Kevin T. McCarneyv.Una Mas, Inc.

Trademark Trial and Appeal Board

Feb 5, 2004

No. 91107026 (T.T.A.B. Feb. 5, 2004)

Mailed: 05 FEB 2004
Paper No. 62
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Kevin T. McCarney dba
Poquito Mas
v.
Una Mas, Inc.
_____
Opposition Nos. 91107026 and 91107748
to application Serial Nos. 75214266 and 75154590
_____
Robert V. Vickers of Fay, Sharpe, Fagan, Minnich & McKee,
LLP for Kevin T. McCarney.
David J. Brezner of Dorsey & Whitney LLP for Una Mas, Inc.
______
Before Seeherman, Chapman, and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
Una Mas, Inc. (applicant) applied to register two marks
on the Principal Register for “restaurant services” in
International Class 42.1 The first application2 is for the
1 Applicant filed an amendment after publication to amend the
identification of services in Serial No. 75214266 to read
“Mexican restaurant services.” Applicant’s request is granted.
TBMP § 514.01 (2d ed. 2003). However, we will continue to refer
to the services as “restaurant services” as the parties have
done.
2 Serial No. 75214266. The application was filed on December 17,
1996, and it contained an allegation of a date of first use and
first in commerce of September 1991.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition Nos. 91107026 and 91107748
2
mark UNA MAS (typed) and the second application3 is for the
mark ONE IS GOOD, BUT UNA MAS IS BETTER (typed). Both
applications indicate that the term “Una Mas” is translated
as “one more.”
Kevin T. McCarney, dba Poquito Mas (opposer) has
opposed the registration of applicant’s marks. In his
notices of opposition, opposer alleges that he is the owner
of a registration4 for the mark POQUITO MAS (typed) for
restaurant services in International Class 42 and that
applicant’s marks when used in connection with restaurant
services are likely to cause confusion, mistake, or
deception. Applicant denied the salient allegations of the
notices of opposition.5
The Record
The record consists of the following items: the files
of the involved applications; the trial testimony deposition
of opposer, Kevin T. McCarney, with accompanying exhibits;
the trial testimony deposition of applicant’s founder and
former President, Richard Hamner, with accompanying
exhibits; the trial testimony deposition of Christine P.
Peters, a paralegal for applicant’s counsel, with
3 Serial No. 75154590. The application was filed on August 22,
1996, and it contains an allegation of a date of first use and
first use in commerce of May 28, 1996.
4 Registration No. 1,892,451 issued May 2, 1995; Section 8 and 15
affidavits accepted and acknowledged, respectively.
5 On March 27, 1998, the Board granted opposer’s motion to
consolidate these opposition proceedings.
Opposition Nos. 91107026 and 91107748
3
accompanying exhibits; the trial testimony deposition
of Lynne Mobilio who designed applicant’s survey, with
accompanying exhibits; and Notices of Reliance containing
printouts of articles referring to applicant and opposer,
dictionary definitions, discovery responses, and the
discovery deposition of opposer.
Preliminary Matters
Opposer, in his opening brief, also asserted that he is
the owner of two additional registrations.
6 7
Both registrations are also for restaurant services in
International Class 42. Applicant argues that only
Registration No. 1,892,451 was pleaded in the Notices of
Opposition and opposer “therefore cannot rely on any other
marks in this [consolidated] opposition proceeding.” Brief
6 Registration No. 2,026,811 issued December 31, 1996, and
affidavits under Sections 8 and 15 have been accepted and
acknowledged, respectively. The registration contains a
disclaimer of the words “Taco Stand” and it also contains a claim
of acquired distinctiveness of the phrase “The Original Baja Taco
Stand.”
7 Registration No. 2,212,685 issued December 22, 1998. The words
in the mark are POQUITO MAS THE ORIGINAL BAJA TACO STAND. It is
also registered with a claim of acquired distinctiveness of the
phrase “The Original Baja Taco Stand” and a disclaimer of the
words “Taco Stand.”
Opposition Nos. 91107026 and 91107748
4
at 9. We agree with applicant that it was not put on notice
of these registrations by the Notices of Opposition.
