Centruro, S.A. de C.V.

Trademark Trial and Appeal Board

Mar 25, 2019

EX (T.T.A.B. Mar. 25, 2019)

Mailed: March 25, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
————
In re Centruro, S.A. de C.V.
————
Serial No. 77946053
————
Vivian Ortiz-Ponce of Marcas Estados Unidos,
for Centruro, S.A. de C.V.
Ronald McMorrow, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
————
Before Cataldo, Pologeorgis, and Coggins,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Centruro, S.A. de C.V. (“Applicant”) seeks registration on the Principal Register
of the mark ALACRAN (in standard characters) for “Alcoholic beverages except beers;
distilled blue agave liquor” in International Class 33.1

1 Application Serial No. 77946053, filed on February 26, 2010, based upon an allegation of a
bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b). The application includes the following translation statement: “The
English translation of ‘ALACRAN’ in the mark is ‘SCORPION.’”
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77946053
2
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the following two marks registered on the Principal
Register and owned by the same registrant: (1) SCORPION MEZCAL (in standard
characters; MEZCAL disclaimed) for “alcoholic beverages, namely, Mezcal” in
International Class 33,2 and (2) SCORPION and design, as displayed below, for
“Alcoholic beverages, namely, Distilled Spirits” in International Class 33.3

When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed. We affirm the refusal to register.4

2 Registration No. 3841502, registered on August 31, 2010; renewed.
3 Registration No. 4340359, registered on May 28, 2013; renewed. The description of the mark
reads as follows: “The mark consists of a rectangle, having an upper concave portion in the
color RED and a lower larger convex portion in the color YELLOW. The word ‘SCORPION’
in the color BLACK appears in the red portion of the rectangle. A drawing of a scorpion in
the color BLACK appears in the YELLOW portion of the rectangle. A scroll border in the
color BLACK surrounds the rectangle.” The colors red, black and yellow are claimed as a
feature of the mark.
4 The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations refer to
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .PDF version of the documents.
Serial No. 77946053
3
I. Preliminary Issue – Applicant’s Request to Amend Identification of Goods
In its appeal brief, Applicant requests for the first time a proposed amendment of
its identification of goods. By way of the proposed amendment, Applicant seeks to
restrict the identification to “distilled blue agave liquor” only.5 If Applicant wished to
amend its identification of goods, it should have filed with the Board a request for
suspension of the appeal and, upon showing of good cause, a request to remand its
application for consideration of the proposed amendment by the Examining Attorney.
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1209.04
(2018) (“Requests for remand are generally filed by applicants because they wish to
make additional evidence of record, or because they wish to amend the application.
… No matter what the purpose, the request for remand must include a showing of
good cause.”). Applicant did not do so. Accordingly, Applicant’s untimely request to
amend its identification of goods, as set forth in its appeal brief, will be given no
consideration. Our determinations herein are based on Applicant’s identification of
goods, as amended prior to this appeal.6

5 We note that Applicant’s identification of goods, as originally filed, read as follows:
“Alcoholic beverages except beers; Tequila.” In his July 5, 2017 Office Action, the Examining
Attorney noted that the word “tequila” was previously included in the USPTO’s U.S.
ACCEPTABLE IDENTIFICATION OF GOODS AND SERVICES MANUAL, but on June 20, 2017, the
USPTO registered the certification mark TEQUILA for “distilled spirits, namely, spirits
distilled from the blue tequilana weber variety of agave plant.” July 5, 2017 Office Action;
TSDR p. 1. As such, the Examining Attorney required Applicant to either delete the word
“tequila” from its identification of goods or, alternatively, provide the common commercial or
generic name of the goods. Id. In its February 8, 2018 Response, Applicant requested that
the term “tequila” be deleted from its identification and replaced with the wording “distilled
blue agave liquor,” see February 8, 2018 Response, TSDR p. 4, which was eventually approved
and entered by the Examining Attorney.
6 Even assuming that Applicant had requested a remand of its application that was granted
Serial No. 77946053
4
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the goods
and differences in the marks.”).
A. Similarity of the Goods
We initially turn to the comparison of the goods at issue, the second du Pont factor.
In making our determination regarding the relatedness of the goods, we must look to
the goods as identified in Applicant’s application and the cited registrations. See
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Comput. Servs. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must be decided on the basis of
the identification of goods set forth in the application regardless of what the record

