Ferrero S.p.A.v.Destileria La Central, S.A. de C.V.

Trademark Trial and Appeal Board

May 31, 2000

No. 91086585 (T.T.A.B. May. 31, 2000)

Oral Hearing: Paper No. 84
September 1, 1999 GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 31, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Ferrero S.p.A.
v.
Destileria La Central, S.A. de C.V.
_____
Opposition No. 86,585 to application Serial No. 74/070,354
filed on June 18, 1990
_____
G. Franklin Rothwell, Raymond A. Kurz and B. Allison Hoppert of
Rothwell, Figg, Ernst & Kurz for Ferrero S.p.A.
Michael A. Grow and Cristina A. Carvalho of Arent Fox Kintner
Plotkin & Kahn, PLLC for Destileria La Central, S.A. de C.V.
______
Before Cissel, Hohein and McLeod, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Destileria La Central, S.A. de C.V. has filed an
application to register the mark "TÍC TÁCK" and design, as
reproduced below,
Opposition No. 86,585
2
for "cane spirit vodka".1
Ferrero S.p.A. has opposed registration on the ground
that applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s "famous" mark "TIC TAC" and variations
thereof, which it has previously used and registered for candy,
candy mints and t-shirts, as to be likely to cause confusion,
mistake or deception. Specifically, opposer has pleaded its
ownership of registrations for the following marks and goods:
(1) "TIC TAC" for "candy";2
(2) "TIC TAC" and design, as shown
below,
for "candy";3

1 Ser. No. 74/070,354, filed on June 18, 1990, based upon an allegation
of a bona fide intention to use such mark in commerce. Subsequently,
by an amendment to allege use received on December 14, 1990, the
application was amended to assert dates of first use of September 10,
1990. The application indicates that the terms "Multirrectificado"
and "Destilería LA CENTRAL," which with the exception of the words "LA
CENTRAL" are disclaimed along with the designation "S. A. de C. V."
and all English wording, respectively translate as "Multirectified"
and "THE CENTRAL Distillery". In addition, the application states
that the English translation of the phrase "EL LICOR NACIONAL DE LOS
SALVADORENOS" is "THE NATIONAL LIQUOR OF THE SALVADORANS".
2 Reg. No. 983,418, issued on May 7, 1974, which is based upon
ownership of Italian Reg. No. 228,600, dated July 2, 1968; first
renewal.
3 Reg. No. 1,014,803, issued on July 1, 1975, which sets forth a date
of first use anywhere of 1968 and a date of first use in commerce of
July 1970; first renewal.
Opposition No. 86,585
3
(3) "TIC TAC" and design, as illustrated
below,
for "candy mints";4
(4) "TIC TAC" and design, as depicted
below,
for "candy mints";5
(5) "TIC TAC" and design, as reproduced
below,
for "candy mints;6

4 Reg. No. 1,220,224, issued on December 14, 1982, which sets forth
dates of first use of June 6, 1981; affidavit §8 accepted. The words
"The 1½ calorie breath mint" are disclaimed. In addition, the mark is
lined for the colors green, red and gold, but no claim is made as to
color.
5 Reg. No. 1,269,408, issued on March 6, 1984, which sets forth dates
of first use of March 17, 1980; affidavit §8 accepted. The phrase "1½
CALORIES PER MINT" is disclaimed. Additionally, the mark is lined for
the color red and such color is claimed as a portion of the mark.
Opposition No. 86,585
4
(6) "TIC TAC" for "clothing, namely, t-
shirts";7
(7) "TIC TAC" and design, as shown
below,
for "candy";8
(8) "TIC TAC" and design, as illustrated
below,
for "candy";9

6 Reg. No. 1,343,041, issued on June 18, 1985, which sets forth dates
of first use of March 7, 1984; combined affidavit §§8 and 15.
7 Reg. No. 1,371,397, issued on November 19, 1985, which sets forth
dates of first use of May 27, 1976; affidavit §8 accepted.
8 Reg. No. 1,390,123, issued on April 15, 1986, which sets forth dates
of first use of July 23, 1984; combined affidavit §§8 and 15. The
phrase "The 1½ calorie breath mint" is disclaimed and the registration
issued pursuant to a claim of acquired distinctiveness with respect to
"the container/goods design portion."
9 Reg. No. 1,390,124, issued on April 15, 1986, which sets forth dates
of first use of July 23, 1984; combined affidavit §§8 and 15. The
Opposition No. 86,585
5
(9) "TIC TAC 1 1/2 HOUR, 1 1/2 CALORIE
BREATH MINT" for "candy mints";10 and
(10) "BIG PAC FROM TIC TAC" for "candy
mints".11
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.12 In addition, in its
amended counterclaim, applicant seeks cancellation of opposer’s
pleaded registration for the "mark consisting of the words TIC
TAC and a rectangular container and oval product configuration"
on the grounds of fraud and abandonment.13 In particular, as to
the ground of fraud, applicant alleges that opposer "knew[,] at
the time of making the [false] statement alleging five years

