Precedential No. 13: In Issue-Packed 2(d) Decision, TTAB Cancels "LA INDITA MICHOACANA" Registration for Ice Cream

After wading through several flavorful evidentiary issues, the Board granted this petition for cancellation of a registration for the mark LA INDITA MICHOACANA & Design (shown immediately below), for "ice cream and fruit products, namely fruit bars," on the ground of likelihood of confusion with Petitioner's marks LA MICHOACANA, LA MICHOACANA NATURAL, and LA MICHOACANA NATURAL & Design, and its "Indian girl" design, registered and/or used for the same goods. Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana, Inc., 98 USPQ2d 1921 (TTAB 2011) [precedential]. [Reconsideration denied here].


Tried by consent: In its final brief, Petitioner claimed rights in the mark LA MICHOACANA and in the "Indian girl" design shown below. Registrant objected on the ground that these marks were not pleaded. The question, then, was whether the issue of likelihood of confusion with regard to these marks had been tried by consent.


The Board reviewed the testimony and evidence and ruled that this issue was tried by consent because Registrant was made aware of Petitioner's intention to rely on these marks and Registrant did not object.

Not tried by consent: Respondent did not plead as an affirmative defense its ownership of a registration for its own Indian girl design. The Board ruled that this issue was not tried by consent because Petitioner was not put on notice "that the testimony and evidence would be used by respondent to tack the prior use of respondent's Indian girl to prove priority or, in the alternative, to assert the prior registration defense."

Family of Marks: In its brief, Petitioner for the first time claimed a family of marks. Respondent objected. The Board refused to consider the issue because it was neither pleaded nor tried.

Spanish documents? Petitioner introduced several Spanish document during its depositions. Respondent did not object. The Board, however, "conducts its proceeding in English," and it therefore ruled that these documents have no probative value.

Untimely objections: Petitioner did not discuss any evidentiary objections in its main brief, waiting until its reply brief to bring them up. Too late, said the Board. Objections must be maintained in a party's opening brief. Otherwise, the other party would have no chance to respond.


Priority: A crucial issue was priority of use. Petitioner proved prior use of its marks in the USA by way of license, established primarily by oral testimony. Respondent argued that the testimony was either unsubstantiated or inconsistent with the documentary evidence. The Board, however, found the testimony to be "clear, convincing, consistent and uncontradicted."

Ownership: Respondent also argued that Petitioner did not prove ownership of its marks, but the Board was satisfied that Petitioner owns its marks in Mexico and has licensed the use of the marks in the USA, and that use of the marks inures to Petitioner's benefit. The fact that the trademark registrations in Mexico are in the name of an individual, Marco Malfavon, did not "negate" the Board's finding regarding ownership: "the testimony of the witnesses demonstrates that petitioner is a family-owned and run business and ... there is a unity of control."

Likelihood of confusion: The Board found the "Indian girl" portion of Respondent's mark to be "remarkably similar" to Petitioner's design. As to the word marks, LA INDITA MICHOACANA means "the Indian girl or woman from Michoacan." There was no evidence that Michoacana has any meaning in the United States vis-a-vis ice cream. The Board found that Respondent's mark is similar to Petitioner's marks LA MICHOACANA, LA MICHOACANA NATURAL, and MICHOACANA NATURAL & design.

Finally, Petitioner had pleaded another mark, LA FLOR DE MICHOACAN & design, but the Board found that the differences between that mark and Registrant's mark outweighed any similarities.

Respondent pointed to the lack of proof of actual confusion, but the Board observed that such lack of evidence is meaningful only if there has been an appreciable opportunity for confusion. Here the marks of the respective parties are used in discrete geographical regions, and so the lack of actual confusion evidence is not probative.

TTABlog note: The above is a highly condensed summary of the 42-page opinion. Why was it deemed precedential? I think because of the discussion of whether certain issues had been tried by consent.

Text Copyright John L. Welch 2010.