Industrias La Constancia, S.A.v.The New Horizonte CorporationDownload PDFTrademark Trial and Appeal BoardJun 12, 201991222911 (T.T.A.B. Jun. 12, 2019) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: June 12, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Industrias La Constancia, S.A. v. The New Horizonte Corporation ________ Opposition No. 91222911 against Serial No. 86335366 _______ Christian G. Stahl and Stacy A. Alexejun of Quarles & Brady LLP for Industrias La Constancia, S.A. Harold G. Furlow for The New Horizonte Corporation. _______ Before Cataldo, Shaw and Pologeorgis, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: Applicant, The New Horizonte Corporation, seeks registration of the standard character mark EL SALVADORENO AUTHENTICO RICA SUPREMA for “Beer” in International Class 32.1 The application states that “The English translation of ‘EL SALVADORENO AUTHENTICO RICA SUPREMA’ in the mark is ‘EL 1 Application Serial No. 86335366, filed July 11, 2014, based on bona fide intent to use mark under Trademark Act Section 1(b), 15 U.S.C. § 1051(b). Opposition No. 91222911 2 SALVADOREAN PERSON AUTHENTIC RICH SUPREME’.” Applicant disclaimed the wording “AUTHENTICO RICA SUPREMA” apart from the mark. Opposer, Industrias La Constancia, S.A., opposes registration on the ground of priority and likelihood of confusion based on its ownership of the mark also for “Beer” in International Class 32.2 The registration states that “The English translation of ‘SUPREMA’ is ‘supreme.’” The mark registered with a showing of acquired distinctiveness under Section 2(f), 15 U.S.C. § 1052(f). In its answer, Applicant denies the salient allegations in the notice of opposition and lists numerous putative “affirmative defenses” attacking the validity of Opposer’s mark, including, among others, genericness, descriptiveness, and dilution. In the absence of a counterclaim for cancellation all of these “defenses” are merely amplifications of Applicant’s denial of a likelihood of confusion. See Trademark Rule 2.106(b)(3)(i) (a defense attacking the validity of a pleaded registration in an opposition is a compulsory counterclaim if grounds for the counterclaim existed at the time when the answer is filed or are learned during the course of the opposition). I. The Record The parties filed a joint stipulation to have this case decided by the accelerated case resolution (“ACR”) procedure discussed in Sections 528.05(a)(2) and 702.04 of 2 Registration No. 1877855, issued February 7, 1995, renewed. Opposer’s notice of opposition also pleaded that Applicant’s mark is primarily geographically deceptively misdescriptive. The claim was dismissed with prejudice following Opposer’s motion for voluntary dismissal. 49 TTABVUE. Opposition No. 91222911 3 the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) (June 2018).3 The stipulation provides that in lieu of a trial, the Board will consider the parties’ evidence submitted in support of their earlier summary judgment briefs and reply briefs thereto, without the requirement of notices of reliance or the need for accompanying testimony. Further, Applicant was allowed to supplement its previously-filed summary judgment brief with additional exhibits, declarations and affidavits. Opposer was allowed to submit a rebuttal brief, also with exhibits, declarations and affidavits. The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the involved application. In addition, pursuant to the parties’ ACR stipulation, the parties’ admitted the following evidence from their respective briefs on the motion for summary judgment or from their ACR supplemental briefs. For Opposer: 1. The declaration of Christian Antonio Montalvo Flores, Beer Brands Head of Opposer, with exhibits, including: Opposer’s annual reports, news stories about Opposer and its beer, a current status and title copy of Opposer’s registration, and information relating to Opposer’s sales of its beer;4 and 2. The declaration of Stacy A. Alexejun, Counsel for Opposer, with exhibits, including: transcript excerpts from the deposition of Applicant, Applicant’s responses to interrogatories and requests for production of documents, 3 53 TTABVUE. 