phrase "The 1½ calorie breath mint" is disclaimed. In addition, the
mark is lined for the colors red and gold, which colors are claimed as
a feature of the mark.
10 Reg. No. 1,145,105, issued on August 4, 1987, which sets forth dates
of first use of March 7, 1984; combined affidavit §§8 and 15. The
phrase "1 1/2 CALORIE BREATH MINT" is disclaimed.
11 Reg. No. 1,634,928, issued on February 12, 1991, which sets forth a
date of first use anywhere of October 13, 1988 and a date of first use
in commerce of February 6, 1989. However, inasmuch as such
registration, during the prosecution of this proceeding, was canceled
pursuant to Section 8 of the Trademark Act, no further consideration
will be given thereto.
12 While applicant has also asserted, as affirmative defenses, that the
opposition is barred by the doctrines of "laches," "acquiescence,"
"estoppel" and "unclean hands" and that opposer "has engaged in a
course of conduct which has caused its [TIC TAC] mark to lose its
distinctiveness as an indicator of origin," such defenses not only
have not been properly pleaded, in that the facts constituting each
defense have not been alleged, but in any event the defenses, to the
extent that they were even marginally raised at trial and given any
mention at all in the briefs, have simply not been proven by a
preponderance of the evidence. Accordingly, applicant's putative
affirmative defenses must fail.
13 Although applicant's amended counterclaim also sought cancellation
of such registration on the basis of a claim of functionality of the
configuration of the container and the goods, the Board in its
February 1, 1993 order granted opposer's motion to dismiss the
Opposition No. 86,585
6
substantially exclusive use [of its rectangular container
configuration,] that others had made considerable use of
virtually identical container configurations during the five
years next preceding the date of filing of the application"; that
opposer "intentionally made the false statement knowing it was
false and knowing that the Patent and Trademark Office would rely
on the false statement as a basis for establishing the required
showing of distinctiveness without which the Office would not
have approved the alleged mark for publication"; and that "[b]ut
for the false statement, the ... Office would not have allowed
registration of the container and product configuration." As to
the ground of abandonment, applicant alleges that opposer "has
allowed others to use virtually the same container configuration
without licensing such use and without exercising any control
over such use"; and that "[s]uch uncontrolled and unlicensed use
by others of the container configuration constitutes an
abandonment of whatever trademark rights" opposer "may have
possessed in the container configuration."
Opposer, in its answer, has denied the salient
allegations of the amended counterclaim.
The record includes the pleadings; the file of the
involved application; and, as part of opposer’s case-in-chief in
the opposition, the testimony, with exhibits, of Lyndal L.
Shaneyfelt, a private investigator and document examiner, and
Fred D. Pompa, a former brand manager and senior brand manager of

functionality ground as a legally insufficient claim which could not
be brought against a registration that was over five years old.
Opposition No. 86,585
7
"TIC TAC" products for opposer’s exclusive United States
distributor, Ferrero U.S.A.14 As the rest of such case-in-chief,
opposer submitted notices of reliance upon (i) certified copies
of its pleaded registrations showing, in each instance, that the
registrations were subsisting and owned by opposer; (ii) copies
of various third-party federal registrations; (iii) copies of
selected articles extracted from the "NEXIS" computerized
database; (iv) copies of summaries, from printed publications, of
state laws and regulations relating to distilled spirits; and (v)
a copy of a printed publication, entitled Nielsen Station Index
"DMA Test Market Profiles 1994," which lists the circulation of
major newspapers and other demographic marketing area information
pertaining to the geographical areas in which opposer’s various
"TIC TAC" marks have been advertised.15

14 While applicant, in its initial brief, has reiterated its objection,
interposed at trial, to "Ferrero’s alleged sale of beverages under the
marks EstaTHE, Cristallina and Ferrero Cacao" on the asserted basis of
a lack of relevance, such objection is overruled in that the evidence
is relevant, in particular, to the issue of whether the parties’ goods
are closely related.
15 Applicant, in its initial brief, has raised a host of objections to
the admissibility and/or relevance of the evidence provided by opposer
with its notices of reliance. Insofar as such objections relate to
the weight or probative value to be given to certain evidence, they
have been considered in our disposition of this case. To the extent,
however, that applicant, by its objections, is essentially requesting
that certain evidence be stricken as not proper subject matter for
introduction by means of a notice of reliance, such requests are
barred by the Board’s June 12, 1996 order, which precluded both
parties "from filing further motions in this case (except for
consented motions to extend dates)." In any event, with the possible
exceptions of the Nielsen publication and the third-party
registrations which are based upon foreign registrations rather than
use in commerce (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 (TTAB 1988) at n. 6), none of applicant’s objections
is well taken for the reasons indicated by opposer in its reply brief.
Finally, even if the Nielsen publication and the third-party
Opposition No. 86,585
8
Applicant, as its case-in-chief as defendant in the
opposition and as plaintiff in its counterclaim, submitted the
testimony, with exhibits, of Jose Gustavo Herodier Samayoa, its
chairman of the board and legal representative, and Louis Joseph
Sanserero, the vice president of sales and marketing of Paradise
Wholesale Wine & Spirits Company and the president of Sans Wine &
Spirits Import Company.16 However, inasmuch as opposer, during
its testimony period for rebuttal in the opposition and as
defendant in the counterclaim, did not augment the record by
taking any additional testimony or presenting any other evidence,

registrations which are not based upon use in commerce were to be
excluded, we note that the result in this case would be unchanged.
16 We note with dismay and extreme disapproval that, unlike its
deposition of Louis Joseph Sanserero, applicant in its deposition of
Jose Gustavo Herodier Samayoa has in each instance immediately
reproduced, after setting forth in English each question propounded,
the corresponding answer thereto in Spanish rather than in English
(with a few of the answers being continued on additional pages after
intervening questions had been asked and answered) and has furnished
English translations of the answers (without reproducing the
corresponding questions) on separate pages. Trademark Rule 2.124(e)
provides, in relevant part, that in the case of a deposition upon
written questions, "[t]he officer designated in the notice [thereof]
shall take the testimony of the witness in response to the questions
and shall record each answer immediately after the corresponding
question." Obviously, such rule presupposes that when a question is
propounded in English, it is to be immediately followed by its
corresponding answer in English. Likewise, in instances where
questions and their answers have to be translated because the witness
is not conversant in English, each question, as set forth in English,
should be immediately followed by its corresponding answer in English
(although, if the party taking the deposition so desires, the foreign
language equivalent may also be stated after such answer). The
irregular practice followed by applicant, however, has made reading
the deposition of Jose Gustavo Herodier Samayoa needlessly difficult
and time-consuming, particularly since the Board is not necessarily
fluent in Spanish (or, for that matter, any other foreign language).
Nevertheless, rather than gleaming whatever probative value which
could be discerned, in light of our limited proficiency in Spanish,
from the answers set forth by applicant in Spanish, we have in
fairness considered the English translations of such answers which
applicant furnished on separate pages. Counsel for applicant is
strongly cautioned, however, not to repeat such practice in future
proceedings.
Opposition No. 86,585
9
there consequently was nothing for applicant to rebut during its
rebuttal testimony period as plaintiff in the counterclaim. The
notice of reliance filed by applicant on the final day of its
rebuttal testimony period as plaintiff in the counterclaim
plainly constitutes improper rebuttal and accordingly will not be
given further consideration.17 Briefs have been filed18 and an
oral hearing, attended by counsel for the parties, was held.

