Productos Lacteos Tocumbo S.A. de C.V.v.Paleteria La Michoacana, Inc.

Trademark Trial and Appeal Board

May 20, 2011

CANC (T.T.A.B. May. 20, 2011)

Mailed:
May 20, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Productos Lacteos Tocumbo S.A. de C.V.

v.

Paleteria La Michoacana, Inc.
_____

Cancellation No. 92047438
_____

Stephen L. Anderson of Anderson & Associates for Productos
Lacteos Tocumbo S.A. de C.V.

D. Greg Durbin of McCormick, Barstow, Sheppard, Wayte &
Caruth LLP for Paleteria La Michoacana, Inc.
_____

Before Walters, Bergsman and Ritchie,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Productos Lacteos Tocumbo S.A. de C.V. (“petitioner”)
filed a petition to cancel Registration No. 3210304 for the
mark LA INDITA MICHOACANA and design, shown below, for “ice
cream and fruit products, namely fruit bars,” in
International Class 30, owned by Paleteria La Michoacana,
Inc. (“respondent”).1

1 Issued February 20, 2007.
THIS OPINION IS A PRECEDENT
OF THE T.T.A.B.
Cancellation No. 92047438
2

As grounds for cancellation, petitioner alleged
likelihood of confusion, fraud and dilution. Because
petitioner presented no arguments in its brief regarding its
fraud and dilution claims, we deem petitioner to have waived
those claims, and we have given them no consideration.
With respect to its likelihood of confusion claim,
petitioner alleged that prior to any use by respondent of
its mark, petitioner and its related company or licensees
have used the marks LA MICHOACANA NATURAL and design and LA
FLOR DE MICHOACAN for, inter alia, ice cream, fruit ice bars
and retail store services featuring ice cream and fruit ice
bars and that respondent’s mark so resembles petitioner’s
marks as to be likely to cause confusion. Specifically,
petitioner claimed ownership of Registration No. 2830401 for
the mark LA FLOR DE MICHOACAN, in typed drawing form, for
“ice cream,” in Class 30.2 Also, petitioner claimed

2 Issued April 6, 2004; Sections 8 and 15 affidavits accepted and
acknowledged. Petitioner’s registration states that “[t]he
English translation for the word [sic] ‘LA FLOR DE MICHOACAN’ in
the mark is ‘The blossom of Michoacan.’”
Cancellation No. 92047438
3
ownership of application Serial No. 78954490 for the mark LA
MICHOACANA NATURAL and design, shown below, for the
following goods and services:
Cones for ice cream; flavored ices;
frozen yoghurt; fruit ice; fruit ice
bar; fruit ices; ice; ice candies; ice
cream; ice cream drinks; ice cream
mixes; ice cream powder; ice cubes; ice
milk bars; ice-cream cakes, in Class 30;
and

Retail shops featuring ice cream, fruit
bars, drinks and snacks; retail stores
featuring ice cream, fruit bars, drinks
and snacks, in Class 35.3

Petitioner alleges that respondent’s registration has been
cited as a Section 2(d) bar to petitioner’s above-noted
application.
In its answer, respondent denied the salient
allegations in the petition for cancellation.
The Record
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and the registration file
for respondent’s mark. The record also includes the
following testimony and evidence:
Cancellation No. 92047438
4
A. Petitioner’s Evidence.
1. Notice of reliance on respondent’s responses to
petitioner’s requests for admission Nos. 12, 21, 31 and 40.
2. Notice of reliance on respondent’s responses to
petitioner’s interrogatory Nos. 7, 9, 14 and 26.
3. Deposition upon written questions, with attached
exhibits, of Marco Antonio Andrade Malfavón, a director of
petitioner.
4. Testimony deposition, with attached exhibits, of
Jorge Andrade Malfavón, a director of petitioner, an officer
of El Michoacana Natural, Inc., a licensee of petitioner.
He is also Marco Antonio Andrade Malfavón’s brother.
5. Testimony deposition, with attached exhibits, of
Rigoberto Fernandez, an officer of El Michoacana Natural,
Inc., licensee of petitioner.
6. Notice of reliance on respondent’s response to
petitioner’s interrogatory No. 8.
7. Notice of reliance on a copy of application Serial
No. 78954490 for the mark LA MICHOACANA NATURAL and design,
shown below4

3 Filed August 17, 2006. Petitioner disclaimed the exclusive
right to use the word “Natural.”
4 The application includes the statement that “[t]he foreign
wording in the mark translates into English as the natural woman
from Michoacan.”
Cancellation No. 92047438
5

and application Serial No. 78771243 for the mark comprising
the design of an Indian girl, shown below

8. Rebuttal deposition, with attached exhibits, of
Ruben Gutierrez, C.E.O. of Tropicale Foods. He is the
brother and former partner of Ignacio Gutierrez, who is
respondent’s president.
B. Respondent’s evidence.
1. Notice of reliance on petitioner’s responses to
respondent’s requests for admission Nos. 1, 3 and 5.
2. Notice of reliance on petitioner’s responses to
respondent’s interrogatory Nos. 16 and 20.
3. Notice of reliance on the following federally-
registered marks:
a. A certified copy of petitioner’s Registration
No. 3249113 for the mark LA FLOR DE MICHOACAN
and design, shown below, for, inter alia,
frozen fruits, ice cream, frozen yogurt and
“retail shops featuring ice-cream,” prepared
Cancellation No. 92047438
6
by the U.S. Patent and Trademark Office
showing the current status of and title to
the registration.5

c. Three third-party registrations owned by
different entities incorporating the term LA
MICHOACANA: two for ice cream and one for
tortillas.
4. Testimony deposition, with attached exhibits, of
Patricia Gutierrez, respondent’s Vice President, Secretary
and Treasurer.
5. Testimony deposition, with attached exhibits, of
Ignacio Gutierrez, respondent’s President and husband of
Patricia Gutierrez.
6. Testimony deposition, with attached exhibits, of
Karl Jepsen, respondent’s Chief Financial Officer.
7. Testimony deposition, with attached exhibits, of
Angelita Morales, a graphic designer.