Inasmuch as the issue was not tried by consent, we agree
that the issue of likelihood of confusion will be determined
by comparing applicant’s marks with opposer’s POQUITO MAS
registration.8
Priority
Priority is not an issue here to the extent that
opposer relies on his ownership of a federal registration
for the mark POQUITO MAS. See King Candy Co. v. Eunice
King’s Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).9
Likelihood of Confusion
Obviously, we analyze the issue of likelihood of
confusion under the principles set forth by the Court of
Customs and Patent Appeals, one of the predecessor courts of
the Court of Appeals for the Federal Circuit, in In re E.I.
du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563,
567 (CCPA 1973). See also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003);
8 We also observe that the ‘811 and ‘685 registrations would not
determine the outcome of these proceedings inasmuch as if there
is no confusion between applicant’s marks and opposer’s POQUITO
MAS registration, there would also be no confusion with the same
words and the additional non-similar matter in these
registrations. Similarly, if applicant’s marks were confusingly
similar to opposer’s POQUITO MAS registration, there would be
little to gain by comparing applicant’s marks with opposer’s
additional registrations.
9 Applicant also concedes priority. Applicant’s Brief at 8.
Opposition Nos. 91107026 and 91107748
5
Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896
(Fed. Cir. 2000).
We begin our discussion by identifying factors for
which there can be no serious dispute. One important factor
in any likelihood of confusion analysis is the similarity or
dissimilarity of the goods and/or services. When we compare
the services of applicant and opposer, we must compare the
services as described in the applications and the
registration to determine if there is a likelihood of
confusion. Canadian Imperial Bank v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). Even if
this was not the rule, we note in this case the services of
applicant and opposer are not only legally identical, they
are, in fact, identical. The services in the applications
and registration were both identified as “restaurant
services.”10 Indeed, the marks are actually used in
connection with similar Mexican restaurant services that
feature burritos and tacos among other items for similar
prices (most items under $6). See McCarney Exhibits 20 and
26. Because the involved marks are all for restaurant
services, there is a greater likelihood that when similar
marks are used in this situation, confusion would be likely.
Century 21 Real Estate Corp. v. Century Life of America, 970
10 As discussed earlier, applicant’s amendment to specify that its
services are “Mexican restaurant services” has been granted.
Opposition Nos. 91107026 and 91107748
6
F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) (“When marks
would appear on virtually identical goods or services, the
degree of similarity necessary to support a conclusion of
likely confusion declines”).
In addition to the identical nature of the services, we
are unable to discern any significant differences between
the parties’ channels of trade or prospective purchasers11
other than the fact that at the time of the deposition,
applicant’s restaurants were located in Northern California
in the San Francisco area, and opposer’s restaurants were
located in Southern California, in the Los Angeles area.
See Opposer’s Brief at 32; McCarney dep. at 12-14 and
Exhibit 10 at 00015. Inasmuch as the parties have not
geographically restricted the scope of their applications
and registration, the geographic separateness of the parties
is not relevant.12 Furthermore, applicant concedes that the
marks will be “used in connection with the same services,
namely restaurant services in class 42, and will be marketed
and used in the same channels of trade and to the same
consumers.” Brief at 8.
We now come to the area where there is a significant
disagreement between the parties. This concerns the
11 There is also no evidence that the purchasers of these
restaurant services would be careful or sophisticated purchasers.
12 The geographic separateness does undercut applicant’s argument
that the marks have co-existed for ten years without any actual
confusion. Applicant’s Brief at 26.
Opposition Nos. 91107026 and 91107748
7
similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial
impression. Opposer submits that applicant’s marks “are
substantially similar to POQUITO MAS in sight, sound,
meaning and commercial impression.” Brief at 29. Regarding
the comparison of POQUITO MAS with UNA MAS, opposer relies
on the fact that both marks consist of two Spanish words
with the same last word “mas.” Opposer also argues that the
“meaning and commercial impression … are virtually
identical. A literal translation of POQUITO MAS is ‘little
more.’ A literal translation of UNA MAS is ‘one more…’ The
phrases ‘little more’ and ‘one more’ mean essentially the
same thing.” Brief at 24.
On the other hand, applicant maintains that the marks
are dissimilar in appearance, sound and connotation.
Applicant points out that the only similarity between the
marks “is the second word ‘Mas.” Brief at 10. Applicant
also argues that the words are totally dissimilar in sound
and appearance. Furthermore, applicant maintains that the
marks have different connotations because they are
translated “little more” and “one more.”
Applicant’s mark and registrant’s mark are for the
Spanish words, POQUITO MAS and UNA MAS. Even a cursory look
at these involved marks reveals that they are not identical.
