Pata Negra Corp.

Trademark Trial and Appeal Board

Mar 1, 2010

No. 77137043 (T.T.A.B. Mar. 1, 2010)

Mailed:
March 1, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Pata Negra Corp.
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Serial No. 77137043
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David P. Cooper of Kolish Hartwell, P.C., for Pata Negra Corp.

Jennifer M. Martin, Trademark Examining Attorney, Law Office 116
(Robert L. Lorenzo, Managing Attorney).
_______

Before Grendel, Mermelstein, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Pata Negra Corp. (“applicant”) filed an application to
register the mark PATANEGRA, for services ultimately identified
as “restaurant services,” in International Class 43.1
The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark so
resembles the registered mark PATA NEGRA, in typed drawing

1 Serial No. 77137043, filed March 21, 2007, pursuant to Section 1(b)
of the Trademark Act, 15 U.S.C. §1051(b), alleging a bona fide intent
to use in commerce. The pending application contains the following
translation statement: “The foreign wording in the mark translates
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77137043
2
format, for “wine” in International Class 33,2 that when used on
or in connection with applicant’s identified service, it is
likely to cause confusion or mistake or to deceive.
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
briefs. For the reasons discussed herein, the Board affirms the
refusal to register.
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
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 or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (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 discuss each of the du Pont factors as to which

into English as ‘PATA’ [sic] translates into foot and ‘NEGRA’
translates into black.”
2 Registration No. 2903310, issued November 16, 2004, under Section 44E
of the Trademark Act. The registration contains the following
translation statement: “The English translation of the foreign wording
in the mark PATA NEGRA is ‘black foot.’”
Serial No. 77137043
3
applicant or the examining attorney submitted argument or
evidence.
The Marks
We consider and compare the appearance, sound, connotation
and commercial impression of the marks in their entireties. In
re E. I. du Pont De Nemours & Co., 177 USPQ at 567. The cited
registration consists of the words PATA NEGRA. Applicant’s mark
contains the same exact words, just without the space.
Applicant argues that since its mark consists of one word
and the mark in the cited registration comprises two, the marks
therefore create distinct commercial impressions. We find,
however, that the very slight difference of a space between the
words is not sufficient to distinguish the marks for source-
identifying purposes. As we have often stated, the question 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 their entireties that confusion as to
the source of the services offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather than a
specific impression of trademarks. In re Jack B. Binion, 93
USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106 (TTAB 1975). In fact, we note that applicant
itself uses two words rather than one in its corporate name,
Serial No. 77137043
4
Pata Negra Corp. Thus consumers who encounter either
registrant’s mark or applicant’s could easily mistake them as
being from a common source.
In sum, the marks look almost exactly alike. They would be
pronounced the same. They have the same meaning and commercial
impression. Indeed, we note that the application contains the
very same translation as the cited registration, “black foot.”
Accordingly, we find the marks to be effectively identical. We
also note that “black foot,” is arbitrary for both wine and for
restaurant services. Therefore, we find this du Pont factor to
weigh heavily in favor of finding a likelihood of consumer
confusion.
The Goods and Services and the Channels of Trade

As instructed by the Federal Circuit, the more similar
the parties’ marks, the lesser the degree of similarity
between their goods and services necessary to support a
finding of likelihood of confusion. In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed. Cir. 1993);
In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001). It is
only necessary that there be a viable relationship between
their identified goods and services to support such a
finding. Id. The issue is not whether consumers would
confuse applicant’s “restaurant services” with registrant’s
“wine,” but rather whether consumers would be confused into
Serial No. 77137043
5
believing that they derive from a common source. In re
Rexel Inc., 223 USPQ 830 (TTAB 1984).
Applicant argues that its identified “restaurant
services” are unrelated to the “wine” identified in the
cited registration. In an attempt to make this point,
applicant submitted with its request for reconsideration as
well as its appeal brief a list of third-party
registrations that show similar marks registered for both
wine/s and for restaurant-related services. The examining
attorney made a timely objection to the list as an improper
submission of evidence. In order to make a third-party
registration of record, a copy of the registration, either
a copy of the paper USPTO record, or a copy taken from the
electronic records of the Office should be submitted. In
re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456
n. 2 (TTAB 1998); and In re Duofold Inc., 184 USPQ 638, 640
(TTAB 1974). Merely listing such registrations, as
applicant has done here, is insufficient to make them of
record. In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n. 2
(TTAB 1998). Accordingly, we sustain the objection.3

