Solano Family Restaurant, LLC and El Pollo Rico, LLCv.El Pollo Rico, Inc.

Trademark Trial and Appeal Board

Feb 27, 2013

No. 91193544 (T.T.A.B. Feb. 27, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
February 27, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Solano Family Restaurant, LLC and El Pollo Rico, LLC
v.
El Pollo Rico, Inc.
_____
Opposition No. 91193544
_____
Eric T. Fingerhut of Dykema Gossett PLLC for Solano Family Restaurant, LLC and
El Pollo Rico, LLC.

Karen A. Rex for El Pollo Rico, Inc.
_____

Before Bergsman, Ritchie and Masiello, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:

El Pollo Rico, Inc. (“applicant”) filed an application to register the mark set
forth below for “Restaurant services, specializing in grilled chicken,” in
International Class 43:

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The colors yellow, blue, white, green, red, brown, gray and black are claimed
as features of the mark. Applicant disclaimed the exclusive right to use POLLO
RICO and POLLOS ASADOS AL CARBON GRILLED CHICKEN ON
CHARCOAL.1
Solano Family Restaurant, LLC and El Pollo Rico, LLC, as joint opposers
(“opposers”), opposed registration of the mark under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, as used in connection
with applicant’s services, so resembles opposers’ previously used mark EL POLLO
RICO as to be likely to cause confusion, mistake or deception. Opposers
subsequently acquired U.S. Reg. No. 2950498, on the Supplemental Register,
relating to the mark POLLO RICO! for services identified as “restaurant services
and take out restaurant services featuring flame broiled chicken and beans and
rice,” in Class 43.2 Opposers amended their notice of opposition to claim ownership
of this registration. Applicant denied the salient allegations of the notice of
opposition.
The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122, 37 C.F.R. § 2.122, the application file for applicant’s mark. The record also
includes the following testimony and evidence:

1 Application Serial No. 77548808, filed on August 16, 2008 under Trademark Act § 1(b), 15
U.S.C. § 1051(b). Applicant subsequently filed an allegation of use, claiming dates of first
use and first use in commerce of August 27, 2008.
2 Reg. No. 2950498 issued on the Supplemental Register on May 10, 2005. An affidavit of
use under Trademark Act § 8, 15 U.S.C. § 1058, has been filed and accepted.
Opposition No. 91193544

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A. Opposers’ Evidence.
1. Joint Affidavit Testimony of Juan Carlos Solano and Italo Solano, the
respective Managing Members of Solano Family Restaurant, LLC and
El Pollo Rico, LLC, with attached exhibits (“Solano Jt. Aff.”).3

2. Opposers’ First Notice of Reliance upon certain responses of applicant
to requests for admission.

3. Opposers’ Second Notice of Reliance on portions of the discovery
deposition of Mohdmehdi K. Momin, applicant’s president and Rule
30(b)(6) designee (“Momin dep.”).

B. Applicant’s Evidence.
1. Applicant’s First Notice of Reliance on certain newspaper articles and
internet materials.

2. Applicant’s Second Notice of Reliance on the following official records
of the U.S. Patent and Trademark Office:

a. Opposers’ application Serial No. 77863545.
b. Assignment papers regarding Reg. No. 2950498.
3. Applicant’s Third Notice of Reliance on portions of the discovery
deposition of Mohdmehdi K. Momin.

4. Applicant’s Fourth Notice of Reliance on certain responses of applicant
to opposers’ interrogatories and requests for production of documents.

