Molcasalsa Mexican Food Intl., Inc.v.Alberto Giraldo

Trademark Trial and Appeal Board

Jul 15, 1999

No. 92021244 (T.T.A.B. Jul. 15, 1999)

Paper No. 46
DEB
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE TTAB
JULY 15, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Molcasalsa Mexican Food International, Inc.
v.
Alberto Giraldo
_____
Cancellation No. 21,244
_____
Barry F. Soalt of Brown Martin Haller & McClain for
Molcasalsa Mexican Food International, Inc.
Mark G. Tratos of Quirk & Tratos for Alberto Giraldo.
_____
Before Quinn, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Molcasalsa Mexican Food International, Inc. has
petitioned to cancel the registration owned by Alberto
Giraldo for the mark “ALBERTO’S MEXICAN FOOD (and design)” as
shown below, for restaurant services.1

1 Registration Number 1,619,145, registered on October 23,
1990, for restaurant services in International Class 42. This
application was filed with the U.S. Patent and Trademark Office on
April 13, 1989, claiming first use dates of February 1, 1988. The
words “World Famous Mexican Food” and “Chicken and Tacos” are
disclaimed. The registration also states that the English
translation of the term “Al Carbon” is “The Chicken.”
Cancellation No. 21,244
2
As the ground for cancellation, petitioner alleges
priority of use and likelihood of confusion under Trademark
Act Section 2(d), 15 U.S.C. Section 1052(d). Petitioner
alleges that it is a rapidly growing franchiser having
extensively used ALBERTOS as a service mark in the United
States continuously since 1978.2 Petitioner is also the
owner of a trademark application for its service mark for
“ALBERTOS and design,” as shown below, for restaurant and
restaurant carry out services.3

2 Petitioner’s service mark was first adopted and used by the
founders of Albertos Mexican Food restaurants, Juan Diego
Rodriguez and his brother, Alvaro Rodriguez, who owned the mark
from 1978 to 1994 through a general partnership. After a change
in the form of the restaurant chain’s ownership in 1994, the
partnership assets were assigned to Alberto’s Mexican Food, Inc.,
which in turn assigned the mark to Molcasalsa in 1996. The Patent
and Trademark Office assignment records confirm that the current
owner of the service mark is Molcasalsa Mexican Food
International, Inc.
3 Serial Number 74/244082, filed on February 7, 1992 for
restaurants and restaurant carryout services, in International
Class 42, claiming use since September 1978. This application was
refused registration based upon the involved registration owned by
respondent. Petitioner’s application remains suspended pending
the outcome of this cancellation proceeding.
Cancellation No. 21,244
3
In its answer to the petition to cancel, respondent
denied the salient allegations, especially those regarding
likelihood of confusion. Although respondent answered
petitioner’s requests for admission, requests for documents
and interrogatories, respondent filed no testimony, evidence
or brief. Petitioner has submitted the deposition testimony
of Herbert E. Claudio, Vice President and Franchising
Director of Molcasalsa Mexican Food International, Inc.,
along with attached exhibits. Petitioner has also relied
upon respondent’s answers to petitioner’s requests for
admission and requests for interrogatories, and relied upon
respondent’s responses to petitioner’s requests for
production of documents, under 37 C.F.R. §2.120(j)(8).4

4 For example, the following facts were obtained through
discovery and were made of record by petitioner’s First notice of
Reliance, dated May 12, 1997:
9 Respondent made the following admissions in response to
Petitioner’s Requests for Admission:
ΠRespondent is unaware of any third-party U.S. registrations
or pending applications for the term "ALBERTOS" in Class 42
for Mexican food restaurant services, other than the subject
matter marks of the respective parties to this proceeding
(Respondent’s Response to Request for Admissions, No. 9);
ΠRespondent admits that Mexican food and take out Mexican food
is the food offered by Respondent’s restaurants (Respondent’s
Response to Request for Admissions, Nos. 20 and 21).
Cancellation No. 21,244
4
Petitioner has also relied under 37 C.F.R. §2.122(e) upon a
dozen different annual entries from the Pacific Telephone
Yellow Pages Directory for San Diego, CA. Only petitioner
filed a brief and an oral hearing was not requested. Based
upon the record before us, we grant the petition to cancel.
As noted above, petitioner has taken the deposition
testimony of Herbert E. Claudio, Vice President and
Franchising Director of Molcasalsa Mexican Food
International, Inc. Mr. Claudio’s responsibilities ensure
his familiarity with the history of petitioner and its
predecessors, their marketing practices and the development
of restaurant site locations, the operation of petitioner’s
successful franchising program, and the usage of the service
mark and trade names. In fact, Mr. Claudio traced the entire
history of petitioner’s usage of these source indicators –-
i.e., the trade names and service mark (“ALBERTOS” and
“ALBERTOS MEXICAN FOOD”) for restaurant services -- going all
the way back to the adoption in 1978 by a predecessor in
interest. In support of Mr. Claudio’s testimony on this
point, petitioner also relied upon an ever-increasing number
of its franchise restaurants, each listed as “ALBERTOS
MEXICAN FOOD.” Specifically, petitioner’s expanded presence
in southern California from 1981 to 1994 was evidenced by
year-to-year entries taken from the San Diego Yellow Pages.
With testimony and evidence showing extensive and continuous
use of this service mark since the late 1970’s, petitioner’s
Cancellation No. 21,244
5
use clearly precedes the filing date of respondent’s
registration (i.e., April 13, 1989). This is the earliest
date to which respondent is entitled in the absence of any
other evidence of use.
In the course of rendering this decision, we have
followed the guidance of In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973), that
sets forth the factors which, if relevant, should be
considered in determining likelihood of confusion.
Under the first du Pont factor, we examine the
similarities or differences in sound, appearance, meaning and
overall commercial impression of the two marks.
Both marks share a single literal element (presented as
“ALBERTO’S” or “ALBERTOS”) that one would use in speaking the
name of the restaurant. These words are substantially
identical, differing only in that respondent’s mark, in the
possessive form, contains an apostrophe. In both cases, the
restaurant name is presented in a scripted fashion, angled
slightly upward from left to right.
In this case, it is appropriate to give greater weight
to the common, verbal portion of the marks because it is by
the word “ALBERTOS” that purchasers will remember and refer
to the restaurant services of both parties.5 The words,