by the Board and the Examining Attorney, in turn, had approved the limitation to the
identification of goods as requested by Applicant, it would not affect our decision for the
reasons explained infra.
Serial No. 77946053
5
may reveal as to the particular nature of an applicant’s goods, the particular channels
of trade or the class of purchasers to which the sales of goods are directed.”)); see also
In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
Applicant’s identified goods are “Alcoholic beverages except beers; distilled blue
agave liquor.” The goods identified in the cited registrations are (1) “alcoholic
beverages, namely, Mezcal” (Registration No. 3841502) and (2) “Alcoholic beverages,
namely, Distilled Spirits” (Registration No. 4340359). In this case, the broadly
worded “alcoholic beverages except beers” identified in Applicant’s application
encompasses all of Registrant’s identified goods, i.e., Mezcal and distilled spirits, and,
therefore, the parties’ goods are legally identical in part. Further, Registrant’s
“Alcoholic beverages, namely, Distilled Spirits” is worded broadly enough to include
Applicant’s “distilled blue agave liquor.” Accordingly, these specific goods are also
legally identical in part.
Finally, the Examining Attorney has submitted numerous active third-party
registrations demonstrating that third-parties have registered marks identifying
both “tequila” and Registrant’s “Mezcal.”7 Although such registrations are not

7 May 12, 2017 Office Action; TSDR pp. 10-41.
As noted supra, “tequila” is no longer an acceptable identification because it has been
registered as a certification mark to a third-party. We assume therefore that the third-party
registrations submitted by the Examining Attorney issued prior to this change in
identification policy. Notwithstanding, we take judicial notice of the definition of “tequila”
which is defined as “a Mexican liquor made chiefly from the fermented sap of the blue agave
that has been subjected to two separate distillations.” See www.merriam-webster.com. The
Board may take judicial notice of dictionary definitions, including online dictionaries that
exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014),
aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome
Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010). In view of this definition, we find that
Serial No. 77946053
6
evidence that the marks shown therein are in use or that the public is familiar with
them, they nonetheless have some probative value to the extent that they serve to
suggest that the goods listed therein are of a kind which may emanate from a single
source under a single mark. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6
(TTAB 1988).
The second du Pont factor therefore strongly favors a finding of likelihood of
confusion.
B. Similarity of Trade Channels and Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third du
Pont factor. Because the identifications of Applicant’s goods and Registrant’s goods
are legally identical in part and have no restrictions as to channels of trade or classes
of customers, it is presumed that the trade channels and classes of purchasers are
the same for these legally identical in part goods. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to
travel in same channels of trade to same class of purchasers); In re Yawata Iron &
Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
the same); In re Am. Cruise Lines, Inc., 128 USPQ2d 1157, 1158 (TTAB 2018).

“tequila,” as identified in the third-party registrations, is a good identical to Applicant’s
“distilled blue agave liquor.” As such, these third-party registrations demonstrate that
Applicant’s “distilled blue agave liquor” and Registrant’s “Mezcal” may emanate from a single
source under the same mark.
Serial No. 77946053
7
Thus, the third du Pont factor also weighs in favor of finding a likelihood of
confusion.
C. Similarity of the Marks
We consider next the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the
marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” In re i.am.symbolic, LLC, 866 F.3d 1315,
123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)) (internal
quotation marks omitted).
Applicant’s mark is ALACRAN in standard characters. The cited marks are
SCORPION MEZCAL in standard characters and . When viewing
Registrant’s SCORPION MEZCAL mark, the term SCORPION is likely to be
accorded more weight by consumers because the remaining wording MEZCAL is
generic for Registrant’s goods, i.e., Mezcal, and has been appropriately disclaimed.
As such, MEZCAL is less likely to make an impact in the minds of consumers. See In
re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)
(disclaimed matter that is descriptive of or generic for a party’s goods is typically less
significant or less dominant when comparing marks); see also In re Nat’l Data Corp.,
Serial No. 77946053
8
753 F.2d 1056, 224 USPQ 749, 753 (Fed. Cir. 1985). Similarly, when viewing
Registrant’s mark, consumers are likely to afford the literal term
SCORPION more significance since “the verbal portion of the mark is the one most
likely to indicate the origin of the goods to which it is affixed.” Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015), (citing CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)). Greater weight is often given to the
wording because it is the wording that purchasers would use to refer to or request the
goods or services. See, e.g., In re Viterra, Inc., 101 USPQ2d at 1911. Notwithstanding,
the fact the design element of Registrant’s mark includes the pictorial
depiction of a scorpion only reinforces the dominant nature of the literal term
SCORPION in this mark. The rectangular border and colors similarly appear as
background for the word SCORPION and design of a scorpion and, as such, possess
limited source-identifying capacity separate therefrom. Accordingly, we find that the
term SCORPION is the dominant element in both of the cited marks.
The evidence of record clearly demonstrates that Applicant’s applied-for mark,
i.e., ALACRAN, is the Spanish word for the English term “scorpion.”8 The evidence
of record also establishes that Spanish is the most widely spoken non-English

