Tuesday, November 01, 2005

Dissimilarity of Marks, Evidentiary Mistakes Bring TTAB Dismissal of "SOY BUENO" Opposition

Opposer's failure to submit testimony and to introduce properly into evidence the registrations for two of its marks were significant factors in its failed opposition to registration of the mark SOY BUENO for tortillas. El Encanto, Inc. v. La Tortilla Factory Inc., Opposition No. 91159343 (October 20, 2005) [not citable]. El Encanto, Inc. d/b/a Bueno Foods owns registrations for the mark BUENO in block letter and design form, but it submitted only photocopies of the registrations and not status-and-title copies as required by Rule 2.122(d).

El Encanto did manage to get into evidence a third registration, for the word and design mark shown immediately above. [The registration includes a Section 2(f) claim regarding the word "bueno."] But it failed to introduce any testimony establishing priority for its BUENO marks. Instead it attempted to submit "testimony" by way of affidavit, to which Applicant successfully objected.

Thus the only issue before the Board was whether Applicant's mark SOY BUENO for tortillas so resembles the word and design mark shown above for tortillas, that confusion of source or sponsorship is likely.

Applicant El Encanto argued that tortillas "are bought by sophisticated purchasers who exercise a high degree of care," but the Board was not persuaded. Not only did Applicant fail to provide any evidentiary support for its contention, but "it is common knowledge that tortillas are inexpensive food items," often subject to impulse purchasing. The Board, as required, presumed that the parties' goods travel in all the normal channels of trade for goods of this type, and would be purchased by the same class of customers (ordinary consumers)

Nonetheless, the Board found that the marks "are so significantly different in sound, appearance, meaning, and commercial impression that there is no likelihood of confusion." The dominant feature of Opposer's mark is the word GRANDMA'S, since it is in "large, bold lettering, which stands out in sharp contrast to the wording FROM OUR FAMILY TO YOURS SINCE 1951 and BUENO in smaller non-distinct lettering." Purchasers are likely to refer to Opposer's goods by the term GRANDMA'S. As to meaning or connotation:

"applicant's mark translates as 'I am good,' and also as a play on the word 'soy,' the product from which applicant's tortillas will be made. Opposer's mark, on the other hand, due to the dominant word 'GRANDMA'S,' connotes tortillas from Grandma or Grandma's recipe."

The inclusion of the word "bueno" in each mark was an insufficient basis to find the marks similar, since the word is highly laudatory, as evidenced by Opposer's 2(f) claim as well as by third-party registration evidence.

The Board therefore dismissed the opposition.

Text Copyright John L. Welch 2005.


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