17 We note in this regard that opposer, while acknowledging that
applicant filed its notice of reliance "at the close of its rebuttal
period," has in its initial brief objected to applicant’s notice of
reliance. Specifically, citing TBMP §718.02(c), opposer argues that
such notice "is improper rebuttal and should be stricken from the
record," inasmuch as opposer "did not submit evidence as counterclaim-
defendant during its testimony period," and that the notice "not only
is untimely filed, but also is immaterial and therefore must be
stricken from the record" because the notice "did not include evidence
that rightly could be deemed 'rebuttal evidence' in any event." While
TBMP §718.02(c) provides that "[a]n adverse party may object to a
notice of reliance on substantive grounds, such as that evidence
offered under the notice constitutes ... improper rebuttal, or is
incompetent, irrelevant, or immaterial," it also plainly states that
"[e]vidence timely and properly introduced by notice of reliance under
the applicable trademark rules generally will not be stricken" and
that the Board, instead, "will consider any outstanding objections
thereto in its evaluation of the probative value of the evidence at
final hearing." Thus, while opposer is correct, as noted above, that
applicant's notice of reliance constitutes improper rebuttal since,
with respect to the counterclaim, there was no evidence introduced by
opposer for applicant to attempt to counter, it is pointed out that
the notice itself will not be stricken inasmuch as it was timely
filed, the evidence relied upon (consisting of opposer's answers to
interrogatories served by applicant and excerpts from printed
publications in general circulation) constitutes proper subject matter
for a notice of reliance, and at least some of the evidence (although
far from most of it) is not immaterial to the issues raised by the
counterclaim.
18 For the sake of completeness, we note that opposer's contested
motion to strike the portion of applicant's reply brief which deals
with opposer's claim of likelihood of confusion instead of the issues
raised by applicant's counterclaim is not well taken. Aside from the
fact, as indicated previously, that the Board's June 12, 1996 order
precludes the "filing [of] further motions in this case (except for
consented motions to extend dates)," it is the practice of the Board,
as stated in TBMP §540, "not [to] strike the brief, or any portion
thereof, upon motion by an adverse party which simply objects to the
contents thereof. Rather, any objections which an adverse party may
have to the contents of such a brief will be considered by the Board
in its determination of the case, and any portions of the brief which
Opposition No. 86,585
10
Turning first to consideration of the counterclaim,
suffice it to say that opposer is correct in the assessment in
its reply brief that applicant has failed to provide any evidence
which substantiates the allegations of fraud and abandonment made
with respect to opposer’s pleaded registration for its mark which
consists principally of the words "TIC TAC" and a rectangular
container and oval product configuration design. The
counterclaim is accordingly dismissed.19
As to the opposition, priority is not in issue inasmuch
as the certified copies of opposer’s extant pleaded registrations
show that such registrations are subsisting and owned by opposer.
See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974). In any event, the record also
sufficiently establishes, as discussed below, that opposer is the
prior user of its pleaded "TIC TAC" marks in the United States.
The only real issue to be determined, therefore, is whether
applicant’s "TIC TACK" and design mark, when used in connection
with cane spirit vodka, so resembles one or more of opposer’s