It is well settled that it is improper to dissect a mark and
Opposition Nos. 91107026 and 91107748
8
that marks must be viewed in their entireties. In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir.
1993). However, more or less weight may be given to a
particular feature of a mark. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Looking at the similarity of the appearances of the
marks, it is clear that they are substantially different.
The marks begin with different words, “Poquito” and “Una,”
that bear no similarity. The second and common word in the
marks is the three-letter word, “Mas.” This word is not so
significant that it dominates the mark. Looking at the
similarity of the pronunciation, we again are left with the
conclusion that the marks would be pronounced differently.
Opposer argues that the words “have clear Spanish
connections. This in view of the use by both Opposer and
Applicant in connection with Mexican-style food will clearly
convey the Spanish origin to the consumer of these
services.” Opposer’s Brief at 24. It hardly seems
surprising that both parties use Spanish words with Mexican-
style restaurants. It is not clear how consumers would
conclude that marks with the words POQUITO MAS and UNA MAS
were similar simply because both involve Spanish words used
to identify Mexican-style restaurants.
Whether the marks have similar meanings or connotations
is a closer question. When both marks are foreign words, we
Opposition Nos. 91107026 and 91107748
9
consider their foreign meanings. In re Lar Mor
International, Inc., 221 USPQ 180, 181 (TTAB 1983) (“It
seems to us that the fact that both marks may be comprised
of foreign words should not mean that we can disregard their
meanings”). Opposer’s registration translates the mark
POQUITO MAS as “little more”; the applications translate the
mark UNA MAS as “one more.” Again, it is clear that the
marks' connotations are not identical. Furthermore, “little
more” and “one more” are hardly arbitrary terms when applied
to restaurant services. See Opposer’s Brief at 12 (“Often,
a person will request ‘a little more of this’ or ‘one more
of that’”); Hamner dep. at 14 (“Una Mas is what you say when
you want another beer”).
Applicant points out that the expression “little more”
can actually have “a negative connotation, as in ‘his nachos
are little more than chips with processed cheese.’” Brief
at 11. Even if the indefinite article “un” or “a” is
assumed to be present before “little more” so that the mark
translates as “a little more,” we are not convinced that
this meaning would make these otherwise different looking
and sounding marks similar. “It has frequently been held
that trademarks, comprising two words or a compound word,
are not confusingly similar even though they have in common
one word or part which is descriptive or suggestive of the
nature of the goods to which the marks are applied, or of
Opposition Nos. 91107026 and 91107748
10
the use to which such goods are to be put.” Smith v.
Tobacco By-Products & Chemical Corp., 243 F.2d 188, 113 USPQ
339, 340 (CCPA 1957) (BLACK LEAF and GREEN LEAF not
confusingly similar for the same goods).
Opposer also argues that “Applicant has failed to
provide evidence that the consumer of the services of these
proceedings would be sufficiently fluent in the Spanish
language to distinguish between the slight differences in
the meaning of these phrases.” Reply Brief at 7. To the
extent that purchasers are not fluent in Spanish, the marks
would have even fewer similarities because their meanings
would be unclear and they would have significant differences
in appearance and sound.13 In addition, their overall
commercial impressions would not be similar.
When we compare the marks in their entireties, we find
that the marks POQUITO MAS and UNA MAS are not significantly
similar in appearance, sound, and meaning, and we find that
their overall commercial impression would be different. We
note that applicant’s other mark, ONE IS GOOD, BUT UNA MAS
IS BETTER, contains additional wording that makes that mark
even less similar to opposer’s mark.
13 We do not find that the evidence supports opposer’s statement
that the “consumer of Opposer’s and Applicant’s services at least
generally recognizes the English equivalent of both POQUITO MAS
and UNA MAS.” Opposer’s Brief at 13. The mere fact that the
restaurants’ marks are translated in several restaurant reviews
does not equate to general consumer recognition of the
translation of the Spanish words.
Opposition Nos. 91107026 and 91107748
11
Opposer has also argues that his mark “is well-known
and is known to represent a chain of restaurants that sell
quality Mexican-style food. The many favorable reviews have
also helped to strengthen the Opposer’s POQUITO MAS mark.”
