Tequila Cuervo La Rojena, S.A. de C.V.v.Cuervo Media LLC

Trademark Trial and Appeal Board

Apr 19, 2013

No. 91201323 (T.T.A.B. Apr. 19, 2013)

Mailed: 4/19/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Tequila Cuervo La Rojena, S.A. de C.V.
v.
Cuervo Media LLC
_____

Opposition No. 91201323
to application Serial No. 85009614
filed on 04/08/10
_____

Lawrence E. Abelman and Erica R. Halstead of Abelman Frayne &
Schwab for Tequila Cuervo La Rojena, S.A. de C.V.

Joseph Mullin for Cuervo Media LLC.
______

Before Quinn, Holtzman and Wolfson,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Cuervo Media LLC (“applicant”) filed, on April 8, 2010, an
application to register the mark shown below

for “on-line retail store services featuring proprietary digital
art prints, literary/art books and electronic software” in
International Class 35. Applicant disclaimed the word “Media.”
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opp. No. 91201323

2

The application indicates that “[t]he English translation of
CUERVO in the mark is CROW.”
Tequila Cuervo La Rojena, S.A. de C.V. (“opposer”) filed a
notice of opposition under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used
in connection with applicant’s services, so resembles opposer’s
previously used and registered CUERVO marks for a variety of
goods (including tequila) and services, as to be likely to cause
confusion. Opposer also alleged that applicant’s registration
will dilute the distinctive quality of opposer’s CUERVO marks
under Section 43(c)(1), 15 U.S.C. § 1125(c)(1).
Applicant, in its answer, denied the salient allegations in
the notice of opposition.
Before turning to the substantive merits of this
proceeding, we first consider the evidentiary disputes between
the parties. The Board earlier deferred consideration of the
respective motions to strike until final hearing. As will be
clear from our rulings herein, opposer’s improper introduction
of evidence at trial has a significant impact on the merits of
this case. Throughout its arguments on the evidentiary dispute,
as well as in its briefs at final hearing, opposer repeats the
point that if its evidence is disregarded, it will be
“unnecessarily prejudiced.” To put it bluntly, opposer only has
itself to blame for the shortcomings of its case due to the
Opp. No. 91201323

3

improper introduction of evidence and any prejudice resulting
therefrom.
Applicant filed a motion to strike certain documents relied
upon by opposer in its notices of reliance. Opposer, in its
response to the motion, cured the deficiencies related to
certain of the objected-to documents, namely the internet
evidence identified in the notices of reliance (TTABVUE Nos. 12
and 15). Applicant, in its brief on the case, noted same, and
renewed its objections to only the remaining items listed in its
motion to strike. We will consider the remaining objections in
order.
Applicant objects to opposer’s 38 print advertisements
(TTABVUE Nos. 5-11) because opposer provided neither the
identity of the printed publications wherein the advertisements
appeared nor the specific dates on which they were published.
Opposer contends that its notice of reliance clearly identifies
each advertisement and the corresponding year in which it was
published.
Trademark Rule 2.122(e) provides that certain types of
printed publications may be introduced into evidence in an inter
partes proceeding by notice of reliance. Specifically, printed
publications, such as books or periodicals, available to the
general public in libraries or of general circulation among
members of the public or that segment of the public which is
Opp. No. 91201323

4

relevant under an issue in a proceeding, if the publication is
competent evidence and relevant to an issue in the proceeding,
may be introduced in evidence by filing a notice of reliance
thereon during the testimony period of the offering party.
Pursuant to the rule the notice must specify the printed
publication, including information sufficient to identify the
source and the date of the publication.
With respect to all but two of the documents (among those
shown in TTABVUE No. 7), opposer failed to indicate the name of
any of the printed publications, providing only the year of
publication of the advertisements. Thus, there was no way for
applicant to verify the authenticity of the remaining 36
documents. The information supplied by opposer falls short of
the requirements of Trademark Rule 2.122(e). Original
Appalachian Artworks Inc. v. Streeter, 3 USPQ2d 1717, 1717 n.3
(TTAB 1987) (printed advertisement not identified with the
specificity required to be considered a printed publication).
See Wagner Electric Corp. v. Raygo Wagner, Inc., 192 USPQ 33, 36
n.10 (TTAB 1976).
Accordingly, except for two of the documents, the
advertisements at TTABVUE Nos. 5-11 are stricken.
Applicant next moves to strike two flowcharts (TTABVUE No.
13) which, according to opposer, track the dollars opposer spent
on trade and media advertising in 2010 and 2011. Opposer
Opp. No. 91201323

