The Border Café of Texas, Inc.

Trademark Trial and Appeal Board

May 1, 2012

No. 85104508 (T.T.A.B. May. 1, 2012)

Mailed:
May 1, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Border Cafe of Texas, Inc.
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Serial No. 85104508
_______

Scott T. Kannady of Brown & Kannady, LLC for The Border
Cafe of Texas, Inc.

Raul Cordova, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Seeherman, Bucher and Cataldo, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

The Border Cafe of Texas, Inc. has applied to register
LA CASITA MEXICAN GRILL, in standard characters, for
“restaurant services.”1 In response to a requirement by the
examining attorney, applicant subsequently offered a
disclaimer of MEXICAN GRILL, and the translation statement

1 Application Serial No. 85104508, filed August 10, 2010
pursuant to Section 1(a) of the Trademark Act, asserting first
use and first use in commerce as early as February 4, 2010.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 85104508
2
“The English translation of ‘LA CASITA’ in the mark is THE
SMALL HOUSE.”
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the following marks,
registered by the same entity for “restaurant services and
catering services,” that as used in connection with
applicant’s services it is likely to cause confusion or
mistake or to deceive:
LA CASITA MEXICANA, with MEXICANA disclaimed, in
standard characters. “The foreign wording in the
mark translates into English as the little
mexican [sic] house.”2

LA CASITA MEXICANA and design, with MEXICANA
disclaimed. “The foreign wording in the mark
translates into English as the little mexican
[sic] house. The colors purple, black and orange
is/are claimed as a feature of the mark. The
mark consists of the color purple which appears
in two bars outlined in black that come together
at one end pointing north forming a roof like
figure; below the bottom ends of the two bars
forming the roof are two additional purple bars
outlined in black that point straight down
forming the sides of a house when viewed in
conjunction with the roof; inside the two side
bars is an orange bowl with finger holders at
each end, and the bowl has a purple stylistic
pattern below its top edge; above the bowl is
black stylistic scribbling that looks like steam
as well as like the faces of two chefs with
mustaches looking in opposite directions. All of
the wording is in black. The background of the

2 Registration No. 3176886, issued November 28, 2006.
Ser No. 85104508
3
mark is transparent and no other color is claimed
as a feature of the mark.”3

The examining attorney has also made final a requirement
that applicant submit an additional fee of $50 due to the
fact that applicant did not comply with the TEAS Plus
requirements and therefore is not entitled to the reduced
application filing fee for a TEAS Plus application.
We affirm both the refusal and the requirement.
We turn first to the refusal under Section 2(d). 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 (CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key
considerations are the similarities between the marks and

