V & V Supremo Foods, Inc.v.Wisconsin Cheese Group, Inc.

Trademark Trial and Appeal Board

Feb 15, 2007

No. 92044301 (T.T.A.B. Feb. 15, 2007)

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.

Mailed:
February 15, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

V & V Supremo Foods, Inc.
v.
Wisconsin Cheese Group, Inc.
_____

Cancellation No. 92044301
_____

Jeffrey A. Handelman of Brinks Hofer Gilson & Lione for V &
V Supremo Foods, Inc.

Matthew P. Lewis of Maslon Edelman Borman & Brand, LLP for
Wisconsin Cheese Group, Inc.
_____

Before Seeherman, Hairston, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

V & V Supremo Foods, Inc. has petitioned to cancel U.S.
Trademark Registration No. 2,876,481, owned by Wisconsin
Cheese Group, Inc., for the mark QUESERIA CARIBE, in
standard character form, for “cheese”. The application for
the registration was filed on April 15, 2003. Respondent
claimed May 1, 1992 as the date of first use anywhere and
first use in commerce. The registration issued on August
24, 2004. Respondent disclaimed the exclusive right to use
Cancellation No. 92044301
2
“Caribe” and included the following translation: “The
English translation of ‘QUESERIA’ is ‘CHEESE SHOP’ and the
English translation of ‘CARIBE’ is ‘CARIBBEAN’.”
Petitioner brought this cancellation on the ground of
priority of use and likelihood of confusion, alleging that
it is in the business of selling cheese and other dairy
products in interstate commerce; that petitioner has
extensively and continuously used the mark DEL CARIBE for
cheese prior to respondent’s use of QUESERIA CARIBE; that
petitioner is the owner of U.S. Trademark Registration No.
2,020,442 for the mark DEL CARIBE, in standard character
format, for “cheese”;1 and that QUESERIA CARIBE, when used
in connection with cheese, so closely resembles DEL CARIBE
for cheese as to be likely to cause confusion, to cause
mistake, and to deceive.
Respondent denied the pertinent allegations of the
petition for cancellation. As an affirmative defense,
respondent asserted that the word “Caribe” is Spanish for
“Caribbean” which is merely descriptive or geographically
descriptive when used in connection with cheese.
Both parties filed briefs.

1 Registration No. 2,020,442, issued December 3, 1996: Sections
8 & 15 affidavit accepted and acknowledged. Petitioner included
the following translation: “The English translation of ‘DEL
CARIBE’ is ‘from the Caribbean’ or ‘of the Caribbean’.” The
registration contains no disclaimer.
Cancellation No. 92044301
3
The Record
By operation of the rules, the record includes the
pleadings and the QUESERIA CARIBE registration file. The
record also includes testimony and evidence introduced by
the parties.
A. Petitioner’s evidence.
Petitioner introduced the following testimony and
evidence in support of its case:
1. The testimony deposition of Gilberto Villasenor,
II, petitioner’s General Manager, with attached exhibits;
and,
2. Petitioner’s notice of reliance consisting of the
following documents:
a. Excerpts from the discovery deposition of
Michael Sigel, respondent’s Marketing
Director, with attached exhibits;

b. Status and title copy of Registration No.
2,020,442 for the mark DEL CARIBE;

c. Respondent’s interrogatory answers; and,

d. Respondent’s responses to certain requests
for admission.

B. Respondent’s evidence.

Respondent introduced the following testimony and
evidence in support of its case:
1. Testimony deposition of Michael Sigel with
attached exhibits; and,
Cancellation No. 92044301
4
2. Respondent’s notice of reliance consisting of the
following documents:
a. Petitioner’s interrogatory answers;

b. Petitioner’s responses to requests for
admission;

c. Status and title copy of Registration No.
2,876,481 for the mark QUESERIA CARIBE;2 and,

d. A copy of Registration No. 2,189,794 for the
mark DEL CARIBE and Design for fresh fruits
and vegetables registered in the name of
Caribe Food Corp., a Florida corporation.