3 We note that, regardless, consideration of the eight marks cited by
applicant would not change our decision. As the Federal Circuit
instructs, every case must be decided on its own merits. In re Nett
Designs, 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
Serial No. 77137043
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The examining attorney has, in turn, attempted to show the
relatedness of applicant’s “restaurant services” to registrant’s
“wine.” We note that to the extent the examining attorney
relies on past case law, as we have already noted, every case
must stand on its own merits. In particular, our precedent
dictates: “To establish likelihood of confusion a party must
show something more than that similar or even identical marks
are used for food products and for restaurant services.” Jacobs
v. Int’l Multifoods Corp., 668 F2d 1234, 212 USPQ 641, 642
(C.C.P.A. 1982). This requirement of proving “something more”
was reiterated by the Federal Circuit in the case In re Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003);
See also In re Opus One Inc., 60 USPQ2d., at 1813 (finding
restaurant services related to wine with identical mark and
"something more").
The examining attorney here did provide that requisite
“something more.” In particular, the examining attorney has
submitted over a dozen copies of use-based, third-party
registrations identifying both “restaurant services,” and
“wine.” These include Registrations No. 2789035, 2550450,
2856149, 2338760, 2814471, 2765046, 2768057, 3074205, 2865101,
3413974, 3287805, 3311965 and 3538921.4 Copies of use-based,

4 Some of the registrations include slight variations on the
identifications, such as “restaurant and bar services” in 2550450 or
Serial No. 77137043
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third-party registrations may serve to suggest that the goods
are of a type which may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
The examining attorney has also submitted Internet evidence
to show that applicant serves wine at its own PATANEGRA
restaurant. This is further evidence that consumers expect to
find both “restaurant services,” as identified by applicant, and
“wine,” as identified by the cited registration, emanating from
a common source.5
Web exerpts include:
Patanegra: . . . Tucked away on 23rd Place and Thurman, the
restaurant is warm and inviting. The wood bar means you’ll
have a place to sit and drink a glass of excellent Spanish
wine while you wait, . . . www.portlandfoodanddrink.com
Posted December 6, 2006.

Recommendations for Patanegra:
1. Excellent service, delicious and authentic Spanish
Tapas, fantastic wine list and you can almost always find a
table.” Posted May 26, 2009.

“restaurant, café, and catering services for business lunches,
receptions, banquets, special events and ceremonies,” in 2814471.
5 We do not, however, find the evidence relevant for the purpose the
examining attorney suggests, of finding that applicant serves
“Spanish” food, and that registrant has a “Spanish” wine. Neither the
application nor the registration is so limited. See Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990)(“The authority is legion that the question of
registrability of an applicant’s mark must be decided on the basis of
the identification of goods set forth in the application regardless of
what the record may reveal as to the particular nature of an
applicant’s goods, the particular channels of trade or the class of
purchasers to which the sales of goods are directed.” (citations
omitted.))
Serial No. 77137043
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2. Great, authentic Spanish restaurant. Order “Pan con
tomate, jamon y queso.” Posted June 12, 2009
www.nextstop.com

Patanegra: Huge selection of Spanish and S. American wines,
great service and chefs. www.portlandcitysearch.com June
8, 2009.

Patanegra: . . . Wash it all down with something from the
city’s best Spanish wine list, featuring unusual Riojas and
very meal-friendly sherries. www.oregonlive.com July 1,
2009.

Dinner at Pata Negra [sic]:6 . . . They always have a house
wine in carafs but they also have a long wine list not at
all limited to Spanish wines. http://spanish.meetup.com
Posted December 5, 2007.

Accordingly, we find that in this case the examining
attorney has presented the “something more” to show the
relatedness of applicant’s “restaurant services” to the “wine”
in the cited registration.” We find that “something more” in
the strong, arbitrary nature of registrant’s mark; the high
degree of similarity between the marks; and the solid evidence
of record showing the close relatedness of wine to restaurant
services, including via use-based third-party registrations and
Internet content.
In the absence of specific limitations in the registration,
we must presume that registrant’s goods will travel in all
normal and usual channels of trade and methods of distribution.
Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 939
Serial No. 77137043
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(Fed. Cir. 1983); see also In re Linkvest S.A., 24 USPQ2d 1716,
1716 (TTAB 1992) (because there are no limitations as to
channels of trade or classes of purchasers in either the
application or the cited registration, it is presumed that the
services in the registration and the application move in all
channels of trade normal for those services, and that the
services are available to all classes of purchasers for the
listed services). Since there are no limitations on the
channels of trade in applicant’s identification of services
either, we must make the same presumption with regard to
applicant’s services.
In other words, there is nothing that prevents applicant
from selling registrant’s wine in its restaurant. Nor, of
course, is there anything to stop registrant from offering its
wine in competing restaurants, as the record shows is commonly
done. Accordingly, we find that these du Pont factors weigh in
favor of finding a likelihood of consumer confusion.
Conclusion
In summary we have carefully considered all of the evidence
of record pertaining to the du Pont likelihood of confusion
factors, as well as applicant’s arguments with respect thereto.
We conclude that there is a likelihood of confusion between

6 We note that this pleased consumer referred to applicant by two
words, not one, thereby evidencing the likelihood of confusion between
Serial No. 77137043
10
applicant’s PATANEGRA mark for “restaurant services” and the
registered mark PATA NEGRA for “wine.”
Decision: The refusal to register is affirmed.

applicant’s mark and the mark in the cited registration.