4 39 and 40 TTABVUE. Opposition No. 91222911 4 Internet Archive Wayback Machine searches, excerpts from the deposition transcript of Jose Cerritos, President of Applicant, and text messages, emails and attached graphic designs from Applicant discussing sample proposed beer bottle label designs.5 For Applicant: 1. The declaration of Harold G. Furlow, Counsel for Applicant, with exhibits, including: Applicant’s responses to Opposer’s interrogatories and requests for the production of documents;6 and 2. A second Furlow declaration, with exhibits, including: documents related to Applicant’s development of its beer and sample beer bottle packaging and labels, data relating to beer imports into the United States, printouts of third-party registrations for Suprem-formative marks for beer, and images from the Google image database purporting to shows third-party “Suprema” or “Supreme” branded beer. II. Standing and Priority Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1061-62 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401, 191 L. Ed. 2d 360 (2015); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 187-89 (CCPA 1982) see also, e.g., Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). In order to meet the standing requirement, a 5 41 and 42 TTABVUE. 6 12 TTABVUE 35-508; 13 TTABVUE. Opposition No. 91222911 5 plaintiff need only show that it has a real interest, i.e., a personal stake, in the outcome of the proceeding, and a reasonable basis for its belief of damage. See Ritchie v. Simpson, 170 F.3d 1092, 1095, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727(Fed. Cir. 2012). A belief in likely damage can be shown by establishing a direct commercial interest. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Opposer’s standing in this proceeding is established by its pleaded registration, which the record shows to be valid and subsisting, and owned by Opposer. Cunningham, 55 USPQ2d at 1844; Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012). In addition, because Opposer’s pleaded registration is of record, priority is not an issue with respect to the goods identified in the registration. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)). III. Likelihood of Confusion Our determination under Section 2(d), 15 U.S.C. § 1052(d), is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The standards of proof in an ACR proceeding are the same as the standards of proof in a traditional Board proceeding. TBMP Section 702.04; Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016). Opposer must establish that there is a likelihood of confusion by a preponderance of the evidence. Centroamericana, S.A. v. Cerveceria Opposition No. 91222911 6 India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1311 (Fed. Cir. 1989) (plaintiff’s burden is to establish the case by a preponderance of the evidence). In any likelihood of confusion analysis, 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 (CCPA 1976). Varying weights may be assigned to each du Pont factor depending on the evidence presented. Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687-88 (Fed. Cir. 1993). The du Pont factors relevant to this proceeding are discussed below. A. The nature and similarity or dissimilarity of the goods, the established, likely- to-continue trade channels, and the classes of purchasers. We begin with the similarity of the respective goods. Both Applicant’s and Registrant’s goods are identical, namely, beer. Applicant does not argue otherwise. Because the goods are identical and without restriction, we must presume that they are sold in all normal trade channels and to all normal classes of purchasers for such goods. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Thus, we consider Applicant’s and Registrant’s trade channels and classes of purchasers to be the same. See 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). The du Pont factors regarding the similarity of the goods, channels of trade, and classes of purchasers strongly favor a finding of a likelihood of confusion. Opposition No. 91222911 7 B. Strength of Opposer’s mark We next consider the strength of Opposer’s mark in order to evaluate the scope of protection to which it is entitled. Applicant argues that “[Opposer’s] SUPREMA Mark is inherently weak due its nature of the use of a single laudatory word” and, therefore, “Opposer should not be able to assert the exclusive right to use the term SUPREMA over all other beers and the common use of the term SUPREMA or SUPREME in beer products throughout the world.”7 Opposer argues that its “SUPREMA mark must ‘receive nationally the greatest protection’ that it can be given.”8 In determining strength of a mark, we consider both inherent or conceptual strength, based on the nature of the mark itself, and fame or commercial strength. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).”); MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83 (5th ed. May 2019) (“The first enquiry focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another’s use.”). See also, e.g., In re Fabfitfun, 127 USPQ2d 1670, 1673-6 (TTAB 2018). “[T]he strength of a mark is not a binary factor” and “varies along a spectrum from very strong to very weak.” In re Coors, 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. 