Findings of Fact

Petitioner is an Illinois corporation that began doing
business in 1964.3 It manufactures and sells Hispanic lines
of food products, including cheeses, sour cream, and
sausage.4 Petitioner has been continuously using the mark
DEL CARIBE for queso blanco, a type of white cheese, since
1976.5 The English translation of “Del Caribe” is “from the
Caribbean” or “of the Caribbean.”6 DEL CARIBE cheese is
sold at deli counters and on an off-the-shelf basis in chain

2 It was unnecessary for respondent to submit a coy of its
registration. As noted previously, the registration file,
including the registration, is of record by operation of
Trademark Rule 2.122(b).
3 Villasenor Dep., p. 6.
4 Villasenor Dep., p. 9; Petitioner’s response to Interrogatory
No. 2.
5 Villasenor Dep., pp. 10 and 12; Petitioner’s response to
Interrogatory No. 5.
6 Villasenor Dep., p. 36 and Ex. 18; Petitioner’s response to
request for admission No. 4.
Cancellation No. 92044301
5
and independent grocery stores in numerous states.7 It is
also sold to restaurants.8 On August 18, 1995, petitioner
filed a trademark application to register DEL CARIBE for
cheese. The mark was registered on December 3, 1996. The
DEL CARIBE registration was over five years old when
petitioner filed the petition for cancellation against the
QUESERIA CARIBE registration.9
Respondent is a Wisconsin corporation that began doing
business in 1985.10 It primarily manufactures and sells
cheeses.11 Respondent began selling cheese under the mark
QUESERIA CARIBE on May 1, 1992.12 QUESERIA CARIBE cheese is
part of respondent’s Hispanic line of products.13 There are
two types of QUESERIA CARIBE cheese: queso blanco and queso
fresco.14 QUESERIA CARIBE queso blanco is a semi-soft white
cheese that fries well.15 QUESERIA CARIBE queso fresco is a
semi-soft white cheese that crumbles well.16 QUESERIA
CARIBE is a “control brand” that is only sold to Costco

7 Villasenor Dep., pp. 12-14; Petitioner’s response to
Interrogatory No. 5.
8 Villasenor Dep. p. 14.
9 Villasenor Dep., Ex. 18; petitioner’s notice of reliance.
10 Sigel Testimony Dep., p. 6.
11 Sigel Testimony Dep., p. 8; Sigel Discovery Dep., pp. 20-21.
12 Sigel Testimony Dep., p. 10.
13 Sigel Discovery Dep., pp. 42 and 55.
14 Sigel Discovery Dep. pp. 21-22.
15 Sigel Discovery Dep. p. 23.
16 Sigel Discovery Dep. p. 23.
Cancellation No. 92044301
6
stores.17 The English translation of “Queseria Caribe” is
“Caribbean cheese shop.”18

Petitioner’s Standing and Priority

Because petitioner has properly made its pleaded
registration of record, petitioner has established its
standing to cancel the respondent’s registration.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982).
Petitioner has established priority by proving
continuous use of its DEL CARIBE mark since 1976, well prior
to respondent’s first use in 1992 and the filing date of its
application in 2003.

Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) is based on analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on the likelihood of confusion issue. In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.

17 Sigel Testimony Dep. pp. 11-12; Sigel Discovery Dep., p. 23;
Respondent’s response to Interrogatory Nos. 1 and 3. A “control
brand” is a product that is sold to only one customer. Sigel
Testimony Dep., p. 11. In other words, it is an exclusive
private label brand.
18 Sigel Testimony Dep. p. 27; Sigel Discovery Dep., p. 26.
Cancellation No. 92044301
7
Cir. 2003); In re E. I. du Pont de Nemours and Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental
inquiry mandated by Section 2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods and differences in the marks”).

A. The goods of the parties are identical.
The issue of likelihood of confusion must be determined
based on an analysis of the marks as applied to the goods
recited in the respondent’s registration and the
petitioner’s registration. Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987); In re Dixie Restaurants, Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997).
Proceedings before the Board are concerned with
registrability and not use of a mark. Accordingly, the
identification of goods/services statement in the
registrations, not the goods/services actually used by the
parties, frames the issue. Cunningham v. Laser Golf Corp.,
supra 55 USPQ2d at 1846. In this case, both petitioner’s
DEL CARIBE registration and respondent’s QUESERIA CARIBE
Cancellation No. 92044301
8
registration are for cheese. Moreover, the evidence adduced
at trial indicates the marks are, in fact, used on the same
type of cheese (i.e., queso blanco or white cheese). The
identity of the goods is a factor that favors petitioner.
B. The goods of the parties move in the same channels of
trade and are sold to same classes of consumers.