5

asserts in the notice that the documents are relevant to “show
that opposer devotes a large amount of time and money in the
advertising of its CUERVO and JOSE CUERVO marks.” Applicant
contends that the flowcharts are not proper subject matter for a
notice of reliance; opposer simply states in response that each
chart reflects the date it was created.
Certain types of evidence need not be introduced in
connection with the testimony of a witness but may instead be
made of record by filing the materials with the Board under a
notice of reliance. Trademark Rule 2.122(e). Clearly, the
flowcharts summarizing opposer’s advertising expenditures are
not the type of evidence that may be submitted under a notice of
reliance.
Accordingly, the documents at TTABVUE No. 13 are stricken.
Applicant objects to a congratulatory notice placed by a
third party, The Jaydor Corporation, which, according to
opposer, was published in the Mexican newspaper Reformer
(TTABVUE No. 14). The notice makes reference to opposer’s long
and successful history as a producer of tequila. Opposer, in
its notice, states that it “is relevant to the issue of fame of
the CUERVO and JOSE CUERVO marks.” Applicant points out that
opposer failed to identify the date of the publication. Opposer
does not address this particular objection in its brief in
response to the motion.
Opp. No. 91201323

6

As in the case with the discussion above, opposer failed to
sufficiently identify the printed publication, namely the date
of publication. Thus, there was no way for applicant to
independently verify the authenticity thereof. This deficiency
was easily curable (as evidenced by opposer’s cure of
deficiencies relating to certain other documents), yet opposer
did not even respond to the objection, let alone do anything to
cure the deficiency.
Accordingly, the document at TTABVUE No. 14 is stricken.
Last, but certainly not least, applicant moves to strike
the declaration of Ricardo Juarez Avina, an officer of opposer,
relied upon by opposer (TTABVUE Nos. 19 (redacted) and 20
(confidential)). Opposer, in the notice of reliance, states
that the declaration establishes long term, continuous and prior
use of its marks, as well as the fame of its marks. Applicant
succinctly points out that the parties did not agree to the
submission of testimony by affidavit or declaration and, thus,
the declaration must be stricken. Opposer responds to
applicant’s motion to strike the declaration testimony as
follows:
Opposer disagrees that the Declaration fails
to meet the requirements of proper subject
matter for submission by Notice of Reliance.
Applicant failed to serve Interrogatories or
Document Requests on Opposer; consequently,
Opposer was unable to provide information
relevant to the proceeding herein by
Opp. No. 91201323

7

submitting its responses to discovery
requests. In order to put such information
into evidence, Opposer had no choice but to
submit a Declaration by a duly appointed
Officer. The information included in the
declaration is relevant to show ownership of
the marks which proves Opposer has standing.
Additionally, the Declaration is relevant to
show the fame of the CUERVO and JOSE CUERVO
marks, as well as the long standing and
continuous use of the marks. To strike the
Declaration as evidence would unnecessarily
prejudice Opposer.

Trademark Rule 2.123(b) provides, in relevant part, that
testimony may be submitted by affidavit, but only by written
agreement of the parties. See Calypso Technology Inc. v.
Calypso Capital Management LP, 100 USPQ2d 1213, 1216-19 (TTAB
2011); and Tri-Star Marketing LLC v. Nino Franco Spumanti
S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007). Here, simply put,
there is no such agreement between the parties. Moreover, we
are, quite frankly, at a loss to understand opposer’s rationale
for its attempted introduction of the declaration; the fact that
applicant did not take discovery hardly justifies opposer’s
attempt at circumventing the rules of practice. Although a
defendant may be ill-advised to do nothing at trial in a Board
proceeding, a defendant is not obligated to take any action at
trial. Original Appalachian Artworks Inc. v. Streeter, 3 USPQ2d
at 1717. And, we would point out that, in any event, a party
may not rely on its own discovery responses except in limited
circumstances. See Trademark Rule 2.120(j)(5).
Opp. No. 91201323