Brief at 30. Case law recognizes that “a mark with
extensive public recognition and renown deserves and
receives more legal protection than an obscure or weak
mark.” Kenner Parker Toys v. Rose Art Industries, 963 F.2d
350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
We start by observing that opposer has six restaurants
in Studio City, North Hollywood, Burbank, West Hollywood,
Los Angeles, and Valencia, California. McCarney dep. at 11-
13. These restaurants have received numerous favorable
restaurant reviews. For example, the Zagat Survey, Los
Angeles So. California Restaurants (1998) describes
opposer’s restaurants as: “A ‘healthy, tasty, friendly,
fast’ Mexican food chain that has locals crying ‘bring me
more’ of the ‘best burritos and tacos’ by far; boosters say
they’re ‘proof that fast food can be good,’ even in a space
that’s ‘charmingly tacky.’” McCarney Exhibit 37. A Los
Angeles Times (August 2, 1996) article describes the
restaurant as follows: “Speaking of shrimp, I have come to
require semi-regular doses of Poquito Mas’s grilled shrimp
tacos, squirted with lime, with or without added guacamole.
In fact, just about everything at this upscale taco stand is
Opposition Nos. 91107026 and 91107748
12
as good as it gets: grilled ahi tacos, creamy beans,
mushroom and steak quesadillas, a worthy vegetariano
burrito.” An article in Daily Variety (September 9, 1995)
reports about Michael Rosen, a chef who prepared food at a
presidential fundraiser: “for quickie fast food stuff,
Rosen drops in at Poquito Mas in the valley.” While
opposer’s restaurants have received some primarily local
attention14 in the media, there is little other evidence to
demonstrate the fame of opposer’s mark.15 Therefore, we
cannot say that the evidence of record demonstrates that
opposer’s mark is famous or is even a particularly strong
mark.
Another factor that opposer argues supports a
determination of likelihood of confusion is opposer’s claim
that there has been actual confusion. Evidence of actual
confusion is normally very persuasive evidence of likelihood
of confusion. Exxon Corp. v. Texas Motor Exchange, Inc.,
628 F.2d 500, 208 USPQ 384, 389 (5th Cir. 1980) (“The best
evidence of likelihood of confusion is provided by evidence
of actual confusion”). Opposer’s evidence of alleged actual
14 Mr. McCarney also testified (p. 111) that “Food TV did a
segment on us a couple of years back.”
15 For example, opposer describes his advertising as follows:
Q. “What type or types of advertising has Poquito Mas done over
the years?
A. On the print side, normally, we don’t do any print
advertising unless it’s a small charitable ad… As far as the
radio, we’ve done about a half to a dozen different little radio
spots… In regards to television, in a marketing aspect, we have –
Opposition Nos. 91107026 and 91107748
13
confusion consists of conversations opposer’s principal had
with a passenger on an airplane and a cashier at a retail
store on trips to Northern California. Opposer’s Brief at
32. In both conversations, the other person is reported to
have responded to the witness’s identification of his
business as Poquito Mas by assuming it was Una Mas.
McCarney at 96-97. Opposer could not identify either
person. Opposer also testified that “on another trip, there
was a lady16 who asked me the same question. And then
subsequently, there was a couple other people on the plane
trips.” McCarney at 96.
Courts and this Board have found vague evidence of
actual confusion such as misdirected phone calls hearsay and
inadmissible. Duluth News-Tribune v. Mesabi Publishing Co.,
84 F.3d 1093, 38 USPQ2d 1937, 1941 (8th Cir. 1996) (“[V]ague
evidence of misdirected phone calls and mail is hearsay of a
particularly unreliable nature given the lack of an
opportunity for cross-examination of the caller or sender
regarding the reason for the ‘confusion.’”); Hi-Country
Foods Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1169, 1172
(TTAB 1987) (“[T]estimony from opposer's deponent,
Mr. Harlan, that he received a phone call asking for beef
jerky is, apart from being inadmissible hearsay, vague and
- we have licensed the Michael Richard Show to use our likeness
and our logo in the TV show.” McCarney dep. at 60-61.
Opposition Nos. 91107026 and 91107748
14
unclear. The identity of the caller is unknown and the
circumstances surrounding the incident are unexplained”).
However, if it is otherwise reliable, employee testimony on
the subject of misdirected calls can be admissible. Armco,
Inc. v. Armco Burglar Alarm Co., 693 F.2d 1155, 217 USPQ
145, 149 n. 10 (5th Cir. 1982) (Testimony of plaintiff’s
employees about purchasers attempting to reach defendant
admissible because it was either not used "to prove the
truth of the matter asserted" (Fed. R. Evid. 801(c)) or was
relevant under the state of mind exception (Fed. R. Evid.