It is well-settled that the issue of likelihood of
confusion between the registered marks of the petitioner and
the respondent must be determined on the basis of the goods
or services as they are identified in the involved
registrations, rather than on what any evidence may show as
to the actual nature of the products, their channels of
trade and/or classes of purchasers. Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987); In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). Because there are no restrictions as to
channels of trade in the description of goods in the
parties’ registrations, we must consider the respondent’s
cheese and the petitioner’s cheese to be sold in all of the
normal channels of trade and to all of the normal purchasers
for such goods. Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, supra; Toys R Us v. Lamps R Us, 219 USPQ 340,
343 (TTAB 1983). In other words, we consider respondent’s
cheese as being sold in chain and independent grocery stores
and petitioner’s cheese as being sold at warehouse stores
Cancellation No. 92044301
9
such as Costco. In addition, we consider the cheese to be
sold to the same classes of consumers, including ordinary
consumers. Accordingly, this is a factor that favors
petitioner.

C. The degree of consumer care.

Petitioner argues that because “both parties sell
relatively inexpensive cheese products to ordinary consumers
with no special training or expertise,” the likelihood of
confusion is increased because purchasers exercise less care
purchasing inexpensive cheese than for more costly products.
(Petitioner’s Brief, pp. 11-12). On the other hand,
respondent argues that petitioner has presented no evidence
regarding the degree of care used by consumers purchasing
cheese and that the evidence actually shows that the
consumers are not unsophisticated. For example, respondent
asserts that because consumers ask for petitioner’s cheese
by name,19 then such customers cannot be as unsophisticated
as petitioner suggests. In any event, respondent maintains
that because the marks are so different, even consumers who
do not exercise a high degree of care will not be confused
by the marks. (Respondent’s Brief, pp. 21-22).

19 Villasenor Dep., p. 29.
Cancellation No. 92044301
10
Petitioner’s cheese is sold in chain and local grocery
stores and respondent’s cheese is sold in Costco stores.20
These are mass-market type stores, rather than specialized
gourmet stores or cheese boutiques, and their cheese
products are sold off-the-shelf. The price for petitioner’s
cheese is $2.99 - $3.69 per pound.21 Because the parties
use their marks on the identical kind of cheese (i.e., queso
blanco), we must assume that respondent’s cheese can be sold
for similar prices.22 The cheese products are standard
grocery store products. The relative low cost of the cheese
and the fact that the cheese may be purchased on impulse are
factors that increase the likelihood of confusion. Recot
Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ 1894, 1899 (Fed.
Cir. 2000)(“When products are relatively low-priced and
subject to impulse buying, the risk of likelihood of
confusion is increased because purchasers of such products
are held to a lesser standard of purchasing care”)(citations
omitted). Therefore, the degree of consumer care is a
factor that favors petitioner.

20 Costco is a warehouse club store. Sigel Discovery Dep., p. 27.
In order to shop at Costco, one must purchase a membership.
Sigel Testimony Dep., p. 34; Sigel Discovery Dep., p. 27. Costco
features bigger packaging configurations than at standard grocery
stores. Sigel Testimony Dep., p. 33.
21 Villasenor Dep., Exhibits 27-28.
22 Mr. Sigel did not know the price at which consumers could
purchase respondent’s cheese. Sigel Discovery Dep., pp. 27-28.
Cancellation No. 92044301
11
D. The strength of petitioner’s mark and the number and
nature of similar marks in use on similar goods.

Petitioner argues that DEL CARIBE is a strong mark as
evidenced by petitioner’s extensive sales and promotional
efforts and, therefore, it is entitled to a broad scope of
protection. (Petitioner’s Brief, pp. 8-9). In support of
its argument, petitioner contends that it has been
continuously using the mark DEL CARIBE for cheese since
1976; and that since 1996, its sales have been extensive.23
However, petitioner has not provided any context in which to
place these raw sales figures (e.g., the percentage of the
market share). See Bose Corp. v. QSC Audio Products Inc.,
293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). For
example, in response to Interrogatory No. 5, petitioner
stated that it has sold its cheese in numerous states, but
we do not know how many states. Sales of X pounds of cheese
in Chicago are more significant than sales of X pounds
throughout the Midwest or throughout the entire nation. The
only conclusion that we can draw from the sales figures is
that petitioner has sold enough DEL CARIBE cheese to make it
an important product for petitioner.24

