Alanis Seafoods, Inc.v.La Gloria Foods Corp.

Trademark Trial and Appeal Board

Jun 30, 1998

No. 91088423 (T.T.A.B. Jun. 30, 1998)

Paper No. 57
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 6/30/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Alanis Seafoods, Inc.
v.
La Gloria Foods Corporation
_____
Opposition No. 88,423
to application Serial No. 74/190,011
filed on July 30, 1991
_____
Jon M. Rannells of Baker & Friedman for Alanis Seafoods,
Inc.
Lee New of Thorpe & Thorpe for La Gloria Foods Corporation
______
Before Cissel, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 30, 1991, applicant, a corporation organized
and existing under the laws of California, applied to
register the mark “LA GLORIA” in typed form for “corn and
flour tortillas and taco shells” in Class 30, based on a
claim of use of the mark since August of 1954 and use in
interstate commerce since January of 1964. Applicant
provided an English translation of the Spanish words “LA
GLORIA” as “THE GLORY.” The Patent and Trademark Office
Opposition No. Error! Reference source not found.
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passed the application to publication, which took place on
May 5, 1992.
On July 20, 1992, a timely notice of opposition was
filed by Alanis Seafoods, Inc., a Massachusetts corporation.
As grounds for the opposition, opposer asserted prior use
and registration1 of the mark “GLORIA” for “canned, bottled,
or packaged foods-namely, pickled peppers, olives, mixed
garden salad, vinegar, onions, maraschino cherries, fruits,
vegetables, fish, and grated cheese” and for “edible olive
oil” ; and that applicant’s use of “LA GLORIA” in connection
with the goods set forth in the application so resembles
opposer’s mark that it is likely to cause confusion,
mistake, or to deceive.
In answer to the notice of opposition, applicant denied
the essential allegations of opposer and asserted, as an
affirmative defense, that opposer is barred from objecting
to registration of applicant’s mark by the doctrine of
laches in view of applicant’s thirty-eight years of use of
“LA GLORIA” on its products.
A trial was conducted in accordance with the Trademark
Rules of Practice. The testimony of Maria Vera, applicant’s
vice president, was taken, and both parties filed notices of

