Le Fe Foods, Inc.v.Yvette Irizarry

Trademark Trial and Appeal Board

Feb 27, 2013

No. 92053524 (T.T.A.B. Feb. 27, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
February 27, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Le Fe Foods, Inc.
v.
Yvette Irizarry
_____

Cancellation No. 92053524
_____

Stephen J. Jeffries of Holland & Knight, LLP for Le Fe Foods, Inc.

Alejandro J. Cacho of Alejandro J. Cacho Law Offices for Yvette Irizarry.
_____

Before Seeherman, Kuczma, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:

La Fe Foods, Inc. (petitioner) has petitioned to cancel a registration
owned by Yvette Iziarry for the mark CAFE LA FE, with CAFE disclaimed, for
“coffee.”1 The registration includes a statement that “Cafe” and “La Fe” are
Spanish terms meaning “coffee” and “the faith.” The ground asserted in the
petition is likelihood of confusion with the following registrations which
petitioner alleges that it owns:

1 Registration No. 3895044 issued on December 21, 2010.
Cancellation No. 92053524

2

• Reg. No. 1469890 for the mark shown below

for: “ground corn; pineapple jelly; quince jelly; guava with jelly;
prune, guava, orange and mango paste, processed pigeon peas,
processed papaya, processed tarro, processed yucca (cassaba)
and processed yams and ham croquettes”2;

• Reg No. 2348386 for the mark LA FE in typed form
for “guava shells in syrup; papaya chunks in syrup; grated
coconut in syrup; guava marmalade; ground corn; pineapple
jelly; quince jelly; guava with jelly; prune, guava, orange and
mango paste; processed pigeon peas; processed papaya;
processed tarro; processed yucca (cassaba); processed yams;
ham croquettes; frozen pigeon peas; canned fruit; canned
vegetables; tomato paste; canned corned beef; canned fruit;
frozen vegetables; frozen plantains; frozen fruit pulps; and
coconut water and canned fruit juice3; and

• Reg. No. 2358347 for the mark shown below

for “ground corn, jams, jellies, guava with jelly, prune, guava,
orange and mango paste, processed pigeon peas, processed
papaya, processed tarro, processed yuca [sic] (cassaba),
processed yams, ham croquettes, frozen pigeon peas, canned
fruit, canned vegetables, tomato paste, canned corned beef,
canned fruit, coconut water, canned fruit juices, frozen
vegetables, frozen plantains, and frozen fruit pulps; tomato
sauce.”4

2 Reg. No. 1469890 issued on December 22, 1987 and has been renewed.
3 Reg. No. 2348389 issued on May 9, 2000 and has been renewed. In 2003,
Trademark Rule 2.52(a) was amended to refer to “typed” drawings” as “standard
character” drawings.
4 Reg. No. 2358347 issued on June 13, 2000 and has been renewed.
Cancellation No. 92053524

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Petitioner has also alleged use of the mark LA FE in commerce on and in
connection with food and beverage products since 1968.
Respondent filed an answer in which she admitted that “Registrant’s
Goods sold under Registrant’s Mark are marketed and sold, inter alia, to
Spanish speaking customers”; “the English translation of the Spanish word
‘cafe’ is ‘coffee’”; and “‘cafe’ is the generic name for Registrant’s Goods in
Spanish.” She denied all of the other salient allegations in the petition for
cancellation.5
Only petitioner filed a brief at final hearing.
The Record
The record includes, by operation of the rules, the pleadings and the file
of the registration sought to be cancelled. The parties stipulated to the
submission of testimonial evidence by declaration, and pursuant to that
stipulation, petitioner has submitted the declaration of Juan Carlos Pena,
President and CEO of Petitioner, and exhibits thereto, and the declaration of
Birte Hoehne, petitioner’s counsel. Petitioner has also submitted, under notice
of reliance, printouts from the United States Patent and Trademark Office
database evidencing status and title of opposer’s pleaded registrations;
dictionary definitions; and printouts of pages from third-party websites

5 Respondent asserted seven “affirmative defenses” with her answer. Most of these
“defenses” are further explanations of the denial of likelihood of confusion. To the
extent that respondent pleaded any true affirmative defenses, she did not pursue them
and we therefore consider them waived.

