Licores Veracruz, S.A. de C.V.

Trademark Trial and Appeal Board

Jan 26, 2012

No. 77753913 (T.T.A.B. Jan. 26, 2012)

Mailed:
January 26, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Licores Veracruz, S.A. de C.V.
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Serial No. 77753913
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Arturo Pérez-Guerrero of the Law Offices of Arturo Pérez-
Guerrero for Licores Veracruz, S.A. De C.V.

Saima Makhdoom, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Bergsman, Wellington and Lykos,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Licores Veracruz, S.A. de C.V. (“applicant”) filed an
application to register the mark MOCAMBO, in standard
character form, for “rum,” in Class 33. In the
application, applicant stated that “[t]he wording MOCAMBO
has no meaning in a foreign language,” and that it “has no
significance in the relevant trade or industry … or any
geographical significance.”
The examining attorney refused registration under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used in
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77753913
2
connection with rum, so resembles the registered mark
MOCAMBO, in typed drawing form, for “cigars,” in Class 34,
as to be likely to cause confusion.1
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression and the strength of the
registered mark.

The marks are identical. In addition, we note that
applicant stated in its application that “[t]he wording
MOCAMBO has no meaning in a foreign language,” and that it
“has no significance in the relevant trade or industry … or
any geographical significance.” There is nothing in the

1 Registration No. 1434163, issued March 24, 1987; renewed.
Serial No. 77753913
3
record to indicate that MOCAMBO is anything other than a
fanciful or arbitrary term and, therefore, it is entitled
to a broad scope of protection or exclusivity of use.
B. The similarity or dissimilarity and nature of the
goods, channels of trade and classes of consumers.

In comparing the similarity of the goods, we are
mindful that the greater the degree of similarity between
the applicant’s mark and the registered mark, the lesser
the degree of similarity between the applicant’s goods and
registrant’s goods that is required to support a finding of
likelihood of confusion. In re Opus One, Inc., 60 USPQ2d
1812, 1815 (TTAB 2001); In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). Even when
goods are not intrinsically related, the use of identical
marks can lead to the assumption that there is a common
source. In re Shell Oil Co., 992 F.2d 1024, 26 USPQ2d
1687, 1689 (Fed. Cir. 1993). In this regard, the issue is
not whether the goods will be confused with each other, but
whether the public will be confused about their source or
origin. See Safety-Kleen Corp. v. Dresser Indus., Inc.,
518 F.2d 1399, 186 USPQ 476, 480 (CCPA 1975).
The examining attorney argues that the goods are
related because they are complementary products that are
Serial No. 77753913
4
marketed together for simultaneous consumption.2 To support
her argument, the examining attorney submitted the
following evidence:
1. An article entitled “Tasting Cigars and Rum”
appearing in the CIGAR AFICIONADO website
(cigaraficionado.com).3 The first sentence of the article
reads as follows: “Given that rum and cigars are so often
created in proximity, they are the most perfect
companions.” The editors of CIGAR AFICIONADO reported on
their tasting of 13 rums and 3 cigars for purposes of
pairing the products for simultaneous consumption (e.g.,
Bacardi 8 Reserva Superior rum is best matched with the
Hoyo cigar “bringing out its earthy and leather notes”).
2. An article (undated) in the Cigars4Dummies.com
website entitled “Rum and Cigars.”4 As in the above-noted
article in the CIGAR AFICIONADO, the author of this article
suggests rum and cigar pairings. The introduction of to
the article reads, in pertinent part, as follows:
Cigars and rum … mmm – a divine
combination. I’m sure this pair sounds

2 Examining Attorney’s Brief, unnumbered page 5.
3 September 14, 2009 Office Action. The article has a date of
September 14, 2009, but the information on the top of the page
states that the printout is a “snapshot of the page as it
appeared on September 7, 2009.” However, when the examining
attorney submitted her third copy of this article in the February
22, 2011 Office Action, the article featured a December 31, 1969
date.
4 July 19, 2010 Office action.
Serial No. 77753913
5
familiar to you. … Still when you feel
nostalgic, there’s nothing more calming
and relaxing than a glass of fine Cuban
(and not only) rum and a good
qualitative stogie.