5 Issued June 5, 2007 based on an application filed December 8,
2005, and claiming first use anywhere and first use in commerce
on April 20, 2001. The registration includes the statement that
“[t]he foreign wording in the mark translates into English as THE
BLOSSOM OF MICHOACAN.”
Cancellation No. 92047438
7
8. Second testimony deposition, with attached
exhibits, of Rigoberto Fernandez an officer of petitioner’s
licensee El Michoacana Natural, Inc.
Preliminary Issues
A. Whether likelihood of confusion based petitioner’s use
of the mark LA MICHOACANA and the mark comprising an
Indian girl design was tried by implied consent?

In its brief, petitioner claimed rights to the mark LA
MICHOACANA and the mark comprising the design of an Indian
girl, shown below (hereinafter “petitioner’s Indian girl”).

In its brief, respondent objected to the evidence
regarding petitioner’s use of the mark LA MICHOACANA and
petitioner’s Indian girl on the grounds that they were not
pleaded and that petitioner did not amend its petition for
cancellation to assert rights in those marks.6
In its reply brief, petitioner acknowledged that it did
not plead ownership of either mark but argued that
throughout the proceeding it had asserted rights in those
marks and now it seeks leave to amend the petition to
conform to the evidence.7

6 Respondent’s Brief, pp. 3-4.
7 Petitioner’s Reply Brief, p. 22.
Cancellation No. 92047438
8
Because petitioner may not rely on unpleaded marks, we
must determine whether petitioner’s attempt to prove its use
of the mark LA MICHOACANA and petitioner’s Indian girl was
tried by implied consent.
Implied consent to the trial of an
unpleaded issue can be found only where
the nonoffering party (1) raised no
objection to the introduction of
evidence on the issue, and (2) was
fairly apprised that the evidence was
being offered in support of the issue.

TBMP §507.03(b). See also Morgan Creek Productions Inc. v.
Foria International Inc., 91 USPQ2d 1134, 1138 (TTAB 2009);
H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720-1721
(TTAB 2008); Long John Silver’s Inc. v. Lou Scharf Inc., 213
USPQ 263, 266 n.6 (TTAB 1982) (applicant’s objection to the
introduction of evidence regarding an unpleaded issue
obviated the need to determine whether the issue had been
tried by implied consent); Boise Cascade Corp. v. Cascade
Coach Co., 168 USPQ 795, 797 (TTAB 1970) (“Generally
speaking, there is an implied consent to contest an issue if
there is no objection to the introduction of evidence on the
unpleaded issue, as long as the adverse party was fairly
informed that the evidence went to the unpleaded issue”).
The question of whether an issue was
tried by consent is basically one of
fairness. The non-moving party must be
aware that the issue is being tried, and
therefore there should be no doubt on
this matter.

Cancellation No. 92047438
9
Morgan Creek Productions Inc. v. Foria International Inc.,
91 USPQ2d at 1139.
On September 16, 2009, petitioner filed notices of
reliance on respondent’s responses to petitioner’s requests
for admission and responses to interrogatories. In the
notices of reliance, petitioner expressly stated that
respondent’s responses were relevant to show petitioner’s
priority of numerous marks, including, inter alia, LA
MICHOACANA and petitioner’s Indian girl. Petitioner’s
Indian girl was identified as the subject of application
Serial No. 78771243, claiming use in commerce as of April
20, 2001.
Marco Antonio Andrade Malfavón (hereinafter “Marco
Malfavón”), a director of petitioner, testified upon written
questions that petitioner has authorized the use of the
marks LA MICHOACANA and “the design of a little Indian.”8
The deposition was filed on November 11, 2009. He also
testified that petitioner licensed the use of the marks LA
MICHOACANA and “‘Diseño Indita’(Design of an Indian Girl)”
in the United States.9
On September 9, 2009, petitioner took the testimony
deposition of Jorge Andrade Malfavón (hereinafter “Jorge
Malfavón”), a director of petitioner, an officer of

8 Marco Malfavón Dep., pp. 22-23, questions 63 and 65.
9 Id. at pp. 29-30, 32-33 and 34-39, questions 83, 84, 86, 91, 93
and 95-108.
Cancellation No. 92047438
10
petitioner’s licensee El Michoacana Natural, Inc., and the
brother of Marco Malfavón. Jorge Malfavón corroborated
petitioner’s efforts to license the use of the marks LA
MICHOACANA and petitioner’s Indian girl in the United
States.10 Jorge Malfavón also specifically testified
regarding the use of the marks LA MICHOACANA and
petitioner’s Indian girl in the United States as of 2001.11
Counsel for respondent attended the deposition. Counsel for
respondent did not object to the testimony regarding the
marks LA MICHOACANA or petitioner’s Indian girl and he did
not cross-examine the witness.
Also on September 9, 2009, petitioner took the
testimony deposition of Rigoberto Fernandez, the owner of
three LA MICHOACANA ice cream stores.12 Mr. Fernandez
opened his first store in 2001.13 Mr. Fernandez testified
that he was licensed to use the marks LA MICHOACANA and
petitioner’s Indian girl by petitioner14 and he identified a
menu from his store in West Palm Beach, Florida and cups,
shirts, hats and water bottles displaying petitioner’s
Indian girl that he used since 2001.15 Counsel for

10 Jorge Malfavón Dep., pp. 15-17.
11 Jorge Malfavón Dep., pp. 31-32, Exhibits 30 and 32.
12 Fernandez Dep., p. 6.
Q. What stores do you own?
A. West Palm, Naples, and Fort Myers, La Michoacana.

13 Id. at pp. 6, 12.
14 Id. at pp. 8-10.
15 Id. at pp. 24-27, Exhibits 29 and 30.

Cancellation No. 92047438
11
respondent attended the deposition. Counsel for respondent
did not object to the testimony regarding the marks LA
MICHOACANA or petitioner’s Indian girl design and he cross-
examined the witness regarding petitioner’s Indian girl
design.16
Subsequently, on February 1, 2010, respondent deposed
Mr. Fernandez regarding, inter alia, his license to use the
marks LA MICHOACANA and petitioner’s Indian girl17 as well
as the witness’s use of the Indian girl design.18
On March 12, 2010, petitioner filed a notice of
reliance on respondent’s response to petitioner’s
Interrogatory No. 8 to show that respondent “neither coined
nor drew [respondent’s Indian girl design], but rather
knowingly intentionally infringed upon and misappropriated
such marks of the petition with the specific intent to cause
confusion and deception.”19
On March 18, 2010, petitioner filed a notice of
reliance on official records of the USPTO, including a copy
of application Serial No. 78771243 for petitioner’s Indian
girl. Petitioner explained that the application was
relevant to show that it had superior rights to the mark and
that respondent filed its application in bad faith.