5. Applicant’s Fifth Notice of Reliance on certain responses of opposers to
applicant’s interrogatories.

Evidentiary Objections

Opposers have objected to Exhibit F attached to applicant’s first notice of
reliance (a fragmentary printout of Google search results). Opposers’ objection goes

3 Submitted by stipulation of the parties.
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to the probative value of the exhibit and does not state any ground on which the
exhibit should be deemed inadmissible. The objection is overruled.
Opposers’ second objection appears to be prophylactic in nature and warns
against the consideration of evidence submitted by applicant in connection with the
opposers’ earlier motion for summary judgment and not otherwise properly made of
record. Inasmuch as the objection does not refer to any specific evidence, it is not
well taken and is overruled.
Applicant objects to the admission of numerous exhibits to the Solano Joint
Affidavit on the ground that they were created or published after applicant’s filing
date of August 16, 2008. Applicant’s position, in essence, is that such evidence lacks
relevance inasmuch as it cannot demonstrate that opposers’ alleged mark acquired
distinctiveness prior to applicant’s filing date. Applicant’s filing date is not a cut-off
date for all matters of relevance to this proceeding. One of the opposers’ grounds for
opposition is their alleged ownership of “a mark or trade name previously used in
the United States… and not abandoned.” Trademark Act § 2(d), 15 U.S.C. § 1052(d)
(emphasis supplied). Evidence relating to the public’s perceptions of opposers’ mark
and name postdating the applicant’s filing date are, at a minimum, relevant to
showing that the alleged distinctiveness of opposers’ mark still subsists. Another
ground asserted by opposers is their ownership of a mark registered on the
Supplemental Register. Priority is not at issue with respect to this ground, but the
existence of a functioning trademark is at issue, and evidence of public perceptions
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of opposers’ alleged mark at any time are relevant to this issue. Accordingly,
applicant’s objection is overruled.
Applicant’s objection to Exhibit CCC of the Solano Joint Affidavit goes to the
interpretation of the exhibit and does not state any ground on which it should be
deemed inadmissible. The objection is overruled.
Standing
Opposers’ witnesses have testified that opposers “have been using the name
and mark EL POLLO RICO for restaurant services since at least as early as
November 7, 1988,”4 and that opposers’ restaurants are primarily known for “flame-
broiled chicken.”5 Opposers have also made of record the file of their pending
application Serial No. 77863545 for the mark EL POLLO RICO, showing that
application Serial No. 77548808, which is the subject of this opposition proceeding,
has been cited by the trademark examiner against opposers as a potential bar to
registration.6 These facts are sufficient to demonstrate that opposers have a real
interest in this proceeding and therefore have standing. Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982);
Weatherford/Lamb Inc. v. C&J Energy Services Inc., 96 USPQ2d 1834, 1837 (TTAB
2010).

4 Solano Jt. Aff. ¶7.
5 Id., ¶ 16.
6 Id., Ex. A.
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Priority
Opposers claim to have common law rights in the mark EL POLLO RICO for
use in connection with restaurants featuring chicken. They have also pleaded
ownership of U.S. Reg. No. 2950498, on the Supplemental Register, for the mark
POLLO RICO!, and have made a copy of the registration of record. The
designations EL POLLO RICO and POLLO RICO! are not inherently distinctive
because of their descriptive properties. Both marks may fairly be translated from
Spanish into English as “delicious chicken” or “the delicious chicken.”7 Opposers’
pleaded registration states that the mark means “chicken, delicious or rich,” and
opposers’ pending application Serial No. 77863545 states that the mark means “the
chicken rich or delicious.” Moreover, a registration on the Supplemental Register
may be interpreted as an implied admission that the registered term is merely
descriptive, or at least was so at the time of registration. In re Hunke & Jocheim,
185 USPQ 188, 189 (TTAB 1975).
With respect to opposers’ pleaded common law use of EL POLLO RICO,
opposers must demonstrate that their alleged mark acquired distinctiveness prior
to any date of use on which applicant may rely. Perma Ceram Enterprises, Inc. v.
Preco Industries, Ltd., 23 USPQ2d 1134, 1136 (TTAB 1992). Applicant’s earliest
alleged date of actual use is August 27, 2008.8 However, applicant is entitled to the