1 Reg. No. 851,541, issued on June 25, 1968, and renewed for 20
additional years on June 25, 1988. Reg. No. 1,250,570, issued
September 6, 1983; affidavits under Sections 8 and 15 filed.
Both of these registrations are owned by opposer by virtue of
assignments from the original owner of them.
Opposition No. Error! Reference source not found.
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reliance with respect to each other’s responses to certain
of the interrogatories and requests for admission.
Additionally, opposer relied on several excerpts from
printed publications. Briefs were filed by both parties,
but an oral hearing before the Board was not requested.
In its appeal brief, opposer moved to strike a number
of opposer’s responses to applicant’s interrogatories and
requests for admission upon which applicant had relied by
means of its first two notices of reliance. The discovery
responses to which opposer objects relate to the actual form
in which opposer’s mark is used, the natures of the actual
products on which the marks are used, and the actual trade
channels and geographic areas of distribution for opposer’s
goods. Opposer argues that these facts are irrelevant and
immaterial to the issues before the Board in this
proceeding, and that the relied-upon responses should
therefore be stricken.
Opposer’s motion to strike is denied. The responses to
which opposer objects, however, have very little probative
value on the pleaded issues in the case. The drawings in
both the application and opposer’s registrations show the
words in typed form, without any special form or design
elements. The actual forms in which opposer and applicant
present the words “GLORIA” and “LA GLORIA,” respectively,
are therefore not relevant to resolution of the issue of
Opposition No. Error! Reference source not found.
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likelihood of confusion. In a similar sense, the Board must
consider only the goods set forth in applicant’s application
and the registrations of opposer, respectively, without
additions, deletions, limitations, restrictions, or
qualifications as to channels of trade or customers which
are not specifically reflected therein. For example, what
actually happens in the particular marketplaces where the
goods of the parties are sold, that applicant sells
primarily to restaurants catering to Mexican Americans in
the Los Angeles area, whereas opposer sells largely Greek
and Italian food products in the Northeast region of the
United States, is irrelevant to our inquiry. Opposer’s
registration must be accorded nationwide protection, and
applicant seeks the same for its mark.
Accordingly, although opposer’s motion to strike its
responses to applicant’s interrogatories and requests for
admissions is denied, these responses do not help establish
applicant’s case.
In a similar sense, we also deny opposer’s motion to
strike certain portions of the testimony of Ms. Vera to
which opposer had timely objected. Even if Ms. Vera’s
statements about the nature of her customers and their use
of her company’s products were not hearsay, for applicant to
make distinctions based on the natures of the actual goods
on which the marks are used, the design elements with which
Opposition No. Error! Reference source not found.
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they marks are actually being used, the trade channels
through which the goods actually move and the customers who
actually purchase them is pointless. Such facts are of
little probative value in this case because the marks in the
application and the pleaded registrations are shown in typed
form, without design elements, and the goods specified
therein are not limited or restricted in the ways applicant
argues they are in the actual markets where the products are
sold under the parties’ marks. Just as we deny opposer’s
motion to strike opposer’s discovery responses, we also deny
opposer’s motion to strike Ms. Vera’s testimony, but we note
that it has little probative value for applicant because the
testimony is largely related to facts which are irrelevant
to the issues at hand.
After careful consideration of the facts before us and
the relevant law on the issue of likelihood of confusion, we
hold that applicant is not entitled to the registration it
seeks. In view of its pleaded registrations, opposer has
priority, and confusion is likely because the marks of the
parties are very similar and the food products listed in the
application and in opposer’s registrations are closely
related, complementary goods. Under these circumstances,
the ordinary consumers to whom such grocery store items are
commonly sold are likely to assume that a single source is
responsible for both.
Opposition No. Error! Reference source not found.
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As noted above, priority is not an issue in view of
opposer’s unchallenged registrations of the mark “GLORIA.”
King Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).
Turning, then, to the marks, as we noted above,
“GLORIA” is very similar to “LA GLORIA.” The addition of
the Spanish equivalent of the feminine definite article,
“LA,” to opposer’s mark, “GLORIA,” does little to
distinguish applicant’s mark from opposer’s. Opposer notes
that in In re Hub Distributing, Inc., 218 USPQ 284,
285(f.n.1)(TTAB 1983), the Board recognized that “...use of
the Spanish article does not require a ‘the’ in the
equivalent English term.” Applicant’s mark may therefore be
translated as either “the glory” or simply “glory.” The
marks of applicant and opposer are therefore either
identical or virtually identical.
Several well recognized principles lead us to conclude
that the use of these very similar marks on the goods set
forth in the application and the pleaded registrations,
respectively, is likely to cause confusion. Although the
products in question are not identical, it is well settled
that in order for confusion to be likely, they do not have
to be. It is sufficient if they are related in some manner
and their character or the circumstances surrounding their
marketing are such that they would likely be encountered by
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the same people under circumstances that would give rise to
the mistaken belief that the producer was the same for both.
In re International Telephone and Telegraph Corp., 197 USPQ
910 (TTAB 1978). It is important to note, as we did above
in connection with opposer’s motions to strike, that our
concern is not extended to all the products with which
either party may actually be using its marks. Rather, we
must restrict our consideration to the specific products
listed in the respective application and registrations,
without reading into them any limitations not reflected
therein. Toys “R” Us, Inc. v. Lamps R Us, 219 USPQ 340,
(TTAB 1983), and cases cited therein. Further along the
same line, in the absence of restrictions in the respective
identifications of the goods in the application and the
pleaded registrations, we must assume that the products move
through all the normal and usual trade channels for goods of
the type identified. Fort Howard Paper Company v. Marchal
Paper Mills, Inc., 189 USPQ 305 (TTAB 1975); In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
When these principles are considered in light of the
evidence presented by opposer which shows that many of the
food items identified in the opposed application, such as
peppers, olives, mixed garden salad, onions, vegetables,
fish and grated cheese, are used as ingredients, along with
taco shells and corn and flour tortillas, to make tacos,
Opposition No. Error! Reference source not found.
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enchiladas and tostados, we are presented with a factual
basis for concluding that confusion is likely. A consumer
purchasing applicant’s “LA GLORIA” brand tortillas or taco
shells might also buy opposer’s “GLORIA” brand peppers,
olives, mixed green salad ingredients, onions, vegetables,
fish and/or grated cheese to make enchiladas, tostados or
tacos. Such an ordinary consumer is likely to assume that
one business is the source of all these products because of
the related natures of them and the similarity of the marks
used on them. Opposer, at p.9 of its brief, cites a number
of prior decisions wherein confusion was found likely when
similar marks were used in connection with food products
which were specifically different, but which could be sold
to the same class of purchasers for complementary use.
The instant case presents similar circumstances. Here,
applicant has admitted that the goods of the parties may be
used together to make particular food items. In addition,
opposer made of record cookbook excerpts which establish
this fact independent of applicant’s admission.
That there is no evidence of actual confusion in this
case is easily explained by the fact that, at least at this
juncture, these marks are used on the opposite sides of the
country. Under these circumstances, it is not hard to
understand why confusion has not yet occurred. There has
simply been no opportunity for it to have taken place.
Opposition No. Error! Reference source not found.
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Moreover, even though confusion in the marketplace would not
be likely to occur if the parties were to maintain their
current marketing practices, using different design elements
as parts of their marks and selling their goods in different
packaging to different customers in geographically remote
areas of the country, as we noted above, our decision on
this issue must be made on the unrestricted and unlimited
identifications of goods with which the application and
registrations here present us, and the usual trade channels
in which these kinds of products ordinarily travel.
If we were left with any doubt that confusion is
likely,(and we are not), it is important to remember that
any such doubt would necessarily be resolved against
applicant and in favor of opposer as the prior user. In re
Apparel, Inc. 578 F.2d 308, 151 USPQ 353 (CCPA 1966).
In conclusion, we note that applicant cannot
successfully defend this opposition proceeding by asserting
the equitable defense of laches. Applicant did not present
either evidence or argument on this pleaded defense, so
there has been no showing of detrimental reliance on
opposer’s inaction, but even if applicant had demonstrated a
basis for claiming that opposer had slept on its rights, the
law is clear that laches has no application in an opposition
such as this, where this proceeding is the first time
opposer has had the opportunity to make the claim that
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applicant is not entitled to registration of its mark. See:
National Cable Television Association v. American Cinema
Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir.
1991).
In summary, confusion is likely in the instant case
because applicant’s mark is virtually the same as opposer’s
mark, and the goods of the parties, as specified in the
application and registrations, respectively, are
complementary food products which move through the same
channels of trade to the same purchasers. Accordingly, the
opposition is sustained and registration to applicant is
refused.
R. F. Cissel
E. W. Hanak
T. J. Quinn
Administrative Trademark Judges
Trademark Trial and Appeal Board
Opposition No. Error! Reference source not found.
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