Intermex Products USA, Ltd.v.Tron Hermanos, SA de CV

Trademark Trial and Appeal Board

Aug 18, 2008

No. 91166834 (T.T.A.B. Aug. 18, 2008)

Mailed: August 18, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Intermex Products USA, Ltd.
v.
Tron Hermanos, SA de CV
_____

Opposition No. 91166834
to application Serial No. 78491821
filed on September 29, 2004
_____

Seth A. Horwitz of Glast, Phillips & Murray for Intermex
Products USA, Ltd.

John S. Egbert of Harrison & Egbert for Tron Hermanos, SA de
CV.
______

Before Kuhlke, Bergsman and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Tron Hermanos, SA de CV, seeks registration
of the mark LA TORRE (in standard character form) for goods
identified in the application as “edible oils and fats,
lard, butter” in International Class 29.1 The application

1 Serial No. 78491821, filed September 29, 2004, alleging the
year 1928 as its date of first use and use in commerce under
Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a).
THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91166834
2
includes a translation statement that “the mark translates
into English as THE TOWER.”
Opposer, Intermex Products USA, Ltd., has opposed
registration of applicant’s mark on the ground that, as
applied to applicant’s goods, the mark so resembles
opposer’s previously used and registered LA TORRE marks for
a variety of food products as to be likely to “deceive or
cause confusion or mistake among members of the public as to
the source or sponsorship of Applicant’s goods in relation
to Opposer” within the meaning of Section 2(d) of the Lanham
Act, 15 U.S.C. §1052(d). Notice of Opposition ¶ 8.
Applicant has filed an answer by which it has denied
the salient allegations.
The evidence of record consists of the pleadings herein
and the file of the opposed application. In addition,
opposer submitted, under a notice of reliance, certified
copies of opposer’s three pleaded registrations, which show
that the registrations are subsisting and owned by opposer.
Opposer also submitted the testimony depositions of Sandy
Eastep, opposer’s Director of Business Operations; Fernando
Soto, President of opposer’s licensee Dynamic Trade; and
Juan Carlos Lorenzo, opposer’s CEO and President, with
accompanying exhibits. Applicant did not take any
testimony, file a notice of reliance or file a brief.
Opposition No. 91166834
3
PRIORITY AND LIKELIHOOD OF CONFUSION
The pleaded registrations made of record, which are in
full force and effect and are owned by opposer, are
summarized as follows:
Registration No. 1476098 for the mark shown below

for “canned food products, namely jalapenos,
pineapple, mangos, guavas, cream of coconut,
tomatoes, mushrooms, chic peas, refried beans,
chili with beans, and chili without beans” in
International Class 29, with the translation
statement that LA TORRE translates to THE TOWER,
issued on February 9, 1988, renewed;

Registration No. 2960754 for the mark LA TORRE (in
typed form) for “canned sardines and canned
fruits” in International Class 29, with the
translation statement that LA TORRE translates to
THE TOWER, issued on June 7, 2005; and

Registration No. 2974670 for the mark LA TORRE (in
typed form) for “pasta and cookies” in
International Class 30, with the translation
statement that LA TORRE translates to THE TOWER,
issued on July 19, 2005.