23 Villasenor Dep., Exhibit 19 (Confidential). Because petitioner
has designated its sales figures in terms of dollars and pounds
as confidential, we will refer to them only in the general terms
petitioner has used in its brief.
24 Villasenor Dep., p. 10.
Cancellation No. 92044301
12
Petitioner also contends that its promotional efforts
demonstrate that DEL CARIBE is a strong mark. Petitioner
promotes its DEL CARIBE cheese primarily by supplying
retailers with point-of-purchase marketing materials that
are prominently displayed in store windows, on walls, and on
shelves.25 In addition, Mr. Villasenor testified that
petitioner provides retailers with support for promoting DEL
CARIBE cheese in their advertising.26 The specifics of that
support were not discussed, but based on the context of the
testimony, we assume that it is some type of financial
support. Petitioner also conducts in-store
demonstrations.27
In arguing against petitioner’s position that DEL CARIB
is strong, respondent maintains that petitioner is actually
attempting to exclusively appropriate the use of the word
“Caribe”; that respondent has been using the word “Caribe”
as part of its mark for many years; and that the only issue
is whether QUESERIA CARIBE is likely to cause confusion with
DEL CARIBE. (Respondent’s Brief, pp. 18-19).
In addition, respondent contends that the word
“Caribe,” the common element of the two marks, is highly
suggestive, if not descriptive, of cheese, and that,
therefore, DEL CARIBE is actually a weak mark.

25 Villasenor Dep., p. 14.
26 Villasenor Dep., pp. 15-16.
27 Villasenor Dep., p. 15.
Cancellation No. 92044301
13
(Respondent’s Brief, pp. 13-15). In support of this
argument, respondent has introduced one third-party
registration (Registration No. 2,189,794 for the mark DEL
CARIBE and Design for “fresh fruit and vegetables”)28 and
evidence of third-party use of “Caribe.” The third-party
use includes the following web pages and photographs:
1. Caribe Food Corp. (www.caribefood.com) displaying
the DEL CARIBE and Design trademark referenced
above.29 The webpage states that “Caribe Food
Corp has been importing and distributing fruits
and vegetables for over 30 years in South
Florida”;

2. Caribe Food Development Inc. in Charlotte, North
Carolina
(www.ncagr.com/ncproducts/showsite.asp?ID=2131).30
According to the webpage, Caribe Food Development,
Inc. sells condiments, marinade, barbecue sauce,
and tropical tea. The products purportedly can be
found in various chain grocery stores. However,
there is no evidence that the word “Caribe” is
used as a part of a mark;

3. A photograph taken by Mr. Sigel of a product
called MALTA CARIBE;31

4. El Caribe Restaurant in Lenexa, Kansas
(www.kcrestaurantguide.com/El_caribe.htm).32 The
restaurant advertises “Coastal Seafood Cuisine
From Mexico and Cuban Cuisine.”;

5. A photograph taken by Mr. Sigel of the sign for
the Caribe Cafeteria located in Miami;33 and,

28 The registrant disclaimed the exclusive right to use “Del
Caribe” and included the following translation: “The English
translation of ‘Del Caribe’ is ‘From the Caribbean’.”
29 Sigel Testimony Dep., Exhibit 5.
30 Sigel Testimony Dep., Exhibit 6.
31 Sigel Testimony Dep., p. 18; Exhibit 7. The product is not
identified in Mr. Sigel’s testimony. MALTA CARIBE appears to be
a malt beverage.
32 Sigel Testimony Dep., Exhibit 8.
33 Sigel Testimony Dep., Exhibit 9.
Cancellation No. 92044301
14
6. Caribe Café located in the Mirage hotel in Las
Vegas (www.mirage.com/dining/causal_dining_caribe-
cafe.aspx). 34