16 Id. at pp. 65-66.
17 Fernandez Dep. 2, pp. 17-24 and 57-58
18 Id. at pp. 66-69.
19 Notice of reliance, p. 2 (statement of relevance).
Cancellation No. 92047438
12
After reviewing the testimony and evidence introduced
during the trial periods, we find that petitioner’s rights
in or likelihood of confusion based on petitioner’s rights
in the mark LA MICHOACANA and petitioner’s Indian girl was
tried by implied consent. When petitioner filed its notices
of reliance in September 2009, it specifically stated that
respondent’s discovery responses were relevant to show
petitioner’s priority of numerous marks, including, inter
alia, LA MICHOACANA and petitioner’s Indian girl.
Petitioner further emphasized its intention to rely on those
marks through the testimony depositions of Jorge Malfavón
and Rigoberto Fernandez. During the depositions, respondent
did not object to that testimony and it had the opportunity
to cross-examine the witnesses. In fact, in a separate
deposition during its own testimony period, respondent
deposed Mr. Fernandez regarding the use of those marks. In
view of the foregoing, we find that respondent did not raise
a timely objection to the introduction of any testimony or
evidence regarding the marks LA MICHOACANA and petitioner’s
Indian girl and that respondent was fairly apprised that
petitioner was claiming ownership of and prior use for those
marks. Accordingly, respondent’s objection to petitioner’s
testimony and evidence regarding the marks LA MICHOACANA and
petitioner’s Indian girl is overruled and we deem the
Cancellation No. 92047438
13
pleadings amended to conform to the evidence pursuant to
Fed. R. Civ. P. 15(b).
B. Whether respondent’s use of its Indian girl design as a
stand alone mark or in connection with a term other
than LA INDITA MICHOACANA was tried by implied consent?

Respondent did not plead as an affirmative defense that
it would rely on its use and registration of marks
comprising an Indian girl design (hereinafter “respondent’s
Indian girl”) for ice cream and fruit bars to prove prior
use of that mark or as the basis for the prior registration
(or Morehouse) defense20 (i.e., the defense that a
petitioner cannot suffer damage, within the meaning of
Section 14 of the Trademark Act, by the maintenance of a
registration if the registrant owns unchallenged
registrations of that mark for the same goods). Mere denial
by respondent of petitioner’s allegation of priority of use
is sufficient to put petitioner on notice that it must prove
petitioner’s pleaded priority, but it is not sufficient to
put petitioner on notice that any priority petitioner will
attempt to prove will have to predate the priority that
respondent will attempt to prove through tacking, or that
respondent is relying on the prior registration defense.
See H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720
(TTAB 2008). Nevertheless, respondent introduced evidence

20 Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160
USPQ 715 (CCPA 1969).

Cancellation No. 92047438
14
and testimony regarding its use and registration of
respondent’s Indian girl as a stand-alone mark.
Accordingly, we must determine whether either respondent’s
attempt to tack the prior use of respondent’s Indian girl or
the prior registration defense was tried by implied consent.
On September 16, 2009, petitioner filed a notice of
reliance on respondent’s responses to petitioner’s requests
for admissions Nos. 12 and 40 wherein respondent admitted
that it had not used its LA INDITA MICHOACANA and design
mark at issue in this case prior to February 21, 2005.
Petitioner also submitted a notice of reliance on
respondent’s response to interrogatory No. 14 wherein
respondent produced an invoice dated February 22, 2005 to
identify a document supporting respondent’s first use.
There was no indication that respondent would be asserting
priority based on its use of a mark comprising respondent’s
Indian girl or would be relying on any mark other than the
mark in the registration sought to be cancelled.
In its first notice of reliance, respondent introduced
certified copies prepared by the U.S. Patent and Trademark
Office showing the current title and status of two
federally-registered Indian girl marks, shown below, owned
by respondent, both for “ice cream; fruit bars.”
Cancellation No. 92047438
15
1. Registration No. 2905172, issued November 23,
2004.21

2. Registration No. 2968652, issued July 12, 2005.22

Respondent explained that these registrations were made
of record “to demonstrate among other things, the validity
of the registration(s), Registrant’s right to use the
mark(s) on the identified goods, Registrant’s exclusive
right to use the mark(s), and Registrant’s continuous use of
the mark(s).”23 Respondent did not state that it would be
asserting the prior registration defense.
Subsequently, Patricia Gutierrez, Vice President,
Secretary and Treasurer of respondent, authenticated the
registrations during her testimony deposition.24 Ms.
Gutierrez also testified that respondent used respondent’s

21 A section 8 affidavit has been accepted.
22 A section 8 affidavit has been accepted.
23 Notice of reliance, p. 2.
24 Patricia Gutierrez Dep., pp. 9-11, Exhibits 2 and 3.
Cancellation No. 92047438
16
Indian girl in connection with ice cream and fruit bars at
least as early as 1999.25
On cross examination, Ignacio Gutierrez, president of
respondent, testified that he created respondent’s Indian
girl and that he was unaware that “as early as 2001 that
identical mark was being used by [petitioner].”26
Respondent also introduced the testimony of Angelita
Morales, a graphic designer, who testified that in 2004,
Ignacio Gutierrez gave her a drawing of respondent’s Indian
girl and the words LA MICHOACANA ES NATURAL, and that she
transferred that drawing to an electronic file in order to
edit it to create a more professional appearance.27
Petitioner, in its brief, argued that well prior to
2005, the earliest date on which respondent purportedly may
rely, petitioner had used its marks LA MICHOACANA and
petitioner’s Indian girl.28 Petitioner did not reference
any use or registration by respondent of respondent’s Indian
girl as a stand-alone mark.
Respondent, in its brief, referenced the evidence and
testimony regarding its use of respondent’s Indian girl at