As you probably know, Cuba is rum’s
motherland as it is for cigars. … this
article is written not only to suggest
the idea but also give some ready-to-
use pairings.

The author also examined how the taste of the rum and
cigar interacted. For example,
Hoyo de Monterrey Epicure No. 2 showed
itself as a perfect pair to this rum.
This cigar is light to medium bodied
with mighty tobacco palate mixed with
cocoa, dried fruit and cinnamon. The
rum saturated the stogie with spiciness
and regained it from the stick. As the
rum revealed itself and the cigar
became mightier, they appeared to be
good partners leading to a kind of
conversation together.

3. An excerpt from the Beerliquors.com website
advertising the sale of rum and cigars; specifically,
COHIBA rum and COHIBA cigars.
4. An excerpt from the MINISTRY OF RUM website forum
(ministryofrum.com).5 The title to the forum thread is “Rum
& Cigars.” One of the threads is entitled “Camacho Cigars
partners with Matusalem [a rum brand]” and another is “Rum
and Cigar pairings.”

5 July 19, 2010 Office Action.

Serial No. 77753913
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5. An article posted on August 26, 2009 on the
STOGIE LIFE website (stogielife.com) entitled “Rum and
Cigars ~ A Perfect Pairing.” The article states the
following: “If you haven’t tried rum with your cigar, you
should.”
6. Advertisements for the sale of “rum cigars”
(e.g., Tatiana Classic Rum Cigars, Cojimar Senoritas Rum
Cigars and Backwoods Wild Rum Cigars).6 These are cigars
that feature a rum flavor.
In addition, the Mission Wine & Spirits website
(missionliquor.com) and the BEERLIQUORS.com website
advertise the sale of rum and cigars.7
Evidence of complementary use, as presented here, is
relevant in determining whether the goods are related for
purposes of likelihood of confusion. In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290
(Fed. Cir. 1984). Our holding in In re Vienna Sausage
Manufacturing Co., 230 USPQ 799 (TTAB 1986) is instructive
regarding complementary products.
Turning to the goods, it is obvious
that sausage and cheese are
specifically different products.
However, the Examining Attorney has
made of record copies of pages from
certain cookbooks which contain recipes

6 February 22, 2011 Office Action.
7 July 19, 2010 Office Action.
Serial No. 77753913
7
for dishes having cheese and sausage as
principal ingredients. The dishes
include pizza with cheese and sausage,
shirred eggs with sausage and cheese,
sausage and spaghetti with cheese
sauce, and chiles [sic] rellenos
(stuffed chilies) stuffed with finely
chopped boneless pork and covered with
a walnut sauce with cheese. Moreover,
it is a matter of common knowledge that
sausage (of which salami and bologna
are types) and cheese are frequently
used together as sandwich ingredients,
or as cold cuts, or in hors d'oeuvres.
Further, these are goods which may very
well be purchased in the same store,
such as a grocery store or delicatessen
(where goods of this nature are often
displayed in close proximity to one
another) during the course of a single
shopping trip, for a subsequent
complementary or conjoint use of the
type described above. Under the
circumstances, and since registrant's
mark “SALZBERG” is not a weak mark, we
are of the opinion that the
contemporaneous use of applicant's mark
“SALZBURG” for sausage and registrant's
mark “SALZBERG” for cheese is likely to
cause confusion, mistake or deception
as to source.