8

In sum, the documents relied upon in opposer’s notices of
reliance shown at TTABVUE Nos. 5-11 (except for two of the
advertisements), and at TTABVUE Nos. 13, 14, 19 and 20 are
stricken and have not been considered in reaching our decision.
We next turn to opposer’s motion to strike applicant’s
notice of reliance in its entirety. In the notice applicant
lists four items and states that it “believes these documents
would be relevant to its defense against allegations made by
Opposer in its Notice of Reliance.” Opposer essentially bases
its objections on applicant’s failure “to include either a
description of, or an explanation for, the relevance of any of
the four items [in applicant’s notice of reliance].” Opposer
also objects to one of the items on grounds of competency and
relevancy. In responding to the motion, applicant sets forth
the relevancy of three of the four documents in greater detail.
The United States Census Bureau survey (No. 1), and the
file history excerpts of one of opposer’s applications (No. 3)
and one of opposer’s registrations (No. 4) are official records
and, thus, are proper subjects for introduction by way of a
notice of reliance. The internet evidence (No. 2) likewise is
proper subject matter, and has been sufficiently identified.
We also note that applicant, by way of its response to
opposer’s motion to strike, more fully explained the relevancy
of Nos. 1, 2 and 3. However, applicant offered no such
Opp. No. 91201323

9

explanation regarding No. 4, and the objection is sustained due
to the failure to sufficiently explain the relevance of No. 4.
Further, opposer’s objections to No. 3 on grounds of competency
and relevancy are overruled.
In sum, No. 4 in applicant’s notice of reliance is
stricken, and no consideration has been given thereto. The
remaining evidence has been considered and accorded whatever
probative value it merits.1
Based on our evidentiary rulings, the record includes the
pleadings; the file of the opposed application; applicant’s
responses to opposer’s discovery requests, excerpts of internet
websites (including those of opposer and applicant), a Wikipedia
excerpt, and official records, including status and title copies
of two registrations and one application owned by opposer (see
discussion, infra), all introduced by way of opposer’s notices
of reliance; and official records and internet evidence relied
upon by applicant in its notice of reliance. Both parties filed
briefs.2

1 We hasten to add, however, that even if all of applicant’s evidence
were stricken, the lack of any evidence on applicant’s behalf would
not impact the merits of this proceeding because opposer, having the
burden of proof, has not sustained its burden.
2 To state the obvious, much of opposer’s brief is based on evidence
that has been stricken from the record. Factual statements made in a
party’s brief on the case can be given no consideration unless they
are supported by evidence properly introduced at trial. Thus, we have
not considered any of opposer’s factual statements based on evidence
that is not of record. See, e.g., Saul Zaentz Co. v. Bumb, 95 USPQ2d
1723, 1725 n.7 (TTAB 2010).
Opp. No. 91201323

10

We first consider opposer’s standing to bring this
opposition against the involved application. Opposer pleaded,
in its notice of opposition, ownership of “numerous marks
containing the term CUERVO for various goods and services,” and
set forth a “sampling” of the marks, making specific reference
to two registrations and three applications for various goods
and services. In its briefs at final hearing, opposer made
reference to dozens of registrations and applications which it
allegedly owns, stating that the Board “should be cognizant of
the overwhelming number of CUERVO marks owned by Opposer when
considering the evidence before it.” (Brief, p. 10, n.2).
At trial, however, opposer introduced status and title
copies of just the two pleaded registrations and one of the
pleaded applications. A check of Office records reveals that
one of the registrations was cancelled on October 12, 2012 for
failure to file a Section 8 affidavit of continued use
(Registration No. 3015291 for the mark CUERVO for “patio
umbrellas”); and that the application was abandoned on October
16, 2012 for failure to file a statement of use or for an
extension of time (Application Serial No. 77552320 for the mark
CUERVO for “tequila”). When a registration (or application)
owned by a party has been properly made of record in an inter
partes proceeding, and the status of the registration (or
application) changes between the time it was made of record and
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12

Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999); and Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982).
In view of opposer’s ownership of this valid and subsisting
registration for its mark JOSE CUERVO and design, opposer’s
priority is not in issue with respect to the goods identified in
the registration, namely tequila. King Candy, Inc. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
The record is devoid of any probative evidence that would
establish common law rights in any other mark.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). Opposer must establish that there is a likelihood
of confusion by a preponderance of the evidence. In any
likelihood of confusion analysis, however, 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
(CCPA 1976). These factors, and the other relevant du Pont
factors in the proceeding now before us, are discussed below.
Opp. No. 91201323

