, 2013)

Mailed: 6/6/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Martinez
________

Serial No. 85476036
_______

Kuscha Hatami of Raj Abhyanker PC, dba LegalForce R.A.P.C.
Worldwide for Juan Carlos Martinez.

Daniel F. Capshaw, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Quinn, Taylor and Masiello,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Juan Carlos Martinez filed, on November 18, 2011, an
application under Section 1(a) of the Trademark Act, 15 U.S.C. §
1051(a), to register the mark shown below

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85476036

2

(“BRAND” disclaimed) for “fresh fruits and vegetables, namely,
papaya, pineapple, limes, lemons, avocado, coconut, berries and
citrus fruits” in International Class 31.1 Applicant claims
first use anywhere and first use in commerce on January 7, 2005.
Applicant also claims ownership of Registration No. 3095372.
The trademark examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark, when used in connection with
applicant’s goods, so resembles the previously registered mark
shown below

for a variety of goods, including “fruit conserves, cooked
fruits, dried fruits, fruit peels, cut fruits, sliced fruits,
fruit pulps, fruit salads, fruit rinds and fruit leathers; and
cooked vegetables, vegetable conserves, dried vegetables, and

1 The application includes a description of the mark as follows: “The
mark consists of an image of a smiling lady looking over her left
shoulder, below that the words ‘CHULA BRAND’ are written one under
another, the image and the words are enclosed in an arched shape
window as shown in the mark.”
Ser. No. 85476036

3

vegetable salad” in International Class 29,2 as to be likely to
cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues that the marks and the goods sold
thereunder are different, that the goods travel in niche trade
channels to sophisticated consumers, and that applicant is not
aware of any actual confusion between the marks. Applicant
introduced dictionary definitions, copies of official records,
an excerpt of applicant’s website, excerpts of third-party
websites, and Google search results summaries.3
The examining attorney maintains that the marks, goods and
trade channels are similar. In support of the refusal the
examining attorney submitted dictionary definitions, numerous
third-party registrations and excerpts of third-party websites.
Our determination of the issue of likelihood of confusion
is based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563

2 Registration No. 3371547, issued January 22, 2008. The registration
indicates that the English translation of “LA CHULA” is “THE BEAUTIFUL
ONE” or “THE SHOW-OFF.” The registration also includes the following
statements: “The mark consists of the head of a woman with a flower
in her hair and an ear ring, with an oval background and the stylized
words LA CHULA written below her. The name, portrait and/or signature
shown in the mark does not identify a particular living individual.”
3 As indicated in the Board’s order dated December 21, 2012, the record
includes the exhibits attached to applicant’s appeal brief filed on
November 12, 2012.
Ser. No. 85476036

4

(CCPA 1973). In any likelihood of confusion analysis, however,
two key considerations are the similarities between the marks
and the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976).
We first turn our attention to a comparison of the marks.
In comparing the marks, we must consider the marks in their
entireties as to appearance, sound, connotation and commercial
impression to determine the similarity or dissimilarity between
them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
The test, under the first du Pont factor, 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 that
confusion as to the source of the goods 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).
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. In re National Data Corp., 753
Ser. No. 85476036

5

F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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 consideration of the
marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.”).
Where both words and a design comprise the mark (as in
applicant’s and registrant’s marks), then the words are normally
accorded greater weight because the words are likely to make an
impression upon purchasers, would be remembered by them, and
would be used by them to request the goods and/or services.
CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.
1983) (“in a composite mark comprising a design and words, the
verbal portion of the mark is the one most likely to indicate
the origin of the goods to which it is affixed”); In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); and Kabushiki
Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB
1985). See also Giant Food, Inc. v. Nation’s Food Service,
Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983).
In applicant’s mark, the literal portion, CHULA BRAND, is
dominant, and this literal portion is clearly dominated by the
term CHULA. The disclaimed term BRAND has no source-indicating
Ser. No. 85476036