Cancellation No. 92053524

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displaying the word “CAFE” in trademarks for coffee. Respondent has
submitted her declaration.
Petitioner's Standing
Because petitioner has made its pleaded registrations of record, and
further has shown, by its evidence of use of the pleaded marks, that it has a
personal stake in the outcome of this proceeding, we find that petitioner has
established its standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Priority
Respondent’s registration, which is the subject of this proceeding, issued
from an intent-to-use based application, Serial No. 77832313 that was filed on
September 22, 2009. Thus, respondent can rely on this filing date as her
constructive date of first use. Further, in her declaration, respondent testified
that she launched the CAFE LA FE brand of coffee in a local market in Puerto
Rico on January 1, 2004. Irizarry declaration, par. 9.
As noted, petitioner has made of record its registrations for the marks LA
FE and LA FE & design for food products. Its first pleaded registration for the
mark LA FE & design (Reg. No. 1469890) issued on December 22, 1987 from
an application filed on April 2, 1984. Petitioner’s second pleaded registration
for the mark LA FE in typed form (Reg. No. 2348386) issued on May 9, 2000
from an application filed on February 4, 1999. Petitioner’s third pleaded
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registration for the mark LA FE & design (Reg. No. 2358347) issued on June
13, 2000 from an application filed on April 22, 1998.
Because both petitioner and respondent own registrations, priority is at
issue. Cf. King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108 (CCPA 1974). Therefore, petitioner must establish that it has
prior rights in its marks. Brewski Beer Co. v. Brewski Brothers Inc., 47
USPQ2d 1281, 1284 (TTAB 1998). Petitioner may rely for this purpose on the
filing dates of the applications which issued into its pleaded registrations.
Since all three of petitioner’s underlying applications were filed prior to
respondent’s first use in 2004 and prior to the filing date of respondent’s
application, petitioner has established its priority. See Brewski, 47 USPQ2d at
1284 (petitioner or respondent may rely on its registration for the limited
purpose of proving that its mark was in use as of the application filing date).
Likelihood of Confusion
Our likelihood of confusion determination under Section 2(d) is based on
an analysis of all of the probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering the evidence
of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Cancellation No. 92053524

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Turning first to the du Pont factor of the similarity of the marks, it is a
well-established principle that, in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Opposer’s marks are LA FE and LA FE with design elements. Applicant’s
mark is CAFE LA FE. In the LA FE with design element marks, the dominant
element is the literal portion of the marks, i.e., LA FE. The design elements are
minor and it is the term LA FE that consumers are likely to note and remember
as it is by this term that they would refer to the goods. See In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). As for the word CAFE in
respondent’s mark, as noted above, respondent translated the words in her
mark as “coffee” and “the faith.” Thus, the word CAFE in respondent’s mark is
generic for her goods, a point that respondent has admitted in her answer:
“The word ‘cafe’ is the generic name for Registrant’s Goods in Spanish.” Par.
16 of the petition for cancellation, admitted by respondent. As a result, this
additional word in respondent's mark does not serve to distinguish
respondent’s mark from petitioner's. Instead, the generic word “cafe” merely
informs consumers that the product is coffee. Thus, consumers will look to the
arbitrary term LA FE in respondent’s mark as the term with source-indicating
significance. Since this term is identical to petitioner’s typed mark, and to the
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word portion of petitioner’s design marks, and because, for the reasons
discussed above, CAFE and the design elements do not serve to distinguish the
marks, the marks overall are similar in appearance, pronunciation,
connotation and commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F3d 1369, 73 USPQ2d 1689,
1692 (Fed. Cir. 2005).
Petitioner’s goods, which petitioner describes as Latin American and
Caribbean style food and beverages,6 include the following goods that are in
one or more of petitioner’s registrations: “guava shells in syrup; papaya chunks
in syrup; grated coconut in syrup; guava marmalade; ground corn; pineapple
jelly; quince jelly; guava with jelly; prune, guava, orange and mango paste;
processed pigeon peas; processed papaya; processed tarro; processed yucca
(cassaba); processed yams; ham croquettes; frozen pigeon peas; canned fruit;
canned vegetables; tomato paste; canned corned beef; frozen vegetables; frozen
plantains; frozen fruit pulps; tomato sauce; coconut water and canned fruit
juices.”
In determining whether petitioner’s food and beverages, and registrant’s
coffee are similar, “it is not necessary that the respective goods be identical or
even competitive in order to support a finding of likelihood of confusion.
Rather, it is sufficient that the goods are related in some manner, or that the
circumstances surrounding their marketing are such that they would be likely
to be encountered by the same persons in situations that would give rise,

