Metaplus, S.A. de C.V.

Trademark Trial and Appeal Board

Mar 15, 2011

No. 77665994 (T.T.A.B. Mar. 15, 2011)

Mailed: March 15, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Metaplus, S.A. DE C.V.
________

Serial No. 77665994
_______

Scott D. Woldow of Smith, Gambrell & Russell, LLP for
Metaplus, S.A. DE C.V.

Laura A. Hammel, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Bucher, Taylor and Mermelstein, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Metaplus, S.A. DE C.V. has filed an application to
register on the Principal Register the mark FRIGO BEER and
design, shown below,

for goods ultimately identified as “apparatus and machines
for refrigerating, namely, refrigerating cabinets,
refrigerating display cabinets, refrigerating machines and
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Ser No. 77665994
2
components thereof” in International Class 11.1 The words
“FRIGO” and “BEER” have been disclaimed.
The examining attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on
the ground of likelihood of confusion with the marks in the
following registrations, both owned by the same entity:
Registration No. 2305908 for the mark FRIGODRINK for
“refrigerated dispensing units for beverages, namely fruit
punch and lemonade” in International Class 11;2 and
Registration No. 2305909 for the mark FRIGOGRANITA for
“refrigerated dispensing units for beverages, namely slush
type drinks” in International Class 11.3
When the refusal was made final, applicant appealed
and requested reconsideration. On May 11, 2010, the
examining attorney denied the request for reconsideration
and, on May 18, 2010, this appeal was resumed. Briefs were
filed by both applicant and the examining attorney. For
the reasons discussed below, we affirm the refusal to
register.

1 Serial No. 77665994, filed February 9, 2009, and based upon
Section 44(e) of Act. The application also contains the
following statements: “The mark consists of the term ‘FRIGO’ a
Star and the word ‘BEER.’” “The English translation of ‘FRIGO’
in the mark is ‘FRIDGE.’”

2 Issued January 4, 2000, renewed.

3 Issued January 4, 2000, renewed.
Ser No. 77665994
3
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & 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). 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) (“The 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”).
We first consider the du Pont factor of the
relatedness of the goods. It is settled that the question
of likelihood of confusion must be determined based on an
analysis of the goods recited in applicant’s application
vis-à-vis the goods recited in the cited registrations.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v.
North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that the goods do not have to
be identical or directly competitive to support a finding
Ser No. 77665994
4
that there is a likelihood of confusion. It is sufficient
if the respective goods are related in some manner and/or
that the conditions surrounding their marketing are such
that they would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used in connection therewith, give rise to the
mistaken belief that they emanate from or are associated
with a single source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, we compare applicant’s “apparatus and
machines for refrigerating, namely, refrigerating cabinets,
refrigerating display cabinets, refrigerating machines and
components thereof” with registrant’s “refrigerated
dispensing units for beverages, namely fruit punch and
lemonade” and “slush type drinks.” Applicant essentially
maintains that the goods are sufficiently different, being
purchased for different purposes, as “[o]ne product will
dispense liquids, the other will display packaged items for
sale.” Br. p. 7.
The examining attorney, on the other hand, maintains
that the goods are related, all being used for
refrigeration purposes. She further contends that
“applicant’s goods may be used to refrigerated [sic]
Ser No. 77665994
5
beverages such as fruit punch, lemonade, and slush type
drinks.” (Br. at unnumbered p. 10). The examining
attorney has supported her position with printouts of seven
use-based third-party registrations (Registration Nos.
2714193, 2983467, 3534660, 3434286, 3493431, 3497891 and
3290841) for marks used in connection with goods of the
type identified in both the application and the cited
registration, i.e., refrigerating machines and/or
refrigerating cabinets and/or refrigerated merchandise
display cases vis-à-vis refrigerated dispensing units for
beverages.4 Third-party registrations which individually
cover a number of different items and which are based on
use in commerce serve to suggest that the listed goods
and/or services are of a type which may emanate from a
single source. In re Albert Trostel & Sons Co., 29 USPQ2d
at 1785.
The examining attorney also has introduced copies of
web pages from the websites of CPAPC Restaurant Design and
Supply Co. (www.cpapc.com), The WEBstaurant Store
(www.webstaurantstore.com), KaTom Restaurant Supply, Inc.
(www.katom.com), Tundra Specialties (www.etundra.com) and

4 We have not considered Registration No. 3077054 because the
identification does not cover goods identified in both
applicant’s application and the cited registrations.