7 Applicant’s Supp. Br., p. 21, 54 TTABVUE 22. 8 Opposer’s Supp. Reply Br., p. 2, 55 TTABVUE 4. Opposition No. 91222911 8 Cir. 2003). As noted above, conceptual strength is determined by the nature of the mark itself, i.e., whether the mark is arbitrary, suggestive, descriptive, etc. in relation to the goods or services or the degree of usage of the mark by third parties. Commercial strength may be measured indirectly by the volume of sales and advertising expenditures in connection with the goods sold under the mark, and other factors such as length of time of use of the mark; widespread critical assessments; notice by independent sources of the goods identified by the marks; and the general reputation of the goods. Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014); see also Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1308 (Fed. Cir. 2002) (recognizing indirect evidence as appropriate proof of strength). We begin with the conceptual strength of Opposer’s mark. Applicant argues that Opposer’s mark is weak and entitled to a narrow scope of protection because “the term SUPREME or SUPREMA is commonly used in conjunction with beer.”9 In support of this argument, Applicant submitted: 1) two third-party reports on beer imports into the United States purporting to show “insignificant” imports of beer from El Salvador;10 2) two registered trademarks incorporating the term “Supreme” for use 9 Applicant’s Supp. Br., p. 20, 54 TTABVUE 21. 10 Id. at 7, 54 TTABVUE 8; Ex. 4, 54 TTABVUE 44-116. Opposition No. 91222911 9 on beer;11 and 3) images from the Google image database of third-party beers purportedly using the term “Suprema” or “Supreme” in connection with beer.12 None of the foregoing evidence supports a finding that Opposer’s mark is weak. The beer importation reports, besides being of uncertain provenance, actually show that beer imports from El Salvador are significant, ranking sixteenth out of the eighty-one countries listed. In fact, beer imports from El Salvador rank just behind Korea and Austria and just ahead of Denmark and France. Regardless, gross figures relating to imports of beer by country, not by brand, do not establish that the term SUPREMA is weak for beer. Regarding the two third-party registrations for marks incorporating the term “Supreme,” we find they do not support Applicant’s argument that SUPREMA is weak. We recognize that third-party registrations for similar marks and similar goods may be relevant to show the sense in which a mark is used in ordinary parlance; that is, an element common to both parties’ marks may have a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that the common element is relatively weak. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). However, two registrations are not sufficient to establish that Opposer’s mark is weak and entitled only to limited protection. Further, such 11 Ex. 5, 54 TTABVUE 117-27. Applicant also included a pending application incorporating the term “Supreme” but pending applications are not evidence of anything except the fact that the application was filed. Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007) (pending applications are evidence only that the applications were filed on a certain date; they are not evidence of use of the marks). 12 Ex. 6, 54 TTABVUE 128-47. Opposition No. 91222911 10 registrations are not evidence that the marks therein are in use on a commercial scale or that the public is familiar with them. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 177 USPQ 462, 463 (CCPA 1973); see also In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (“Applicant’s citation of third-party registrations as evidence of market weakness is unavailing because third-party registrations standing alone, are not evidence that the registered marks are in use on a commercial scale, let alone that consumers have become so accustomed to seeing them in the marketplace that they have learned to distinguish among them by minor differences.”). Regarding the images of third-party beers purportedly sold featuring “Suprema” or “Supreme,” we do not find the images have much, if any, probative value. Applicant states that the images “identif[y] various beer trademarks that have been or are in use in commerce throughout the world. It is clear that the term SUPREMA is commonly used in Italy and throughout the world in conjunction with beer.” This argument is unpersuasive. There is no evidence that any of the beers are or were ever sold in the United States, or anywhere else for that matter. Moreover, although the images were introduced with the declaration of Applicant’s counsel, the exhibit does not indicate the exact nature of the google search, the date the images were accessed, or their URL. Cf. Safer Inc. v. OMS Invests. Inc., 94 USPQ2d 1031, 1039 (TTAB 2010). Without evidence as to whether consumers in the United States were exposed to any of the beers depicted, the images are of little probative value. Opposition No. 91222911 11 In sum, Applicant’s third-party evidence is far less voluminous and compelling than that found in other cases. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1673 n.1 (Fed. Cir. 2015). See also Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030 (TTAB 2016) (weakness found based on, inter alia, at least 85 actual uses of ROSE-formative marks for similar services, eight similar third-party registrations, and expert testimony and other evidence regarding the common nature of ROSE-formative marks in the industry). Nevertheless, Opposer’s mark registered under a Section 2(f) showing of acquired distinctiveness which is an admission that the mark is not inherently distinctive. See Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (“Where, as here, an applicant seeks a registration based on acquired distinctiveness under Section 2(f), the statute accepts a lack of inherent distinctiveness as an established fact.”). Accordingly, we find Opposer’s SUPREMA mark to be conceptually weak. Regarding the commercial strength of its mark, Opposer maintains that: ILC registered its SUPREMA mark in the United States almost 20 years ago and has used the mark in commerce much longer. . . . The popularity of ILC’s SUPREMA beer in the United States is only growing with time. . . . Given ILC’s longstanding use of the SUPREMA mark and double- digit sales growth, the mark ought to be considered strong, even if not famous.13 13 Opposer’s Motion for Summary Judgment, p. 19, 37 TTABVUE 20 (internal citations omitted). Opposition No. 91222911 12 Opposer registered its mark in 1995. Suprema beer is sold in a number of retail stores, including Whole Foods, Trader Joe’s, Kroger, Aldi, and Albertsons.14 Sales figures for SUPREMA beer, although confidential, show that sales in the United States have increased from 2006 to 2015.15 In addition, Opposer’s Suprema beer has been awarded several gold and silver medals by Monde Selection, “international experts in in the quality of consumer products.”16 We find that Opposer’s mark is conceptually weak, but, through long use and national sales, has established an average degree of commercial strength. We also keep in mind that Opposer’s mark is registered, and must be accorded all of the presumptions that are to be accorded a registered mark pursuant to Section 7(b) of the Trademark Act, 15, U.S.C. § 1057(b). The mark is therefore entitled to a normal scope of protection. That is, the registered mark is still entitled to appropriate protection against the registration of confusingly similar marks. King Candy, 182 USPQ at 109; In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010); see also In re Clorox Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978) (ERASE for a laundry soil and stain remover held confusingly similar to STAIN ERASER, registered on the Supplemental Register, for a stain remover). This du Pont factor is neutral in our analysis of likelihood of confusion. 14 Flores decl., para. 14, 39 TTABVUE 4-5. 15 Id., para. 17, 39 TTABVUE 5. 16 Id., para. 18, 39 TTABVUE 5. Opposition No. 91222911 13 C. Similarity of the marks Turning to the first du Pont factor, involving the comparison of the marks, we consider them “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay, 73 USPQ2d at 1691 (quoting du Pont, 177 USPQ at 567). Similarity in any one of these factors is sufficient to support a determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion”) In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (“In appropriate cases, a finding of similarity as to any one factor (sight, sound or meaning) alone ‘may be sufficient to support a holding that the marks are confusingly similar”’) (citations omitted)). “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.” Coach Servs., 101 USPQ2d at 1721 (citation omitted). The appropriate emphasis is on the recollection of the average customer, who normally retains a general rather than a specific impression of trademarks. Spoons Rests., Inc. v. Morrison, Inc., 23 USPQ2d 1735, 1741 (TTAB 1991) (citations omitted), aff’d mem. unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). See Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014). Additionally, where, as here, the goods of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support Opposition No. 91222911 14 a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). To recap, Applicant’s