13

We begin with the du Pont factor of fame. Fame of the
prior mark plays a dominant role in likelihood of confusion
cases featuring a famous mark. Bose Corp. v. QSC Audio Products
Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc.
v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000);
and Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963
F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Because of the
extreme deference accorded to a famous mark in terms of the wide
latitude of legal protection it receives, and the dominant role
fame plays in the likelihood of confusion analysis, it is the
duty of the party asserting fame to clearly prove it. Lacoste
Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009);
and Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007). A clear showing of fame is also
critical, of course, to a dilution claim. See Coach Services
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1724-25 (Fed. Cir. 2012) (“dilution fame requires a more
stringent showing” and “dilution fame is difficult to prove”).
As noted earlier, opposer’s declaration, which sets forth
facts relating to opposer’s use and fame of its marks, is not of
record (along with several other items highlighted by opposer in
its briefs). The remaining evidence upon which opposer relies
to show fame, and the only evidence properly of record that we
have considered on this point, has serious flaws. Opposer
Opp. No. 91201323

14

relies on the information on its own website and on Wikipedia
regarding the long use and alleged fame of opposer’s marks.4
Printed publications made of record by notice of reliance are
admissible and probative only for what they show on their face,
not for the truth of the matters contained therein, unless a
competent witness has testified to the truth of such matters.
Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112,
1117 n.7 (TTAB 2009). The same constraint applies to internet
evidence, no more so than to Wikipedia, given the inherent
unreliability of such evidence. See Straughter v. Raymond, 102
USPQ2d 1495, 1504 (C.D. Cal. 2011), citing Crispin v. Christian
Audigier, Inc., 717 F.Supp.2d 965, 976 n.19 (C.D. Cal. 2010)
(summarizing evidentiary dangers of relying upon Wikipedia as
authoritative evidence). Wikipedia is a collaborative website
that permits anyone to edit the entries. As a result, if such
evidence is submitted, it is crucial to corroborate the
information with evidence from reliable sources, as for example,
with a testimony deposition. Compare In re IP Carrier
Consulting Group, 84 USPQ2d 1028, 1032-33 (TTAB 2007) (more
permissive view in ex parte appeal proceedings).

4 The Wikipedia excerpt regarding opposer states that opposer has been
in business for over 200 years, and that it is the largest selling
brand of tequila worldwide, comprising a 19% market share. Opposer’s
website sets forth similar facts relating to opposer’s use.
Opp. No. 91201323

15

The items of evidence, whether considered individually or
collectively, fail to establish that opposer’s registered mark
is famous. Simply put, we are unwilling, in an inter partes
proceeding, to view this evidence as a substitute for testimony
or other probative evidence that clearly proves fame. As noted
above, given the nature of opposer’s submission, this evidence
may not be considered for the truth of the matters contained
therein. Accordingly, opposer has failed to establish that its
registered JOSE CUERVO mark is famous. This factor is neutral
in our analysis.
Turning next to a consideration of the marks, we must
compare opposer’s registered mark JOSE CUERVO and design to
applicant’s mark CUERVO MEDIA and design in their entireties as
to appearance, sound, connotation and commercial impression to
determine the similarity or dissimilarity between them.5 Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). The
test, under the first du Pont factor, 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 that
confusion as to the source of the goods or services offered

5 To reiterate, this is the only registered mark made of record by
opposer, and there is no probative evidence to establish common law
rights in any other mark.
Opp. No. 91201323

16

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); and Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The focus is
on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975).
In this case, opposer’s registered mark is dominated by the
name JOSE CUERVO, and applicant’s mark is dominated by the first
term, CUERVO. It is well settled that one feature of a mark may
be more significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There
is nothing improper in stating that, for rational reasons, more
or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of the
marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.”). Where both words and a design
comprise the mark (as is the case with the parties’ marks), then
the words are normally accorded greater weight because the words
are likely to make an impression upon purchasers, would be
Opp. No. 91201323

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remembered by them, and would be used by them to request the
goods and/or services. CBS, Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198, 200 (Fed. Cir. 1983) (“in a composite mark comprising
a design and words, the verbal portion of the mark is the one
most likely to indicate the origin of the goods to which it is
affixed”); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554
(TTAB 1987); and Kabushiki Kaisha Hattori Tokeiten v. Scuotto,
228 USPQ 461, 462 (TTAB 1985). See also Giant Food, Inc. v.
Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed.
Cir. 1983).
The literal portion of each mark dominates the mark. In
applicant’s mark, the name CUERVO is dominant over the word
MEDIA, both because MEDIA is descriptive and is properly
disclaimed, and MEDIA is in much smaller size letters relative
to the name CUERVO. Further, this first portion of the mark,
CUERVO, is the one most likely to be impressed upon a
purchaser’s mind. See Presto Prods., Inc. v. Nice-Pak Prods.,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). Likewise, in
registrant’s mark, the literal portion JOSE CUERVO dominates.
Although the literal portions of the marks are similar, we
must, of course, compare the marks in their entireties. We note
that each mark includes the design of a crow or raven, which is
not surprising given the English translation of “cuervo.” We
Opp. No. 91201323

