Pura Vida Tequila, LLC

Trademark Trial and Appeal Board

Jan 10, 2012

No. 77853437 (T.T.A.B. Jan. 10, 2012)

OPN

Mailed:
January 10, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pura Vida Tequila, LLC
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Serial No. 77853437
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Ruy Garcia-Zamor, Esq. of Garcia-Zamor Intellectual
Property Law for Pura Vida Tequila, LLC.

Michael Webster, Examining Attorney, Law Office 102 (Karen
M. Strzyz, Managing Attorney).
_______

Before Quinn, Zervas and Kuczma, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:
On October 21, 2009, Pura Vida Tequila, LLC
(“applicant”) filed an application pursuant to Section 1(b)
of the Trademark Act, 15, U.S.C. §1051(b), for registration
on the Principal Register of the mark PURA VIDA (in
standard character form) for goods identified as “tequila”
in International Class 33. The English language
translation of the mark according to the translation
statement in the record is “pure life.”
THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.
Serial No. 77853437
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The examining attorney issued a final refusal to
register pursuant to Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), in view of Registration No. 2970871 for the
mark PURA VIDA (in standard character form) for “brewed
malt-based alcoholic beverages in the nature of a beer and
beer” in International Class 32.
Applicant appealed the final refusal of its
application. Both applicant and the examining attorney
filed briefs. The refusal to register is affirmed.
We first address one evidentiary issue. Applicant
submitted a printout of a webpage as an exhibit to its
brief (Exhibit L), which was not in the record prior to the
filing of the appeal. Trademark Rule 2.142(d) reads as
follows:
The record in the application should be complete
prior to the filing of an appeal. The Trademark
Trial and Appeal Board will ordinarily not
consider additional evidence filed with the Board
by the appellant or by the examiner after the
appeal is filed.

Applicant provided no explanation for the late filing of
the webpage. The examining attorney's objection to Exhibit
L is sustained and we have not considered this webpage.
Next, we turn to the merits of the refusal to register
applicant’s mark. Our determination of the issue of
likelihood of confusion is based on an analysis of all of
Serial No. 77853437
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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, however, two key, although not exclusive,
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 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
The Marks
There is no dispute that the marks are identical. The
du Pont factor regarding the similarity of the marks
therefore is resolved against applicant.
The Goods
In order to find that the goods are related, it is
sufficient to show that because of the conditions
surrounding their marketing, or because they are otherwise
related in some manner, the goods would be encountered by
the same consumers under circumstances such that offering
the goods under confusingly similar marks would lead to the
mistaken belief that they come from, or are in some way
Serial No. 77853437
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associated with, the same source. In re Iolo Techs., LLC,
95 USPQ2d 1498 (TTAB 2010); see In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); TMEP §1207.01(a)(i) (8th ed. 2011). In
addition, where the marks of the respective parties are
identical, as is the case in this appeal, there need be
only a viable relationship between the relevant goods to
support a finding of likelihood of confusion. See, e.g.,
In re Thor Tech, Inc., 90 USPQ2d 1634 (TTAB 2009); In re
Wilson, 57 USPQ2d 1863 (TTAB 2001); see also In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
The examining attorney’s evidence in support of the
refusal includes the following:
An article from Booze News regarding a
tequila and beer tasting event;

An Internet posting from answers.com
regarding an alcoholic drink containing a mixture
of beer and tequila;

A webpage from bostonycitylinks.com
regarding a specialty bar in Boston which
features beer and tequila;

A review of tequila flavored beer on
livingsocial.com, under the link “beer”;

Search results for “tequila beer” on
alibaba.com showing drinks such as beer flavored
with tequila;1

1 The alibaba.com search results also include entries for foreign
trading companies offering both tequila and beer. Because there
is no evidence in the record that consumers in the United States
(including wholesalers) import beer and tequila from foreign
Serial No. 77853437
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A review on brewingkb.com describing a drink
in which a shot glass of tequila is added to
draft beer; and

A recipe for a “beer margarita” on
examiner.com which includes both beer and
tequila.

The record also includes a number of third-party
registrations submitted by the examining attorney which
identify both “beer” and “distilled spirits.” Third-party
registrations that individually cover different items and
are based on use in commerce serve to suggest that the
listed goods and services are of a type that may emanate
from a single source. See Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988) (although third-party
registrations are “not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may nonetheless have some
probative value to the extent that they may serve to
suggest that such goods or services are of a type which may
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
Because none of the third-party registrations list

trading companies, many of the search results are not probative
of any relationship between the goods.
Serial No. 77853437
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“tequila,” we presume the examining attorney assumed that
“tequila” is included within “distilled spirits.”2
Also, applicant submitted a webpage from Lee’s
Discount Liquor. According to applicant, the webpage
demonstrates “that beer, wine and liquor such as tequila
are typically sold together in [l]iquor stores.”
Applicant’s brief at 5.3
The evidence of record and applicant’s acknowledgement
at page 5 of its brief that beer and liquor such as tequila
are typically sold together in liquor stores establishes
that tequila and beer may appear in the same beverage; are
consumed at the same time by the same consumers; and are
offered for sale to the same purchasers in the same
outlets. We therefore find that the goods travel in the
same trade channels; that the purchasers of tequila and
beer are adult consumers of alcoholic beverages and
overlap, and that because of the overlap in trade channels
and purchasers, and because the goods are used in the same
beverage, the goods are related.