mark is EL SALVADORENO AUTHENTICO RICA SUPREMA in standard characters. Opposer’s mark is . Opposer argues that Applicant has merely added the wording EL SALVADORENO AUTHENTICO RICA which translates to “El Salvadorean person,” “authentic” and “rich” to Opposer’s SUPREMA. Likelihood of confusion has been found where wording is added to a registered mark. Stone Lion, 110 USPQ2d at 1161 (affirming Board’s finding that applicant’s mark STONE LION CAPITAL incorporated the entirety of the registered marks LION CAPITAL and LION, and that the noun LION was the dominant part of both parties’ marks); In re Chatam Int’l Inc., 380 F.3d 1340, 1343, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Viewed in their entireties with non-dominant features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical.”). Applicant argues that it intends to use its mark in a way that minimizes the emphasis on the term SUPREMA: Applicant’s EL SALVADORENO AUTHENTICO RICA SUPREMA Mark has a boldly contrasted trademark positioned on three different parallel diagonal lines with varying size font, type of font, color of font and spacing of font that emphasizes the EL SALVADORENO first line in white against a bold red or a bold blue background; Opposition No. 91222911 15 similarly, the remaining two lines are subdued and de- emphasized in their respective colors and font sizes.17 In support, Applicant has made of record several label designs which it is considering. The example below is representative: 18 Applicant’s argument is unpersuasive. It is well settled that a standard character mark, such as Applicant’s, “could be used in any typeface, color, or size, including the same stylization actually used . . . by the other party, or one that minimizes the differences or emphasizes the similarities between the marks.” Anheuser- Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1823 (TTAB 2015) (citing Citigroup, 98 USPQ2d at 1258-59). In other words, even if Applicant now intends to use the label above, it could, at a later date, switch to a different label that changed the emphasis on the wording in the mark. For example, Applicant could switch to a label design that it earlier considered but has now discarded, shown below. 17 Applicant’s Supp. Br., p. 20, 54 TTABVUE 21. 18 Ex. 2 to Applicant’s Supp. Br., 54 TTABVUE 37. Opposition No. 91222911 16 19 This design emphasizes the wording RICA SUPREMA instead of the wording EL SALVADORENO AUTHENTICO. Opposer also argues that the addition of the language EL SALVADORENO AUTHENTICO increases the likelihood of confusion because the parties’ beer is produced, or will be produced, in El Salvador: The descriptive terms of “EL SALVADORENO” and “AUTHENTICO,” which New Horizonte translates as “EL SALVADOREAN PERSON” and “AUTHENTIC” conjure up the Salvadoran manufacture for which ILC’s SUPREMA beer has been known for over 50 years. Thus, consumers familiar with ILC’s SUPREMA beer and Salvadoran history are likely to associate the EL SALVADORENO AUTHENTICO RICA SUPREMA mark with ILC. (Internal citations omitted).20 We find the overall connotation and commercial impression of the marks to be similar because of the shared wording SUPREMA. Given that Applicant’s beer will be produced in El Salvador, we find that the wording EL SALVADORENO AUTHENTICO RICA in Applicant’s mark would likely be seen as less dominant than SUPREMA because consumers would understand the wording to suggest the goods 19 Ex. O to Alexejun Decl., ¶ 17, 41 TTABVUE 5 and 94. Applicant designated the exhibit as confidential but we include it inasmuch as the parties discuss it extensively in their briefs. 20 Opposer’s Motion for Summary Judgment, p. 17, 39 TTABVUE 18. Opposition No. 91222911 17 are authentic beer from El Salvador. As Opposer argues, consumers familiar with Registrant’s SUPREMA beer, also from El Salvador, could think that Applicant’s EL SALVADORENO AUTHENTICO RICA SUPREMA beer was a related product touting its origin in El Salvador. As a result, the additional wording in Applicant’s mark does not create a different commercial impression that distinguishes the marks. Instead, the additional language reinforces the shared origin of the parties’ beer as being from El Salvador, and increases the overall similarity of the marks. Applicant’s disclaimer of AUTHENTICO RICA SUPREMA does not change this likely consumer impression; nor does the presence of a simple background design in Registrant’s mark create a different commercial impression. AUTHENTICO and RICA add little to distinguish the marks. Rather, we find the dominant portion of both marks to be the term SUPREMA, particularly, as discussed above, given the geographic origin of the parties’ goods. It is