6

function in applicant’s mark.4 In re Chatam Int’l. Inc., 380
F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004); and In re
Binion, 93 USPQ2d 1531, 1534 (TTAB 2009). Moreover, purchasers
in general are inclined to focus on the first word or portion in
a trademark, especially where the first word is followed by a
non-source-indicating term (as is the case with BRAND). Presto
Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“it is often the first part of a mark which is
likely to be impressed upon the mind of a purchaser and
remembered”). See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692.
In registrant’s mark, the literal portion of the mark, LA
CHULA, is the dominant portion, and is accorded greater weight
over the design feature when comparing the cited mark to
applicant’s mark. Further, with respect to this word portion of
registrant’s mark, we give less weight to the definitive article
“LA” meaning “THE.”5 See In re Thor Tech Inc., 90 USPQ2d 1634,
1635 (TTAB 2009) (“the addition of the word ‘The’ at the
beginning of the registered mark does not have any trademark
significance”).

4 The term “brand” is defined as “a product or group of products that
has its own name and is made by one particular company.”
(macmillandictionary.com).
5 Applicant’s argument that “consumers are likely to place higher
emphasis on LA” (Brief, p. 4) is not credible.
Ser. No. 85476036

7

Accordingly, each mark is dominated by the word portions,
CHULA BRAND and LA CHULA, respectively, and these portions are
most likely to be remembered and used by consumers in calling
for and referring to applicant’s and registrant’s goods.
Thus, in terms of sound, the marks are highly similar.
Further, as to appearance, the marks are markedly similar. The
literal portions, CHULA BRAND and LA CHULA, are very similar in
appearance. Moreover, the pictorial representations of a
woman’s head in the two marks look alike; both women have long
black hair and are smiling. These similarities outweigh the
differences perceived by applicant, namely that registrant’s
“cartoon image of a gypsy or pirate” differs from applicant’s
“Spanish Flamenco dancer.” (Brief, p. 5).
The marks are also virtually identical in meaning. As
noted above, the term “la” is defined as “the.” The term
“chula” means “good-looking, cute, pretty; cocky, flashy type,
show-off.” (wordreference.com). Other meanings for “chula”
include “sexy (internetslang.com). We are entirely not
persuaded by applicant’s argument that its mark connotes a
beautiful woman or a brand that is high quality whereas
registrant’s mark is “likely to evoke CHULA’S common connotation
relating to the packaging being beautiful like a beautiful woman
and hence the processed food inside the packaging will lead to a
beautiful eating experience.” (Brief, pp. 7-8). Rather, the
Ser. No. 85476036

8

marks in their entireties convey the same meaning, that is, an
attractive woman.
Given the substantial similarities in sound, appearance and
meaning between them, the marks engender overall commercial
impressions that are extremely similar.
Applicant goes to great lengths in detailing the very
specific differences between the marks. Although we recognize
that there are specific differences between the marks, we
reiterate that the test is not based on a side-by-side
comparison and that members of the relevant class of consumers
for fruit products, namely average purchasers, normally retain a
general rather than a specific impression of trademarks. Thus,
many of the differences argued by applicant are likely to be
overlooked or simply ignored by ordinary consumers and, in any
event, the similarities between the marks clearly outweigh the
differences. The similarity between the marks is a du Pont
factor that weighs in favor of a finding of likelihood of
confusion.
With respect to the relatedness of the goods, it is well
settled that the question of likelihood of confusion must be
determined based on an analysis of the goods recited in
applicant’s application vis-à-vis the goods identified in the
cited registration. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); and Canadian Imperial
Ser. No. 85476036

9

Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed.
Cir. 1992). Where the goods in the application at issue and/or
in the cited registration are broadly identified as to their
nature and type, such that there is an absence of any
restrictions relating to the channels of trade and no
limitations relating to the classes of purchasers, it is
presumed that in scope the identifications of goods encompass
not only all the goods of the nature and type described therein,
but that the identified goods are offered in all channels of
trade which would be normal therefor, and that they would be
purchased by all potential buyers thereof. In re Elbaum, 211
USPQ 639, 640 (TTAB 1981). Further, it is not necessary that
the respective goods 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 that the respective
goods are related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such that
they would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originated
from the same producer. In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991). 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. There is no per se rule that all
Ser. No. 85476036