803(3))); CCBN.com Inc. v. c-call.com Inc., 53 USPQ2d 1132,
1137 (D.C. Mass. 1999) (“[S]tatements of customer confusion
in the trademark context fall under the ‘state of mind
exception’ to the hearsay rule. See Fed. R. Evid. 803(3)”).
While we do not strike the witness’s testimony on this
point as applicant requests (Brief at 24), we cannot give it
much weight.17 The testimony of actual confusion is vague.
We do not even know if the strangers on the plane or the
cashier in the store are potential customers. Therefore,
16 The witness provided a photocopy of the person’s business card
(McCarney Exhibit 42), but the person did not testify.
17 The description of the incidents of alleged actual confusion
apparently involved opposer’s witness orally communicating the
mark to others. Opposer, when challenging applicant’s telephone
survey (discussed subsequently herein), acknowledges that simply
considering the sound of the marks in this case is of little
relevance. Opposer’s Brief at 11 (“The fact that the test
takers, who are relying on only sound, likely never had a chance
to fully appreciate the commercial impression of these marks
further shows that the survey should be given little or no
weight”).
Opposition Nos. 91107026 and 91107748
15
the evidence on the factor of actual confusion does not
provide much support for either party in this case.
Opposer also argues that “Applicant’s use of a
virtually identical trade dress as used by Opposer, is
further evidence that the UNA MAS mark projects a
confusingly similar impression.” Brief at 20. Trade dress
may “provide evidence of whether the word mark projects a
confusingly similar commercial impression.” Specialty
Brands, Inc. v. Coffee Bean Distributors, 748 F.2d 669, 223
USPQ 1281, 1294 (CCPA 1984). However, a review of the
photographs in evidence of opposer’s and applicant’s
restaurants (McCarney’s Exhibits 14, 15, and 19-23) reveals
only the most general of similarities such as yellow
walls.18 These similarities would be the type found in many
casual restaurants.19 The fact that both parties use the
word “more” in their advertising also does not somehow make
dissimilar terms similar.
Another issue concerns a survey that applicant
introduced to show that there was no likelihood of
18 Apparently, even this color is not consistent in opposer’s
restaurants. McCarney’s dep. at 17 (“We have yellow or light-
colored walls where we don’t have brick as part of the concept”)
and 18-19 (Q. Do you use the same color for walls in all of your
restaurants? A. Not in all the restaurants as of to date. This
is the newest restaurant. We have, I believe, this color in at
least two or three of the restaurants”).
19 Applicant points out that the restaurant opposer relies on to
show that the parties’ trade dress is similar was built in 1999,
two years after the opposition was filed. Applicant’s Brief at
33; McCarney’s dep. at 17.
Opposition Nos. 91107026 and 91107748
16
confusion. Opposer objects to the survey on the ground that
applicant has not shown that the survey’s designer,
Ms. Mobilio, is an expert. In addition, even if the survey
is admitted into evidence, opposer argues that “it includes
many flaws and should be given little or no weight.” Reply
Brief at 9.
We start by noting that opposer’s objection should have
been raised earlier. Opposer did not raise these objections
to the survey in his opening brief, and for that reason,
opposer’s objection to the survey will not be sustained.
TBMP § 707.03(c) (A "party should maintain the objection in
its brief on the case"). However, in any event, we must
address the survey to determine how much weight it should be
given. Ms. Mobilo has a degree in Social Psychology and a
Ph.D. in Education with a minor in Statistics. Mobilio Ex.
1. Ms. Mobilio estimates that she has designed
approximately 165 surveys. Mobilio dep. at 7. While she
has provided some advice about consumers’ beliefs concerning
a name of a company, she had never before “been called upon
to perform or design research intended to assess the
strength of a trademark.” Mobilio dep. at 42. Ms. Mobilio
appears to meet the minimum qualifications as an expert in
trademark surveys and we will not exclude the survey from
consideration. Compare Helene Curtis Industries v. Suave
Shoe Corp., 13 USPQ2d 1618 (TTAB 1989) (Defendant’s witness
Opposition Nos. 91107026 and 91107748
17
who was a professor of statistics and psychology qualified
as a survey expert) with Albert v. Warner-Lambert Co., 234
F. Supp.2d 101 (D. Mass. 2002) (Court questioned whether
expert could be shown to be a expert when he had delegated
the design and execution of the survey to his daughter).
