El Galan, Inc.

Trademark Trial and Appeal Board

Feb 1, 2018

No. 86961428 (T.T.A.B. Feb. 1, 2018)

Mailed: February 1, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
————
In re El Galan, Inc.
————
Serial No. 86961428
————
Frank Herrera of H New Media Law,
for El Galan, Inc.
Clare Cahill, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
————
Before Taylor, Pologeorgis and Larkin,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
El Galan, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark TERNURA (in standard characters) for “cigars” in International Class 34.1
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

1 Application Serial No. 86961428, filed on April 1, 2016, based on 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 of the mark: The English
translation of the word “TERNURA” in the mark is “KINDNESS.”
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 86961428
2
likelihood of confusion with the registered mark TERNURA (also in standard
characters) for “liquor; tequila; vodka; wines” in International Class 33.2
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.3
I. Preliminary Matter – Evidentiary Objection
We initially turn to an evidentiary objection lodged by the Examining Attorney
regarding evidence presented by Applicant for the first time with its appeal brief. The
Examining Attorney objects to various search results from Yahoo, Bing, and Google,4
as well as the submission of a screenshot from the Alcohol and Tobacco Tax and Trade
Bureau website, an Alcohol and Tobacco Tax and Trade Bureau Certificate of Label
Approval/Exemption form, and an image of Registrant’s specimen of use attached as
exhibits to Applicant’s appeal brief.
It is well-settled that the record in an ex parte proceeding should be complete
prior to appeal. Trademark Rule 2.142(d); 37 CFR § 2.142(d). Exhibits that are
attached to a brief but not made of record during examination are untimely, and will
not be considered. See In re Fitch IBCA, Inc., 64 USPQ2d 1058, 1059 n.2 (TTAB 2002);

2 Registration No. 4994298, issued on July 5, 2016. The registration includes the following
translation of the mark: The English translation of the word “TERNURA” in the mark is
“TENDERNESS.”
3 Unless otherwise specified, all TTABVUE and Trademark Status and Document Retrieval
(“TSDR”) citations reference the docket and electronic file database for Application Serial No.
86961428. All citations to the TSDR database are to the PDF version of the documents.
4 We note that Applicant submitted Google search results with its Request for
Reconsideration. See Applicant’s June 28, 2017 Request for Reconsideration. These search
results, however, differ from those that were submitted with its appeal brief.
Serial No. 86961428
3
see also TBMP §§ 1203.02(e) and 1207.01 (June 2017). To the extent Applicant wished
to introduce additional evidence after its appeal had been filed, Applicant should have
filed a written request with the Board to suspend the appeal and remand the
application for further examination pursuant to Trademark Rule 2.124(d). Applicant
did not do so. Accordingly, we give this evidence submitted for the first time with the
appeal brief no further consideration in our analysis. In view thereof, the Examining
Attorney’s evidentiary objection is sustained.5
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. 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

5 We additionally note that embedded in the body of its appeal brief, Applicant provides a list
of hyperlinks to various websites purportedly to establish its renown in the cigar industry.
See Applicant’s Appeal Brief, p. 13, 7 TTABVUE 14. The Examining Attorney did not object
to these lists and, therefore, we deem any objection to this evidence waived. See TBMP
§ 1207.03 and cases cited therein. Notwithstanding, such a listing of website links has no
probative value, and the mere listing of a link to a website does not make the material that
might be found on that website of record. See In re Planalytics Inc., 70 USPQ2d 1453, 1457
(TTAB 2004); see also In re King Koil Licensing Co., 79 USPQ2d 1048, 1050 (TTAB 2006) (in
the ex parte context, web site links “do little to show the context within which a term is used
on the web page that could be accessed by the link.”). Accordingly, we have given no further
consideration to these website hyperlinks in our analysis.
Serial No. 86961428
4
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).
A. Similarities of the Marks
Regarding the first du Pont factor, the similarity of the marks, we note that the
the marks are identical, standard character marks. The identity of the marks “weighs
heavily” in support of finding a likelihood of confusion. In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984). And because the
marks are identical, the degree of similarity between the goods that is required to
support a finding of likelihood of confusion is reduced. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner Ent’mt Co. v. Jones, 65
USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812, 1815
(TTAB 2001).
Applicant argues that the marks convey different commercial impressions in
relation to the involved goods because they travel in different trade channels and use
different types of packaging.6 Applicant’s arguments are unpersuasive. As explained
infra, the evidentiary record demonstrates that Applicant’s cigars and Registrant’s
alcoholic beverages travel in similar channels of trade. Nor are we persuaded by
Applicant's argument that we must look to the product packaging or other extrinsic
evidence of the manner in which Applicant’s mark and the cited mark are used in the
marketplace to determine the similarities between the marks. Rather, for purposes
of our Section 2(d) analysis, we must compare the marks as they appear in the cited