10

food products are related goods by nature. See, e.g., Hi-
Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1169,
1171-72 (TTAB 1987).
In the present case, we compare applicant’s “fresh fruits
and vegetables, namely, papaya, pineapple, limes, lemons,
avocado, coconut, berries and citrus fruits” to registrant’s
“fruit conserves, cooked fruits, dried fruits, fruit peels, cut
fruits, sliced fruits, fruit pulps, fruit salads, fruit rinds
and fruit leathers; and cooked vegetables, vegetable conserves,
dried vegetables, and vegetable salad.” As identified, the
goods are closely related; applicant’s goods are fresh fruits
and registrant’s goods include processed fruits. Registrant’s
products are not identified by specific fruits, so the
identification is broad enough to cover processed fruit products
using papayas, pineapples, limes, lemons, and/or berries.
The examining attorney introduced over thirty use-based
third-party registrations, each showing a single mark registered
for both types of fruits involved herein, that is, fresh fruits
and processed fruits. “Third-party registrations which cover a
number of differing goods and/or services, and which are based
on use in commerce, although not evidence that the marks shown
therein are in use on a commercial scale or that the public is
familiar with them, may nevertheless have some probative value
to the extent that they may serve to suggest that such goods or
Ser. No. 85476036

11

services are of a type which may emanate from a single source.”
In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
The third-party websites also show that the same entities
often sell both types of products, namely fresh fruit and
processed fruit, under the same mark. In giving less weight to
this evidence, we are sensitive to applicant’s concern that
several of the examples furnished by the examining attorney
comprise house marks, such as DOLE, DEL MONTE, SUNKIST, CHIQUITA
and HARRY & DAVID to identify a wide variety of fruits and fruit
related products offered for sale.
In sum, we find that the goods are closely related. These
fruit products, both fresh and processed, would move in the same
trade channels (e.g., grocery stores, food departments of mass
merchandiser chains, etc.) to the same classes of purchasers,
including ordinary consumers. See In re Wilson, 57 USPQ2d 1863,
1866-67 (TTAB 2001).
The du Pont factors relating to the similarity between the
goods, trade channels and purchasers weigh in favor of a finding
of likelihood of confusion.
Applicant claims that the selection of the goods requires
sophistication and a “calculated” purchasing decision because it
impacts a consumer’s overall health. According to applicant,
Ser. No. 85476036

12

“[t]oday’s consumer is highly sophisticated when it comes to
nutrition” and “consumers are likely to exercise great care in
making purchasing decisions.” (Brief, p. 14). Applicant also
points to differences between the relevant consumers:
“Consumers who purchase Registrant’s goods are less health
conscious, and willing to consume foods that are not freshly
prepared” whereas “consumers who purchase Applicant’s goods are
interested in a fresh food experience, whereby they are willing
to spend the extra time and effort to peal [sic] and slice their
freshly purchased produce.” (Brief, pp. 10-11). In this
connection, applicant points to an article discussing the
benefits of fresh fruits/vegetables versus canned
fruits/vegetables.6
We acknowledge that today’s consumers are more aware than
ever about nutrition and the value of fruit products in their
diets. That does not automatically translate, however, into
consumers who are immune from trademark confusion, especially
where, as here, prospective purchasers of the involved goods
would include ordinary consumers. Contrary to applicant’s
arguments, fruit is a relatively inexpensive food item that is

6 Applicant also submitted a Google search summary with results bearing
on the same debate involving fresh versus canned fruit. This evidence
has limited probative value. See In re Bayer Aktiengesellschaft, 488
F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Search engine
results...may be insufficient to determine...the relevance of the
search results to registration considerations.”); and In re Int’l.
Business Machines Corp., 81 USPQ2d 1677, 1679 n.3 (TTAB 2006).
Ser. No. 85476036