Although there are many weaknesses in the survey, we
will not exclude it, but we will not give it much weight.
Sports Authority Inc. v. Abercrombie & Fitch Inc., 965 F.
Supp. 925, 42 USPQ2d 1662, 1667 (E.D. Mich. 1997) (“Even
though the survey was leading and apparently lacked
objectivity, and although the Court lacks sufficient
knowledge of the survey population, total exclusion is
inappropriate”). The “proponent of a consumer survey has
the burden of establishing that it was conducted in
accordance with accepted principles of survey research.”
Id., quoting, National Football League Properties v. New
Jersey Giants, 637 F. Supp. 507, 513, 228 USPQ 785 (D.N.J.
1986). We are concerned about the fact that the survey was
a telephone survey. While telephone surveys may be
appropriate in some circumstances, in this case, we have
non-English words. The appearance of the mark is important
and the failure to address this issue limits the reliability
of the survey. Other deficiencies include the fact that the
survey included participants who had not eaten or intended
Opposition Nos. 91107026 and 91107748
18
to eat at a Mexican restaurant (Mobilio Ex. 2. p. ii)20; the
interviewers were instructed to pronounce the common word in
the mark “mas” as “moss,” which is somewhat different from
the Spanish pronunciation (Mobilio Ex. 2, p. iv) and Ms.
Mobilio had no opinion “as to what would happen in the
future if Poquito Mas stores were to begin to open in
neighborhoods where there are Una Mas Stores.”21 Mobilio
dep. at 79.
Finally, we note that applicant has introduced some
evidence that there are other Mexican-style restaurants that
use the word “mas” in their names. This evidence consists
of the testimony of a paralegal of applicant’s counsel who
called several Mexican or Latin American-style restaurants
with the word “mas” in their names and obtained the menus
from those restaurants.22 See Peters dep. Ex. 1 and
attached exhibits 1 (Dos Mas), 2 (Mas Amigos), 3 (Mas), and
5 (Enchiladas Y Mas). The witness also testified that
several other restaurants using the word ‘mas” in their
names were also in operation. Peters dep. Ex. 1 at 2-3.
20 See Sports Authority, 42 USPQ2d at 1667, citing Manual for
Complex Litigation, § 21.493 (3rd ed. 1995).
21 Despite this statement by the witness, we note that the survey
itself was not predicated on the parties’ restaurants being
located in different geographical areas (applicant in Northern
California and opposer in Southern California).
22 Opposer’s objections to this testimony are overruled. The fact
that the witness did not ascertain the exact type of services the
restaurant provided does not make this testimony inadmissible.
Also, the witness’s statement that she received a menu by fax
after calling a telephone number for a restaurant is not hearsay.
Opposition Nos. 91107026 and 91107748
19
However, these uses of the word “mas” with Mexican- or Latin
American-style restaurants do not appear to be extensive,
and applicant’s evidence does not suggest otherwise. Carl
Karcher Enterprises Inc. v. Stars Restaurants Corp., 35
USPQ2d 1125, 1131 (TTAB 1995) (“[T]he pictures of these
restaurants tend to indicate that the operations are small
and local in nature”). Therefore, we do not give this
evidence much weight in deciding whether there is a
likelihood of confusion in this case.23
Conclusion
When we compare applicant’s and opposer’s marks in
their entireties as used on applicant’s and opposer’s
restaurant services and all the other factors on the issue
of likelihood of confusion, we are convinced that there is
no likelihood of confusion in this case.
DECISION: The oppositions are dismissed.
23 To the extent that applicant relies on a trademark search
report, we have not considered this report to demonstrate use of
the listed marks or the weakness of opposer’s mark. AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973) (“We have frequently said that little weight is to be
given such registrations in evaluating whether there is
likelihood of confusion. The existence of these registrations is
not evidence of what happens in the market place or that
customers are familiar with them nor should the existence on the
register of confusingly similar marks aid an applicant to
register another likely to cause confusion, mistake or to
deceive’); Weyerhaeuser Co. v. Katz, 24 USPQ 1230, 1231 (TTAB
1992) (A “trademark search report is not credible evidence of
the existence of the registrations listed in the report”); Humana
Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1699 (TTAB 1987) (The
“only probative value of the third-party registrations introduced
by applicant here, absent a showing that the marks subject of the
Opposition Nos. 91107026 and 91107748
20
third-party registrations are in use, is to show the meaning of a
mark”).