2 It would have been preferable for the examining attorney to
have located third-party registrations that specifically recite
tequila. Applicant has not objected to the third-party
registrations as not including tequila; we therefore have
accorded them their full probative value.
3 The webpage states that Lee’s Discount Liquor “is filled with
the best variety of liquor, wine, beer, mixers and bar
accessories.”
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Our finding is consistent with Majestic Distilling,
supra, where the Federal Circuit, our primary reviewing
court, affirmed the Board’s decision that RED BULL for
“tequila” is likely to be confused with RED BULL for “malt
liquor.” The evidence in the record in Majestic similarly
consisted of (1) articles demonstrating that malt liquor
and tequila are occasionally found in some of the same
places, and (2) articles relating to applicant’s goods, a
tequila-flavored beer. The court stated:
[M]alt liquor and tequila are similar by virtue
of the fact that both are alcoholic beverages
that are marketed in many of the same channels of
trade to many of the same consumers. … Because
substantial evidence supports the Board's
conclusions that malt liquor and tequila are
similar goods and are sold in many of the same
established and likely-to-continue trade
channels, we conclude that the second and third
DuPont factors, respectively, weigh against
Majestic ….

Our finding is also consistent with In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1948
(Fed. Cir. 2004), where the Federal Circuit affirmed the
Board’s finding of a likelihood of confusion between marks
for tequila and beer, and stated that such goods often
emanate from the same source and that “substantial evidence
supports the Board's finding of a close relationship
between tequila and beer or ale.”
Serial No. 77853437
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We next consider the du Pont factor regarding the
number and nature of similar marks in use for similar
goods. According to the Federal Circuit, “[e]vidence of
third-party use of similar marks on similar goods is
relevant to show that a mark is relatively weak and
entitled to only a narrow scope of protection.” Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005),
citing, General Mills, Inc. v. Kellogg Co., 824 F.2d 622,
626-27 (8th Cir. 1987); and J. Thomas McCarthy, 2 McCarthy
on Trademarks and Unfair Competition § 11:88 (4th ed.
2001).
We are not persuaded by applicant’s evidence that PURA
VIDA is a weak mark. Applicant’s evidence of third-party
use of PURA VIDA consists of a photograph of a Martellotto
Wine Productions bottle of wine and three pricelists for
the same wine. The recipes for a “pura vida” drink from
answerbag.com and a webpage titled “cocktail equipment” do
not exhibit trademark use and hence have no probative value
under this du Pont factor. Further, the two webpages which
use “pura” in connection with beer and the three examples
of use of “vida” in connection with beer and wine do not
demonstrate that the terms are so widely used, rendering
the terms, alone or in combination with each other, weak.
Serial No. 77853437
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Cf. In re Broadway Chicken Inc., 38 USPQ2d 1559 (TTAB
1996). In addition, as the examining attorney correctly
observed, even if “pura” and “vida” are weak terms in
connection with alcoholic drinks (which applicant has not
established on this record), applicant’s and registrant’s
marks are identical, and this fact outweighs any weakness
in the marks.
Turning next to the du Pont factor regarding
purchasing conditions, applicant argues that “[p]urchasers
of tequila tend to be very sophisticated consumers of
alcohol that spend significant time selecting their
tequila,” brief at 7, and that “the typical purchaser of
specialty tequilas is careful in selecting a tequila ….”
Brief at 8. Applicant has provided no evidence to support
its assertions and we are dubious of their accuracy.
Moreover, the Federal Circuit in Majestic Distilling did
not disturb the Board’s finding that malt liquor and
tequila are both relatively inexpensive products4 that are
likely to be purchased on impulse rather than selected with
careful, studied consideration and sophistication. Id. at
1205. The court reasoned:
First, even if Majestic were correct that “common
experience” shows that consumers sometimes become

4 In Chatam International, 71 USPQ2d at 1948, the Federal Circuit
stated that tequila and beer are “inexpensive commodities.”
Serial No. 77853437
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attached to a particular brand of beer or spirits
after purchasing and consuming that brand at
least once, that would say little, if anything,
about whether the consumer's initial selection of
that brand was based on studied consideration and
sophistication or, alternatively, on impulse.
Secondly, it appears to us that brand-
consciousness not only can be expected to lead a
consumer who already has a favorite brand of
tequila to be loyal to that brand, but it also
should compel a consumer who enjoys “RED BULL”-
brand malt liquor but has not yet developed a
taste for a particular brand of tequila to
purchase “RED BULL”-brand tequila in the mistaken
belief that it is manufactured or sponsored by
the same entity.

Id. at 1204 – 05. We therefore find that the du Pont
factor regarding purchasing conditions at best for
applicant to be neutral.
In view of the identity of the marks, trade channels
and purchasers, and the similarity of the goods, we find
that applicant’s mark for tequila is likely to be confused
with registrant’s mark for “brewed malt-based alcoholic
beverages in the nature of a beer and beer.”
DECISION: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.