8 February 23, 2018 Office Action; TSDR pp. 20-23.
Serial No. 77946053
9
language in the United States.9 Applicant does not deny that “the Spanish language
is a common, modern language, spoken by a large number of consumers in the United
States.”10 As such, the Examining Attorney asserts that the “doctrine of foreign
equivalents” is applicable in this case in that Applicant’s mark, ALACRAN, is in a
common, modern foreign language (Spanish) and that the dominant element of
Registrant’s marks, namely, the term SCORPION, is the English equivalent thereof.
The Examining Attorney, therefore, concludes that the marks at issue are identical
in connotation.11
In traversing the refusal, Applicant argues that the marks are not similar in
sound or appearance and, therefore, confusion is unlikely.12 A refusal based on the
doctrine of foreign equivalents, however, does not rely solely on similarity of the
appearance or sound of the marks at issue; instead it also includes the connotation or
meaning attributed to the mark when the ordinary American purchaser translates
the foreign language mark. See In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28
(TTAB 2015) (“even when there are differences in the sound and appearance of two
marks, likelihood of confusion can be found when the equivalency in meaning or
connotation outweighs the differences in the marks.). Accordingly, Applicant’s
argument that the marks are dissimilar in appearance and pronunciation, while

9 Id.; TSDR pp. 5-19.
10 Applicant’s Appeal Brief, p. 3; 9 TTABVUE 4.
11 Examining Attorney’s Appeal Brief, 11 TTABVUE 5-6.
12 Applicant’s Appeal Brief, p. 5; 9 TTABVUE 6.
Serial No. 77946053
10
valid, is unavailing by itself.
Applicant further argues that the most common translation of the English term
SCORPION is the Spanish word ESCORPION.13 Applicant, however, has not
submitted any evidence to substantiate the putative primacy of this translation.
Moreover, the evidence of record undercuts Applicant’s contention. Specifically, as
noted above, Applicant itself, in its application, stated that the translation of its
applied-for ALACRAN mark is the English term “scorpion.” Furthermore, the
Examining Attorney has submitted screenshots from Applicant’s website which show
a pictorial depiction of a scorpion appearing directly beneath the designation
ALACRAN on the label of Applicant’s goods.14 The Examining Attorney also
submitted an article reviewing Applicant’s goods from the website
www.tastetequila.com entitled “Alacran Tequila – Does the Scorpion Have a Bitter
Sting?, as well as an article from the website www.distiller.com rating Applicant’s
product which states “Auténtico Alacrán (“authentic scorpion”) was founded in
2010.”15 The foregoing evidence, as well as the dictionary definition of record, clearly
establishes that that the English translation of Applicant’s ALACRAN mark is the
term “scorpion.”
Finally, Applicant asserts that the doctrine of foreign equivalents is not an
absolute rule and cannot be applied automatically and, under the circumstances,

13 Id.
14 September 8, 2018 Denial of Request for Reconsideration; 5 TTABVUE 10-13.
15 Id.; 5 TTABVUE 14-17.
Serial No. 77946053
11
should not be applied to this case.16 We disagree that the application of the doctrine
of foreign equivalents in this case is inappropriate for the reasons set forth below.
Whether the doctrine of foreign equivalents is relevant turns upon the significance
of the foreign mark to the relevant purchasers, which is based on an analysis of the
evidence of record. The doctrine may be applied to words or terms from common,
modern languages. Palm Bay Imps. Inc., 73 USPQ2d at 1696. Although words from
modern languages are generally translated into English, the doctrine of foreign
equivalents has evolved into a guideline, not an absolute rule, and is applied only
when it is likely that “the ordinary American purchaser would ‘stop and translate’
[the term] into its English equivalent.” Id. (quoting In re Pan Tex Hotel Corp., 190
USPQ 109, 110 (TTAB 1976)). See generally TRADEMARK MANUAL OF EXAMINING
PROCEDURE (“TMEP”) § 1209.03(g) (Oct. 2018). However, “[w]hen it is unlikely that
an American buyer will translate the foreign mark and will take it as it is, then the
doctrine of foreign equivalents will not be applied.” Palm Bay Imps. Inc., 73 USPQ2d
at 1696 (citing In re Tia Maria, 188 USPQ 524 (TTAB 1975) (no likelihood of confusion
between TIA MARIA for a Mexican restaurant and AUNT MARY’S for canned
vegetables)). The “ordinary American purchaser” includes “all American purchasers,
including those proficient in a non-English language who would ordinarily be
expected to translate words into English.” In re Spirits Int’l, N.V., 563 F.3d 1347, 90
USPQ2d 1489, 1492 (Fed. Cir. 2009).
In this case, we agree with the Examining Attorney that the doctrine of foreign