25 Patricia Gutierrez Dep., pp. 23-24.
26 Ignacio Gutierrez Dep., pp. 49-50.
27 Morales Dep.
28 Petitioner’s Brief, pp. 25-26. Respondent filed its
application for registration on June 28, 2005 and, as discussed
below, made its first sales of products bearing the registered
mark on February 21, 2005.
Cancellation No. 92047438
17
least as early as 1999,29 but did not argue for purposes of
tacking that it had prior use of respondent’s Indian girl or
that petitioner was not damaged under a prior registration
defense because of the existence of respondent’s other two
Indian girl registrations.
After reviewing the testimony and evidence introduced
during the trial periods, as well as the briefs of the
parties, we find that respondent’s use and registration of
its Indian girl for ice cream and fruit bars did not put
petitioner on notice that the testimony and evidence would
be used by respondent to tack the prior use of respondent’s
Indian girl to prove priority or, in the alternative, to
assert the prior registration defense. For example, the
testimony of Angelita Morales regarding when she created the
mark at issue does not support the notion that respondent is
claiming the use and registration of respondent’s Indian
girl as a stand-alone mark to demonstrate its priority. The
Morales testimony creates the impression that respondent is
attempting to establish 2004-2005 as its date of first use.
In view of the foregoing, we find that the issues of tacking
and the prior registration defense were not tried by implied
consent. Thus, we only consider respondent’s testimony and
evidence regarding its use and registration of respondent’s

29 Respondent’s Brief, p. 10.
Cancellation No. 92047438
18
Indian girl for whatever probative value they have vis-à-vis
the mark sought to be cancelled.
C. Petitioner’s family of marks argument.
In its brief, petitioner raised for the first time the
claim that it is the owner of a “family of marks,”
presumably based on the word “Michoacana.” Respondent
objected to petitioner’s claim. Petitioner’s reference to a
family of marks in its brief will not be considered because
this claim was neither pleaded nor tried by the parties.
See Standard Knitting Ltd. v. Toyota Jidosha Kabushiki
Kaisha, 77 USPQ2d 1917, 1929 n. 17 (TTAB 2006); Sunken
Products Co. v. Sunex International Inc., 1 USPQ2d 1744,
1747 n. 12 (TTAB 1987).
D. The probative value of Spanish documents.
During the depositions of its witnesses, petitioner
introduced several documents written in Spanish without
providing English translations.30 Respondent did not raise
any objections to these documents during the depositions or
in its brief and, in fact, treated them as being of record.
Because the Board conducts its proceedings in English, these
documents have no probative value. See Hard Rock Cafe
Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1405 (TTAB
1998)(holding that documents in a language other than

30 See e.g., Marco Malfavón Dep., Exhibit 11 (petitioner’s
articles of incorporation, Exhibit 12 (petitioner’s trademark
Cancellation No. 92047438
19
English are inadmissible). Nevertheless, because respondent
did not raise any objections to the testimony regarding the
documents and treated them as being of record, we have
considered the testimony of the witnesses regarding the
documents.
E. Objections raised for the first time in petitioner’s
reply brief are untimely.

Petitioner objected to the depositions of Karl Jepsen
and Angelita Morales at the beginning of their respective
depositions on the ground that the witnesses had not been
previously identified as witnesses in response to written
discovery or pretrial disclosures. In its main brief,
petitioner did not discuss any evidentiary objections.
However, in its reply brief, petitioner renewed objections
to the testimony depositions of Karl Jepsen and Angelita
Morales.
In order to preserve an objection that was seasonably
raised at trial, a party must maintain the objection in its
opening brief on the case. See Hard Rock Café International
(USA) Inc. v. Elsea, 56 USPQ2d 1504, 1507 n.5 (TTAB 2000)
(objection to exhibit raised during deposition but not
maintained in brief is deemed waived); and Reflange Inc. v.
R-Con International, 17 USPQ2d 1125, 1126 n.4 (TTAB 1990)
(objections to testimony and exhibits made during

license with Jorge Malfavón), and Exhibit 13 (petitioner’s
trademark license with Rigoberto Fernandez).
Cancellation No. 92047438
20
depositions deemed waived where neither party raised any
objection to specific evidence in its brief). See also TBMP
§707.03(c) (2d. ed. rev. 2004).
Because petitioner did not maintain its objections in
its opening brief on the case, we deem the objections to be
waived. Petitioner cannot wait until its reply brief to
maintain objections; to allow petitioner’s objection in its
reply brief would effectively foreclose respondent from
responding to the objections. Kohler Co. v. Baldwin
Hardware Corp., 82 USPQ2d 1100, 1104 (TTAB 2007) (objection
raised at trial waived when petitioner waited until its
reply brief to renew objections). Accordingly, petitioner’s
objection is overruled and the depositions of Karl Jepsen
and Angelita Morales have been considered.
F. Other objections.
With respect to the remaining evidentiary objections,
we choose not to make specific rulings on each and every
objection. In this regard, the Board is capable of weighing
the relevance and strength or weakness of the objected-to
testimony and evidence, including any inherent limitations
on the value of particular items in evidence, and this
precludes the need to strike the testimony and evidence. As
necessary and appropriate, we will point out in this
decision any limitations applied to the evidence or
otherwise note that the evidence cannot be relied upon in
Cancellation No. 92047438
21
the manner sought. Finally, while we have considered all
the evidence and arguments of the parties, we do not rely on
evidence not discussed herein.
Standing

During the testimony of Jorge Malfavón, petitioner
introduced into evidence Registration No. 2830401 for the
mark LA FLOR DE MICHOACAN, in typed drawing form, for “ice
cream,” with Mr. Malfavón attesting to petitioner’s
ownership and the current status of the registration.31
Petitioner also attempted to introduce Registration No.
3249113 for the mark LA FLOR DE MICHOACAN and design (noted
above in respondent’s evidence) but failed to have Mr.
Malfavón testify as to the current status of the
registration. However, because respondent introduced a
certified copy of the registration through a notice of
reliance, the registration is of record.
Jorge Malfavón, a director of petitioner, testified
that “[a]t the beginning of 2001, around March or April,” he
began using the trademarks LA MICHOACANA NATURAL, LA
MICHOACANA NATURAL and design, LA MICHOACANA, LA FLOR DE
MICHOACAN, and petitioner’s Indian girl in the United States