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find that the marks, when considered in their entireties, are
similar. This factor weighs in opposer’s favor.
The failure of opposer to prove fame (see supra) is rivaled
by its complete failure to show that its “tequila” is related in
any fashion to applicant’s “on-line retail store services
featuring proprietary digital art prints, literary/art books and
electronic software.” Opposer’s main brief on the case is
entirely silent as to the du Pont factor relating to the
similarity between the goods and services. Indeed, it is not
until the reply brief that opposer offers its take on this
factor, essentially arguing that the other factors warrant a
finding of likelihood of confusion:
A finding that goods or services are related
is a conclusion to be made after a full
analysis of the facts shows that there is a
likelihood of confusion as to source or
sponsorship due to the similarity of the
marks and other facts in the case. When
following this rule it should be held that
the goods of Applicant and Opposer are
“related.” First, there is a high degree of
similarity between the marks, and second,
Opposer’s mark is inherently distinctive and
famous, consequently, consumers are likely
to assume CUERVO MEDIA refers to goods
manufactured by, endorsed by, or somehow
affiliated with Opposer. Accordingly, the
parties’ goods must be considered to be
related. (emphasis in original) (Reply
Brief, p. 12).

It is not necessary that the respective goods and services
be competitive, or even that they move in the same channels of
Opp. No. 91201323

19

trade to support a holding of likelihood of confusion. It is
sufficient that the respective goods and services are related in
some manner, and/or that the conditions and activities
surrounding the marketing of the goods and services are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originated
from the same entity. In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991). The issue, of course, is not whether purchasers
would confuse the goods and services, but rather whether there
is a likelihood of confusion as to the source of the goods and
services. In re Rexel Inc., 223 USPQ 830 (TTAB 1984). When
comparing the goods and services, the respective identifications
in opposer’s registration and applicant’s application control
the analysis. In re Giovanni Food Co., 97 USPQ2d 1990, 1991
(TTAB 2011).
Any evidence relating to this factor is absent from the
record before us. We find no basis for concluding that the
goods and services are related, which is a failure of proof.
Given the apparent total dissimilarity between opposer’s goods
and applicant’s services as identified in the respective
registration and application, this du Pont factor weighs heavily
in applicant’s favor. See Pure Gold, Inc. v. Syntex (U.S.A.),
Inc., 739 F.2d 624, 222 USPQ 741, 743 (Fed. Cir. 1984), aff’g,
Opp. No. 91201323

20

221 USPQ 151, 154 (TTAB 1983); Nat’l Assoc. of Blue Shield Plans
v. The Standard Mattress Co., 478 F.2d 1253, 178 USPQ 153, 154-
55 (CCPA 1973); and Schenley Distillers, Inc. v. Gen. Cigar Co.,
427 F.2d 783, 166 USPQ 142, 144 (CCPA 1970).
We recognize that applicant, in its discovery responses,
disclosed that it was aware of opposer’s JOSE CUERVO mark prior
to the adoption of its mark CUERVO MEDIA. (Int. Response Nos. 8
and 18; Request for Admission Response No. 3). We also note
that an individual named Maria Cuervo designed and selected
applicant’s mark, and that the crow image in the mark is derived
from an image in her ancestral heraldic shield. (Int. Response
No. 3). There is no evidence to suggest that applicant adopted
its mark in bad faith, and applicant’s prior knowledge of
opposer’s mark, in and of itself, is of little probative value.
Cf. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1441-42 (TTAB
2012).
In sum, although the marks are similar, opposer failed to
introduce evidence to show that “tequila” bearing its JOSE
CUERVO and design mark and “on-line retail store services
featuring proprietary digital art prints, literary/art books and
electronic software” rendered under applicant’s mark CUERVO
MEDIA are marketed in a manner that would give rise to
confusion. Absent such evidence, the goods and services offered
under the marks are so dissimilar that source confusion is not
Opp. No. 91201323

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likely. As indicated above, opposer’s proofs fall woefully
short in establishing that its JOSE CUERVO and design mark is
famous, both for its likelihood of confusion and dilution
claims. This failure is critical to the outcome of the dilution
claim. Coach Services Inc. v. Triumph Learning LLC, 101 USPQ2d
at 1724-27.
Decision: The opposition is dismissed on the claims of
likelihood of confusion and dilution.