Azteca Restaurant Enterprises, Inc.

Trademark Trial and Appeal Board

Jan 29, 1999

No. 74666488 (T.T.A.B. Jan. 29, 1999)

Hearing: Paper No. 16
December 4, 1997 JQ
THIS DISPOSITION IS CITABLE AS
PRECEDENT OF THE TTAB JAN. 29, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Azteca Restaurant Enterprises, Inc.
________
Serial No. 74/666,488
_______
KiSong Kim Lang-Caditz of Christensen, O’Connor, Johnson &
Kindness for applicant.
Anthony R. Masiello, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
_______
Before Hanak, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Azteca Restaurant
Enterprises, Inc. to register the mark AZTECA MEXICAN
RESTAURANT in typed form for “restaurant services.”1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Act on the ground

1 Application Serial No. 74/666,488, filed April 26, 1995,
alleging dates of first use of December 7, 1977. The words
“Mexican Restaurant” are disclaimed apart from the mark. The
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that applicant’s mark, when applied to applicant’s
services, so resembles the following previously registered
marks, all owned by the same entity, as to be likely to
cause confusion: AZTECA in typed form for “partially
prepared Mexican foods, namely tortillas”;2 the mark shown
below
for “flour taco shells, flour tortillas, corn tortillas,
chunky salsa”3 and “all-purpose flour-based tortilla”;4 and
the mark shown below
for “tortillas.”5
Applicant and the Examining Attorney have filed briefs
and both appeared at an oral hearing.

application includes the statement that “’Azteca’ is translated
as the noun or adjective Aztec.”
2 Registration No. 956,581, issued April 3, 1973; renewed.
3 Registration No. 1,445,441, issued June 30, 1987; combined
Sections 8 and 15 affidavit filed.
4 Registration No. 1,788,335, issued August 17, 1993.
5 Registration No. 1,792,819, issued September 14, 1993. The
word “Foods” is disclaimed apart from the mark. The drawing is
lined for the colors yellow, green, red and blue.
Ser No. 74/666,488
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Applicant contends that there is no per se rule in
likelihood of confusion cases where similar marks are used
in connection with restaurants and food products, pointing
to prior published decisions with findings of no likelihood
of confusion. Applicant also asserts that its mark is
“nationally recognized and well known,” yet applicant,
according to its attorney, is unaware of any instances of
actual confusion with registrant’s marks despite
approximately twenty years of contemporaneous use. In
support of its position, applicant submitted excerpts
retrieved from the NEXIS database which, according to
applicant, “reflect acknowledgment and recognition in
nationally distributed magazines and newsletters of the
goodwill associated with applicant’s service mark.”
Applicant also submitted a dictionary listing for the word
“Aztec”: “a member of an Indian people of Central Mexico,
noted for their advanced civilization before Cortes invaded
Mexico in 1519; also aztecan; of the Aztecs, their
language, culture, or empire.” Applicant further
introduced three third-party applications and two third-
party registrations (one of which stands canceled) of
AZTECA marks for food and beverage items.
The Examining Attorney maintains that the refusal is
proper, pointing to the essential identity of the marks and
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the relationship between registrant’s Mexican food products
and applicant’s Mexican restaurant services. The Examining
Attorney asserts that registrant’s goods are the type of
food items that are served in applicant’s restaurants, and
that food products and restaurant services are commonly
marketed by a single entity under a single mark. In
connection with the refusal to register, the Examining
Attorney submitted ten third-party registrations showing
that, in each instance, a single entity registered the same
mark for both restaurant services and food products, and
dictionary listings for the terms “salsa,” “taco” and
“tortilla.”6
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services.
We recognize, at the outset, that there is no per se
rule which mandates a finding that confusion is likely

6 The dictionary evidence, which accompanied the appeal brief, is
proper subject matter for judicial notice. University of Notre
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whenever foods and restaurant services are sold under
similar marks. See, e.g.: Jacobs v. International
Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA 1982)
[no likelihood of confusion between BOSTON TEA PARTY for
tea and BOSTON SEA PARTY for restaurant services; “a party
must show something more than that similar or even
identical marks are used for food products and for
restaurant services”]; and In re Central Soya Company,
Inc., 220 USPQ 914 (TTAB 1984) [no likelihood of confusion
between POSADA (stylized) for Mexican style prepared frozen
enchiladas and LA POSADA for lodging and restaurant
services]. In the case now before us, we have applied no
per se rule, but rather have decided this case on its own
facts, examining the parties’ particular marks and
particular goods and services.
Turning first to consideration of the respective goods
and services, it is well settled that they need not be
identical or even competitive in nature in order to support
a finding of likelihood of confusion. Instead, it is
sufficient that the goods and services are related in some
manner and/or that the circumstances surrounding their
marketing are such that they would be likely to be

Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
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encountered by the same persons under situations that would
give rise, because of the marks employed in connection
therewith, to the mistaken belief that they originate from
or are in some way associated with the same producer or
provider. See, e.g., Monsanto Co. v. Enviro-Chem Corp.,
199 USPQ 590, 595-96 (TTAB 1978); and In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
The Examining Attorney, in support of his contention
that applicant’s Mexican restaurant services are related to
registrant’s Mexican food items, submitted dictionary
definitions of the three food items listed in registrant’s
registrations. Each one, “salsa,” “taco” and “tortilla” is
defined in terms of “Mexican cookery.” The Examining
Attorney also introduced ten use-based third-party
registrations of marks which, in each instance, are
registered for restaurant services, on the one hand, and
food items, on the other. Five of the registrations cover
both restaurant services and Mexican food items. Although
these ten registrations are not evidence that the different
marks shown therein are in use or that the public is
familiar with them, they nevertheless have some probative
value to the extent that they serve to suggest that the
goods and services listed therein (which are the same types
of goods and services involved here) are of a kind which
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may emanate from a single source. See, e.g., In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993);
and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470
at n. 6 (TTAB 1988).
Applicant’s mark itself makes it clear that its
restaurant serves Mexican food, and a review of applicant’s
menu shows that applicant serves a variety of Mexican fare,
including tacos, tortillas and salsa (that is, the very
items listed in the cited registrations). In addition, in
the “TO-GO” section on the last page of its menu, applicant
lists tortillas as well as a “Jar of Azteca Hot Sauce.”
Thus, at least with respect to the hot sauce, applicant
already is marketing for retail sale a food product under
the mark AZTECA.
In view of the above, we concur with the Examining
Attorney’s assessment that the respective goods and
services are related. Contrary to applicant’s arguments,
we find that the record here satisfies the “something more”
evidentiary language articulated by our primary reviewing
court in Jacobs v. International Multifoods Corp., supra at
642. As the evidence in the present case indicates,
Mexican food items are often principal items or entrees
served by restaurants, certainly by Mexican restaurants.
The average consumer, therefore, would be likely to view
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Mexican food items and Mexican restaurant services as
emanating from or sponsored by the same source if such
goods and services are sold under the same or substantially
similar marks. See: In re Golden Griddle Pancake House
Ltd., 17 USPQ2d 1074 (TTAB 1990) [GOLDEN GRIDDLE PANCAKE
HOUSE (PANCAKE HOUSE disclaimed) for restaurant services
and GOLDEN GRIDDLE for table syrup is likely to cause
confusion; undeniable connection between pancake syrup and
a restaurant that serves pancakes and syrup, especially
since “restaurants frequently package certain of their
products for retail sale”]; and Roush Bakery Products Co.,
Inc. v. Ridlen et al., 190 USPQ 445 (TTAB 1976) [customers
of opposer’s HILLBILLY bread and rolls are likely to
believe that applicant’s restaurant, using essentially the
same mark, is approved or sponsored by, or is affiliated
with opposer; the likelihood of confusion is aggravated by
applicant’s sales of bread which is precisely opposer’s
product].
With respect to the marks, although they must be
considered in their entireties, it is nevertheless the case
that, in articulating reasons for reaching a conclusion on
the issue of likelihood of confusion, “there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
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mark, provided [that] the ultimate conclusion rests on
consideration of the marks in their entireties.” In re
National Data Corp., 753 F.3d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). For example, “that a particular feature is
descriptive or generic with respect to the involved goods
or services is one commonly accepted rationale for giving
less weight to a portion of a mark....” Id. at 751.
Here, in the case of applicant’s mark AZTECA MEXICAN
RESTAURANT, the disclaimed words “MEXICAN RESTAURANT”
clearly are generic for the type of services offered by
applicant. On applicant’s menus, which are the specimens
of record, the words appear on a line below the term AZTECA
and are in smaller type than the term AZTECA. Certainly,
when applicant’s mark is viewed as a whole, it is the term
AZTECA which is the dominating and distinguishing element
thereof. See, e.g., In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir 1997) [dominant
portion of the mark THE DELTA CAFÉ and design (CAFE
disclaimed) for restaurant services is the word DELTA,
citing In re National Data Corp., 224 USPQ 751]. Likewise,
registrant’s logo mark shown in Registration No. 1,792,819
is dominated by the term AZTECA. Further, the stylization
of the letters of the mark shown in Registration Nos.