Ser No. 77665994
6
Dragon Enterprise Co., LTD (www.dragon-enterprise.com)
showing the sale of refrigerated cabinets and display
cabinets and refrigerated beverage dispensing units on the
same website.
First, we find that applicant’s refrigerating machines
are so broadly identified that, as worded, they may
encompass the more narrowly identified refrigerated
dispensing units for beverages recited in the cited
registrations. As such, applicant’s and registrant’s goods
overlap. Moreover, the evidence of record clearly
demonstrates that consumers will see the same marks used on
both refrigerating cabinets, display cabinets and machines
and refrigerated beverage dispensing units, and that
refrigerating cabinets, display cabinets and machines and
refrigerated beverage dispensing units are often sold on
the same website. Under these circumstances, we find the
goods related for purposes of our likelihood of confusion
analysis.5
We simply are not persuaded by applicant’s argument
that the goods serve different purposes. Despite the

5 In reaching our decision with respect to the relatedness of
the goods, we have not relied on the evidence submitted by the
examining attorney consisting of web pages from the ABestKitchen
and Commercial Refrigeration Service, Inc.’s websites, as they
are not probative of the relationship between refrigerated
beverages dispensing units and refrigerating cabinets, display
cabinets and machines.
Ser No. 77665994
7
differences in the exact nature of the goods, both
applicant’s and registrant’s goods are refrigeration
products which are or can be used for refrigeration and
dispensing of beverages. As noted, the goods need only be
related in such a manner to give rise to the mistaken
belief that they emanate from the same source. In re
Albert Trostel & Sons Co., 29 USPQ2d at 1785.
Further, in the absence of any limitation in the
application and cited registrations as to channels of trade
and classes of purchasers, we must presume that these
overlapping goods will be offered in overlapping channels
of trade and will be purchased by overlapping classes of
purchasers. See Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In
re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
In view of the above, the du Pont factors of the
similarity of the goods, channels of trade and classes of
purchasers favor a finding of likelihood of confusion as to
the cited registrations.
With respect to the conditions of sale, applicant
argues that:
Applicant’s goods are sold to sophisticated
consumers, most likely store owners and
restaurants, for the purpose of keeping food
and drinks cool. These goods certainly will
not be purchased on impulse. …
Ser No. 77665994
8
Sophisticated restaurant and store owners
purchasing a long term asset that will
appear on their balance sheet will not be
easily confused as to source and will make a
careful purchasing decision.

(Brief at 8-9). We find this argument unavailing. First,
the record is devoid of any pricing information with regard
to applicant’s goods, and there are no restrictions on the
purchasers to whom they are sold. Moreover, even assuming
that purchasers of applicant’s refrigerating cabinets,
display cabinets and machines may need to exercise a degree
of care or thought in choosing such goods, even careful
purchasers of goods can be confused as to source under
circumstances where substantially similar marks are used on
overlapping goods. See In re Research Trading Corp., 793
F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) citing Carlisle
Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even
of discriminating purchasers … are not infallible.").
Accordingly, the du Pont factor of conditions of sale
is neutral.
We now compare the marks. In determining the
similarity or dissimilarity of marks, we must consider the
marks in their entireties in terms of sound, appearance,
meaning and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d
Ser No. 77665994
9
1689 (Fed. Cir. 2005). The test is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impressions
that confusion as to the source of the goods offered under
the respective marks is likely to result. Applicant
contends that when considered in their entireties, its mark
is dissimilar from the cited marks and confusion is
unlikely. The examining attorney, by comparison, contends
that applicant’s mark and the cited marks are similar in
appearance, sound and meaning and have similar commercial
impressions.
We agree with the examining attorney that applicant’s
mark is similar to the cited FRIGODRINK and
FRIGOGRANITA marks. Although we must compare the marks in
their entireties, one feature of a mark may be more
significant than another and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985) (“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 consideration of the marks in their
Ser No. 77665994
10
entireties. Indeed, this type of analysis appears to be
unavoidable.”).
Further, with a composite mark comprising a design and
words, it is the wording that would make a greater
impression on purchasers and is the portion that is more
likely to be remembered as the source-signifying portion of
the applicant’s mark. In re Dakin’s Miniatures, Inc., 59
USPQ2d 1593 (TTAB 2001) (“words are normally accorded
greater weight because they would be used by purchasers to
request the goods”). See also, e.g., In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Indeed, it is
the words in applicant’s mark that will be used to call for
goods, rather than a description of the star design in the
mark.
In this case, applicant’s mark is dominated by the
word FRIGO; it is first word in the mark and, along with
the word BEER, is more visually prominent than the star
design which is imbedded in between the two words.
Although the term BEER is in the same size text as FRIGO,
because BEER clearly describes the type of goods that will
be chilled in applicant’s refrigerating cabinets, display
cabinets and machines, it fails to distinguish applicant’s
mark from the cited marks. See In re National Data Corp.,
224 USPQ at 751 (“That a particular feature is descriptive
Ser No. 77665994
11
or generic with respect to the involved goods or services
is one commonly accepted rationale for giving less weight
to a portion of the mark.”). Moreover, and contrary to
applicant’s contention, we do not find that the star design
dominates applicant’s mark. Instead, we find it
insufficient to distinguish applicant’s mark from the cited
marks. While noticeable, the star appears to be more in
the nature of an asterisk and merely serves to separate the
words FRIGO and BEER.
We acknowledge that applicant has also included a
disclaimer of the admittedly descriptive word FRIGO, but
that does not remove the word from the mark or reduce its
dominance within the composite mark.
We similarly find that the word FRIGO dominates
registrant’s cited marks because the words DRINK and
GRANITA, respectively, merely describe types of beverages
dispensed by registrant’s refrigerated beverage dispensing
units. That is, the words “drink” and “granita” fail to
distinguish the cited marks from applicant’s mark.
Further, the presence or absence of a space between the
words in the marks does very little, if anything, to
distinguish them. Seagard Corp. v. Seaward International,
Inc. 223 USPQ 48, 51 (TTAB 1984); and In re Best Western
Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984).
Ser No. 77665994
12
In terms of appearance, because the registered marks
are registered in typed or standard characters, we are
required to consider that registrant may display the words
in any reasonable form of lettering, including the font
used by applicant. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1847-1848 (Fed. Cir. 2000).
We thus find the marks similar in appearance, sound,
connotation and commercial impression.
Applicant essentially argues that its mark is not
capable of causing confusion because the shared word
“frigo” is “more than weak” because it is descriptive and
has been disclaimed. To the extent that applicant is
arguing that the disclaimed matter is of little import,
applicant is incorrect. Disclaimed matter must be
considered with the rest of the mark as a whole in
assessing the similarity between the marks. As stated by
our primary reviewing Court,
it is well settled that the disclaimed material
still forms a part of the mark and cannot be
ignored in determining likelihood of confusion.
Such disclaimers are not helpful in preventing
likelihood of confusion in the mind of the
consumer, because he is unaware of their
existence. Therefore, the disclaimed portions
must be considered in determining the
likelihood of confusion. (citations omitted)

Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218, USPQ2d 390, 395 (Fed.Cir. 1983); see also In re
Ser No. 77665994
13
National Data Corp., 224 USPQ at 751-752; V-M Mayfair Sound
Prd., Inc., 480 F.2d 898, 178 USPQ 477, 477-478 (CCPA
1973). As noted above, notwithstanding the disclaimer,
which in this case evidences some descriptive significance,
the word FRIGO can still be dominant because it will be
used to call for the goods in spite of the words “Beer,”
“Drink” and “Granita.” Those additional descriptive words
simply do not vitiate the dominance of the term FRIGO.
As regards applicant’s assertion that the word FRIGO
is more than weak and thus not entitled to a wide scope of
protection, applicant made of record copies of various use-
based third-party registrations from the TESS database of
the U.S. Patent and Trademark Office for marks containing
the term “FRIGO.”6 These registrations, however, are of
limited probative value. While they may be used to
demonstrate that a portion of a mark is suggestive or
descriptive, they are not evidence that the marks shown
therein are in use or that the public is aware of them.
See AMF Incorporated v. American Leisure Products, Inc.,
177 USPQ 268, 269 (CCPA 1973) (“little weight is to be
given such registrations in evaluating whether there is

6 Of the nineteen registrations submitted by applicant, five
have no probative value, either being cancelled (Registration
Nos. 2730992 and 2287388) or not based on use in commerce
(Registration Nos. 3468148, 3119056 and 3079939).

Ser No. 77665994
14
likelihood of confusion.”). Moreover, our review of such
registrations reveals that they are for marks more
dissimilar than those at issue in this case (e.g.,
Registration No. 0832513 for the mark FRIGOSCANDIA,
Registration No. 3066510 for the mark SEAFRIGO and
Registration No. 1365434 for the mark FRIGOMAT) or cover
very different goods (e.g., Registration Nos. 2883263,
2647622, 2629574 for cheese, Registration No. 2235852 for
olive oil, Registration No. 2108273 for insulated air cargo
containers for perishables, Registration No. 1643371 for
dry cleaning machines and Registration No. 1871187 for
refrigeration panels). However, even assuming registrant’s
marks are weak, even weak marks are entitled to protection.
See Matsushita Electric Company v. National Steel Co., 442
F.2d 1383, 170 USPQ 98, 99 (CCPA 1971)(“Even though a mark
may be ‘weak’ in the sense of being a common word in common
use as a trademark, it is entitled to be protected
sufficiently to prevent confusion from source arising”).
At issue here are substantially similar marks for
overlapping goods. Under these circumstances, the mere
weakness of the term “FRIGO” does not obviate a likelihood
of confusion because it is the common portion of the marks.
As noted previously, the marks are similar in
appearance, sound, connotation and commercial impression.
Ser No. 77665994
15
As such, purchasers of applicant’s refrigerating cabinets,
display cabinets and machines who are familiar with
registrant’s marks may view applicant’s mark as a variant
thereof, and that such mark identifies a new line of
refrigerating machines sponsored or approved by registrant.
While we have not overlooked the additional wording in the
marks, the design element in applicant mark, or applicant’s
arguments regarding the weakness of the term FRIGO, we
nonetheless conclude that the marks, when considered in
their entireties, are substantially similar. Thus, the
factor of the similarity of the marks favors a finding of
likelihood of confusion.
In view of the foregoing, we conclude that prospective
purchasers familiar with the registered marks FRIGODRINK
and FRIGOGRANITA for refrigerated dispensing units for
beverages would be likely to believe, upon encountering
applicant’s substantially similar mark for
apparatus and machines for refrigerating, namely,
refrigerating cabinets, refrigerating display cabinets,
refrigerating machines and components thereof, that such
goods emanate from, or are sponsored by or affiliated with
the same source.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.