6 Applicant’s Appeal Brief, pp. 5-9, 7 TTABVUE 6-10.
Serial No. 86961428
5
registration and application. Shell Oil Co., 26 USPQ2d at 1690 n.4 (“Although Shell
argues that its use of RIGHT-A-WAY would be in association with other Shell
trademarks, the proposed registration is not so limited. Registrability is determined
based on the description in the application, and restrictions on how the mark is used
will not be inferred.”). Notwithstanding, while cigars and alcoholic beverages may be
packaged differently, consumers may nonetheless be confused as to the source of the
goods when their packages bear the identical trademark.
Applicant also argues that even marks that are identical in sound or appearance
may create sufficiently different commercial impressions when applied to the parties’
respective goods or services so that there is no likelihood of confusion.7 In support of
its argument, Applicant cites the following cases:
In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (holding
CROSS-OVER for bras and CROSSOVER for ladies’ sportswear not
likely to cause confusion, noting that the term “CROSS-OVER” was
suggestive of the construction of applicant’s bras, whereas
“CROSSOVER,” as applied to registrant’s goods, was “likely to be
perceived by purchasers either as an entirely arbitrary designation, or
as being suggestive of sportswear which “crosses over” the line between
informal and more formal wear . . . or the line between two seasons”);
In re British Bulldog, Ltd., 224 USPQ 854, 856 (TTAB 1984) (holding
PLAYERS for men’s underwear and PLAYERS for shoes not likely to
cause confusion, agreeing with applicant’s argument that the term
“PLAYERS” implies a fit, style, color, and durability suitable for outdoor
activities when applied to shoes, but “'implies something else, primarily
indoors in nature’” when applied to men’s underwear); and
In re Sydel Lingerie Co., 197 USPQ 629, 630 (TTAB 1977) (holding
BOTTOMS UP for ladies’ and children’s underwear and BOTTOMS UP
for men’s clothing not likely to cause confusion, noting that the wording
connotes the drinking phrase “Drink Up” when applied to men’s

7 Id., pp. 6-7, 7 TTABVUE 7-8.
Serial No. 86961428
6
clothing, but does not have this connotation when applied to ladies’ and
children’s underwear).
Unlike the circumstances in the cases cited by Applicant, the mark TERNURA or
the English translations thereof, i.e., kindness or tenderness, do not impart a distinct
meaning when applied to cigars or alcoholic beverages; instead, consumers would
perceive them as arbitrary terms as applied to the parties’ respective goods.
Accordingly, the cited cases are inapposite to our analysis of the similarities of the
marks in this appeal.
The marks at issue are identical in sound, appearance, connotation and
commercial impression. In view thereof, we find that the first du Pont factor weighs
strongly in favor of finding a likelihood of confusion.
B. Similarity of the Goods
The next step in our analysis is a comparison of the goods identified in Applicant's
application vis-à-vis the goods identified in the cited registration, the second du Pont
factor. See Stone Lion Capital Partner, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computs. Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard
Co. v. Packard Press Inc., 281 F.2d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). It
is settled that it is not necessary that the respective goods be identical or even
competitive in order to find that they are related for purposes of our likelihood of
confusion analysis. The respective goods need only be “related in some manner and/or
if the circumstances surrounding their marketing [be] such that they could give rise
to the mistaken belief that goods emanate from the same source.” Coach Servs. Inc.
Serial No. 86961428
7
v. Triumph Learning LLC, 668 F.3d 1356, 1010 USPQ2d 1713, 1722 (Fed. Cir. 2012)
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); see also
Martin’s Famous Pastry Shoppe, 223 USPQ at 1290; In re Melville Corp., 18 USPQ2d
1386, 1388 (TTAB 1991).
Evidence of relatedness may include news articles or evidence from computer
databases showing that the relevant goods are used together or used by the same
purchasers; advertisements showing that the relevant goods are advertised together
or offered by the same manufacturer or dealer; or copies of prior use-based
registrations of the same mark for both Applicant’s goods and the goods identified in
the cited registration. In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding
pepper sauce and agave sweetener related where evidence showed both were used for
the same purpose in the same recipes and thus consumers were likely to purchase
the products at the same time and in the same stores). Even when goods are not
intrinsically related, the use of identical marks can lead to the assumption that there
is a common source. Shell Oil Co., 26 USPQ2d at 1689. In this regard, the issue is not
whether purchasers would confuse the goods, but rather whether there is a likelihood
of confusion as to the source of these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d
1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984).
The Examining Attorney submitted Internet evidence demonstrating that third
parties produce and offer for sale both cigars and alcoholic beverages under the same
mark:8