are found by the Board to be improper will be disregarded." As to
another matter concerning the briefs, the request by applicant, in
both its initial and reply briefs, that the Board take judicial notice
of various facts which, with respect to the claims of fraud and
abandonment raised in the counterclaim, bear on the asserted
functionality of both the shape of opposer’s mint candy and the
rectangular translucent container in which such product is packaged is
denied. We fully agree with opposer that, as set forth in its reply
brief, none of facts alleged by applicant is proper for judicial
notice under Fed. R. Evid. 201(b).
19 We hasten to add, however, that even if applicant had met its burden
of proof as to either or both of the grounds for cancellation, the
outcome of the opposition would remain the same in view of the other
registrations by opposer for marks which consist of or include the
designation "TIC TAC".
Opposition No. 86,585
11
previously used and registered "TIC TAC" marks for candy, candy
mints and t-shirts that confusion is likely as to the source or
sponsorship of the parties’ goods.
According to the record, opposer produces various food
products, including its "TIC TAC" candy or breath mints, which
are exclusively distributed in the United States by Ferrero
U.S.A., which is where its witness, Mr. Pompa, is employed as the
director of new products. All of the products sold by Ferrero
U.S.A. are made by opposer (or its licensee), who according to
Mr. Pompa is currently the owner of each of the pleaded "TIC TAC"
and other marks, as well as the corresponding registrations
therefor, utilized in the marketing of such goods. Ferrero
U.S.A., as opposer’s exclusive United States distributor, is
responsible for advertising and promoting the products of opposer
which it sells, managing the sales force for those products, and
handling consumer relations. While, in particular, opposer’s
products have included liqueur-flavored candies sold under such
brands as "Mon Cheri" and "Opera," an orange liqueur-flavored
snack cake called "Fiesta," and a seasoned tea beverage known as
"EstaTHE," only its "Mon Cheri," "Opera" and "Fiesta" products
have been sold, in limited volume and mostly for test marketing
purposes, in the United States, although some consumer research
has been done here with respect to its "EstaTHE" beverage.
Opposer, through Ferrero U.S.A, has sold its "TIC TAC"
candy or breath mints in the United States since about 1972.
Until around 1975 or 1976, opposer’s sales thereof constituted
approximately a ten percent share "of the hard roll candy breath
Opposition No. 86,585
12
freshener market," but thereafter its "sales began to fall quite
dramatically" before beginning a steady rise around 1980 to 1981,
which eclipsed its former sales levels by about 1986 to 1987.
(Pompa dep. at 53.) Although advertising of the "TIC TAC"
product was halted for one year in 1979, Ferrero U.S.A was able
"to turn the business around and slowly re[-]grow it into an
important and famous brand" by making the image of the product
more adult. (Id. at 55.) Specifically, Ferrero U.S.A. dropped
such flavors as wild berry and tangy fruit, added a wintergreen
flavor and introduced the slogan "the 1½ calorie breath mint".
Together with a continuous increase in advertising, sales of
opposer's "TIC TAC" product grew from a low of a two and a half
percent market share in 1980 to a 20 to 21 percent market share
as of mid-August, 1995, when Mr. Pompa gave his testimony.
At present, opposer's "TIC TAC" goods are available in
mint, cinnamon, orange, spearmint and wintergreen flavors, which
are typically sold in packs of three and five containers, as well
as in single containers, and a "TIC TAC MAXI" version, consisting
of larger sized candy mints which are individually wrapped, was
introduced around 1991 or 1992. Opposer's "TIC TAC" mark has
also been used on various promotional items as t-shirts, hats,
jackets, sweatshirts, watches, clocks, calculators, pens, key
chains, lighters, golf balls and ring-shaped toss toys.
According to Mr. Pompa, "Tic Tac usage is really quite
broad," with opposer's product appealing to children and adults
of both sexes, although the product is marketed as "an adult
breath freshener"." (Id. at 62-63.) Stated otherwise, the "TIC
Opposition No. 86,585
13
TAC" product is "used by all, but positioned towards adults, and
maybe more specifically, more towards women" for use, among other
things, "to freshen breath after smoking, ... eating ... [or]
drinking ... ; but because of it’s taste it’s also used as a
rejuvenator, as a little break, as a moment of fun when you’re by
yourself or even in a social situation of offering it" to others.
(Id. at 63-64.)
Ferrero U.S.A., after receiving the "TIC TAC" product
from opposer, warehouses it and has its sales force contact
brokers, who in turn act as sales agents by directly visiting
retail accounts, whose orders are then filled by direct shipments
from Ferrero U.S.A. The "TIC TAC" product is sold throughout the
United States and is distributed "in just about every class of
trade that could possibly carry and would carry confectionery
products," including vending machines. (Id. at 66.) Thus,
according to Mr. Pompa, "you’ll find Tic Tac in supermarkets, in
grocery stores, in delicatessens, in news stands, at bars, in
liquor stores, in drug [stores, in] convenience [stores], ...
[in] theater[s], [in] mass merchandisers, [in] club stores, [in]
club warehouse stores ... [and] in ... airport[s]." (Id. at 66-
67.) Of these trade channels, Mr. Pompa testified that in "80
percent of the physical stores that could carry a confectionery
product you’ll find Tic Tac" available for sale. (Id. at 69.)
Furthermore, according to Mr. Pompa, Ferrero U.S.A. is
an "extensive" advertiser and promoter of opposer’s "TIC TAC"
candy or breath mint, which has resulted in such product being "a
national brand with widespread national distribution." (Id.) In
Opposition No. 86,585
14
particular, Ferrero U.S.A. has expended the bulk of its consumer
advertising budget on network television ads, along with some
spot market television advertising overlap and participation in
cable television and cooperative radio ads. Ferrero U.S.A. has
also done print advertising for the "TIC TAC" brand, including
billboard ads, newspaper coupons and cooperative ads in retail
store flyers as well as ads in such magazines as Better Homes &
Gardens, Good Housekeeping, Ladies’ Home Journal, McCall’s,
Redbook, Women’s Day and Family Circle. In addition, its
promotional activities include sponsorship of "both Winston Cup
and Busch" racing cars. (Id. at 71.) Merchandising costs, such
as the retail "display tree" rack for the "TIC TAC" product and
other point-of-sale activities, such as free product samples and
phone cards bearing such mark, annually run "close to a million
dollars now". (Id. at 72.) Joint promotions, such as a "TIC
TAC" coupon inside the packaging of a "BIC" lighter and an offer
of a free "Mon Cheri" chocolate with the purchase of a container
of "TIC TAC" candy or breath mints, have also been utilized along
with a $100,000 in prizes instant-win game which featured items
such as "TIC TAC" wrist watches and wallets. Additionally,
Ferrero U.S.A. promotes opposer’s "TIC TAC" product to retailers
by providing camera-ready artwork for their advertising and by
distributing sell sheets and shelf-talkers.
Since their introduction, sales of "TIC TAC" candy or
breath mints in the United States have totaled over 3.3 billion
packs or containers, with 40 pellets to a package, representing
nearly $750 million in gross sales volume. In particular, while
Opposition No. 86,585
15
gross sales initially were in the range of six million dollars
for the fiscal year beginning in 1972, by the close of the fiscal
year ending in 1995, annual gross sales were expected to exceed
$78 million. Total advertising and promotional expenditures
during such time frame have been in the neighborhood of $192
million. Furthermore, in a national study of unaided brand
awareness conducted in 1993, 55 percent of the respondents were
able to identify "TIC TAC" as a brand of breath mints or hard
candy mints and it was the second most frequently mentioned
brand.20 The "TIC TAC" mark has also received substantial free
publicity by being mentioned in numerous publications, movies and
television shows. Such instances, which typically lack any
reference to the goods in connection with which the "TIC TAC"
mark is used, demonstrate that the reader or viewer is expected
to have heard of the "TIC TAC" brand and know what the product
associated therewith is.
Opposer’s "TIC TAC" candy or breath mints, as noted
previously, not only appeal to both children and adults, but in
particular, as to those in this country who speak Spanish, Mr.
Pompa offered the following testimony:
Q. [B]ased on your experience in
marketing, can you tell whether there has
been a strong Tic Tac presence in those areas