6 Pena declaration, par. 5
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because of the marks used thereon, to a mistaken belief that they originate
from or are in some way associated with the same source or that there is an
association or connection between the sources of the respective goods.” Mag
Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1713 (TTAB 2010) citing
In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
The evidence establishes that petitioner’s goods are marketed to the
Spanish-speaking public through Spanish language shopping circulars,
magazines, television commercials, web pages and radio advertisements (Pena
declaration pars. 16 – 20) and that they are sold in convenience stores,
neighborhood grocery stores and in sections of supermarkets dedicated to Latin
American style food and beverage products. Pena declaration pars. 29 and 31.
Respondent also markets and sells her goods to Spanish-speaking customers.
See Answer to Petition for Cancellation, par. 14.
Petitioner’s evidence includes photographs of the Latin American food
sections of five supermarkets (including Wal-Mart), all of which sell a variety of
unrefrigerated packaged foods and beverages either on the same or adjacent
shelves. Hoehne declaration pars. 3–8. The photographs show coffee products
next to a number of food products such as those sold by petitioner (e.g. jams,
canned vegetables, dried fruit, canned lunch meats, and corn meal (aka ground
corn)). Hoehne declaration pars. 3–8. For example, there are photographs of
CAFÉ BUSTELO coffee in the Latin American food sections of Blooms and of
Wegman’s; the photographs of this section in Wegmans also show CAFÉ GOYA
coffee next to the CAFÉ BUSTELO coffee. Hoehne declaration, pars. 6 and 8.
Cancellation No. 92053524

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The evidence also shows that goods of the type identified in petitioner’s
registration and coffee, the goods identified in respondent’s registration, can
emanate from the same source. The photographs show several of the products
identified in petitioner’s registration, e.g., mango paste, guava jelly, corn meal
and coconut milk, that bear the trademark GOYA. The photographs also show
coffee sold under the mark CAFÉ GOYA.
Accordingly, the evidence shows that both coffee, the goods identified in
respondent’s registration, and several of the goods identified in petitioner’s
registration, are sold in the same channels of trade to the same class of
purchasers; that they are marketed in close proximity; and that the goods may
emanate from a single source. Based on this evidence, we find that the goods
are related.
We note respondent’s evidence (Irizarry declaration, pars. 12 – 15) of
photographs showing that various brands of coffee are sold in a “coffee” section
of Target, Whole Foods and Wal-Mart stores, rather than in a Latin American-
food section. It is not entirely clear whether the brands of coffee shown in
respondent’s photographs would be directed to a Latin-American clientele.
However, even if such coffee is not always sold in a Latin-American food section
of a store, petitioner’s evidence shows that coffee is sold with such products in
several stores, and this is sufficient for us to find that the goods are sold
together to the same classes of purchasers.
Cancellation No. 92053524

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The evidence of record establishes that petitioner’s mark, LA FE, is
arbitrary. Further, the goods are of a type that can be inexpensive and the
subject of impulsive purchases.
Accordingly, based on the evidence of record, we find the following du
Pont factors favor petitioner: similarity of the marks, relatedness of the goods,
channels of trade, conditions under which and buyers to whom sales are made,
and strength of petitioner’s marks, in that LA FE is an arbitrary term for these
goods. To the extent any other du Pont factors are relevant, we treat them as
neutral. Because consumers are likely to believe that CAFE LA FE for coffee is
a variation of petitioner’s marks, with the generic term CAFE added to identify
the goods, we conclude that respondent’s mark, CAFE LA FE, for coffee is likely
to cause confusion with petitioner’s mark LA FE and the LA FE and design
marks.
Decision: The petition is sustained on the ground of likelihood of
confusion under Section 2(d) of the Trademark Act. Registration No. 3895044
will be cancelled in due course.