8 February 1, 2017 Office Action, TSDR p. 6-20.
Serial No. 86961428
8
• www.thomsponcigar.cm and www.patrontequila.com showing that Patron
produces and offers for sale cigars and tequila under the same mark;
• an undated article from the website www.cigar-coop.com entitled “Cigar
Review: Señor Rio Añejo Toro,” discussing how the company Jalisco
International Imports produces tequila and cigars under the same
trademark;
• www.vineyard48wine.com showing that Vineyard 48 produces and offers
for sale cigars and wine under the same mark;
• www.hscigars.com showing that Hammer + Sickle produces and offers for
sale cigars and vodka under the same mark;
• www.bellaterraranch.com showing that Bellaterra Ranch produces and
offers for sale cigars and wine under the same mark; and
• www.schradercellars.com showing that Shrader produces and offers for
sale cigars and wine under the same mark.
The Examining Attorney also argues that the parties’ respective goods are related
because they are complementary products that are marketed together for
simultaneous consumption.9 To support her argument, the Examining Attorney
submitted the following evidence:10
• An undated article from the website www.cigars4dummies.com entitled
“Tequila and Cigars.” The first two paragraphs of the article read as follows:
What comes to your mind at first when hearing the word tequila?
Acapulco beach, bright sun and bronzed girls ;) on a warm evening
at the terrace in a Mexican restaurant with a beautiful lady next
to you? A hot and passionate Latino dance in a crowded place
should also come to mine while drinking or just mentioning
tequila.
Some of us also imagine a glass of fine tequila with a good cigar
though until quite recently this pairing seemed weird to the
majority of aficionados. Cognac, whisky, wine – these are the
drinks that created themselves a solid reputation while matching