3 Registration No. 3186558, issued December 10, 2006.

Ser No. 85104508
4
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). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Applicant’s identified “restaurant services” are
legally identical to the “restaurant services” identified
in the cited registrations. Although applicant has argued
that the nature of its Mexican restaurant, in terms of food
and atmosphere, is different from the registrant’s, such
differences are irrelevant to our determination.
Likelihood of confusion must be determined based on an
analysis of the mark as applied to the services recited in
applicant’s application vis-à-vis the services recited in a
registration, rather than what the evidence shows the
services to be. In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Further,
because as identified the services are legally identical,
they must be presumed to travel in the same channels of
trade and be rendered or offered to the same classes of
consumers. See Hewlett-Packard Co. v. Packard Press, Inc.,
281 F.3d 1261, 1268, 62 USPQ2d 1001 (Fed. Cir. 2002); In re
Ser No. 85104508
5
Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
These du Pont factors favor a finding of likelihood of
confusion.
The next du Pont factor we consider is the similarity
of the marks. Because the design element in the cited LA
CASITA MEXICANA mark arguably contains an additional point
of difference with applicant’s mark, we confine our
analysis to the issue of likelihood of confusion between
applicant’s mark and the cited registration for LA CASITA
MEXICANA in standard characters. That is, if confusion is
likely between those marks, there is no need for us to
consider the likelihood of confusion with the cited mark
for LA CASITA MEXICANA with the design, while if there is
no likelihood of confusion between applicant's mark and LA
CASITA MEXICANA in standard characters, then there would be
no likelihood of confusion with the LA CASITA MEXICANA and
design mark. See In re Max Capital Group Ltd., 93 USPQ2d
at 1245.
There are certain principles that we must keep in
mind. First, when marks would appear on virtually
identical goods or services, as they do here, the degree of
similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
Ser No. 85104508
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(Fed. Cir. 1992). Second, there is nothing improper in
according, for rational reasons, more or less weight to a
particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). Third, 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 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. In re Association of
the United States Army, 85 USPQ2d 1264, 1268 (TTAB 2007);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Because MEXICAN GRILL is descriptive of applicant’s
services, a point that has been acknowledged by applicant
by its agreement to disclaim this term, the LA CASITA
portion of its mark deserves greater weight in the overall
comparison of the marks; it is this portion that consumers
will view as the source-indicating part of the mark.
Similarly, the disclaimed word MEXICANA in the cited mark
Ser No. 85104508
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describes the type of restaurant the registrant operates,
while LA CASITA is the portion of the mark that has source-
indicating significance. Although there are some
differences in the marks due to the final elements, these
differences are not sufficient to distinguish the marks.
Because consumers will pay more attention to the beginning
and source-identifying parts of the marks, they are likely
not to remember the relatively minor differences in the
descriptive portions and, even if they note these
differences, they are not likely to ascribe them to
differences in the sources of the legally identical
restaurant services. Overall, the marks are substantially
similar in appearance and pronunciation, and convey the
same connotation and commercial impression. This du Pont
factor favors a finding of likelihood of confusion.
Applicant has pointed to two third-party
registrations, owned by a single entity, for LA CASITA
CHILANGA and LA CASITA CHILANGA RESTAURANT, both for
“restaurant.”4 The translation of the marks is “the little

4 Registration Nos. 3032011 and 3135063. Applicant had
referenced these third-party registrations in its response to the
first Office action, but did not submit copies of them to
properly make them of record. However, the examining attorney,
as he noted in his brief, mistakenly stated in the next and final
Office action that printouts of such registrations had been
submitted, rather than advising applicant that it would have to
do so. Therefore, the examining attorney attached copies of the
registrations to his brief, in order to effect applicant’s intent
Ser No. 85104508
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house of or in Mexico City,” and CHILANGA and RESTAURANT
were disclaimed. Applicant notes that the registrations
cited here were allowed to register despite the existence
of these third-party registrations, and argues that the
differences in the disclaimed wording were sufficient to
distinguish the marks. Whatever may have been the analysis
of the examining attorney who determined that there was no
likelihood of confusion in the prior situation, it is clear
that the marks involved in this appeal are more similar
than the third party’s and the registrant’s.
Applicant has asserted, in discussing the du Pont
factor of purchaser care, that confusion is not likely
because the registrant has only one restaurant, located in
the Los Angeles area; that customers seeking the services
are “individuals located in the Los Angeles area desiring
authentic Mexican cuisine”; and its chefs are featured on
cooking channels and “Mexican speaking television.” Brief,
p. 9. Applicant’s restaurants are located in Colorado
Springs, CO.
To the extent that applicant is suggesting that the
consumers for the registrant’s services would be careful
and sophisticated purchasers looking for authentic Mexican