31 Registered April 6, 2004 based on an application filed April
18, 2001. (Jorge Malfavón Dep. pp. 24-25, Exhibit 24).
Cancellation No. 92047438
22
in connection with ice cream, flavored waters, and ice cream
bars as a licensee of petitioner.32
The registrations and testimony as discussed above are
sufficient to demonstrate that petitioner has a real
interest in this proceeding, and therefore has standing.
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185, 189 (CCPA 1982).
Priority

In order for petitioner to prevail on its Section 2(d)
claim, it must prove that it has a proprietary interest in
its marks and that such interest was obtained prior to
either the filing date of respondent’s application for
registration or, if earlier, respondent’s proven date of
first use. Herbko International Inc. v. Kappa Books Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto
Roth & Co., Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ
40, 43 (CCPA 1981); Miller Brewing Co. v. Anheuser-Busch
Inc., 27 USPQ2d 1711, 1714 (TTAB 1993).
Respondent filed its application for registration on
June 28, 2005, claiming first use anywhere and in commerce
as of February 21, 2005. The evidence shows that respondent
made its first sales of products bearing the registered mark

32 Jorge Malfavón Dep. pp. 16-17. See also Rigoberto Fernandez
Dep., p. 10.
Cancellation No. 92047438
23
on February 21, 2005.33 In view of the foregoing,
petitioner must establish that it first used its marks prior
to February 21, 2005.
A. The Indian girl design.
Petitioner is a family-run Mexican company that
produces and sells ice cream and fruit bars.34 Petitioner
uses “the design of a little Indian” in connection with the
sale of ice cream bars, fruit bars, ice cream pops and
paletas (a type of ice cream bar).35 On March 3, 2001,
petitioner executed a trademark license agreement with El
Michoacana Natural, Inc., a Florida corporation, signed by
Jorge Malfavón on behalf of El Michoacana Natural, Inc. for
the marks LA MICHOACANA NATURAL, LA MICHOACANA, LA FLOR DE
MICHOACAN, and the “Diseño Indita” (petitioner’s Indian
girl) for use in the United States. As noted above, Jorge
Malfavón is a director of petitioner and the brother of
Marco Malfavón.36 At the same time that petitioner licensed
the marks to El Michoacana Natural, Inc., it also licensed
those marks to Rigoberto Fernandez.37 Mr. Fernandez is also

33 Ignacio Gutierrez Dep., pp. 31-33; Patricia Gutierrez Dep. pp.
34 and 57-58; Respondent’s response to petitioner’s requests for
admission Nos. 12 and 13.
34 Marco Malfavón Dep., pp. 5 and 23-25, question Nos. 3, 4, 66 67
(“it is a family business”), 69, 72; Jorge Malfavón Dep., p. 6.
35 Marco Malfavón Dep., pp. 22-23, question Nos. 64 and 65.
36 Marco Malfavón Dep., pp. 27-34, question Nos. 77-89 and 91-95
and Exhibit 12; Jorge Andrade Malfavón Dep., pp. 6, 15-17.
37 Marco Malfavón Dep., pp. 34-39, question Nos. 96-110 and
Exhibit 13; Rigoberto Fernandez Dep., pp. 8-10.
Cancellation No. 92047438
24
an officer of El Michoacana Natural, Inc.38 In 2001, El
Michoacana Natural, Inc. sold various products for
manufacturing ice cream to Rigoberto Fernandez on behalf of
petitioner.39
Rigoberto Fernandez owns three ice cream stores in
Florida.40 Petitioner, through its licensee, Rigoberto
Fernandez and El Michoacana Natural, Inc., began using
petitioner’s Indian girl in connection with the sale of ice
cream and ice cream bars in March or April 2001.41
Jorge Malfavón and Rigoberto Fernandez identified the
menu, cup, hat and shirt, shown below, as representative of
the use of the Indian girl design since 2001.42

38 Rigoberto Fernandez Dep., p. 6.
39 Jorge Malfavón Dep., pp. 18-19.
40 Fernandez Dep., p. 6; Fernandez Dep. 2, pp. 14-16.
41 Jorge Malfavón Dep., pp. 16-17 and 32, Exhibits 29 and 30;
Rigoberto Fernandez Dep., p. 10. The relationship between
Rigoberto Fernandez and El Michoacana Natural, Inc. was not fully
developed and is not entirely clear.
42 Jorge Malfavón Dep., p. 32 and Rigoberto Fernandez Dep., pp.
26, Exhibits 29 and 30. Mr. Fernandez also identified
petitioner’s Indian girl used on a package for an ice cream bar
in Exhibit 30, but the photograph is not clear as to the use of
the mark. See also Rigoberto Fernandez Dep. 2, pp. 66-69.
Cancellation No. 92047438
25

In view of the foregoing, we find that petitioner,
through its licensees, began using petitioner’s Indian girl
in connection with the sale of ice cream and ice cream bars
in the United States in April 2001 as demonstrated by the
display of the Indian girl in Fernandez’s stores on menus,
hats, cups and shirts.
B. Marks that include the word “Michoacana.”
Marco Malfavón testified that petitioner began using
the mark LA MICHOACANA NATURAL and design, shown below, for
Cancellation No. 92047438
26
ice cream products in Mexico in 199543 and in commerce with
the United States on March 3, 2001.44

Jorge Malfavón testified that his company began using
LA MICHOACANA NATURAL and design in the United States in
connection with the sale of ice cream, ice cream bars and
flavored waters “[a]t the beginning of 2001, around March or
April.”45
Jorge Malfavón also testified that his company used the
mark LA FLOR DE MICHOACAN and design, shown below, for ice
cream bars prior to December 2003.46