5 We agree with petitioner that the other wording in
respondent’s mark is less prominent than the word “ALBERTO’S”
given its placement and relative size. Furthermore, given the
Cancellation No. 21,244
6
rather than the design features of the respective logos, will
therefore have a greater impression on customers. See In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987) [Mark
having the word "Appetito" in block letters, prominently
displayed between broad geometric stripes of applicant’s
mark, as used on Italian sausages, likely to cause confusion
with "Appetito’s" printed in small script letters across a
large capitalized letter “A” and "Appetito's Inc." with a
large capitalized letter “A” and the design of a sandwich,
for restaurant services].
Moreover, in considering these marks in their
entireties, the similarities in the design portions of the
respective marks actually enhances the likelihood of
confusion. Accordingly, we turn next to a closer examination
of the design elements in the respective marks. One can
elicit any number of "discernable" differences after a
studied comparison of these respective composite logos, and
perhaps those differences might well be enough to distinguish
one design from the other. See Matsushita Electric
Industrial Co., Ltd. v. Sanders Associates, Inc., 177 USPQ
720 (TTAB 1973) and cases cited therein. Furthermore,
reactions to the instant marks may well vary among a group of
individuals as this kind of comparison can be quite
subjective.

descriptive if not generic nature of this disclaimed matter, it
has very little, if any, source-indicating significance.
Cancellation No. 21,244
7
However, the test to be applied in determining
likelihood of confusion is not whether the marks are
distinguishable upon side-by-side comparison, but rather
whether the marks, as they are used in connection with the
parties’ services, so resemble one another as to be likely
to cause confusion. Under actual marketing conditions,
consumers do not necessarily have the opportunity to make
side-by-side comparisons between marks. Puma-
Sportschuhfabriken Rudolf Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255 (TTAB 1980). The proper emphasis
is thus on the recollection of the average customer, and the
correct legal test requires us to consider the fallibility of
human memory. The average purchaser normally retains a
general rather than a specific impression of trademarks or
service marks. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973) [the
figure of a stooped, elderly man holding a cane and the words
“G•R•A•N•D•P•A PIDGEON” v. the figure of a seemingly more
spry but elderly man in a mark having no wording, both used
with retail store services]; Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), affirmed in
unpublished opinion, Appeal No. 92-1086 (Fed. Cir. June 5,
1992) [“SILVER SPOON CAFÉ” and “SILVER SPOON BAR & GRILL” for
Cancellation No. 21,244
8
"restaurant and bar services" v. “SPOONS,” “SPOONBURGER,”
“SPOONS with cactus design,” and “SPOONS within a diamond
logo design”6; Envirotech Corp. v. Solaron Corp., 211 USPQ
724, 733 (TTAB 1981); and Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975).
We conclude these marks, when considered in their
entireties, have overriding similarities. Based upon the
general impressions created by the respective marks, they are
confusingly similar.
We turn next to the second du Pont factor, the
relationship between the parties’ services. Since both are
restaurants serving Mexican food to eat on the premises or to
take out of the establishment, these are obviously identical
services.
As to the fourth du Pont factor (viz., the conditions
under which sales are made and the type of buyers to whom
they are made), it is noteworthy in reviewing the a la carte
menus of both parties, that these fast-food items are quite
inexpensive and are purchased with less than a great deal of
care by ordinary consumers.
Turning to the sixth du Pont factor (i.e., the number
and nature of similar marks in use on similar goods),
respondent in its answer alleged that there are numerous

6 and
Cancellation No. 21,244
9
third-party users of the name “ALBERTOS” for restaurants.
However, inasmuch as respondent has put no evidence into the
record of this proceeding, there is nothing in the record
suggesting the name “ALBERTOS” is weak as applied to
restaurant services. In fact, respondent later admitted that
he is unaware of any third-party registrations or
applications in the U.S. for the term "ALBERTOS" in Int.
Class 42 for Mexican food restaurant services, other than the
marks of the parties to this proceeding.7
Finally, we turn to the twelfth du Pont factor. As
noted above in discussing petitioner’s growth, arguably given
the current pace of Molcasalsa’s aggressive franchising
operations, the extent of potential confusion, particularly
in the Southwestern region of the United States of America,
becomes more substantial each year as petitioner continues to
push into contiguous and even overlapping geographical areas
with respondent.
DECISION: We find a likelihood of confusion and
hence grant the petition to cancel. Respondent’s
registration will be cancelled in due course.
T. J. Quinn
P. T. Hairston

7 See respondent’s admissions contained in footnote 4, on page
3, supra.
Cancellation No. 21,244
10
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board