Mi Pueblo San Jose, Inc.

Trademark Trial and Appeal BoardNov 16, 2012

No. 85130613 (T.T.A.B. Nov. 16, 2012)

Mailed: November 16, 2012 United States Patent and Trademark Office Trademark Trial and Appeal Board ________ In re Mi Pueblo San Jose, Inc. ________ Serial Nos. 85130583, 85130613 and 85130629 _______ Brian R. Coleman and Kirupa Pushparaj of Perkins Coie LLP for Mi Pueblo San Jose, Inc. Brendan D. McCauley, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney). _______ Before Bucher, Bergsman and Ritchie, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Mi Pueblo San Jose, Inc. seeks registration on the Principal Register of three marks, MI PUEBLO,1 MI PUEBLO FOOD CENTER2 and MI PUEBLO FOODS3 (all in standard character format), for services recited in the applications, as amended, as follows: 1 Application Serial No. 85130583 was filed on September 15, 2010, based upon ap- plicant’s allegation of a bona fide intention to use the mark in commerce. “The Eng- lish translation of ‘Mi Pueblo’ in the mark is ‘My Village.’ ” 2 Application Serial No. 85130613 was filed on September 15, 2010, based upon ap- plicant’s allegation of a bona fide intention to use the mark in commerce. “No claim is made to the exclusive right to use the term ‘Food Center’ apart from the mark as shown. The English translation of ‘Mi Pueblo’ in the mark is ‘My Village.’ ” 3 Application Serial No. 85130629 was filed on September 15, 2010, based upon ap- plicant’s allegation of a bona fide intention to use the mark in commerce. “No claim is made to the exclusive right to use the word ‘Foods’ apart from the mark as shown. The English translation of ‘Mi Pueblo’ in the mark is ‘My Village.’ ” This Opinion is NOT a Precedent of the TTAB Serial Nos. 85130583, 85130613 and 85130629 - 2 - retail grocery stores; retail supermarkets; in-store retail delicatessen; in-store take-out bakery services; in-store butcher shop services; in store retail bakery services fea- turing tortilla making; in store retail butcher services fea- turing poultry processing; retail grocery store services; promoting the goods and or services of others by awarding redeemable points to customers who make frequent pur- chases; advertising the goods and services of others; providing a website featuring information for consumers in the fields of food and other groceries; retail grocery ser- vices, in International Class 35; and in store butcher services, namely, butchering; in store bakery services, namely, the manufacture of bakery prod- ucts to order and/or specification of others featuring tortil- la making, in International Class 40. The Trademark Examining Attorney has refused registration under Sec- tion 2(d) of the Trademark Act on the ground that applicant’s marks, when applied to applicant’s services, so resemble the marks in the following two reg- istrations owned by the same party, as to be likely to cause confusion, to cause mistake or to deceive: for “supermarket and retail grocery store services” in International Class 42;4 PUEBLO for “supermarket and retail grocery store services” in International Class 35.5 After the Trademark Examining Attorney made the refusals final, appli- cant appealed each refusal to this Board. Because the issues in each appeal are substantially the same, we have consolidated all three appeals by issuing 4 Registration No. 1997786 issued on September 3, 1996; renewed. 5 Registration No. 3006003 issued on October 11, 2005; Section 8 affidavit accepted. Serial Nos. 85130583, 85130613 and 85130629 - 3 - a single opinion, taking into consideration the differences in the three marks as appropriate. We affirm all three refusals to register. I. Positions of applicant and the Trademark Examining Attorney Applicant argues that each of its applied-for marks create different commercial impressions from those of the cited registrant. Additional- ly, applicant argues that the word “Pueblo” is conceptually weak because it conveys a geographical or ethnic connotation and that it is commer- cially weak because of the existence of similar third-party registrations. Applicant points out that the cited marks were actually approved for registration by the United States Patent and Trademark Office over a number of previously registered, third-party PUEBLO registrations. Similar- ly, the Office has recently permitted two of the cited registrant’s later-filed marks to register without being rejected over applicant’s earlier-filed appli- cations having identical goods. The essence of the position put forward by the Trademark Examining Attorney is that applicant’s marks and the cited marks are quite similar as to commercial impressions; that applicant’s and registrant’s services are closely re- lated, if not identical; and the fact that registrant’s later-filed applications were registered over applicant’s earlier-filed applications does not support registra- tion herein. Serial Nos. 85130583, 85130613 and 85130629 - 4 - II. Preliminary matter We first address the material applicant filed with its briefs, namely, hard copies of various third-party registrations containing the term “Pueblo” for a variety of goods and services. We have not considered these registrations in arriving at our decisions herein because applicant filed them after filing its appeals, and the record in an application must be complete prior to the filing of an appeal. 