13

subject to frequent replacement and impulse purchase. In such
circumstances, the likelihood of confusion is increased. See
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899
(Fed. Cir. 2000) (“When products are relatively low-priced and
subject to impulse buying, the risk of likelihood of confusion
is increased because purchasers of such products are held to a
lesser standard of purchasing care.”).
In any event, even assuming that a careful selection is
involved, it is settled that even sophisticated purchasers are
not immune from source confusion, especially in cases such as
the instant one involving similar marks and closely related
goods. See In re Research Trading Corp., 793 F.2d 1276, 230
USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works,
Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970) (“Human memories even of discriminating
purchasers...are not infallible.”). See also In re Decombe, 9
USPQ2d 1812 (TTAB 1988). We find that the similarity between
the marks and the relatedness of the goods sold thereunder
outweigh any presumed sophisticated purchasing decision. See
HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819
(TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates,
Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)
(similarities of goods and marks outweigh sophisticated
Ser. No. 85476036

14

purchasers, careful purchasing decision, and expensive goods).
Thus, this factor is neutral.
Applicant points out that there has been no actual
confusion between the marks despite over six years of
contemporaneous use. Applicant’s assertion, in this ex parte
proceeding, of the contemporaneous use of applicant’s and
registrant’s marks for a period of six years without actual
confusion is entitled to little weight. See In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed.
Cir. 2003) (“uncorroborated statements of no known instances of
actual confusion are of little evidentiary value”). See also In
re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA
1973) (stating that self-serving testimony of applicant’s
corporate president’s unawareness of instances of actual
confusion was not conclusive that actual confusion did not exist
or that there was no likelihood of confusion); In re Binion, 93
USPQ2d at 1536; In re 1st USA Realty Professionals Inc., 84
USPQ2d 1581, 1588 (TTAB 2007); and In re Kangaroos U.S.A., 223
USPQ 1025, 1026-27 (TTAB 1984). In any event, the record is
devoid of probative evidence relating to the extent of use of
applicant’s and registrant’s marks and, thus, whether there have
been meaningful opportunities for instances of actual confusion
to have occurred in the marketplace. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000);
Ser. No. 85476036

15

and In re Wilson, 57 USPQ2d at 1869 (“[I]nasmuch as we have
heard from neither registrant nor the Highland Orange
Association in this appeal, we cannot conclude that, in fact, no
instances of actual confusion ever occurred.”). Accordingly,
the du Pont factor of the length of time during and conditions
under which there has been contemporaneous use of the marks
without evidence of actual confusion is considered neutral.
Applicant makes some remarks that are tantamount to a claim
that registrant is no longer using the registered mark in
connection with any fruit related products. To the extent that
applicant is alleging that registrant has abandoned its mark on
the fruit related products listed in the cited registration,
this allegation constitutes a collateral attack on the
registration. We agree with the examining attorney’s assessment
that such attack is impermissible. Section 7(b) of the
Trademark Act, 15 U.S.C. § 1057(b), provides that a certificate
of registration on the Principal Register shall be prima facie
evidence of the validity of the registration, of the
registrant’s ownership of the mark and of the registrant’s
exclusive right to use the mark in connection with the goods
and/or services identified in the certificate. During ex parte
prosecution, including an ex parte appeal, an applicant will not
be heard on matters that constitute a collateral attack on the
cited registration. In re Dixie Restaurants, Inc., 105 F.3d
Ser. No. 85476036

16

1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); and In re Peebles
Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992). See TMEP
§ 1207.01(d)(iv) (2013). Accordingly, no consideration has been
given to applicant’s arguments in this regard.
We conclude that consumers familiar with registrant’s
processed fruit products sold under the mark LA CHULA and woman
design would be likely to mistakenly believe, upon encountering
applicant’s mark CHULA BRAND and woman design for applicant’s
fresh fruit products, that the goods originated from or are
associated with or somehow sponsored by the same entity.
Decision: The refusal to register is affirmed.