Industrias La Constancia, S.A.v.The New Horizonte Corporation

Trademark Trial and Appeal Board

Jun 12, 2019

91222911 (T.T.A.B. Jun. 12, 2019)

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.