Because opposer has made the pleaded registrations
summarized above properly of record, opposer has established
its standing to oppose registration of applicant’s mark and
its priority is not in issue. See King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
Opposition No. 91166834
4
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). 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). Another important factor, when
presented, is the fame of the mark. Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005).
We first address opposer’s assertion that its mark is
famous. Fame can play “a ‘dominant role’ in the process of
balancing the du Pont factors.” Recot Inc. v. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). The
record shows that opposer owns three registrations for the
LA TORRE marks for various canned food products, pasta and
cookies and they have been continuously registered since
1988. There is also testimony regarding advertising
expenditures, sales revenue, sales in at least 28 states and
continuous sales since 1974. See, e.g., Soto Test. pp. 7-8,
13; and Lorenzo Test. pp. 8-10, 20. However, on this
record, we cannot say that opposer has provided sufficient
evidence about the extent of its use of the mark, or its
sales under the mark such that we can conclude that
Opposition No. 91166834
5
opposer’s LA TORRE mark can be considered a famous mark.
See Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963
F.2d 350 22 USPQ2d 1453 (Fed. Cir. 1992). However, although
not famous, the term LA TORRE is arbitrary in connection
with these goods and is “conceptually strong as a
trademark.” Palm Bay, 73 USPQ2d at 1692. Moreover, the
record does show extensive use of the mark over a long
period of time on a wide variety of products, including
cookies, canned mushrooms, canned fruit, refried beans,
pasta and canned sardines.
We now consider the similarity or dissimilarity of the
marks when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
The mark, LA TORRE, in two of opposer’s registrations
is identical to applicant’s mark LA TORRE. As to the third
registration, the addition of the tower design, rather than
distinguishing opposer’s mark from applicant’s mark, serves
to reinforce the common connotation of THE TOWER.
Thus, all of opposer’s LA TORRE marks are identical or
highly similar in appearance, sound, connotation and
commercial impression to applicant’s mark LA TORRE and this
factor weighs heavily in favor of a likelihood of confusion.
We turn now to a consideration of the goods, channels
of trade and class of purchasers. We must make our
determinations under these factors based on the goods as
Opposition No. 91166834
6
they are recited in the registrations and application. See
In re Elbaum, 211 USPQ 639 (TTAB 1981). The goods need not
be identical or directly competitive in order for there to
be a likelihood of confusion. Rather, the respective goods
need only be related in some manner or the conditions
surrounding their marketing be such that they could be
encountered by the same purchasers under circumstances that
could give rise to the mistaken belief that the goods come
from a common source. In re Martin's Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Finally, where the respective marks are identical, the
relationship between the goods need not be as close to
support a finding of likelihood of confusion as would be
required in a case where there are differences between the
marks. Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70,
78 (TTAB 1981).
The goods listed in opposer’s registration include a
wide variety of canned food products, pasta and cookies. In
addition, the record shows that opposer also sells edible
vegetable oil under the LA TORRE mark. While the record
does not establish that opposer began use of the mark in
connection with vegetable oil prior to applicant’s September
29, 2004 filing date,2 such use does support a finding that

2 Although applicant asserted an earlier use date in its
application, inasmuch as applicant has not submitted proof of
this use date applicant may only rely on the filing date of the
Opposition No. 91166834
7
opposer’s registered goods are related to applicant’s goods
in that, at a minimum, applicant’s goods are within
opposer’s zone of expansion. Given the wide variety of
opposer’s canned goods, including basic staples such as
beans, opposer’s expansion into edible oils, and the
identical nature of the marks, we find applicant’s and
opposer’s goods to be related.
Considering the channels of trade and class of
purchasers, because there are no limitations as to channels
of trade or classes of purchasers in either the application
or opposer’s registrations, it is presumed that the
registrations and application encompass all of the goods of
the type described in the description of goods, that the
identified goods move in all channels of trade normal for
those goods, and that the products are available to all
classes of purchasers for the listed products. See In re
Linkvest S.A., 241 USPQ2d 1716 TTAB 1992).
In addition, because the goods are closely related and
because there are no limitations in either the registrations
or the subject application, we must presume that applicant’s
and opposer’s goods will be sold in the same channels of
trade and will be bought by the same classes of purchasers.
See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Canadian Imperial

application. Trademark Rule 2.122(b)(2); Levi Strauss & Co. v.
Opposition No. 91166834
8
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) and In re Smith and Mehaffey, 31 USPQ2d 1531
(TTAB 1994). All of the involved goods are general food
items that would be sold in grocery stores.
In view of the above, the du Pont factors of the
similarity of the goods, the channels of trade and class of
purchasers favor a finding of likelihood of confusion.
With regard to the conditions of sale, these goods
include general food products that would not be purchased
with a great deal of care or require purchaser
sophistication, which increases the likelihood of confusion.
See Recot, supra, 54 USPQ2d at 1899 (“When products are
relatively low-priced and subject to impulse buying, the
risk of likelihood of confusion is increased because
purchasers of such products are held to a lesser standard of
purchasing care”) (citations omitted). See Exhs. 3, 4, 5
and 10. Thus, this factor also favors opposer.
Thus, considering the marks in their entireties, we
conclude that the evidence of record as it pertains to the
relevant du Pont factors supports a finding of a likelihood
of confusion as between applicant’s LA TORRE mark and
opposer’s LA TORRE marks, such that registration of
applicant’s mark is barred under Trademark Act Section 2(d).

R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1467 (TTAB 1993).
Opposition No. 91166834
9
As noted above, applicant has not submitted any evidence,
taken any testimony or presented any legal argument to rebut
opposer’s showing.
Decision: The opposition is sustained as to opposer’s
claim of priority and likelihood of confusion under Section
2(d) of the Trademark Act.