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1,445,441 and 1,788,335 does not serve to distinguish the
involved marks.
In view of the above, we find that applicant’s mark
AZTECA MEXICAN RESTAURANT and registrant’s AZTECA marks are
substantially similar, when considered in their entireties,
in sound, appearance and connotation. The marks convey
essentially the same commercial impression, that is, an
ethnic sounding term suggesting Mexican food. However, we
do not think the term AZTECA is so highly suggestive that
the scope of protection accorded to registrant’s mark for
Mexican food items would not extend to the use of AZTECA in
connection with restaurants featuring Mexican cuisine.
The two third-party registrations (one now canceled)
and three third-party applications (each based on intent to
use), all for AZTECA marks, do not persuade us to reach a
different result here. The evidence (most especially, the
intent-to-use applications) is of little probative value on
the question of whether or not the marks at issue here are
in conflict. See: Hilson Research Inc. v. Society for
Human Resource Management, 27 USPQ2d 1423, 1431 (TTAB
1993). At most, the evidence only tends to confirm the
obvious suggestiveness of the term “Azteca,” the meaning of
which is already established by applicant’s translation
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statement and the dictionary definition of the term
“Aztec.”
In deciding this case, we have considered a case
highlighted by applicant in its argument, namely Steve’s
Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477 (TTAB
1987). Our view, however, is that the prior case is
distinguishable from the present one. Unlike the present
case which involves essentially identical marks, the marks
in Steve’s were different (the design element in the
applicant’s STEVE’S and design mark for hot dog restaurant
services featured anthropomorphic frankfurter characters
which served to distinguish such mark from the registrant’s
mark STEVE’S for ice cream). Moreover, in the prior case,
there was no evidence that the applicant made or sold ice
cream, or that any one business made or sold ice cream
under the same mark in connection with which it rendered
restaurant services. That record is to be contrasted with
the one before us here.
Insofar as applicant’s reliance on the case of Lloyd’s
Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d
2027 (Fed. Cir. 1993) is concerned, the Examining Attorney
is correct in disputing applicant’s contention that the
case establishes the proposition that foods and restaurants
are not related. The Examining Attorney stated the
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following: “Lloyd’s involved a case of summary judgment.
The court held that it was error to treat foods and
restaurant services as related because it constituted
drawing an inference against the non-moving party. Lloyd’s
does not establish that such a finding is wrong; rather,
such a finding is merely inappropriate on a motion for
summary judgment.” See also: Jaquet-Girard, S.A. v.
Girard Perregaux & Cie, S.A., 423 F.2d 1395, 165 USPQ 265
(CCPA 1970) [“prior decisions on different marks under
different circumstances are of little value in deciding a
specific issue of likelihood of confusion”].
We note applicant’s attorney’s claim that applicant is
unaware of any instances of actual confusion during the
approximately twenty years of contemporaneous use of
applicant’s “nationally recognized and well known” mark and
registrant’s mark. As a du Pont factor, the absence of
actual confusion weighs, of course, in applicant’s favor.
However, while applicant has received some recognition in
publications with a national circulation, applicant’s chain
of restaurants is located in only two states, Washington
and Oregon. Registrant appears to be located in Chicago,7
and it may be the case that, despite the overlapping years

7 The cited registrations indicate that registrant is located in
Chicago, Illinois.
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of use, there has been no meaningful opportunity for actual
confusion to occur in the marketplace. Further, given the
relatively inexpensive nature of the menu items at
applicant’s restaurants, and the obviously inexpensive
nature of registrant’s food products, we wonder if
purchasers would even be aware of their confusion, and if
they were, whether they would take the trouble to inform
either of the trademark owners.
To the extent that the points raised by applicant may
cast doubt on our ultimate conclusion on the issue of
likelihood of confusion, we resolve that doubt, as we must,
in favor of the prior registrant. In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); and In re Hyper Shoppes (Ohio), Inc., 837 F.2d
463, 6 USPQ2d 1025 (Fed. Cir. 1988).
We conclude that consumers would be likely to
mistakenly believe that registrant’s Mexican food products
sold under the mark AZTECA and applicant’s restaurant
services rendered under the mark AZTECA MEXICAN RESTAURANT
originated with or are somehow associated with or sponsored
by the same entity.
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Decision: The refusal to register is affirmed.
E. W. Hanak
T. J. Quinn
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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