20 Specifically, when asked the question "[w]hen you think of breath
mints or hard candy mints, what is the first brand that comes to
mind?" and a follow-up question concerning "the brands of breath mints
or candy mints [which] you ever heard of," the survey showed unaided
brand awareness among consumers of 76 percent for "CERTS"; 55 percent
for "TIC TAC"; 37 percent for "LIFESAVERS"; 23 percent for "BREATH
SAVERS"; ten percent for "CLORETS"; three percent for "JOLLY RANCHER";
and two percent for "MENTOS". (See "TABLE 3," Opposer’s Exhibit 123.)
Opposition No. 86,585
16
of the country that are well known for having
a high Spanish speaking population?
A. I would say ... Tic Tac does
extremely well in those areas, because they
tend to be[,] for the most part, the larger
metropolitan areas, New York, Miami, southern
California, those are really hubs of Hispanic
[population].
Also, in Texas ... a lot of Texas is ...
the second strongest development for us. So
we do very well in those areas.
(Id. at 166-67.) Moreover, as to certain television and print
advertising conducted in connection with "TIC TAC" candy or
breath mints, Mr. Pompa specifically testified as follows:
Q. [H]as Ferrero [U.S.A.] ever
advertised Tic Tac in the Spanish language,
to your knowledge?
A. Yes, we have.
Q. Okay. Do you recall any instances
of that?
A. It was done in, I believe, not only
in Miami, but also in New York, and it’s
currently being done in Puerto Rico.
(Id. at 179.)
Because of its use, as previously mentioned, in
connection with alcoholic beverages as "a method of covering up
... that someone was drinking," opposer’s "TIC TAC" mints are
often sold in the same channels of trade as alcoholic beverages.
(Id. at 176.) Mr. Pompa, in this regard, testified as follows:
Q. To your knowledge, is Tic Tac, the
candy, your product, sold in places that also
sell alcoholic beverages, including hard
liquor?
A. Absolutely, I know that.
Q. How do you know that?
Opposition No. 86,585
17
A. Well, ... just last night I was in
a liquor store in New Jersey where they were
selling all types of beer, wine, hard
spirits, hard liquor and Tic Tac.
Q. Tic Tac, your mint?
A. Absolutely.
Q. Have you seen it in other places as
well?
A. I’ve seen it in other places. I’ve
seen it in California, I mean just about any
place that is selling confections is selling
Tic Tac. And if confections and alcohol can
be sold in the same store, they’ll both be
carrying it.
(Id. at 174.)
Mr. Pompa additionally observed, according to his
testimony, that:
Q. When you were at the liquor store,
did you see any liquor products that carried
with them trademarks associated with candy?
A. Well, I saw a number of liquor
products. I saw Godiva Liqueur. I saw
Mossard Liqueur, Mossard is a manufacturer of
confectionery products, and there was a
third[,] Lazeroni, ... the ... manufacturer
of the Amoretto cookies. They had an
Amoretto liqueur ....
Q. How about flavored vodkas, did you
see any flavored vodkas?
A. Quite a few .... I saw different
brand names, but similar types of flavors.
There was lemon, orange, black currant,
cranberry and citrus.
Q. Now, [again,] you indicated that,
to your knowledge, Tic Tac is sold in places
that also sell alcoholic beverages?
A. Yes, it is.
(Id. at 176-77.)
Opposition No. 86,585
18
Mr. Pompa’s liquor store experiences are similar to
those encountered by Mr. Shaneyfelt, who was hired by counsel for
opposer to canvass the Washington, D.C. metropolitan area for
stores selling applicant's "TÍC TÁCK" vodka and any liqueurs or
spirits which were candy flavored or otherwise related to candy.
Mr. Shaneyfelt not only visited several liquor and grocery stores
at which he purchased such items, but was additionally able to
purchase opposer's "TIC TAC" candy mints from checkout counter
displays at two of such establishments. Mr. Shaneyfelt, in the
course of his shopping activities at department stores, drug
stores, supermarkets and specialty food stores, was also able to
purchase numerous confectionery items, including candy, cookies
and cakes, which featured various liqueurs as flavorings. He
also purchased, primarily at liquor outlets and supermarkets, a
variety of mint, fruit and coffee flavored liqueurs and other
spirits. In particular, Mr. Shaneyfelt was able to buy several
citrus flavored vodkas and a number of mint flavored spirits.
Mr. Shaneyfelt's shopping experiences demonstrate that it is not
uncommon for consumers to encounter candy flavors for liqueurs
and liqueur flavored candies and other confections. Mr.
Shaneyfelt, moreover, testified that prior to ever having been
retained by opposer's counsel's law firm for his investigative
services, he had "certainly" heard of opposer's "TIC TAC" candy
product and had, in fact, purchased it "lots of times".
(Shaneyfelt dep. at 73.)
Mr. Shaneyfelt admitted on cross-examination, however,
that during his shopping excursions on behalf of opposer, he
Opposition No. 86,585
19
never encountered any alcoholic beverages or other products,
besides those of opposer, which utilized the mark "TIC TAC". He
also conceded that the liqueur-flavored candies which he found
were chocolate products and that he found no evidence that the
names of other breath mint products, such as "CERTS" and
"CLORETS," were used in connection with an alcoholic beverage
product.
The record additionally indicates that Ferrero U.S.A.
has not done any joint promotions involving opposer’s "TIC TAC"
product and third-party brands of alcoholic beverages. However,
with respect to consumers’ expectations regarding the relatedness
of the parties’ goods, the record reveals that in at least six
instances, third-parties have registered, on the basis of use in
commerce, the same mark for either candy or confectionery
products, on the one hand, and alcoholic beverages, on the other.
The record also contains numerous articles, primarily from
newspapers and magazines, which mention or discuss various fruit-
flavored and mint-flavored vodkas. Finally, the record shows
that opposer has been diligent in successfully policing its "TIC
TAC" mark against various third-party uses of assertedly similar
marks.
With respect to applicant and its activities under its
"TÍC TÁCK" mark, the record reveals that, since about June 30,
1953, applicant has manufactured and continuously sold in El
Salvador a cane spirit vodka which it markets under the mark "TÍC
TÁCK". Like opposer, applicant has utilized its mark in
connection with various promotional items for its product,
Opposition No. 86,585
20
including t-shirts, cups and glasses. As of the July 31, 1996
date of its deposition of Señior Samayoa, applicant's chairman of
the board and legal representative, applicant has sold 110
million bottles of its "TÍC TÁCK" cane spirit vodka in El
Salvador. Moreover, beginning with a shipment thereof to
California on August 20, 1990,21 applicant has shipped 300
thousand bottles of its "TÍC TÁCK" cane spirit vodka to the
United States.22 Applicant regards the typical customers for its
"TÍC TÁCK" cane spirit vodka as, principally, adult men between
the ages of 25 to 50. In the United States, such purchasers are
primarily immigrants from El Salvador, although immigrants from
other Central American countries also buy its goods. While
applicant has done a couple of television ads and some radio
spots, in addition to print advertising, to promote its goods in

