Tuesday, August 07, 2007

Finding Restaurant Services and Rice Related, TTAB Sustains "EL MAGO" 2(d) Opposition

Relying on questionable evidence and a dubious interpretation of the case law, the Board sustained a Section 2(d) opposition to registration of the mark EL MAGO for restaurant services, finding the mark likely to be confused with the identical mark registered for rice and rice mixes. Applicant Susana Romero-Nunez neither offered evidence nor filed a brief, and so the Board was seemingly determined to rule in Opposer Riviana's favor. Riviana Foods Inc. v. Romero-Nunez Opposition No. 91167098 (July 24, 2007) [not precedential].

Applicant had one strike against her because the marks are identical, a factor that "heavily favors opposer." [BTW: "el mago" means "the magician" in some unidentified foreign language, perhaps Spanish]. And it is black-letter TTAB law that the greater the similarity of the marks, the lesser the degree of similarity between the goods/services necessary to support a likelihood of confusion finding. [Strike two.]

Because Applicant's recitation of services was not limited to any particular cuisine [TTABlog suggested recitation: restaurant services not including any rice dishes?], the Board assumed that Applicant's services "may include all types of restaurants." Similiarly, Opposer Riviana's goods may include "all types of rice."

"Thus, opposer's goods and applicant's services must be presumed to include rice and rice mixes on the one hand and restaurants on the other with the same theme or flavoring. [TTABlog comment: Huh?] *** As a result, patrons of applicant's restaurant upon encountering registrant's rice and rice mixes identified by the identical EL MAGO mark, would be likely to experience confusion as to the source of those goods or services."

The Board distinguished Jacobs v. Int'l Multifoods Corp. and its progeny, which hold that "to establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and restaurant services." [TTABlog comment: the Board ignored the "identical marks" part.]

Moreover, Opposer introduced "articles from printed publications "all discussing the growing trend among restaurants to license the use of their marks on food items." [TTABlog objection: Hearsay!!! Also, any mention of rice in these articles?] And then, the Board pointed to third-party registrations "in which the same mark is used to identify restaurant services and a variety of food products." [TABlog queries: how many? how many included rice? any proof as to the nature and extent of use of these third-party marks?].

Finally, the Board concluded that the involved goods must be presumed "to be marketed to the same class of consumers, i.e., the general public, through the same media outlets such as television, radio, internet, and printed advertisements." [TTABlog observation: By that reckoning, pretty much all goods and services are related].

Strike three! [Looked like ball four to me]. The Board sustained the opposition.

TTABlog further comments: Although the Board distinguished Jacobs on its facts, it failed to deal with In re Coors Brewing Co., 68 USPQ2d 1059 (Fed. Cir. 2003), wherein the CAFC reversed a Section 2(d) refusal to register the mark BLUE MOON & Design for beer in light of a registration for another BLUE MOON Design for restaurant services. In Coors, the CAFC reiterated the "something more" requirement, even when the marks are identical.

Here there was apparently no proof whatsoever that purchasers are accustomed to seeing restaurant services and rice offered under the same mark. The flimsy evidence relied on by the Board seems even flimsier than the evidence rejected by the CAFC in Coors. In fact, this case seems a lot like the ICEBERG cheese case of a few years ago (TTABlogged here), in which the Board reached the opposite conclusion.

I suspect, based on past experience and observation, that a major factor in the Board's ruling was this: Opposer did all the work in this case, while Applicant did nothing other than answer the Notice of Opposition.

TTABlog reader feedback: Magical rice video here.

Text Copyright John L. Welch 2007.


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