43 Marco Antonio Andrade Malfavón Dep., p. 16, question No. 43.
Mr. Malfavón also testified that petitioner used the mark LA
MICHOACANA NATURAL, in typed drawing form, in Mexico as of 1995.
(Marco Malfavón Dep., p. 19, question No. 54). Later, Mr.
Malfavón testified that petitioner used the LA MICHOACANA NATURAL
in connection with ice cream as early as 1992 (Marco Antonio
Andrade Malfavón Dep., pp. 43-44, question Nos. 120 and 125).
44 Marco Malfavón Dep., p. 43, question No. 121 and Exhibit 15.
45 Jorge Malfavón Dep., pp. 16-19.
46 Jorge Malfavón Dep., p. 25.
Cancellation No. 92047438
27
As indicated above, Jorge Malfavón introduced into
evidence Registration No. 2830401 for the mark LA FLOR DE
MICHOACAN, in typed drawing form, for “ice cream.” The mark
was registered April 6, 2004 based on an application filed
April 18, 2001.47
Rigoberto Fernandez testified that he has sold ice
cream and related products under the marks LA MICHOACANA, LA
MICHOACANA NATURAL, and LA FLOR DE MICHOACAN since March
2001.48 Mr. Fernandez identified an October 28, 2003
invoice from petitioner featuring the mark LA MICHOACANA
NATURAL and design for products used to make ice cream.49
Q. Have you also obtained a number of
other products like we’ve seen
before earlier today from
[petitioner] for the purpose of
advertising and promoting the brand
La Flor de Michoacan?

A. From [petitioner] was flavors, all
the materials that I need for
making the ice cream bars, ice
cream, juices, equipment.50

Mr. Fernandez also identified photographs displaying
the marks LA FLOR DE MICHOACAN, LA MICHOACANA, and LA
MICHOACANA NATURAL on store signs and freezers in the stores
from the 2001 to 2002 time frame.51

47 Jorge Malfavón Dep. pp. 24-25, Exhibit 24.
48 Rigoberto Fernandez Dep., pp. 10, 17-23, 33, 35.
49 Rigoberto Fernandez Dep., pp. 10-11, Exhibit 14. Marco
Malfavón also identified this exhibit (Marco Malfavón Dep., pp.
40-41, question No. 112, Exhibit 14).
50 Rigoberto Fernandez Dep., p. 21.
51 Rigoberto Fernandez Dep., pp. 28-36, Exhibit 32.
Cancellation No. 92047438
28
In view of the foregoing, we find that petitioner,
through its licensee, Fernandez, used the marks LA
MICHOACANA NATURAL and design, LA FLOR DE MICHOACAN, and LA
MICHOACANA in connection with ice cream and retail ice cream
store services since 2001.
Respondent argues that the testimony of petitioner’s
witnesses is unsubstantiated and whatever documentary
evidence petitioner introduced to establish its priority is
inconsistent.52 While it is certainly preferable for a
party’s testimony to be supported by corroborating
documents, the lack of documentary evidence is not fatal.
“Oral testimony, if sufficiently probative, is normally
satisfactory to establish priority of use.” Powermatics,
Inc. v. Globe Roofing Products Co., 341 F.2d 127, 144 USPQ
430, 432 (CCPA 1965). In this regard, oral testimony should
be clear, consistent, convincing, and uncontradicted. See
National Bank Book Co. v. Leather Crafted Products, Inc.,
218 USPQ 826, 828 (TTAB 1993) (oral testimony may be
sufficient to prove the first use of a party’s mark when it
is based on personal knowledge, it is clear and convincing,
and it has not been contradicted); Liqwacon Corp. v.
Browning-Ferris Industries, Inc., 203 USPQ 305, 316 (TTAB
1979) (oral testimony may be sufficient to establish both
prior use and continuous use when the testimony is proffered

52 Respondent’s Brief, pp. 19-28.
Cancellation No. 92047438
29
by a witness with knowledge of the facts and the testimony
is clear, convincing, consistent, and sufficiently
circumstantial to convince the Board of its probative
value); GAF Corp. v. Anatox Analytical Services, Inc., 192
USPQ 576, 577 (TTAB 1976) (oral testimony may establish
prior use when the testimony is clear, consistent,
convincing, and uncontradicted). The testimony of
petitioner’s witnesses is clear, convincing, consistent and
uncontradicted.
Respondent also argues that petitioner has not proven
ownership of its marks.53 However, we are satisfied by the
testimony of Marco Malfavón and Jorge Malfavón, as described
above, that petitioner is the owner of the marks LA
MICHOACANA NATURAL and design, LA FLOR DE MICHOACAN, LA
MICHOACANA and the Indian girl design in Mexico, has
licensed the use of those marks in the United States, and
that the use of the marks in the United States inures to the
benefit of petitioner. That the Mexican trademark
registrations are in the name of Marco Malfavón rather than
petitioner does not negate our finding that petitioner is
the owner of the marks. We recognize that ownership of
foreign registrations is not necessarily probative of
ownership of the mark in the United States. However, the
testimony of the witnesses demonstrates that petitioner is a

Cancellation No. 92047438
30
family-owned and run business and that there is a unity of
control. In a similar situation the Board found that a
family-owned and run business provided the requisite unity
of control.
It is clear from the record that Mr.
Guagenti has been the leading light or
owner of what can be considered to be
family enterprises or, if you will,
corporate sales, and that, for purpose
of convenience, he, at the advice of
counsel or accountant, transferred
ownership of his various interests to
one or another of his corporations
without disturbing, and that is the
important fact, the continuance of
operation of his different activities
including that of the “FARMER'S
DAUGHTER” restaurant. It is apparent
that there was not nor is there any
claim of adverse rights in the mark
“FARMER'S DAUGHTER” by any corporation
within Mr. Guagenti's organization and
that, in essence, any use of the mark by
any of the corporations was for the
benefit of and inured to the benefit of
Mr. Guagenti.

Airport Canteen Services, Inc. v. Farmer’s Daughter, Inc.,
184 USPQ 622, 627 (TTAB 1974). See also, Automedx Inc. v.
Artivent Corp., 95 USPQ2d 1976, 1984 (TTAB 2010) (“Dr.
Wiesman has been the central figure of what can be
characterized as a number of research and development
projects that are ultimately marketed by separate entities.
… the mark points to a single source: that is, the use of
the SAVe mark was for the benefit of and inured to the
benefit of Dr. Wiesman through his conglomerate”).