21 Applicant, however, has offered no explanation for the discrepancy
between such date and the claimed dates of first use of September 10,
1990 which are alleged in the involved application.
22 While Señior Samoyoa, who the parties refer to as Gustavo Herodier,
admitted to having seen candy or breath mints bearing the mark "TIC
TAC" for sale by opposer in supermarkets in El Salvador since at least
as early as the end of the 1970s; that such product is currently being
sold in El Salvador; that he is unaware of any instances of actual
confusion in El Salvador between such mark and applicant's mark; and
that opposer's "TIC TAC" mark, subsequent to the registration of
applicant's "TÍC TÁCK" mark, has been registered in El Salvador since
June 4, 1970, such facts are legally irrelevant to this proceeding,
which solely concerns whether applicant is entitled to register its
"TÍC TÁCK" mark for cane spirit vodka in the United States. See,
e.g., Bureau National Interprofessionnel Du Cognac v. International
Better Drinks Corp., 6 USPQ2d 1610, 1618 (TTAB 1988) ["an applicant's
ownership of a foreign registration of its mark is immaterial to
applicant's right to register the mark in the United States;
similarly, an opposer's right to object to the registration of a mark
in the United States is independent of whatever foreign trademark
rights the parties may have"], citing Nabisco, Inc. v. George Weston
Ltd., 179 USPQ 503, 507 (TTAB 1973) and William Sanderson & Son Ltd.
v. Fernandes & Co. Ltd., 137 USPQ 165, 166 (TTAB 1963); and Johnson &
Johnson v. Salve S.A., 183 USPQ 375, 376 (TTAB 1974).
Opposition No. 86,585
21
El Salvador, it has not conducted any advertising, with the
possible exception of a few printed ads, of its "TÍC TÁCK" cane
spirit vodka in the United States.
Applicant has used the rooster design appearing in its
mark in El Salvador since the beginning of 1973 and has always
utilized such design on the labels of the bottles of its "TÍC
TÁCK" cane spirit vodka which are shipped to and sold in the
United States. According to Mr. Sansevero, his company23 has been
importing such product into the United States for approximately
three and a half years, averaging about 3,000 cases thereof a
year. Mr. Sansevero, who testified that his company has "the
import rights for Tíc Táck for the United States including the
Virgin Islands," has been selling applicant's cane spirit vodka
under the "TÍC TÁCK" mark "in Boston, Washington, Maryland,
California, [and] Texas," and is "in the process of opening other
states." (Sansevero dep. at 6.) His firm has also done some
very limited point-of-sale advertising of applicant's "TÍC TÁCK"
goods, in the form of distributing case cards, shelf talkers and
window banners to retail customers, and at "[o]ne time ran an
advertisement in [a] Latino/Hispanic publication," the name of
which Mr. Sansevero could not remember. (Id. at 8.) As to the
kinds of retail outlets in which applicant's goods are marketed
in the United States, Mr. Sansevero testified that "100 percent

23 While it has no bearing on the outcome of this proceeding, it simply
is not entirely clear from Mr. Sansevero’s deposition whether the
company which he is referring to in his testimony is Paradise
Wholesale Wine & Spirits, which he works for, or Sans Wine & Spirits
Import Company, which he owns.
Opposition No. 86,585
22
of our sales are ... what they call the off sale mom-and-pop type
wine and liquor stores primarily [located] in the inner cities."
(Id. at 9.)
Both Señior Samayoa and Mr. Sansevero testified that
they are unaware of any instance in which the same company has
used an identical mark for both alcoholic beverages and breath
mints. Both further noted that they are unaware of any incidents
of actual confusion arising in the United States from the
contemporaneous use of applicant's "TÍC TÁCK" mark for cane
spirit vodka and opposer's use of its various "TIC TAC" marks for
candy or breath mints. Señior Samayoa, however, conceded under
cross-examination that, except for those established by law,
there are no limitations as to who may buy applicant's "TÍC TÁCK"
cane spirit vodka and, thus, anyone of legal age may purchase its
goods. He also admitted that he is aware of the existence of
flavored vodkas, although he professed not to know what brands
thereof are sold in the United States or whether any mint
flavored vodkas are sold here. Mr. Sansevero, on the other hand,
admitted that he was aware of the sale of "many flavored vodkas"
in the United States and was able to identify, by brand name,
various orange, lemon, black currant and pepper flavored vodkas
in addition to noting that there are "many other domestic ...
flavored vodkas that I'm not familiar with the brand names [of]".
(Id. at 15.)
Mr. Sansevero, moreover, conceded his awareness of
instances in which alcoholic beverages and candy are sold in the
United States under the same mark, although he was unable to
Opposition No. 86,585
23
identify any particular brand. He also testified, as to mint-
flavored alcoholic beverages which are sold in the United States
and with which he was familiar, that "[i]f I had time to think
about it, I could probably come up with ten or 15" brands of such
products, naming among others "the DeKuyper, Hiram Walker, [and]
Leroux ... mint-type of product called schnapps." (Id.)
Lastly, the record establishes that there has been no
undue delay by opposer in objecting to applicant’s use and
attempt to register the "TÍC TÁCK" mark for cane spirit vodka in
the United States,24 nor has there been any detrimental reliance,
or other material prejudice, experienced by applicant as a result
of any inaction on the part of opposer in failing to assert the
objection at an earlier time. Opposer, moreover, was unaware of
applicant's use and application to register such mark until after
the mark was published for opposition and it is clear from the
testimony furnished by applicant that, in the absence of priority
of use of any of opposer's "TIC TAC" marks in El Salvador,
opposer had no basis to complain about applicant's long-standing
prior use of its "TÍC TÁCK" mark in that country.

