SANTAFE LLC

Trademark Trial and Appeal Board

Mar 31, 2017

No. 86727749 (T.T.A.B. Mar. 31, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: March 31, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re SANTAFE LLC
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Serial No. 86727749
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Ronald J. Koch,
for SANTAFE LLC.
Samuel R. Paquin, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Taylor, Hightower, and Coggins,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant SANTAFE LLC seeks registration on the Principal Register of the mark
RANCHO ALEGRE (in standard characters) for “restaurant services; take-out
restaurant services” in International Class 43.1 The application includes the following
translation statement: “The English translation of ‘RANCHO ALEGRE’ in the mark
is ‘HAPPY RANCH’.”

1 Application Serial No. 86727749 was filed on August 17, 2015, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging July 9, 2008 as the date of first use and first
use in commerce.
Serial No. 86727749
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The Trademark Examining Attorney has refused registration under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as
applied to the services identified in the application, so resembles the mark RANCHO
ALEGRE (in typeset form), previously registered on the Principal Register for
“tequila” in International Class 33, as to be likely to cause confusion, to cause
mistake, or to deceive.2
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. We affirm the refusal to register.
Before addressing the merits of the refusal, we note that we have disregarded the
evidence attached to Applicant’s reply brief because it was not timely submitted.3
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“The record in the application should
be complete prior to the filing of an appeal. Evidence should not be filed with the
Board after the filing of a notice of appeal.”).
Our determination under Section 2(d) is based on an analysis of all 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 Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key

2 Registration No. 3056167, issued January 31, 2006; renewed. Before November 2, 2003,
standard character drawings were known as typed drawings. A typed mark is the legal
equivalent of a standard character mark. TMEP § 807.03(i) (Jan. 2017). Like the subject
application, the cited registration includes the following translation statement: “The foreign
wording in the mark translates into English as HAPPY RANCH.”
3 7 TTABVUE 5-7.
Serial No. 86727749
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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 consider first the du Pont factor assessing “‘the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, connotation and commercial
impression.’” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177
USPQ at 567). The marks are identical. Moreover, there is no record evidence of any
third-party use of the RANCHO ALEGRE mark. The first du Pont factor weighs
strongly in favor of a finding that confusion is likely.
We next consider the second and third du Pont factors, the similarity of the goods
and services and channels of trade, respectively. A likelihood of confusion may be
found with respect to a particular class based on any item within the identification of
goods or services for that class. Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Where, as here, the involved marks
are identical, the degree of similarity between the goods and services required to
support a finding that confusion is likely declines; generally, it is necessary only that
there be a viable relationship between the two to support a finding of likelihood of
confusion. In re i.am.symbolic, 116 USPQ2d 1406, 1411 (TTAB 2015); In re Opus One
Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).
Serial No. 86727749
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Under the second and third du Pont factors, the test is not whether consumers
would be likely to confuse the goods and services, but rather whether they would be
likely to be confused as to their source. In re Anderson, 101 USPQ2d 1912, 1919
(TTAB 2012). Therefore, to support a finding of likelihood of confusion, it is not
necessary that the goods and services be identical or even competitive. It is sufficient
that they are related in some manner, or that the circumstances surrounding their
marketing are such that they would be encountered by the same persons in situations
that would give rise, because of the marks, to a mistaken belief that they originate
from the same source or that there is an association or connection between the sources
of the goods and services. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
We must make our determination regarding the similarities between the goods
and services and channels of trade based on the identifications in the involved
application and cited registration, respectively, not on any extrinsic evidence of actual
use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1162 (Fed. Cir. 2014). An applicant may not restrict the scope of the
goods covered in the cited registration by argument or extrinsic evidence concerning
their specific nature. In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165
(TTAB 2013); see also In re Thor Tech, 90 USPQ2d at 1638 (“We have no authority to
read any restrictions or limitations into the registrant’s description of goods.”). For
this reason, Applicant’s arguments concerning the origin of goods offered by
Registrant under the RANCHO ALEGRE mark are irrelevant, as is the current
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geographic scope of Applicant’s own services.4 See, e.g., Section 22 of the Trademark
Act, 15 U.S.C. § 1072 (federal registrants enjoy nationwide constructive notice of their
ownership of the registered mark).
There is no per se rule that confusion is likely to result from use of similar or even
identical marks for food or beverage items and restaurant services. In re Opus One,
60 USPQ2d at 1813. Rather, when we analyze restaurant services on the one hand
and food or beverage goods on the other, relatedness must be establish by “something
more” than simply use of the same marks for the goods and services. Lloyd’s Food
Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027, 2030 (Fed. Cir. 1993). As our
primary reviewing court explained in Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d
1059, 1064 (Fed. Cir. 2003):
It is not unusual for restaurants to be identified with
particular food or beverage items that are produced by the
same entity that provides the restaurant services or are
sold by the same entity under a private label. Thus, for
example, some restaurants sell their own private label ice
cream, while others sell their own private label coffee. But
that does not mean that any time a brand of ice cream or
coffee has a trademark that is similar to the registered
trademark of some restaurant, consumers are likely to
assume that the coffee or ice cream is associated with that
restaurant.
We find that the record in this case satisfies the “something more” evidentiary
standard. The evidence shows that some restaurants, including Applicant’s,
specifically associate their services with the offer of tequila. First, the Examining
Attorney introduced pages from Applicant’s website and Facebook page

4 See Reply Brief at 1-2, 7 TTABVUE 3-4.
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demonstrating that Applicant serves tequila and margaritas made with tequila,5 and
also has offered tequila tastings at its restaurants:6