Id. at 799-800. See also Polo Fashions, Inc. v. La Loren,
Inc., 224 USPQ 509, 511 (TTAB 1984) (applicant’s bath
sponges are complementary in nature to the personal
products sold by opposers and, therefore, “these respective
products would go hand in hand and would be sold to the
same customer through the same marketing channels”).
Likewise, in this case, the evidence presented by the
examining attorney establishes that rum and cigars are
Serial No. 77753913
8
consumed together (e.g., magazines advising on rum and
cigar pairings) and sold in the same channels of trade.
When those facts are considered in conjunction with the
arbitrary nature of the mark MOCAMBO, we find that cigars
and rum will be encountered by the same consumers under
circumstances that could, because of the identity of the
marks, give rise to the mistaken belief that they originate
from the same source.
Applicant contends that rum and cigars are very
different goods in spite of the evidence establishing their
complementary nature:8
Applicant respectfully submits that
this notion is too stretched and
exaggerated. Persons that drink rum
and smoke wear clothing when they carry
out the activity of drinking rum, or of
smoking a cigar, or even both. Does
this mean that one would believe that
pants or shoes branded MOCAMBO being
worn by a person that is drinking
MOCAMBO wine or smoking a MOCAMBO cigar
come from the same source as the rum or
as the cigar?9

Applicant’s contention is untenable because it fails to
address the facts and circumstances brought out by the
record before us; in other words, applicant has ignored the
evidence submitted by the examining attorney establishing a

8 Applicant’s Brief, p. 2.
9 Applicant’s Brief, p. 2.

Serial No. 77753913
9
relationship between cigars and rum (e.g., rum and cigar
pairings are the subject to magazine/website articles and
that they are sold in the same channels of trade). The
record in this application reveals circumstances and
conditions whereby applicant’s rum and registrant’s cigars
could be encountered in a market environment that could
rise to a likelihood of confusion because of the identity
of the marks.
The circumstances of this case are similar to those in
the case of John Walker & Sons Limited v. Tampa Cigar
Company, Inc., 124 F.Supp. 254, 103 USPQ 21 (DC Fla.,
1954), aff’d 222 F.2d 460, 105 USPQ 351 (5th Cir. 1955), in
which the Court found a likelihood of confusion and
enjoined defendant from using the mark JOHNNIE WALKER for
cigars in view of plaintiff's mark JOHNNIE WALKER for
whiskey:
Whiskey and cigars are closely related
in distribution and use. Hotels,
restaurants and bars supply cigars as
well as whiskey to their guests and
customers. People frequently smoke
cigars while drinking whiskey.
Pictures of Johnnie Walker smoking a
cigar have been used in advertisements
of JOHNNIE WALKER whiskey. Ashtrays
and books of matches with the JOHNNY
WALKER name and picture on them have
been used to advertise JOHNNIE WALKER
whiskey.

103 USPQ at 22.
Serial No. 77753913
10
Likewise, in the case of Geo. A. Nickel Co. v.
Stephano Brothers, 155 USPQ 744 (TTAB 1967), the Board
sustained an opposition brought by the owner of the mark
CASCADE for whiskey against an application to register
CASCADE for cigarettes.
But regardless of precedents, we
entertain considerable doubt on the
basis of the present record that the
mark “CASCADE” can be used for both
whisky [sic] and cigarettes without
causing confusion or mistake or
deception, and such doubts as we have
in the matter must be resolved in favor
of opposer, the prior user.

155 USPQ at 745. But see, Schenley Distillers, Inc. v.
General Cigar, 427 F.2d 783, 166 USPQ 142, 143 (CCPA 1970)
(rejecting appellant’s contention that it has been
recognized as a principle that the use of the same mark on
tobacco and alcoholic beverage products results in
likelihood of confusion). To be clear, we are not finding
that rum and cigars are related based upon some abstract
similarity between alcohol and tobacco. The record in this
case establishes that cigar and rum are complementary
products sold in the same channels of trade to the same
classes of consumers.
C. Balancing the factors.
In view of the facts that the marks are identical and
are a fanciful or arbitrary term, and the goods are
Serial No. 77753913
11
related, move in the same channels of trade and are sold to
the same consumers, we find that applicant’s mark MOCAMBO
for “rum” is likely to cause confusion with the mark
MOCAMBO for “cigars.”
Decision: The refusal to register is affirmed.