24 While, for instance, a prima facie defense of laches requires a
showing of unreasonable delay in asserting one’s rights against
another and material prejudice to the latter as a result of the delay,
in the context of an opposition proceeding, such a defense, which
involves an objection to the issuance of a registration for a mark,
begins to run when the mark in question is published for opposition.
See Lincoln Logs Ltd. v. Lincoln Pre-cut Log Homes, Inc., 971 F.2d
732, 23 USPQ2d 1701, 1703 (Fed. Cir. 1992) and National Cable
Television Ass’n, Inc. v. American Cinema Editors, Inc., 937 F.2d
1572, 1580, 19 USPQ2d 1424, 1431-32 (Fed. Cir. 1991). Here, opposer
promptly commenced this proceeding following the publication of
applicant’s mark.
Opposition No. 86,585
24
With respect to the issue of likelihood of confusion,
we find upon consideration of the pertinent factors set forth in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973), that confusion as to source or affiliation
is likely to occur. As a starting point, it is plain that,
contrary to applicant’s contentions, each of opposer’s various
"TIC TAC" marks and applicant's "TÍC TÁCK" mark, when considered
in their entireties, are substantially similar in sound,
appearance, connotation and commercial impression. In
particular, the term "TÍC TÁCK" in applicant's mark would have,
to an ordinary English speaking consumer in the United States,
the same pronunciation as the term "TIC TAC" in opposer's marks
since the letter "K" in the former is silent. While applicant's
mark also contains a rooster design, the term "TÍC TÁCK" is far
more prominently displayed than such design. Similarly, the
other Spanish and English words appearing in the mark, which
applicant's main brief accuses opposer of "disingenuously"
ignoring, plainly are subordinate matter in that they are
descriptive, generic or otherwise lacking in trademark
significance and are also presented in much smaller sizes of
lettering. Overall, as Mr. Shaneyfelt's testimony confirms, it
is the term "TÍC TÁCK" in applicant's mark which would be used by
prospective purchasers when asking about or calling for
applicant's goods and it is that term which comprises the
dominant and source distinguishing portion of applicant's mark.
Likewise, in the case of opposer's various "TIC TAC"
and design marks, it is the term "TIC TAC" which dominates and
Opposition No. 86,585
25
serves as the principal source-indicative portion of those marks
and which would be used when looking for or requesting opposer’s
goods, with the disclaimed descriptive phrases, such as "The 1½
calorie breath mint," and the background designs which form
vehicles for display of the term "TIC TAC," clearly constituting
subordinate matter. Consequently, and given that the term "TIC
TAC" in opposer's marks and the virtually identical term "TÍC
TÁCK" in applicant's mark are arbitrary in their connotations
when used in connection with the respective goods of the parties,
it readily apparent that, on the whole, such marks project or
engender essentially the same commercial impression. Their
contemporaneous use, in connection with the same or related
goods, would therefore be likely to cause confusion as to the
origin or affiliation of such products.
Turning, next, to consideration of the respective
products in this case, it is well settled that goods 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 are related in some manner and/or that the
circumstances surrounding their marketing are such that they
would be likely to be 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).
Opposition No. 86,585
26
It is also well settled, in this regard, that the issue
of likelihood of confusion must be determined in light of the
goods set forth in the opposed application and pleaded
registrations and, in the absence of any specific limitations
therein, on the basis of all normal and usual channels of trade
and methods of distribution for such goods. See, e.g., CBS Inc.
v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983);
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983); and Paula Payne Products Co. v. Johnson Publishing
Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Here,
applicant’s goods are identified in its application as "cane
spirit vodka," a designation which, since it is not limited to
any particular channels of trade or classes of purchasers, must
be considered as encompassing all normal or usual channels of
distribution for the product and which includes adults of all
income levels and ethnic backgrounds as actual or potential
consumers. Similarly, the most pertinent of opposer’s goods are
broadly identified in its extant registrations as either "candy"
or "candy mints" rather than "breath mints".
Here, the record is sufficient to demonstrate that it
is not uncommon for consumers to encounter both candy, including
mints and liqueur-flavored chocolates, and alcoholic beverages,
including mint and other flavors of vodka, which is offered for
sale in the same retail outlets, such as wine and liquor stores,
supermarkets and specialty food stores, under identical marks.
The record, in fact, establishes that there are several third
parties which market liqueurs and candies under identical marks.
Opposition No. 86,585
27
Moreover, the record, including excerpts from newspaper and
magazine articles, shows a recent trend in which a number of
companies are selling vodkas having candy flavorings, such as
mint and various citrus fruit flavors, and that consumers are
accustomed to seeing candies which, like other confections, use
certain brands of liqueurs as flavors. Such evidence, along with
several third-party registrations for marks which are registered
for both candy and alcoholic beverages, demonstrates that the
average consumer has become accustomed to encountering such
products--often under the identical mark and in the same channels
of trade--and would regard them as related goods in the sense
that they would be expected to emanate from or be sponsored by or
affiliated with the same source.
In consequence thereof, the average consumer would be
likely to believe, upon seeing one or more of opposer’s "TIC TAC"
marks used in connection with its candy or candy mints and
applicant's substantially identical "TÍC TÁCK" mark used on or in
relation to its cane spirit vodka, that such closely related
goods share a common source or sponsor. This conclusion is
strengthened by the fact that there is no proof in the record
that any other entities, in either the confectionery or alcoholic
beverage fields, utilize a mark which consists of or includes the
term "TIC TAC" or any phonetic equivalent thereof, such as "TÍC
TÁCK".
In addition, the record reflects that, even if
opposer's goods were considered to be limited to candy breath
mints, confusion would still be likely to occur from the
Opposition No. 86,585
28
contemporaneous use of the parties’ marks. Not only are such
marks, as noted previously, substantially similar in sound,
appearance and connotation and virtually identical in overall
commercial impression, but in any event candy breath mints and
cane spirit vodka are relatively inexpensive goods which are
generally bought on impulse by ordinary consumers without the
need for deliberation or careful attention to their purchasing
decisions. Moreover, as mentioned earlier, opposer’s and
applicant’s goods have in fact been sold in the same wine and
liquor stores, with the former, which is used among other things
to cover up the odor of alcoholic beverages, typically displayed
at the check-out counter. In such circumstances, a purchaser
encountering applicant's "TÍC TÁCK" cane spirit vodka could
reasonably believe, for example, that the source of opposer's
"TIC TAC" candy breath mints has expanded its product line to
encompass alcoholic beverages or that the product is a mint-
flavored vodka which is produced or marketed under a license from
the same entity which sells "TIC TAC" candy breath mints.
Another factor which bears heavily upon our conclusion
that confusion is likely is the proven fame of opposer's "TIC
TAC" marks. As noted by our principal reviewing court in Kenner
Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992), cert. denied, 506 U.S. 862,
113 S.Ct. 181 (1992), "the fifth duPont factor, fame of the prior
mark, plays a dominant role in cases featuring a famous or strong
mark. Famous or strong marks enjoy a wide latitude of legal
protection." Contrary to applicant's contentions, the record
Opposition No. 86,585
29
establishes that the designation "TIC TAC," both with and without
various design elements, is a famous mark in the United States
for candy breath mints. Opposer has demonstrated that, since
Ferrero U.S.A. re-positioned the product from primarily a candy
to a low-calorie breath mint, sales have steadily increased each
year and have reached a magnitude where opposer commands
approximately a 21 percent market share. Opposer has enjoyed
substantial sales of its "TIC TAC" product, amounting to nearly
$750 million in gross sales on a volume of over 3.3 billion packs
sold, and its distributor has extensively advertised and promoted
the product, with expenditures thereon in the neighborhood of
$192 million. Opposer’s "TIC TAC" product is available for sale
in 80 percent of retail outlets which could carry a confectionery
product and the mark has received frequent publicity by being
mentioned in a variety of entertainment media. In fact, an
independent national study of unaided brand awareness in 1993
found that 55 percent of the respondents were able to identify
"TIC TAC" as a brand of breath mints or hard candy mints and that
"TIC TAC" was the second most frequently mentioned brand. Given
such proof, there is simply no question but that "TIC TAC" is a
famous mark for candy breath mints and that it is entitled to a
broad scope of protection. See, e.g., Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
Furthermore, the fact that neither party is aware of
any instances of actual confusion in the United States25 does not