7 CASSELL’S SPANISH-ENGLISH ENGLISH-SPANISH DICTIONARY (1959), pp. 631 and 684. The
Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
8 Applicant’s amendment to allege use, filed May 4, 2009. See also Momin dep. at 119
(Opposers’ second notice of reliance, Ex. A).
Opposition No. 91193544

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benefit of Section 7(c) of the Trademark Act, 15 U.S.C. § 1057(c), pursuant to which
applicant may rely on the filing date of its application, August 16, 2008, as its date
of constructive use. Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840
(TTAB 1995); Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d
1542 (TTAB 1991). Opposers contend that they acquired distinctiveness long prior
to applicant’s filing date.
To the extent that opposers rely on their pleaded registration, they need not
prove priority. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974); In re The Clorox Co., 578 F.2d 305, 198 USPQ 337,
340 (CCPA 1978). However, opposers still must prove that POLLO RICO! has
acquired distinctiveness as their source indicator, because one who opposes under
Section 2(d) “must prove he has proprietary rights in the term he relies upon to
demonstrate likelihood of confusion.” Otto Roth & Co., Inc. v. Universal Foods
Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981). A registration on the
Supplemental Register does not prove this fact; as it is not entitled to the
evidentiary presumptions of Trademark Act 7(b), 15 U.S.C. § 1057(b), it is not
evidence of the opposers’ ownership of the mark or of their exclusive right to use the
mark in commerce. Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252
(TTAB 2012); In re Medical Disposables Co., 25 USPQ2d 1801 (TTAB 1992).
Opposers, in their brief and in their presentation of evidence, have focused
primarily on demonstrating their common law rights in the mark EL POLLO RICO;
they have submitted relatively little to substantiate whether POLLO RICO! has
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acquired distinctiveness as their service mark. Accordingly, we also will focus on
whether opposers have successfully shown that EL POLLO RICO acquired
distinctiveness as an indicator of the source of their restaurant services prior to the
filing of applicant’s application.
Opposers’ witnesses state that opposers have operated restaurants featuring
chicken under the name EL POLLO RICO since at least as early as November 7,
1988.9 During that period, they have, at various times, operated between one and
three restaurants located in Arlington, Virginia, Woodbridge, Virginia, and
Wheaton, Maryland.10 Revenues for the Wheaton and Arlington restaurants
(disclosed confidentially on a multi-year basis) suggest at least a moderate degree of
commercial success.11 Opposers admit that their advertising expenditures have
been “not… significant.”12 Opposers have made of record examples of press notices
from the Washington Post, dated February 23, 1989, January 4, 1990, and January
25, 1991; Washingtonian Magazine, dated October 1989; Newsweek Magazine,
dated July 13, 2004; and Men’s Health Magazine, dated December 2000, among
others.13 Opposers received a Washingtonian Magazine “Bargain Restaurant
Award” in each of the years 1991; 1993 through 1996; 2001 through 2005; and
2008.14 Each of these press notices and awards clearly refers to EL POLLO RICO

9 Solano Jt. Aff. ¶ 7.
10 Id., ¶¶ 3, 6.
11 Id., ¶¶ 20-21.
12 Id., ¶ 19.
13 Id., Exhibits H, I, J, L, HH and RR.
14 Id., Exhibits M through Q and T through Y.
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as the name of opposers’ restaurants and not in a descriptive sense. Opposers’
Wheaton restaurant was noted in Zagat surveys for the Washington, DC and
Baltimore areas dated 1999 and 2001/2002.15 Opposers’ Arlington restaurant was
noted on an August 2008 episode of the television show “Anthony Bourdain No
Reservations,” although there is no evidence to show whether this episode was
made or aired prior to August 16, 2008.16
Opposers have made of record a substantial number of online comments from
the website, dating from as early as 2006.17 Many comments illustrate
that customers perceive EL POLLO RICO not in its descriptive sense, but as the
name of a business. Dated examples follow:
El Pollo Rico has the best Peruvian chicken around! (January 30,
2006)

This place no doubt has the best chicken you will ever taste. (June 28,
2006)