37 C.F.R. § 2.142(d); In re Fitch IBCA Inc., 64 USPQ2d 1058 (TTAB 2002); TBMP §§ 1203.02(e), 1207.01. In addition, we note that the Board does not take judicial notice of third-party registrations. See, e.g., In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002).6 III. Likelihood of Confusion We turn then to a consideration of the issue of likelihood of confusion. Our determination of likelihood of confusion is based upon our analysis of all of the probative facts in evidence that are relevant to the factors bearing on this issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 6 We note that the Federal Circuit, in In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681 (Fed. Cir. 2010), exercised its discretion to take judicial notice of a third party’s registrations. Although the court took judicial notice of a third-party registration in that case, the Board does not take judicial notice of either third-party registrations or a party’s own registrations insofar as case law clearly specifies how to make such registrations of record. We hasten to add that even if we were to consider this material, our resolution of these cases would not be any different. Serial Nos. 85130583, 85130613 and 85130629 - 5 - 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of confusion analy- sis, however, two key, although not exclusive, considerations are the similari- ties between the marks and the relationship between the goods and/or ser- vices. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). A. The services We agree with the conclusions of the Trademark Examining Attorney that as set forth in the recitations of services, applicant’s supermarket and retail grocery store services including grocery take-out and delivery services are legally identical to registrant’s supermarket and retail grocery store ser- vices. In addition, applicant’s complementary services including deli, bakery and butcher services, and marketing its retail services are closely related to regis- trant’s services. In the face of a strong showing on these points by the Trade- mark Examining Attorney, applicant provided no argument that the services are not identical. Hence, this critical du Pont factor strongly favors a finding of likelihood of confusion. B. Channels of trade and Classes of consumers The recitations set forth in the cited registrations use broad wording to describe registrant’s services without limitation as to nature, type, chan- nels of trade or classes of purchasers. Therefore, it is presumed that the reg- istrations encompass all of applicant’s recited services, including appli- cant’s more specific recitations, and that the services move in all normal Serial Nos. 85130583, 85130613 and 85130629 - 6 - channels of trade, and that they are available to all potential classes of ordi- nary consumers. See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Further, because the services described in the application and the cited registrations are in part identical or otherwise closely related, we must pre- sume that the channels of trade and classes of purchasers are the same. See American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence re- garding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). Accordingly, these related du Pont factors also favor a finding of likeli- hood of confusion. C. The Marks We turn then to the du Pont factor focusing on the similarity or dissimi- larity 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 Serial Nos. 85130583, 85130613 and 85130629 - 7 - at 567. In analyzing the similarity or dissimilarity of the marks, we are mind- ful that the test is not whether the marks can be distinguished when subject- ed 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, 1841 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winneba- go Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Since the services at issue are supermarket and retail grocery store services, pro- spective purchasers of applicant’s services are ordinary consumers subject to impulse purchases who are neither sophisticated nor especially careful. We also begin our discussion of this du Pont factor by noting that when the respective services are “similar in kind and/or closely related,” as is the case herein, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with di- verse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004). Serial Nos. 85130583, 85130613 and 85130629 - 8 - While marks must be compared in their entireties, it is not improper to accord more or less weight to a particular feature of a mark. In re National Data Corp., 753 F.2d 1056, 24 USPQ2d 749, 751 (Fed. Cir. 1983). Descriptive terms such as “Food Center” or “Foods” in applicant’s marks are typically less significant or less dominant when comparing marks. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Da- ta Corp., 224 USPQ at 752. Applicant has disclaimed the terms “Food Center” and “Foods” inasmuch as they are highly descriptive, if not generic, of the re- cited services. Accordingly, it is appropriate that we should give greater weight to the leading, dominant term, MI PUEBLO, in applicant’s marks (Ap- plication Serial Nos. ‘613 and ‘629) when determining whether the marks are similar. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 695 (CCPA 1976) (“The issue of whether a portion of a mark is dominant turns on the facts of each case”); and In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (“applicant conceded the common, descriptive nature of the word ‘originals’ as applied to apparel by disclaiming it”). Thus, we find that the marks MI PUEBLO, MI PUEBLO FOOD CENTER and MI PUEBLO FOODS are very similar in sound, appear- ance, connotations and commercial impressions to and PUEBLO. They share the same dominant term, “Pueblo.” That applicant’s mark also contains the term “Mi” (“my” in the Spanish language) does not obviate the similarity in commercial impressions between these marks. This modifier in Serial Nos. 85130583, 85130613 and 85130629 - 9 - the Spanish language version of the mark is not at all significant, but simply reinforces the Spanish connotation of a “small village” present in both marks. Certainly, such slight differences in marks generally do not create dis- similar marks under this du Pont factor. In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985) (“Moreover, although there are certain differ- ences between the [marks and CANA as to] appearance, namely, the inclusion of the letter ‘Y’ and the design feature in applicant’s mark, there are also obvious similarities between them. Considering the similarities be- tween the marks in sound and appearance, and taking into account the nor- mal fallibility of human memory over a period of time (a factor that becomes important if a purchaser encounters one of these products and some weeks, months, or even years later comes across the other), we believe that the marks create substantially similar commercial impressions”). See also United States Mineral Products Co. v. GAF Corp., 197 USPQ 301, 306 (TTAB 1977) (“AFCO and CAFCO, which differ only as to the letter ‘C’ in USM’s mark, are substan- tially similar in appearance and sound”); In re Bear Brand Hosiery Co., 194 USPQ 444, 445 (TTAB 1977) (“The mark of the applicant, KIKS and the cited mark KIKI differ only in the terminal letter of each mark. While differing in sound, the marks are similar in appearance and have a somewhat similar connotation”). Accordingly, we find that this du Pont factor also favors a finding of like- lihood of confusion herein. Serial Nos. 85130583, 85130613 and 85130629 - 10 - D. The number and nature of similar marks in use on similar goods. Applicant argues that “Pueblo,” the word at the core of its three marks, is conceptually an inherently weak source identifier. While the term “Pueblo” may well create mental images of a small village in the American southwest, we disagree with applicant that it should be deemed to be weak as a matter of law (e.g., geographically descriptive) as applied to these services. Even if suggestive, it is still deemed to be an inherently distinctive term when used in connection with retail supermarkets and gro- cery store services. Applicant also argues at length that the cited marks are commercially weak: In the present case, the Cited Marks have co-existed and continue to co-exist with numerous other registered and approved PUEBLO marks for goods and services relat- ed to food products (especially, ethnic food products such as salsas, etc.). This necessarily means that the scope of protection afforded to such PUEBLO marks is circum- scribed such that a newcomer with a different PUEBLO mark should also be permitted to coexist. As noted earlier, we have not considered the untimely-submitted third- party registrations and applications.7 We find that applicant has failed to 7 We also note from applicant’s own table that these composite marks contain dis- tinguishing matter like “Casa del,” “Dos Ranch,” “Old Ranch,” “Bonita,” “Magico,” “Mall,” “Viejo,” “del Bajio,” “Orgullo,” “Salami del,” etc. Furthermore, the Trademark Examining Attorney represents, in the alternative, that none of these referenced third-party registrations are for the services which are the subject of this appeal. Serial Nos. 85130583, 85130613 and 85130629 - 11 - show that the term “Pueblo” is commercially weak with respect to the specific services at issue in these cases. E. Any other established fact probative of the effect of use At the core of its argument on equity, applicant repeatedly argues that our determination about whether there is a likelihood of confusion herein should be pushed in the direction of no likelihood of confusion because the United States Patent and Trademark Office permitted marks in two of the cited registrant’s later-filed applications to register without being rejected over applicant’s intervening but earlier-filed applications (having identical goods). We reject this contention for a number of reasons. As noted earlier, we have not considered the untimely-submitted third-party registrations and applications. Hence, the factual basis on which this argument rests in not in the record before us. Secondly, applicant does not suggest that there is any understanding be- tween applicant and registrant of a mutual willingness to coexist in the mar- ketplace. If faced with probative evidence of a valid consent from registrant, the results herein would likely be quite different. F. Balancing the du Pont Factors On balance, we find support for finding likelihood of confusion herein in all three applications given: that applicant’s and registrant’s services are legally identical; because the terms “Foods” and “Food Center” are highly descriptive, if not generic, for retail grocery store services (and probably for butchering Serial Nos. 85130583, 85130613 and 85130629 - 12 - and baking services), these terms cannot distinguish applicant’s marks, mak- ing “Mi Pueblo” the dominant element of applicant’s mark; and as a result, that applicant’s marks and the cited marks are quite similar as to commercial impressions. Finally, to the extent that we harbor any doubt as to the proper resolu- tion of this case, we consider it especially appropriate under the facts of this case to resolve such doubt against the newcomer and in favor of the prior reg- istrant. See In re Pneumatiques, Caoutchouc Manufacture, 487 F.2d 918, 179 USPQ 729 (CCPA 1973). See also TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997); and In re Hyper Shoppes, 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988). Decision: The refusals to register each of these marks under Section 2(d) of the Act are hereby affirmed.