53 Respondent’s Brief, pp. 30-35.
Cancellation No. 92047438
31
In view of the foregoing, we find that petitioner has
priority of use with respect to petitioner’s Indian girl and
the marks LA MICHOACANA NATURAL and design, LA FLOR DE
MICHOACAN, and LA MICHOACANA.
Likelihood of Confusion
Our determination 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 issue of 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
and/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”).
A. The similarity or dissimilarity and nature of
petitioner’s goods and the goods described in the
registration.

Respondent’s registration identifies “ice cream and
fruit products, namely fruit bars.” Petitioner through its
licensees, El Michoacana Natural, Inc. and Rigoberto
Fernandez, uses petitioner’s Indian girl in connection with
Cancellation No. 92047438
32
the sale of ice cream and ice cream bars,54 the mark LA
MICHOACANA NATURAL and design for ice cream, ice cream bars
and flavored waters,55 the mark LA FLOR DE MICHOACAN and
design for ice cream bars,56 and the mark LA MICHOACANA for
ice cream products.57 Accordingly, all the marks at issue
are used in connection with ice cream.
B. The similarity of likely-to-continue channels of trade
and classes of consumers.

With respect to respondent’s products, because there
are no restrictions as to channels of trade or classes of
consumers in respondent’s description of goods, we must
assume that respondent’s “ice cream and fruit products,
namely, fruit bars,” will be sold in all of the normal
channels of trade to all of the normal purchasers for such
goods, including retail ice cream stores. Canadian Imperial
Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987); Toys R Us v. Lamps R Us,
219 USPQ 340, 343 (TTAB 1983). Petitioner’s LA FLOR DE
MICHOACANA registered marks are also unrestricted and,
therefore, move in all of the normal channels of trade to
all the normal purchasers for ice cream.

54 Jorge Malfavón Dep., pp. 16-17 and 32, Exhibits 29 and 30;
Rigoberto Fernandez Dep., p. 10.
55 Jorge Malfavón Dep., pp. 16-19.
56 Jorge Malfavón Dep., p. 25. See also petitioner’s Registration
Nos. 2830401 and 3249113.
57 Rigoberto Fernandez Dep., pp. 10, 17, 18-23, 33, 35.
Cancellation No. 92047438
33
Rigoberto Fernandez testified that his use of the mark
LA MICHOACANA NATURAL was not limited to his retail ice
cream stores; rather, he sold ice cream in bulk for resale
to a variety of retailers including grocery stores,
convenience stores and gas stations.58 As indicated above,
because there are no restrictions in respondent’s
registration, the channels of trade and classes of consumers
are presumptively the same with respect to petitioner’s LA
MICHOACANA NATURAL trademarks. In fact, respondent also
sells its products for resale to a variety of retailers.59
Petitioner offered no testimony regarding the channels
of trade or classes of consumers with respect to the ice
cream sold in connection with LA MICHOACANA or petitioner’s
Indian girl design. Because LA MICHOACANA and petitioner’s
Indian girl design are not registered, there are no
presumptions regarding the channels of trade or classes of
consumers. In this regard, petitioner cannot deliberately
cause confusion by selling respondent’s products in its
stores. Moreover, if petitioner did sell respondent’s
products in its stores, such sales would raise the defense
of acquiescence. On the other hand, the goods at issue are
ice cream and ice cream is a consumer product sold to
average consumers throughout society.

58 Fernandez Dep., pp. 17-18.
59 Patricia Gutierrez Dep., p. 17.
Cancellation No. 92047438
34
C. The conditions under which and buyers to whom sales are
made, i.e. “impulse” vs. careful, sophisticated
purchasing.

Because there is no limitation or restriction as to
price, we must presume that respondent’s ice cream and fruit
bars would be sold at all the usual prices for such goods.
As displayed in the menu petitioner made of record, ice
cream bars are sold for $1.75 and fruit bars are sold for
$1.25. We find that ice cream bars and fruit bars are
inexpensive products and by their very nature, are impulse
purchase items. Accordingly we find that consumers will not
exercise a high degree of care when purchasing these
products.
D. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd., 8
USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
are mindful that where, as here, the goods are identical,
the degree of similarity necessary to find likelihood of
Cancellation No. 92047438
35
confusion need not be as great as where there is a
recognizable disparity between the goods. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc.
v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough
HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1325 (TTAB 2007).
Also, it is well established that in comparing the
marks, 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 impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando Electric
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683,
196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The
proper focus is on the recollection of the average customer,
who retains a general rather than a specific impression of
the marks. Winnebago Industries, Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). In this
case, the average customer is an average person who eats ice
cream.
Cancellation No. 92047438
36
1. Indian girl design
Petitioner’s Indian girl is shown below.

Respondent’s mark is shown below.

The Indian girl designs are virtually identical. In
view of the identity of the products and the impulse nature
of ice cream purchases, the word portion of respondent’s
mark is not sufficient to distinguish the marks. We
recognize that the word portions of composite word and
design marks are normally accorded greater weight in the
likelihood of confusion analysis because consumers use the
words to call for the products. However, in this case,
because the designs are remarkably similar and the word
portion of respondent’s marks reinforces the design, the
differences in the marks do not distinguish them.60
Accordingly, we find that respondent’s mark is similar to
petitioner’s Indian girl design mark.
Cancellation No. 92047438
37
2. Marks that include the word “Michoacana.”
To analyze the word marks, we must first determine the
meaning of the word “Michoacana.” Michoacán is a state in
west-central Mexico.61 The term “La Michoacana” means “the
woman from Michoacán.”62 The word portion of respondent’s
mark LA INDITA MICHOACANA means the Indian girl or woman
from Michoacán.
Neither party has introduced any evidence regarding the
meaning or renown of the term “Michoacana” in the United
States when used in connection with ice cream. Both Ignacio
and Patricia Gutierrez testified that LA MICHOACANA is
commonly used as the name for ice cream stores in Mexico,
but neither provided any further testimony as how that might
relate to its use in the United States.63 Although Ms.
Gutierrez said that the “paleta” (a fruit bar) “was supposed
to be a tradition or something that was created in
Michoacan,”64 she did not explain whether that was known in
the United States.