At the outset, it is clear that respondent is not
attempting to attack petitioner’s registration of the mark
DEL CARIBE. Petitioner’s registration is more than five
years old and respondent has not filed a counterclaim to
cancel the registration. Thus, we regard respondent’s
arguments as going only to the scope of protection to be
accorded the mark DEL CARIBE, and specifically the amount of
protection to be accorded the element “Caribe” in terms of a
finding of likelihood of confusion when this is the only
element common to both marks.
In that regard, there is no question that DEL CARIBE
means “from the Caribbean” and that it suggests that the
cheese may come from the Caribbean. However, the term
“Caribbean” references a broad geographic region and when
applied to cheese, suggests a feeling of the tropics, rather
than describing a geographic origin of the goods.
Restatement (Third) of Unfair Competition §14, comment d
(1995)(if a locale is not known for a commercial activity or
the designation is so all-inclusive that it does not
indicate a specific location, the use may be understood as
arbitrary or suggestive); 2 McCarthy On Trademarks And
Unfair Competition §14.7 (4th ed. 2006)(if buyers do not

34 Sigel Testimony Dep., Exhibit 10.
Cancellation No. 92044301
15
care that the goods come from the place named - - and they
do not come from the place named - - then the mark is being
used in an arbitrary sense).
With reference to the evidence of third-party use,
where a term is commonly used on numerous types of goods and
services by different companies, it may be reasonable to
infer that purchasers have become conditioned to expect
different sources for related goods and services sold under
that common term. NCTA v. American Cinema Editors, 937 F2d
1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); Miles
Laboratories v. Naturally Vitamin Supplements, 1 uSPQ2d
1445, 1462 (TTAB 1987)(purchasers will not rely on the
common element as a means of distinguishing source).
However, in this case, the small number of relevant examples
of third-party use does not support a finding that the word
“Caribe” has been so commonly used that consumers have
become conditioned to encountering trademarks comprising, in
whole or in part, the word “Caribe” in general, let alone
for products similar to those at issue herein. The third-
party uses that are of record are not for cheese. NCTA v.
American Cinema Editors, 937 F.2d 1572, 19 UPSQ2d 1424, 1430
(Fed. Cir. 1991)(the relevant public does not need to be
defined any broader than purchasers of the products at issue
and the third-party uses other than the products at issue
may be irrelevant); Saab-Scania Aktiebolag v. Sparkomatic
Cancellation No. 92044301
16
Corp., 26 USPQ2d 1709, 1712-1713 (TTAB 1993); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1740
(TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June
5, 1992). El Caribe Restaurant, the Caribe Cafeteria, and
the Caribe Café are restaurants. The restaurants appear to
be local in nature with local exposure. Therefore, they do
not diminish the strength of the DEL CARIBE mark. MALTA
CARIBE is for a malt beverage, while Caribe Food
Development, Inc. is a trade name for a company that
purportedly sells condiments, marinade, barbecue sauce, and
tropical tea. It is not clear to what extent the public
would be exposed to this trade name use, or whether this
name would be familiar only to the retail stores that carry
the products this company distributes.
The most pertinent third-party use, although here again
the goods are different, is DEL CARIBE and Design for fruits
and vegetables. This use, however, is not sufficient for us
find that the consuming public is so used to “Caribe”
trademarks that they would look to the other elements in
petitioner’s and respondent’s marks when the marks are used
on identical goods. Thus, the evidence does not support
respondent’s argument that DEL CARIBE is a weak mark. Puma-
Sportsschuhfabriken Rudolf Dassler KG v. Garan, Inc., 224
USPQ 064, 1066 (TTAB 1984); Dubonnet Wine Corp. v.
Schneider, 218 USPQ 331, 335 (TTAB 1983). Accordingly,
Cancellation No. 92044301
17
respondent’s evidence of third-party use, while certainly
considered in our analysis, is entitled to limited weight.
In any event, even if DEL CARIBE is treated as a weak
mark, it is still entitled to protection against maintenance
of a registration for a confusingly similar mark for
identical goods. King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 UPSQ 108, 109 (CCPA 1974)
(“The likelihood of confusion is to be avoided, as much
between ‘weak’ marks as between ‘strong’ marks, or as
between a ‘weak’ and a ‘strong’ mark”). Therefore, we
regard this factor as favoring petitioner.

