The USPTO refused registration of the mark TAMAL TAMAYO in the design form shown below, for “tamales,” finding the mark likely to cause confusion with the registered (Supplemental Registration) mark TAMAYO for “restaurant services.” On appeal, the USPTO and applicant agreed that TAMAYO is primarily merely a surname, and applicant argued that a mark registered on the Supplemental Register is weak and is entitled to only a narrow scope of protection. How do you think this came out? In re Productos Verdes Valle, S.A. de C.V., Serial No. 87110668 (July 25, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).
Supplemental Registration: The Board observed that most marks on the Supplemental Register reside there because they are descriptive, and “the weaker the mark on the fanciful to generic continuum, the less its ability to preclude registration of a similar mark under Section 2(d).” But there is no categorical rule that the USPTO may cite a Supplemental Registration only when the marks are substantially identical for substantially similar goods, or that a different test for likelihood of confusion should be applied. Nonetheless, the cited mark must be considered not inherently distinctive.
The Marks: The Board found TOMAYO to be the dominant portion of applicant’s mark, since it is the larger word in the mark and since the English translation of “tamal” is “tamale.” Therefore, TAMAL deserves little weight in the Section 2(d) analysis. Because TOMAYO is a surname, the source of applicant’s goods would be perceived as a person with the surname TOMAYO. The English translation of “tamal” is “tamale.” Consumers will perceive Registrant’s TAMAYO as a shortened version of TAMAL TOMAYO, referring to the same person. And so the Board concluded that the marks are similar in appearance, sound, connotation, and commercial impression.
The Goods and Services: To prove likely confusion between marks, a party must show something more than that similar or identical marks are used for food products and restaurant services. Jacobs v. Multifoods Corp., 212 USPQ 641, 642 (CCPA 1982). The Board has found the required “something more” in the following circumstances:
- Applicant’s mark made clear that its restaurant specialized in registrant’s type of goods (E.g., AZTECA MEXICAN RETAURANT confusable with AZTECA for tortillas).
- Registrant’s wines were sold in applicant’s restaurant (OPUS ONE).
- Registrant’s mark was very unique and strong (MUCKY DUCK mustard).
The examining attorney submitted excerpts from nine third-party websites using the same marks to identify restaurant services and packaged tamales. A news article described a restaurant that mailed food, including tamales, to remote customers.
The Board found, however, this evidence insufficient: the USPTO has to show something more than use of the same marks for tamales and restaurants services. Registrant’s restaurant name TAMAYO does not indicate at all that Registrant serves tamales. The cited mark is not “very unique” and “strong,” and in fact is registered on the Supplemental Register.
And so the Board concluded that the involved goods and services are not similar or related.
Conclusion: Even thought the goods and services are sometimes offered in the same channels of trade to some of the same customers, because the registered mark is not inherently distinctive and because the goods and services were not shown to be sufficiently related, the Board reversed the Section 2(d) refusal.
Disclaimer Requirement: The Board, however, affirmed the USPTO’s requirement that applicant disclaim the word TAMAL. Applicant claimed that TAMAL TAMAYO is a unitary phrase because consumers will perceive the TAMAL as the first name of the chef appearing in the drawing and thus that TAMAL TAMAYO is in essence a double entendre. The Board was not convinced.
“Tamal” is a generic name for applicant’s goods and Spanish is a modern language spoken by some 37.6 million U.S. residents. Thus “tamal” has a definite English translation that ordinary consumers familiar with Spanish will stop and translate. The name “Tamal” is rare in the United States and it is “unlikely that consumers will perceive “Tamal” as being the given name of the character featured in the drawing of the mark.” Therefore the applied-for mark does not create a double entendre, and TAMAL must be disclaimed.
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TTABlog comment: If the words TAMAL and TAMAYO were of the same size and typeface in applicant’s mark, would its double entendre argument have been better?