25 In addition to the previously noted testimony with respect thereto
by applicant’s witnesses, "[t]he fact that there have been no
Opposition No. 86,585
30
undercut our conclusion that ordinary consumers could reasonably
believe, for example, that applicant's "TÍC TÁCK" cane spirit
vodka is a new product line emanating from or sponsored by the
same source which markets opposer's "TIC TAC" candy breath mints.
Applicant's limited sales of its "TÍC TÁCK" product, the meager
advertising and promotional expenditures of the brand, and the
relatively short period of time during which it and opposer's
"TIC TAC" candy or breath mints have been sold contemporaneously
in the United States have simply not been so substantial that, if
confusion were likely, it would be expected to have occurred.
The lack of any incidents of actual confusion is also not
dispositive inasmuch as evidence thereof is notoriously difficult
to come by, particularly in the case of generally inexpensive
products,26 and in any event the test under Section 2(d) of the
Trademark Act is likelihood of confusion rather than actual
confusion. See, e.g., Gillette Canada Inc. v. Ranir Corp., supra
at n. 13; Block Drug Co. v. Den-Mat Inc., 17 USPQ2d 1315, 1318
(TTAB 1989); and Guardian Products Co., Inc. v. Scott Paper Co.,
200 USPQ 738, 742 (TTAB 1978).
Finally, to the extent that the differences in the
inherent nature of the respective goods and the lack of any known
incidents of actual confusion may nevertheless serve to raise a
degree of doubt as to our conclusion that confusion is likely, we

instances of actual confusion" is conceded by opposer in its reply
brief.
26 See, e.g., Helene Curtis Industries Inc. v. Suave Shoe Corp., 13
USPQ2d 1618, 1623 (TTAB 1989).
Opposition No. 86,585
31
resolve such doubt, as we must, against applicant and in favor of
opposer as the prior user and registrant here in the United
States. See, e.g., Giant Food, Inc. v. Nation’s Foodservice,
Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983); San
Fernando Electric Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1, 2 (CCPA 1977); and Izod, Ltd. v. Zip
Hosiery Co., Inc., 405 F.2d 575, 160 USPQ 202, 204 (CCPA 1969).
Decision: The counterclaim is dismissed; the
opposition is sustained; and registration to applicant is
refused.
R. F. Cissel
G. D. Hohein
L. K. McLeod
Administrative Trademark Judges,
Trademark Trial and Appeal Board