Second, the Examining Attorney introduced evidence concerning seven restaurants
marketed as tequilerias, emphasizing their complementary offer of both Mexican food
and tequila.7 Finally, the Examining Attorney submitted evidence that third parties
offer both restaurant services and tequila under the same mark, including:
• IRON CACTUS8
• JOSE CUERVO9
• MARGARITAVILLE10

5 June 24, 2016 Final Office Action at TSDR 23-25 (from ranchoalegrerestaurante.com).
6 Id. at TSDR 26 (from facebook.com/ranchoalegrerestaurant/).
7 Id. at TSDR 16-22.
8 December 2, 2015 Office Action at TSDR 3 (from ironcactus.com).
9 Id. at TSDR 4 (from miami.cbslocal.com/top-lists/top-spots-to-grab-a-drink-in-the-south-
florida-airport/).
10 Id. at TSDR 5-6 (from margaritavillespirits.com/tequila.html and margaritaville.com/dine).
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• CABO WABO11
• ANTONIO’S12
• XOC13
• GABRIELA’S14
• CHA! CHA! CHA!15
One such restaurant, “Agave Cocina & Cantina,” offered a three-course dinner and
tequila pairing to introduce its own AGAVE tequila.16
We find that the record evidence discussed supra establishes that the types of
services recited in the application and the goods identified in the cited registration
not only are sufficiently related, but also travel through the same channels of trade
to the same classes of customers. In our likelihood of confusion analysis, these
findings under the second and third du Pont factors also support a finding that
confusion is likely. See In re Azteca Rest. Enters. Inc., 50 USPQ2d 1209, 1212-13
(TTAB 1999) (concluding that “consumers would be likely to mistakenly believe that
registrant’s Mexican food products sold under the mark AZTECA and applicant’s
restaurant services rendered under the mark AZTECA MEXICAN RESTAURANT
originated with or are somehow associated with or sponsored by the same entity”);
see also In re Accelerate s.a.l., 101 USPQ2d 2047, 2050-51 (TTAB 2012) (holding

11 Id. at TSDR 7-8 (from cabowabo.com and cabowabocantina.com).
12 June 24, 2016 Final Office Action at TSDR 2 (from antoniosonmelrose.com/tequila.html).
13 Id. at TSDR 4-5 (from xoctequilagrill.com/).
14 Id. at TSDR 7 (from gabrielas.com/tequila-cocktails).
15 Id. at TSDR 9-10 (from chachachapdx.com).
16 Id. at TSDR 6 (from agavarest.com/dinner-pairing-with-tequila-at-agave-redmond/); see
also December 2, 2015 Office Action at TSDR 3 (“Iron Cactus Mexican Grill & Margarita Bar
Debuts Own Tequila at Its Annual Tequila Tour”).
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COLOMBIANO COFFEE HOUSE for providing food and drink likely to cause
confusion with registered certification mark COLOMBIAN for coffee); In re Comexa
Ltda., 60 USPQ2d 1118, 1121 (TTAB 2001) (holding AMAZON and parrot design for
chili sauce and pepper sauce and AMAZON for restaurant services likely to cause
confusion); In re Golden Griddle Pancake House Ltd., 17 USPQ2d 1074, 1075 (TTAB
1990) (affirming refusal of application to register GOLDEN GRIDDLE PANCAKE
HOUSE for restaurant services due to likelihood of confusion with GOLDEN
GRIDDLE for table syrup).
In its appeal and reply briefs, Applicant analogizes this case to Coors and
distinguishes it from Opus One. We are not persuaded by these arguments. In Coors,
because the composite marks at issue comprised significantly different design
elements, the Court of Appeals for the Federal Circuit found the similarity of the
marks to be “a less important factor in establishing a likelihood of confusion than it
would be if the two marks had been identical in design.” 68 USPQ2d at 1062. There
was evidence, moreover, that the literal portion of the two marks (BLUE MOON) had
been widely used in connection with restaurant services and food products. Id. at
1064. Here, both marks consist entirely of the identical phrase RANCHO ALEGRE
in standard characters. And, as noted supra, there is no record evidence of third-party
use of the RANCHO ALEGRE mark, which appears to be strong and arbitrary in
association with tequila. In addition, the Examining Attorney introduced evidence
demonstrating a commercial relationship between restaurant services and tequila.
See Opus One, 60 USPQ2d at 1813 (“In this case, though, we find that the requisite
Serial No. 86727749
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‘something more’ exists, both in the strong and arbitrary character of registrant’s
OPUS ONE mark and the resulting broad scope of protection to which the mark is
entitled . . . and in the nature of the specific commercial relationship between wine
and restaurant services.”) (citations omitted). Although the record does not include a
large number of examples, Applicant submitted no evidence to rebut the showing of
a complementary relationship between restaurant services and tequila.
It has been stated many times that we must decide each case on its own facts. See
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). We
have considered all of the arguments and evidence of record, including any not
specifically discussed herein, as they pertain to the relevant du Pont likelihood of
confusion factors. To the extent that any other du Pont factors for which no evidence
was presented by Applicant or the Examining Attorney may nonetheless be
applicable, we treat them as neutral.
We have found that Applicant’s mark is identical to the cited mark, that the goods
and services identified in the subject application and cited registration are related
and travel through the same channels of trade, and that the record demonstrates that
tequila and restaurant services are sufficiently related under the applicable
evidentiary standard. We find that Applicant’s mark is likely to cause confusion with
the mark in cited Registration No. 3056167 when used in association with restaurant
services.
Decision: The refusal to register is affirmed.