60 Marco Malfavón Dep., p. 30, question No. 86 (“Diseño Indita”
(Design of an Indian Girl)”).
61 Encyclopedia Britannica (2011). The Board may take judicial
notice of information in encyclopdias. B.V.D. Licensing Corp. v.
Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed. Cir.
1988) (encyclopedias may be consulted); Sprague Electric Co. v.
Electrical Utilities Co., 209 USPQ 88 (TTAB 1980) (standard
reference works). See also respondent’s responses to
interrogatory Nos. 7, 9 and 26.
62 Registration Nos. 1552163 and 2145216 attached to respondent’s
notice of reliance.
63 Ignacio Guttierrez Dep., pp. 10-11 and 48; Patricia Guttierrez
Dep., pp. 13 and 68-69.
64 Patricia Gutierrez Dep., p. 69.
Cancellation No. 92047438
38
Respondent also introduced by notice of reliance three
third-party registrations with the word “Michoacana” or
“Michoacan”:
1. Registration No. 1552163 for the mark LA
MICHOACANA for tortillas;
2. Registration No. 3623346 for the mark EL SABOR DE
MICHOACAN for ice cream and sherbet; and
3. Registration No. 2145216 for the mark LA
MICHOACANA PARADISIO SORBET and design for, inter alia,
frozen fruit bars and ice cream.
While these registrations are probative of the meaning
of the word “Michoacana,” they do not prove that
“Michoacana” is a commercially weak term. Absent evidence
of actual use, third-party registrations have little
probative value because they are not evidence that the marks
are in use on a commercial scale or that the public has
become familiar with them. See Smith Bros. Mfg. Co. v.
Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973)
(the purchasing public is not aware of registrations
reposing in the U.S. Patent and Trademark Office). See also
In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
Based on this record, we find that the term
“Michoacana” when used in connection with ice cream and/or
fruit bars has some significance suggesting a connection
with “Michoacan” but it is not clear to what extent people
Cancellation No. 92047438
39
in the United States would understand or recognize that
connection and there is no evidence demonstrating that the
term “Michoacana” has been so commonly used in the United
States that it is only entitled to a narrow scope of
protection or exclusivity of use.
Although there are obvious differences between
petitioner’s mark LA MICHOACANA and respondent’s mark LA
INDITA MICHOACANA and design, the marks are similar in
appearance and sound to the extent that they both include
the word “Michoacana.” In addition, they have similar
meanings in that LA MICHOACANA means the woman from
Michoacán and LA INDITA MICHOACANA means the Indian woman
from Michoacán. As noted above, the term LA INDITA
MICHOACANA reinforces the design portion of the mark, and,
thus, both the petitioner’s mark and respondent’s mark
engender the same commercial impression (i.e., ice cream
from a Michoacán woman). In view of the foregoing, we find
that respondent’s mark LA INDITA MICHOACANA and design is
similar to petitioner’s mark LA MICHOACANA.
For the same reasons, we find that respondent’s mark is
similar to petitioner’s marks LA MICHOACANA NATURAL and LA
MICHOACANA NATURAL and design.
However, we find that respondent’s mark is not similar
to petitioner’s mark LA FLOR DE MICHOACAN and design because
the differences in the meanings and commercial impressions
Cancellation No. 92047438
40
engendered by the marks outweigh any similarities caused by
the inclusion of the word “Michoacana.”
E. No reported instances of actual confusion.
Respondent argues that there is no likelihood of
confusion as evidenced by the lack of any reported instances
of actual confusion. However, the absence of any reported
instances of confusion is meaningful only if the record
indicates appreciable and continuous use by respondent of
its mark for a significant period of time in the same
markets as those served by petitioner under its marks.
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992). In other words, for the absence of actual
confusion to be probative, there must have been a reasonable
opportunity for confusion to have occurred. Barbara’s
Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007)
(the probative value of the absence of actual confusion
depends upon there being a significant opportunity for
actual confusion to have occurred); Red Carpet Corp. v.
Johnstown American Enterprises Inc., 7 USPQ2d 1404, 1406-
1407 (TTAB 1988); Central Soya Co., Inc. v. North American
Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“the absence of
actual confusion over a reasonable period of time might well
suggest that the likelihood of confusion is only a remote
possibility with little probability of occurring”). In this
case, the record shows that respondent and petitioner do
Cancellation No. 92047438
41
business in discrete geographic regions on separate sides of
the country.65 Accordingly, the lack of any reported
instances of actual confusion is a neutral factor in our
analysis.
F. Balancing the factors.
The goods at issue are identical. With respect to
petitioner’s registered marks LA MICHOACANA NATURAL and LA
MICHOACANA NATURAL and design, the channels of trade and
classes of consumers are presumed to be the same. The
evidence shows that the channels of trade and classes of
consumers are the same with respect to petitioner’s mark LA
MICHOCANA NATURAL and that the classes of consumers are the
same with respect to petitioner’s mark LA MICHOACANA and its
Indian girl design. In addition, because ice cream is a low
cost impulse purchase, consumers do not exercise a high
degree of care. Under these circumstances, respondent’s
mark LA INDITA MICHOACANA and design is sufficiently similar
to petitioner’s Indian girl and its marks LA MICHOACANA, LA
MICHOACANA NATURAL and LA MICHOACANA NATURAL and design to
cause confusion, but not to petitioner’s mark LA FLOR DE
MICHOACAN and design. In view thereof, we find respondent’s
mark LA INDITA MICHOACANA and design is likely to cause
confusion with petitioner’s Indian girl and its marks LA

65 Respondent designated this information as confidential.
Patricia Gutierrez Dep., pp. 17-19, 34 and 38.
Cancellation No. 92047438
42
MICHOACANA, LA MICHOACANA NATURAL and LA MICHOACANA NATURAL
and design.
Decision: The petition for cancellation is granted and
Registration No. 3210304 will be cancelled in due course.