E. Actual confusion.
Respondent argues that QUESERIA CARIBE and DEL CARIBE
have coexisted for more than fourteen years without any
reported instances of actual confusion; and that the fact
that the two marks have existed for such a long time without
any instances of actual confusion is highly probative that
there is no likelihood of confusion. (Respondent’s Brief,
pp. 16-17).
The record in this case is too vague to support any
conclusions regarding the probative value that should be
accorded to the fourteen years of concurrent use without any
reported instances of confusion. It is difficult to assess
whether a reasonable opportunity for confusion could arise.
Cancellation No. 92044301
18
Respondent did not provide any evidence as to the sales
volume of QUESERIA CARIBE cheese,35 so we do not know
whether the products have coexisted in the marketplace.
There is nothing in the record to indicate whether the
parties sell their products in the same geographic trading
areas. Petitioner sells its cheese in numerous states, but
those states are not identified.36 While respondent sells
its products to Costco, respondent does not know where
Costco sells the products.37 Thus, we have no evidence that
the parties sell their cheese in the same geographic
markets.
Respondent does not advertise its QUESERIA CARIBE
cheese38 and petitioner promotes its DEL CARIBE cheese
through in-store promotions and retailer advertising.39
Thus, we cannot view the QUESERIA CARIBE and DEL CARIBE
cheeses as being so extensively promoted that we can assume
that consumers have been exposed to both marks.
In the absence of evidence that demonstrates that there
has been a reasonable opportunity for confusion to have
actually occurred (e.g., the areas of use, the extent of the
use of the marks, etc.), this likelihood of confusion factor

35 Respondent’s response to Interrogatory No. 7.
36 Petitioner’s response to Interrogatory No. 5.
37 Sigel Discovery Dep., pp. 26-27 (there are eight Costco
regions; QUESERIA CARIBE is sold in some of the regions; but Mr.
Sigel does not know how many regions).
38 Sigel Discovery Dep., pp. 35-36.
39 Villasenor Dep., pp. 14-16.
Cancellation No. 92044301
19
does not carry any weight. Nina Ricci S.A.R.L. V. E.T.F.
Enterprises, Inc., 12 USPQ2d 1901, 1903 (TTAB 1989); Red
Carpet Corp. v. Johnstown American Enterprises Inc., 7
USPQ2d 1404, 1406-1407 (TTAB 1988).

F. The similarity or dissimilarity of the marks.
We now turn to the du Pont 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 and Co., supra.
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., supra at 1741.
Additionally, we are mindful that where, as here, the
marks are applied to identical products, the degree of
similarity necessary to support a conclusion of likelihood
of confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 UPSQ2d 1698, 1701
(Fed. Cir. 1992) (finding CENTURY LIFE OF AMERICA for
insurance underwriting services likely to cause confusion
Cancellation No. 92044301
20
with CENTURY 21 for insurance brokerage services); Centraz
Industries Inc. v. Spartan Chemical Co., 77 USPQ2d 1698,
1700 (TTAB 2006)(finding iSHINE likely to cause confusion
with ICE SHINE when both marks are applied to floor-
refinishing preparations).
Petitioner argues that the marks are similar because
the word “Caribe” is featured as the dominant part of both
marks. As shown below on respondent’s labels,40 the word
“Queseria” appears in substantially smaller type than the
word “Caribe.”

Petitioner also contends that both marks have a similar
meaning: petitioner’s mark means “from the Caribbean” and
respondent’s mark means “Caribbean cheese shop.” Finally,
petitioner asserts that the marks are phonetically similar.
(Petitioner’s Brief, pp. 9-11).
Respondent argues that the “marks do not look alike,
sound alike, or create similar impressions in the mind of