9 Examiner’s Statement, pp. 7-8, 9 TTABVUE 8-9.
10 February 1, 2017 Office Action, TSDR pp. 21-44.
Serial No. 86961428
9
with cigars and tequila was not included in this list. And now
when this noble beverage takes part in our cigar society, let’s
enumerate its types.
• An undated article from the website www.cigarworld.com entitled “How to
Pair Cigars and Drinks”;
• An article from the website www.jrcigars.com dated June 22, 2015 and
entitled “Pairing Drinks with Cigars.” The article explains the best ways to
pair cigars with wine, beer, rum, and spirits;
• An article from the website www.cigarafficionado.com dated December 23,
2015 and entitled “Pairing the Top Five Cigars of 2015 with Spirits”;
• An undated article from the website www.stogiereview.com entitled
“Pairing Wine and Cigars: An Intermediate Guide”;
• An article from the website www.cigarcity.com dated May 11, 2015 entitled
“Pairing Wine with Cigars”;
• An article from the website www.liquor.com dated February 3, 2010
entitled “Cigar Bar.” The article begins with the following statement:
“There are a few things that go together better than a stiff drink and a
cigar.” The article suggests cigar pairings with particular types of scotch,
rum, cognac and cocktails.
Evidence of complementary use, as presented here, is relevant in determining
whether the goods are related for purposes of likelihood of confusion. Martin’s
Famous Pastry Shoppe, 223 USPQ at 1290; In re Vienna Sausage Mfg. Co., 230 USPQ
799 (TTAB 1986) (applicant’s sausages are complementary to registrant’s cheese
since they are frequently used together as sandwich ingredients, or as cold cuts, or as
hors d’oeuvres and may very well be purchased in the same store); see also Polo
Fashions, Inc. v. La Loren, Inc., 224 USPQ 509, 511 (TTAB 1984) (applicant’s bath
sponges are complementary in nature to the personal products sold by opposers and,
therefore, “these respective products would go hand in hand and would be sold to the
same customers through the same marketing channels”). Likewise, in this case, the
Serial No. 86961428
10
evidence presented by the Examining Attorney establishes that cigars and the several
alcoholic beverages identified in the cited registration are consumed together (e.g.,
articles recommending various alcoholic beverage and cigar pairings). When those
facts are considered in conjunction with the arbitrary nature of the mark TERNURA,
we find that Applicant’s cigars and Registrant’s alcoholic beverages will be
encountered by the same consumers under circumstances that could, because of the
identity of the marks, give rise to the mistaken belief that both products originate
from the same source.
The circumstances of this case are similar to those in John Walker & Sons Ltd. v.
Tampa Cigar Co., 124 F. Supp. 254, 103 USPQ 21 (S.D. Fla. 1954), aff’d 222 F.2d 460,
105 USPQ 351 (5th Cir. 1955), in which the court found a likelihood of confusion and
enjoined defendant from using the mark JOHNNIE WALKER for cigars in view of
plaintiff's mark JOHNNIE WALKER for whiskey:
Whiskey and cigars are closely related in distribution and
use. Hotels, restaurants and bars supply cigars as well as
whiskey to their guests and customers. People frequently
smoke cigars while drinking whiskey. Pictures of Johnnie
Walker smoking a cigar have been used in advertisements
of JOHNNIE WALKER whiskey. Ashtrays and books of
matches with the JOHNNY WALKER name and picture on
them have been used to advertise JOHNNIE WALKER
whiskey.
103 USPQ at 22.
Likewise, in Geo. A. Nickel Co. v. Stephano Bros., 155 USPQ 744 (TTAB 1967), the
Board sustained an opposition brought by the owner of the mark CASCADE for
whiskey against an application to register CASCADE for cigarettes even though the
record did not demonstrate that Opposer’s mark was famous.
Serial No. 86961428
11
But regardless of precedents, we entertain considerable
doubt on the basis of the present record that the mark
“CASCADE” can be used for both whisky and cigarettes
without causing confusion or mistake or deception, and
such doubts as we have in the matter must be resolved in
favor of opposer, the prior user.
155 USPQ at 745.
Applicant contends, however, that it is well settled that tobacco and alcohol are
not “related” unless the prior registered mark is well-known or famous and an
applicant has chosen its mark to exploit registrant’s mark.11 In support of its
argument, Applicant cites our primary reviewing court’s predecessor’s decision in
Schenley Distillers, Inc. v. Gen. Cigar, 427 F.2d 783, 166 USPQ 142, 143 (CCPA 1970).
Applicant argues that because Registrant’s TURNURA mark is not well-known or
famous and that it is clearly not marketed in a way to gain recognition, confusion is
not likely notwithstanding the identity of the parties’ marks.12