To fully enjoy the EPR experience, you MUST use your hands and
order extra sauce. (January 15, 2007)

This place is an “old faithful” or [sic] Arlington. (January 24, 2007)

Have been loving this place for over 8 yrs now…. (January 24, 2007)

…I called up some carnivore buddies and headed over to this holy
shrine of rotisserie chicken…. (April 30, 2007)

While the chicken at EPR is moist and the spices pretty good, it’s just
not AS good as Super Pollo. (November 25, 2007)

15 Id., Exhibits R and S.
16 Id., Exhibit OO.
17 Id., Exhibit E.
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My favorite restaurant in the DC area… and possibly, the world.
(March 7, 2008)

An Arlington institution! There are tons of Peruvian chicken places in
the area, but no where is it served, hotter, fresher or better spiced than
at Pollo Rico. March 18, 2008.

…another fine weekday lunch haunt – El Pollo Rico. However, EPR is
much more of a Washington establishment than Ravi Kabob will ever
be.” (April 10, 2008)

El Pollo Rico was a staple of my diet when I lived in Arlington…. The
others may have a wider variety of sides (your choices at EPR are fries
and cole slaw, both of which are delicious), but the chicken keeps me
from straying from EPR. … We all waited an extra 25 minutes to get
our delicious El Pollo Rico chicken. (May 15, 2008)

The comments shown above (and many others in the record) illustrate that
customers perceive EL POLLO RICO not as a descriptive term meaning a food
product, but as the business name of a restaurant. They refer to EL POLLO RICO
as a “place,” a “restaurant,” a “haunt,” a “shrine,” and an “institution.” The term is
used by consumers as an adjective modifying “chicken,” as in “El Pollo Rico
chicken.” Grammatical structures such as “El Pollo Rico has the best… chicken”
and “[chicken] served… at Pollo Rico” would make no sense if the words of the mark
were perceived in their descriptive sense. We also note customers’ use of the
abbreviation EPR, suggesting familiarity with the business name, a perception of it
as something other than the descriptive words of which it is composed, and an
expectation that others will understand the abbreviation. Other uses of EPR can be
seen in the press notices from Men’s Health magazine (Solano Jt. Aff. Exhibit RR)
and Northern Virginia Magazine (online) (Solano Jt. Aff. Exhibit UU).
Opposition No. 91193544

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We find that the designation EL POLLO RICO acquired recognition as a
source-indicator for opposers’ restaurant services prior to August 16, 2008 among a
substantial portion of the relevant customers in opposers’ market area. Opposers
need not demonstrate nationwide notoriety of their mark; their prior use of the
mark anywhere in the United States suffices. Odom Sausage Co., Inc. v. Doskocil
Sausage, Inc., 169 USPQ 379 (TTAB 1971). Neither is it necessary for opposers to
demonstrate that their use of EL POLLO RICO is exclusive or substantially
exclusive in the United States, as Section 2(d) merely requires showing of a valid
“mark or trade name previously used in the United States by another and not
abandoned.” 15 U.S.C. § 1052(d). They need not demonstrate a degree of acquired
distinctiveness that would justify federal registration of their mark.
Having found that opposers have demonstrated proprietary rights in the
mark EL POLLO RICO, acquired prior to applicant’s filing date, we need not
address whether opposers can demonstrate their proprietary interest in the
separately registered mark POLLO RICO!, inasmuch as EL POLLO RICO is the
pleaded mark that more closely resembles the applicant’s mark.
Likelihood of Confusion
We consider next whether applicant’s mark is confusingly similar to opposers’
mark EL POLLO RICO under Trademark Act § 2(d). 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). In any
Opposition No. 91193544