40 Sigel Discovery Dep., Exhibits 3 and 4.
Cancellation No. 92044301
21
the consumer” because when the marks are compared in their
entireties, “the marks are entirely different.” In
particular, respondent asserts that the marks have different
meanings (QUESERIA CARIBE means “the Caribbean cheese shop”
while DEL CARIBE means “from the Caribbean”); the marks are
phonetically distinct; and when viewed in actual use, the
marks look different because they have different color
schemes, different fonts, and create different impressions.
(Respondent’s Brief, pp. 10-13).
Respondent asserts that the common portion of the
marks, the word “Caribe,” is descriptive because it
indicates a particular type of food (i.e., Caribbean food).
Respondent contends that consumers will give less weight to
the descriptive term “Caribe” and will look to the other
portions of the marks to identify and distinguish source.
(Respondent’s Brief, pp. 13-15).
Finally, respondent argues that the word “Queseria” is
the dominant portion of QUESERIA CARIBE because it is the
first part of the mark and because it is the part of the
mark that distinguishes respondent’s mark from all other
products using the descriptive term “Caribe.” (Respondent’s
Brief, pp. 19-20).
When we compare the two marks in their entireties,
giving appropriate weight to all of their features, we find
that the marks, while obviously not identical, are similar,
Cancellation No. 92044301
22
and that the similarities in the marks outweigh their
differences.
As for appearance and sound, the marks are similar
because they share the word “Caribe” as a common element.
Respondent’s argument that in actual use the marks look
different is unavailing. Since both marks are presented in
typed or standard character form, the marks are not limited
to any specific display and, in particular, they are not
limited to the manner in which the marks are currently being
used. The marks may be displayed in the same style, color
scheme, font, etc., thereby increasing the visual similarity
of the two marks. Therefore, it is irrelevant that the
display of the marks in actual use is different. Cunningham
v. Laser Golf Corp., supra at 55 USPQ2d at 1846.
While in certain circumstances it is permissible to
accord greater weight to one element of a mark than another
in making a determination of likelihood of confusion, we do
not think that the word “Queseria” in respondent’s mark
should be accorded greater weight than the word “Caribe.”
First, the display of QUESERIA CARIBE in actual use belies
respondent’s argument that “Queseria” is the dominant
portion of its mark. Based on respondent’s use, we think
that it is “Caribe” which is more likely to be noted and
remembered by consumers.
Cancellation No. 92044301
23
Second, as indicated above, there is no basis in this
record to conclude that the word “Caribe” is descriptive or
geographically descriptive when used in connection with
cheese.
Finally, the word “Queseria” is suggestive of
respondent’s cheese in that Spanish-speaking purchasers will
view it as a laudatory term indicating that the cheese is
worthy of being sold in cheese shops. With respect to non-
Spanish speaking purchasers, “Queseria” may call to mind
cheese because of the familiarity with quesadillas or queso
(cheese). Accordingly, we cannot conclude that “Queseria”
is a distinguishing element of respondent’s mark.
The connotation and commercial impressions engendered
by the marks are similar in that both marks suggest a
Caribbean theme. DEL CARIBE means “from the Caribbean” and
QUESERIA CARIBE means “Caribbean cheese shop.” Although
there are differences in the specific translations of the
marks, the meanings do not need to be identical to be
confusingly similar. Slight differences in meaning are
unlikely to be noticed or remembered by consumers. Mohawk
Rubber Co. V. Mobiliner Tire Co., Inc., 217 USPQ 929, 932
(TTAB 1981) (MOHAWK and MOHICAN for tires are likely to
cause confusion); Hancock v. American Steel & Wire Co. of
New Jersey, 203 F.2d 737, 97 USPQ 332 (CCPA 1953)(CYCLONE
and TORNADO for fencing are likely to cause confusion).
Cancellation No. 92044301
24
In considering the commercial impression engendered by
the marks, it must be kept in mind that a side-by-side
comparison is not the proper test because consumers are not
exposed to the marks in that way. The proper emphasis is on
the recollection of the average customer, who normally
retains a general rather than a specific impression of the
marks. Spoons Restaurants Inc. v. Morrison Inc., supra.
Given the similar meanings of the marks, we find that the
commercial impression engendered by both marks also suggest
a Caribbean theme.
To be sure there are differences in the marks.
However, in considering the marks in their entireties, we
conclude that the similarities in appearance, sound,
meaning, and commercial impression outweigh the
dissimilarities.
After weighing all of the likelihood of confusion
factors present in this case, we find that QUESERIA CARIBE
for cheese so closely resembles DEL CARIBE for cheese as to
be likely to cause confusion, to cause mistake, and to
deceive. While this decision is not without doubt, the
doubt must be resolved in favor of the prior user. Koplin
v. Golf Players, Inc., 179 UPSQ 378, 381 (TTAB 1973);
Servicemaster Industries, Inc. v. Collman Industries, 173
USPQ 508, 510 (TTAB 1972).
Decision: The petition for cancellation is granted.