11 Applicant’s Appeal Brief, p. 3, 7 TTABVUE 4.
Applicant also questions whether Registrant’s mark remains in use as any liquor, wine,
tequila or vodka requires a Certificate of Label Approval (“COLA”) to sell such goods in U.S.
interstate commerce, and a search of the Alcohol and Tobacco Tax and Trade Bureau (TTB)
database does not show that Registrant has a current valid COLA under its name nor the
name of its registered mark. Id. at pp. 3-4, 7 TTABVUE 4-5. Applicant’s argument is an
impermissible collateral attack on the cited TERNURA registration. An abandonment or
nonuse challenge would be appropriate in a cancellation proceeding, but it is not appropriate
or permissible in this ex parte proceeding. In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1534-35 (Fed. Cir. 1997) (“Dixie’s argument that DELTA is not actually used in
connection with restaurant services amounts to a thinly-veiled collateral attack on the
validity of the registration … the present ex parte proceeding is not the proper forum for such
a challenge.”); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 165 USPQ 515, 517
(CCPA 1970) (“[I]n the absence of a counterclaim for cancellation under section 14 of the Act
(15 U.S.C. 1064), it is not open to an applicant to prove abandonment of the opposer’s
registered mark; and appellant’s argument (upon which it now stakes its appeal) that opposer
no longer uses the registered mark ‘Come Alive’ must be disregarded.”).
12 Id.
Serial No. 86961428
12
In Schenley, the Court rejected appellant’s contention that it has been recognized
as a principle that the use of the same mark on tobacco and alcoholic beverage
products results in likelihood of confusion. In particular, the Court stated that “[i]t is
much less likely, in the absence of a famous name or trademark evincing a common
origin, that a consumer would expect that a liquor producer would employ the same
name on goods even more diverse than different types of alcoholic beverage.” Id. The
Court also stated that “[g]iven the industry practice, we think that the ordinary
consumer would not be conditioned to expect the same mark to be used on such
unrelated products as cigars and tequila.” Id. at 144.
We initially note that Applicant’s argument that the absence of fame of the
Registrant’s mark should be treated as a factor in Applicant’s favor is untenable in
an ex parte proceeding. The prior mark’s fame is generally considered only in the
context of inter partes proceedings because, “in ex parte proceedings, the examining
attorney is not expected to submit evidence regarding the fame of the cited mark.”
TMEP § 1207.01(d)(ix) (Oct. 2017). And, in an ex parte analysis of the du Pont factors
for determining likelihood of confusion, the “fame of the mark” factor is normally
treated as neutral when no evidence as to fame has been provided. See In re Mr.
Recipe, LLC, 118 USPQ2d 1084, 1086-88 (TTAB 2016); see also In re Davey Prods.
Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009) (noting that the absence of evidence as
to the fame of the registered mark “is not particularly significant in the context of an
ex parte proceeding”).
Serial No. 86961428
13
Nonetheless, we note that the evidence of record suggests that alcohol industry
practice has evolved since the issuance of the Schenley decision approximately 48
years ago to the extent that in the current marketplace it is not an uncommon
industry practice for distillers and vintners, and not just those with “a famous name
or trademark,” Schenley, 166 USPQ at 143, to produce and offer both cigars and
alcoholic beverages under the same mark. Moreover, the evidence demonstrates that
cigars and alcoholic beverages are complementary goods in terms of use. Accordingly,
the evidence shows that in today’s marketplace consumers are accustomed to cigars
and alcohol being sold by the same entity under the same trademark for
complementary use.
To be clear, we are not finding that cigars and alcoholic beverages in general are
related based upon some abstract similarity between alcohol and tobacco. The record
in this case establishes that cigars and alcoholic beverages are not only produced and
offered for sale by third parties under the identical mark, but they are also
complementary products that are marketed together for simultaneous consumption.
As such, when both products are offered under the identical, arbitrary trademark,
consumers are likely to believe that the goods originate from the same source.
Accordingly, the second du Pont factor favors a finding of likelihood of confusion.
C. Similarities in Trade Channels and Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third du
Pont factor. Because the identifications in the application and registration for the
marks have no restrictions on channels of trade, we must presume that the goods
travel in all channels of trade appropriate for such goods, and to all the usual
Serial No. 86961428
14
customers of them. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (citing Kalart Co.,
Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958)).
The Examining Attorney submitted the following Internet evidence to
demonstrate that cigars and various alcoholic beverages, including wine, tequila and
vodka, are sold through the same channels of trade and purchased by the same
classes of purchasers:13
• A screenshot from the retailer The Grob Shop’s website
(www.grobshopsanibel.com) located in Sanibel, Florida that demonstrates
that it sells both alcoholic beverages and cigars;
• Screenshots from the retailer Sherlock’s website
(www.kennesawwineliquorbeer.com) located in Kennesaw, Georgia
demonstrating that it is a purveyor of both alcoholic beverages and cigars;
• A screenshot from the retailer Kona Wine Market
(www.konawinemarket.com) showing that it sells wine, beer, spirts and
cigars;
• Screenshots from Filo Liquor’s website (www.filoliquors.com), a cigar shop
and craft beer retailer located in Abilene, Texas, showing that it sells a wide
variety of liquor, as well as cigars;
• Screenshots from Cork Liquor’s website (www.corkliquor.com), a liquor
store with locations in Columbus, Greensburg, and Shelbyville, Indiana,
demonstrating that it sells beer, wine, spirits and cigars;
• Screenshots from TownCrier Spirits and Tobacco’s website
(www.thetowncrier.net), touting that it provides that highest quality of
wine, beer, and spirits and has the largest selection of cigars; and
• Screenshots from North Boulder Liquor’s website
(www.northboulderliquor.com), a liquor store located in Boulder, Colorado
that sells wine, craft beers, spirits and cigars.