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likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods and services at issue. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976). We will first address the parties’ services.
Applicant seeks to register its mark for “Restaurant services, specializing in
grilled chicken.” Opposers have shown that they use the mark EL POLLO RICO in
connection with restaurants that “are best characterized as fast, casual, quick-
service type restaurants which are targeted to members of the general public
seeking a quick and casual dining experience” and that its restaurants are “mainly
known for our savory flame-broiled chicken.”18 Opposers’ menus show that, aside
from “charcoal broiled chicken,” the only other items offered are characterized as
“side orders,” “drinks,” and “homemade desserts.”19 During discovery, opposers
elicited admissions from applicant to the effect that both parties’ restaurants are
“fast food restaurants” and “quick service restaurants” that sell chicken, beans, rice
and tortillas; and offer take-out service.20 To this extent, the parties’ services are
nearly identical, except for the distinction between applicant’s “grilled” chicken and
opposers’ “flame-broiled” or “charcoal broiled” chicken which, applicant points out,
is “cooked in rotisserie, an oven or broiler with a rotating spit.”21 Applicant also
points out that “Applicant’s chicken is Mexican cuisine, based upon the regional

18 Solano Jt. Aff. ¶¶ 14, 16.
19 Id., Exhibit D.
20 See opposers’ first notice of reliance, Exhibits E through I.
21 Applicant’s brief at 24.
Opposition No. 91193544

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cuisine in and around Monterrey, Mexico, contrasting with the Opposers’ Peruvian
cuisine,” and argues that “Few would confuse French style cooking with Italian
style cooking.”22 The record confirms that opposers’ restaurants are regarded as
“Peruvian chicken” restaurants. However, with respect to the scope of applicant’s
services, we must look to the recitation of services in the application, which contains
no limitation as to the type or ethnicity of cuisine, other than that the chicken is
“grilled.” Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). Overall, we find that the parties’ services are
highly similar in nature. This factor weighs in favor of a finding of likelihood of
confusion.
We next consider the similarity or dissimilarity of the marks at issue. We
consider the marks in their entireties in reaching our ultimate conclusion, but there
is nothing improper in giving more or less weight to a particular feature of a mark,
for rational reasons. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). Applicant’s mark consists of words and designs. It includes a
large blue triangle, within which is a representation of chicken wearing a western
hat. The words EL POLLO RICO appear in yellow lettering to the right of the
rectangle. Below all of these elements is a narrow red triangle, containing flame
designs and the wording :
POLLOS ASADOS AL CARBON

22 Id.
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GRILLED CHICKEN ON CHARCOAL.23

The largest graphic element in the mark is the word RICO; however, we note that it
is unified with the preceding words EL POLLO by virtue of the fact that all three
words are (unlike the other wording) presented in yellow lettering of similar style
and having an italic tilt (although in size the words EL POLLO are noticeably
smaller than RICO).
We find that the dominant portion of applicant’s mark is the wording EL
POLLO RICO. In the case of marks consisting of words and a design, the words are
normally given greater weight because they would be used by consumers to request
the goods or services. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012); In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB
1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also
Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798
(Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218
USPQ 390 (Fed. Cir. 1983). In addition, the wording EL POLLO RICO would most
likely be used in text in order to identify applicant’s services. See In re Viterra, 101
USPQ2d at 1911; In re Dakin’s Miniatures, Inc., 59 USPQ2d at 1596; CBS Inc. v.
Morrow, 708 F.2d 1579, 1582, 218 USPQ 198, 200 (Fed. Cir. 1983). We note that
applicant’s website displays the wording EL POLLO RICO independent of the
design elements of the mark, in phrases such as “Welcome to El Pollo Rico” and “In