to have these third-party registrations be considered. We
therefore treat the registrations as being of record.
Ser No. 85104508
9
cuisine prepared by well-known chefs, that argument is not
persuasive. The cited registrations are for “restaurant
services,” and that means that the registrant has the right
to use its marks for all restaurant services, not only for
restaurants serving authentic Mexican cuisine prepared by
well-known chefs. See Section 7(b) of the Trademark Act:
“A certificate of registration … shall be prima facie
evidence … of the owner’s exclusive right to use the
registered mark in commerce on or in connection with the …
services specified in the certificate….” As a result, we
must assess the du Pont conditions of purchase factor from
the standpoint of “restaurant services,” which includes
inexpensive restaurants that might be visited as a result
of an impulse decision. This factor favors a finding of
likelihood of confusion.
Because applicant has also asserted that the applicant
and registrant offer their restaurant services in different
geographic locations, we must point out that even if there
is a current geographic distance in the operations, we may
not take this into consideration. The registrant’s
registration gives it the right to use its mark in commerce
throughout the United States, and if applicant were to
obtain a registration it would have a similar right. As a
result, we must make the determination of whether confusion
Ser No. 85104508
10
is likely based on the assumption that applicant and the
registrant could operate in the same geographic areas.5
Applicant has asserted that it adopted its mark
without any intent of creating confusion. However,
although a deliberate intent to cause confusion can be
strong evidence of likelihood of confusion, the absence of
such intent does not have any bearing on our decision.
Even if applicant did not intend to create confusion, if
applicant’s use of its mark is likely to cause confusion,
the refusal of registration must be affirmed.
The final du Pont factor that has been discussed is
the absence of actual confusion. Uncorroborated statements
of no known instances of actual confusion are of little
evidentiary value. In re Majestic Distilling Co., 65
USPQ2d at 1205. In this case, the fact that applicant and
the registrant appear to operate in separate geographic
areas may explain the lack of any actual confusion.
Certainly we cannot conclude, from the lack of such
evidence, that confusion is not likely to occur. This
du Pont factor is neutral.

5 The statute does provide for concurrent use registrations, and
concurrent use proceedings, for registrations that are
geographically restricted. See Sections 2(d), 17 and 18 of the
Trademark Act.

Ser No. 85104508
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To the extent that any other du Pont factors are
relevant, we treat them as neutral.
In view of the above discussion, and our finding that
the factors of the similarity of marks, the legally
identical services and trade channels, and the conditions
of purchase all favor a finding of likelihood of confusion,
and that any other du Pont factors are neutral, we find
that applicant’s mark for its services is likely to cause
confusion with the mark registered under Registration No.
3176886, and affirm the refusal of registration made
pursuant to Section 2(d).
The examining attorney also made final a requirement
that applicant submit a fee of $50 because its application
did not meet the requirements for the reduced fee of a TEAS
plus filing. Specially, applicant did not include in its
original application a translation for the foreign wording
in its mark. TMEP Section 819.01(m) states, in part:
If the mark includes non-English wording, the
application must include an English translation
of that wording. … The TEAS Plus form does not
include any edits to determine when a translation
and/or transliteration is required. If a
translation and/or transliteration is omitted,
the examining attorney will issue an Office
action requiring the additional fee. 37 C.F.R.
§§ 2.6(a)(1)(iv) and 2.22(b).

Trademark Rule 2.22 (b), 37 C.F.R. § 2.22(b), provides
that “if an application does not meet the requirements of
Ser No. 85104508
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paragraph (a) of this section at the time of filing, the
applicant must pay the fee required by § 2.6(a)(1)(iv),”
and that section requires an additional processing fee of
$50 per class.
The examining attorney made the requirement for this
additional fee in the first Office action because the
application did not include a translation of all non-
English wording in the mark. He made this requirement
final in the next Office action. Applicant did not address
this requirement in either a response to an Office action
or in its brief. Therefore, it appears that applicant has
conceded the correctness of this requirement. In any
event, we find that applicant did not include a translation
statement in its original application, nor did it comply
with the requirement to submit the additional fee.
Accordingly, we affirm this requirement.
Decision: The refusal of registration pursuant to
Section 2(d) is affirmed; the requirement to submit the
additional fee under 37 C.F.R. §§ 2.22(b) and
§ 2.6(a)(1)(iv) is also affirmed.