13 July 15, 2017 Office Action, TSDR 7-18.
Serial No. 86961428
15
Regardless of the channels of trade actually utilized by Applicant14 and
Registrant, the evidence of record demonstrates the both alcoholic beverages and
cigars can be purchased in liquor stores or other online marketplace retailers which
feature spirits and wines, as well as cigars. As such, the third du Pont factor
regarding the similarity or dissimilarity of established, likely to continue trade
channels also favors a finding of likelihood of confusion.
We also note that alcoholic beverages and cigars are general consumer products
sold to adult members of the general public and, based on the record, are
complementary products that are marketed together for simultaneous consumption.
As such, the classes of purchasers of Applicant’s goods and Registrant’s goods are
identical, or overlap significantly.
D. Sophistication of Consumers
We next turn to the fourth du Pont factor, the conditions under which and buyers
to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing.
Applicant urges us to consider consumer sophistication as a factor. However,
Applicant has submitted no evidence that either its consumers or those of Registrant

14 Applicant argues that its TERNURA cigar is a premium cigar and is not sold at any retail
store, chain store, gas station or restaurant. Applicant’s Appeal Brief, p. 10, 7 TTABVUE 11.
However, neither Applicant’s goods, as identified in the involved application, nor Registrant’s
goods, as identified in the cited registration, are limited or restricted as to the quality or type
of the goods, trade channels, fields of use, classes of purchasers, or price points. As noted
above, we must therefore presume that these goods are marketed in all normal trade
channels and to all normal classes of purchasers for such goods. See In re Elbaum, supra.
Similarly, we must presume that Applicant’s “cigars” and Registrant’s alcoholic beverages
encompass all types of the goods described, including both expensive and inexpensive. See,
e.g., In re Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986) (“wine” includes all types
and price points).
Serial No. 86961428
16
would be sophisticated. While some of the prospective consumers of Applicant’s and
Registrant’s goods may indeed be highly educated and relatively knowledgeable
about and exercise some degree of care in their purchasing decisions, this does not
mean that all customers for the goods as identified in the application and cited
registration are knowledgeable and careful. Because these items, as identified, may
be relatively inexpensive and purchased by the public at large, we must assume that
the purchasers include casual consumers purchasing relatively inexpensive items.
See Bercut-Vandervoort & Co., supra. That being said, even assuming that the
prospective purchasers are sophisticated and knowledgeable about alcoholic
beverages or cigars it does not necessarily mean that they are sophisticated or
knowledgeable in the field of trademarks or immune from source confusion, and we
must assess the likelihood of confusion from the standpoint of the least sophisticated
consumer. See, e.g., Stone Lion Capital Partners, 110 USPQ2d at 1163. This fourth
du Pont factor is therefore neutral.
E. Nature and Extent of Any Actual Confusion
Applicant points to the absence of evidence of actual confusion, the seventh du
Pont factor, as weighing in its favor. A showing of actual confusion would of course be
highly probative of a likelihood of confusion. The opposite is not true, however. The
lack of evidence of actual confusion carries little weight. J.C. Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). The issue before us is
the likelihood of confusion, not actual confusion. Herbko Int’l Inc. v. Kappa Books Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (actual confusion not
required). Further, any suggestion that there has been no actual confusion between
Serial No. 86961428
17
the marks based on the coexistence of Applicant’s mark and the cited registration is
entitled to little probative value in the context of an ex parte appeal. In re Majestic
Distilling Co., Inc., 65 USPQ2d at 1205; see also In re Kangaroos U.S.A., 223 USPQ
1025, 1026-27 (TTAB 1984).
Therefore, this du Pont factor is neutral.
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. We find that the
marks at issue are identical and that Applicant’s identified goods are related and
complementary to Registrant’s goods, and that they move in the same or overlapping
trade channels and are offered to the same or similar classes of purchasers. We
accordingly conclude that Applicant’s mark, as used in connection with the goods
identified in the application, so resembles the cited mark 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 TERNURA mark under Section 2(d)
of the Trademark Act is affirmed.