23 GRILLED CHICKEN ON CHARCOAL is an English translation of the wording POLLOS
ASADOS AL CARBON. See Momin Deposition, Opposers' second notice of reliance, Exhibit
D.
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the year of 2010 opened the first franchise of El Pollo Rico in the city of
Houston….”24 The other wording in applicant’s mark is likely to be perceived as
descriptive matter identifying the nature of the food available in the restaurant; it
is also too voluminous to conveniently serve as a means of calling for the goods. We
note that applicant’s principal responded as follows in a discovery deposition:
Q. Now, when people call up – I mean, they’re going to
refer to either El Pollo Rico or Pollo Rico as opposed
to Pollo asados al carbon, correct?
A. Yes.25
The dominant portion of applicant’s mark consists of the entirety of opposers’
asserted mark. Likelihood of confusion has often been found where the entirety of
one mark is incorporated within another. See Coca-Cola Bottling Co. of Memphis,
Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105
(CCPA 1975) (BENGAL LANCER and BENGAL); Johnson Publishing Co. v.
International Development Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY DRUM
and EBONY); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (HEAD
START COSVETIC and HEAD START). The Wella Corp, v. California Concept
Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT
and CONCEPT; In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558
(CCPA 1972) (WEST POINT PEPPERELL and griffin design and WEST POINT).
Comparing applicant’s mark in its entirety with opposers’ mark, we find them

24 Opposers' second notice of reliance, Exhibit G (Momin Dep., Ex. 6).
25 Momin Deposition, Opposers' second notice of reliance, Exhibit E.
Opposition No. 91193544

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substantially similar, such that this du Pont factor weighs in favor of a finding of
likelihood of confusion.
Applicant argues with respect to trade channels for the parties’ services that
80% of applicant’s advertising is directed to the Spanish-speaking population and
that opposers appear to advertise only in English.26 Even assuming this to be true,
the 20% of applicant’s advertising that is directed to English-speakers would create
ample opportunity for overlap and potential confusion. In any event, since the
services identified in applicant’s application do not include any limitation as to
trade channels, we must presume that applicant’s services move in all channels of
trade normal for those services, and that they are available to all classes of
purchasers for those services. Octocom, 16 USPQ2d at 1787; Paula Payne Products
Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co.
v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); In re Linkvest
S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). We find that the factors of trade
channels and classes of customers favor a finding of likelihood of confusion.
Applicant has admitted that fast food is subject to impulse buying,27 but
argues that consumers of chicken are “knowledgeable as to the specific type of food
they are purchasing” and will not confuse Peruvian chicken with “grilled chicken
prepared in the true Mexican style.”28 Again, we must refer to the services as
identified in the application, which does not limit applicant’s foods to Mexican style

26 Applicant’s brief at 25.
27 Opposers’ first notice of reliance, Exhibit J; applicant’s brief at 26.
28 Applicant’s brief at 26.
Opposition No. 91193544

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cooking. Overall, we find that the factor of the conditions under which sales are
made and the buyers to whom they are made favors a finding of likelihood of
confusion.
With respect to the number of similar marks in use on similar services, the
record contains reference only to applicant’s mark (which is junior to opposers’
mark) and a mark apparently in use in Spain.29 There is no evidence to show that
the source-identifying power of opposers’ mark has been weakened by widespread
use of similar marks by third parties in the United States. This factor favors a
finding of likelihood of confusion.
Opposers argue that their mark is well known nationwide, and that they
have loyal customers who reside far from Virginia and Maryland, including parts of
Texas, where applicant’s restaurants are located. In light of this contention, the
absence of any instances of actual confusion over the course of approximately four
years of concurrent use, which has been admitted by opposers,30 weighs against a
finding of likelihood of confusion.
We find the factor of potential for future confusion to be neutral. The
operations of both parties are currently quite limited geographically and at present
they are quite remote from each other. There is no evidence to indicate that either
party is poised for a substantial geographic expansion. The risk of substantial
amounts of confusion in the immediate future appears to be very limited.

29 Solano Jt. Aff. Exhibit CCC; applicant’s Exhibit F.
30 Opposers’ brief at 24.
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Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find that applicant’s mark, as
used in connection with applicant’s services, so closely resembles opposers’ earlier
used mark EL POLLO RICO, in which it has demonstrated proprietary rights, as to
be likely to cause confusion, mistake or deception as to the source of applicant’s
services.
Decision: The opposition is sustained and registration of the applicant’s
mark is refused.