well settled that one feature of a mark may be more significant than another, and it is not improper, for rational reasons, to give more weight to a dominant feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. Stone Lion, 110 USPQ2d at 1161 (finding that the Board did not err in reasoning that the term LION was dominant in both applicant’s mark STONE LION CAPITAL and opposer’s marks LION CAPITAL and LION); In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004). Opposition No. 91222911 18 For the foregoing reasons, we find that Applicant’s EL SALVADORENO AUTHENTICO RICA SUPREMA mark and Opposer’s mark to be more similar than dissimilar in overall connotation and commercial impression. D. Bad faith Opposer argues that Applicant’s implied knowledge of Opposer’s marks and the similarity in the parties’ marks point to bad faith. “Whether there is evidence of intent to trade on the goodwill of another is a factor to be considered.” J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1462, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991); Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 853 F.2d 888, 7 USPQ2d 1628, 1630 (Fed. Cir. 1988) (“[P]roof of intent to trade on another’s goodwill” can provide “persuasive evidence of likelihood of confusion”) (citation omitted). A finding of bad faith must be supported by evidence of an intent to confuse, rather than mere knowledge of another’s mark or even an intent to copy. See Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 92 USPQ2d 1769, 1782 (2d Cir. 2009) (“[T]he ‘only relevant intent is intent to confuse. There is a considerable difference between an intent to copy and an intent to deceive.’” (quoting MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:113)). As the second comer, Applicant has a duty to choose a mark which is unlikely to cause confusion with any other mark already in use in its field of commerce. Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 223 USPQ 1281, 1285, (Fed. Cir. 1984) (‘[T]here is therefore no excuse for even approaching the well-known Opposition No. 91222911 19 trademark of a competitor, that to do so raises ‘but one inference–that of gaining advantage from the wide reputation established by appellant in the goods bearing its mark[.]’”) (quoting Planters Nut & Chocolate Co. v. Crown Nut Co., Inc., 305 F.2d 916, 134 USPQ 504, 511 (CCPA 1962)). Opposer alleges that because “New Horizonte’s President is from El Salvador, it strains credulity for New Horizonte to maintain that it was unaware of ILC’s SUPREMA mark, or at least of ILC, when it adopted a similar mark for use with identical goods.”21 Opposer further alleges that It is more than a coincidence that New Horizonte, which admittedly tries to sell its products to Salvadorans living in the United States . . . would adopt a mark that incorporates the entirety of ILC’s SUPREMA mark while adding the descriptive terms of “EL SALVADORENO” and “AUTHENTICO” that conjure up the Salvadoran manufacture for which ILC’s SUPREMA beer is widely known.22 Although the evidence may point towards an intent to copy, proving intent to confuse or deceive is subject to a high evidentiary bar that has not been met here. We do not find this record supports, by a preponderance of the evidence, a conclusion of bad faith adoption. We therefore find the du Pont factor regarding bad faith adoption to be neutral. IV. Balancing the factors We have considered all of the arguments and evidence of record, including any not specifically discussed herein, and all relevant du Pont factors. Applicant’s standard 21 Opposer Motion for Summary Judgment, p. 23, 37 TTABVUE 24. 22 Id. at pp. 22-23, 37 TTABVUE 23-24. Opposition No. 91222911 20 character mark, EL SALVADORENO AUTHENTICO RICA SUPREMA, is similar in connotation, and commercial impression to Opposer’s pleaded mark, . Even taking into account some degree of conceptual weakness of the term SUPREMA in the cited mark, the overall similar connotations and commercial impressions of the marks result in this factor supporting a finding of likelihood of confusion. The cited mark is entitled to appropriate protection against the registration of confusingly similar marks, in this case a mark that combines SUPREMA in the cited mark with additional matter. See King Candy, 182 USPQ at 109. Moreover, the goods at issue are identical and they are marketed through the same trade channels to the same consumers. We find that Applicant’s mark so resemble Opposer’s pleaded mark as to be likely to cause confusion or to cause mistake or to deceive. Decision: The opposition to Application Serial No. 86335366 is sustained and registration is refused. Copy with citationCopy as parenthetical citation