TTABlog Test: Is EL BURRO BORRACHO Confusable WIth EL BURRO for Restaurant Services?

El Burro, Inc. petitioned to cancel a registration for the mark EL BURRO BORRACHO, claiming priority and likelihood of confusion with its registered mark EL BURRO, both for restaurant services. Well, the marks are awfully close and the services identical, so this looks like a no-brainer, right? What do you think? El Burro, Inc. v. Knuckle Sandwich LLC, Cancellation No. 92075933 (May 26, 2023) [not precedential] (Opinion by Judge Frances S. Wolfson).

The filing date of the application that matured into Petitioner’s EL BURRO registration (February 11, 2011) preceded the September 9, 2014 filing date of the application that matured into Respondent’s registration as well as Respondent’s first use date, and so Petitioner had priority of use.

Although the services of the parties are identical, Respondent argued that the trade channels are different because each party would  offer its services only within its own establishment, and never “side-by-side.” The Board pointed out, however, that "[w]hether services would be offered “side-by-side” is not the test, but even if it were, there is no evidence to support this contention. Because Petitioner and Respondent offer identical services, we must presume that the services move through the same channels of trade and are sold to the same classes of purchasers."

Regarding classes of consumers, the evidence showed that each party’s restaurant is intended to appeal to the same classes of purchasers, namely members of the general public who enjoy Mexican-style cuisine. 

As to the marks, the Board concluded that, even though EL BURRO is the lead element in Respondent’s mark, it is not the dominant portion of the mark. "Consumers are as likely to recall the alliteration of BURRO BORRACHO and may equally remember these two words as they would the term EL BURRO."

As to connotation, the word “burracho” means “drunken” in Spanish. Petitioner’s mark connotes an ordinary donkey, while Respondent’s mark connotes "a whimsical, that is, a drunken donkey." "Nonetheless, both marks bring to mind the idea of this specific pack animal. The marks are thus similar in meaning. And because BORRACHO simply serves to modify the type of BURRO involved, the marks create a similar overall commercial impression." And so, the first DuPont factor favored the petitioner.

Turning to the strength of petitioner's mark, respondent contended that EL BURRO is “intrinsically weak” because it identifies a Mexican-style restaurant, and commercially weak because of the existence of eleven third-party vendors who use EL BURRO, alone or with other words, for Mexican-style restaurants: EL BURRO TACO SHOP, EL BURRO PICANTE, EL BURRO, EL BURRO VELOZ, EL BURRO LOCO (four times), EL BURRO POLLO, EL BURRO MEXICAN GRILL, and LOCO BURRO.

The Board found EL BURRO to be inherently strong. There was no evidence that the term suggests a Mexican restaurant, or any cuisine from a Spanish-speaking country. As to commercial strength, however, that was a different story.

After careful consideration of the evidence, we find that Petitioner has not shown its mark to be commercially strong. To the contrary, we find under DuPont factor six that Respondent has shown Petitioner’s EL BURRO mark to be commercially on the weaker side of the spectrum. We find the prevalence of these similar marks weighs strongly against a finding of likelihood of confusion.

The Board deemed the sixth DuPont factor to be dispositive: "The sixth DuPont factor thus outweighs the other factors that favor likelihood of confusion. In other words, the mark EL BURRO BURRACO [sic!] does not so resemble EL BURRO that when used in association with restaurant services within such a crowded field confusion, mistake, or deception is likely."

And so the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Is the evidence of eleven third-party uses sufficient when there was apparently no proof of the extent of use of the third-party marks?

Text Copyright John L. Welch 2023.