16 Applicant’s Appeal Brief, p. 3; 9 TTABVUE 4.
Serial No. 77946053
12
equivalents is relevant to this proceeding and the ordinary American purchasers of
alcoholic beverages would understand that SCORPION is the English equivalent of
Applicant’s mark ALACRAN, and vice-versa. The term, whether in English or
Spanish, has no demonstrated meaning in the context of alcoholic beverages and will
likely be understood as an arbitrary use of the word. Thus, the significance to the
alcoholic beverage consumer of the terms ALACRAN and SCORPION will likely be
the same.
The Tia Maria decision, which Applicant cites in support of its argument that the
doctrine of foreign equivalents should not apply in this case,17 involved an applicant
offering restaurant services under the mark TIA MARIA versus a registrant’s use of
AUNT MARY’S on canned fruit and vegetable products. The Board clearly took into
consideration the context in which consumers would encounter the respective marks
in connection with the involved goods and services when deciding whether consumers
would perceive the marks as equivalents:
But, nevertheless there are foreign expressions that even those familiar
with the language will not translate, accepting the term as it is, and
situations arise in the marketplace which make it unfeasible or even
unlikely that purchasers will translate the brand names or labels
appearing on canned foods and other like products. ... That is, insofar as
this reasoning applies to the instant case, it is unlikely to expect that a
person encountering “AUNT MARY’S” canned fruits and vegetables in
a supermarket or other establishment where goods of this type are
customarily sold would translate “AUNT MARY’S” into “TIA MARIA”,
and then go one step further and associate these food products with
applicant’s restaurant. Likewise, going the other route, it is difficult to
perceive that a person who had purchased “AUNT MARY’S” canned
fruits and vegetables on the shelves of a supermarket would, upon
dining at the “TIA MARIA” restaurant in Mexican decor and surrounded

17 Id. at p. 4; 9 TTABVUE 5.
Serial No. 77946053
13
by a menu of Mexican delicacies, translate “TIA MARIA” into “AUNT
MARY” and then mistakenly assume that the “TIA MARIA” restaurant
and “AUNT MARY’S” canned fruits and vegetables originate from or are
sponsored by the same entity.
In re Tia Maria, Inc., 188 USPQ at 526.
In contrast, in this case we must consider the fact that consumers will be
encountering the involved marks on legally identical in part goods, i.e., alcoholic
beverages. As discussed above, we must also presume that the same consumers will
be encountering these marks on alcoholic beverages in the same, usual trade channels
for such goods, including liquor stores, online retailers, and bars and restaurants.
Thus, unlike Tia Maria, the environment in which the marks are encountered is the
same and we do not find it “difficult to perceive” that a consumer would stop and
translate the two marks upon encountering them on alcoholic beverages. Rather,
consumers are likely to view these in-part legally identical goods as emanating from
a common source, marketed under marks that share a common term in different
languages.
Under the circumstances, we find that the similarity between the marks based on
them having the same meaning or connotation outweighs the differences based on
sound and appearance, and the du Pont factor of the similarity or dissimilarity of the
marks weighs in favor of a finding of likelihood of confusion. In re Sarkli, Ltd., 721
F.2d 353, 220 USPQ 111, 113 (Fed. Cir. 1983) (“the PTO may reject an application ex
parte solely because of similarity in meaning of the mark sought to be registered with
a previously registered mark”); see also Bost Bakery, Inc. v. Roland Indus., Inc., 216
USPQ 799, 801 (TTAB 1991) (“the principle that similarity between marks in
Serial No. 77946053
14
meaning or commercial significance alone may be sufficient to create a likelihood of
confusion is applicable primarily to situations where marks are coined or arbitrary
rather than highly suggestive”).
III. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. Because we have
found that the marks at issue are identical in meaning or connotation based on the
application of the doctrine of foreign equivalents; that Applicant’s identified goods
are legally identical in part to Registrant’s goods; that the goods are presumed to
move in similar or overlapping trade channels and that they would be offered to the
same or overlapping classes of purchasers, we conclude that Applicant’s ALACRAN
mark, as used in connection with the goods identified in its involved application, so
resembles the cited marks SCORPION MEZCAL and SCORPION and design as to
be likely to cause confusion or mistake, or to deceive under Section 2(d) of the
Trademark Act.
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.