Fresh Mexi-Cali Grill

Trademark Trial and Appeal Board

Mar 14, 2006

No. 78187142 (T.T.A.B. Mar. 14, 2006)

Mailed:
March 14, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fresh Mexi-Cali Grill, Inc.
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Serial No. 78187142
_______

Laurence P. Colton and Nigamnarayan Acharya of Technoprop
Colton LLC for Fresh Mexi-Cali Grill, Inc.

Ellen Awrich, Trademark Examining Attorney, Law Office 116
(M. L. Hershkowitz, Managing Attorney).
_______

Before Seeherman, Hohein and Walters, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Fresh Mexi-Cali Grill, Inc. has appealed from the
final refusal of the Trademark Examining Attorney to
register FRESH MEXI-CALI GRILL and design, as shown below,
and with the words FRESH and GRILL disclaimed, for
“restaurant and catering services.”1

1 Application Serial No. 78187142, filed November 20, 2002, and
asserting first use anywhere and first use in commerce on
September 30, 2002.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78187142
2

Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark so resembles the mark MEXICALI GRILL, with
GRILL disclaimed, previously registered for “restaurant
services,”2 that it is likely to cause confusion or mistake
or to deceive.
Applicant and the Examining Attorney have filed
briefs. Applicant did not submit a reply brief, nor did it
request an oral hearing.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,

2 Registration No. 2359227, issued June 20, 2000.

Ser No. 78187142
3
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). Thus, although applicant has criticized
the Examining Attorney for concentrating on these factors,
they are certainly critical to the likelihood of
determination analysis.
We turn first to the factor of the similarity of the
services. The cited registration is for restaurant
services, while applicant seeks to register its mark for
restaurant and catering services. The services, thus, are
identical in part, and otherwise closely related.
Applicant itself “acknowledges (as the Examiner points out)
that Applicant’s and Registrant’s services are similar.”
Brief, p. 7. Because the services are in part identical,
they must be deemed to be offered in the same channels of
trade to the same classes of consumers. In the case of the
identified services, the consumers are the general public.
Thus, the du Pont factors of similarity of services and
channels of trade favor a finding of likelihood of
confusion.
Ser No. 78187142
4
We turn next to a consideration of the marks, noting
that “when marks would appear on virtually identical goods
or services, the degree of similarity necessary to support
a conclusion of likely confusion declines.” Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
We must first address applicant’s contentions that the
cited mark “is highly descriptive of Registrant’s services,”
brief, p. 17; that “the term ‘mexicali grill’ is descriptive
of significant attributes of restaurant services,” brief, p.
14; and “consumers may even be looking at ‘mexicali grill’
as a substitute genus for restaurants that serve food from
the mexicali region or of the mexicali style, that is, the
Mexico-California border.” Brief, p. 15. Applicant’s
assertions that the registrant’s mark is merely descriptive
or even generic cannot be considered. The mark is
registered, and therefore must be accorded the presumptions
of validity accorded by Section 7 of the Trademark Act.3 As
Section 7(b) states:
A certificate of registration of a mark
upon the principal register provided by
this Act shall be prima facie evidence
of the validity of the registered mark
and of the registration of the mark, of

3 If applicant had wished to attack the registration, the
appropriate procedure would have been to file a petition to
cancel it.
Ser No. 78187142
5
the registrant’s ownership of the mark,
and of the registrant’s exclusive right
to use the registered mark in commerce
on or in connection with the goods or
services specified in the certificate,
subject to any conditions or limitations
stated in the certificate.

Moreover, because the cited mark is MEXICALI GRILL,
and GRILL has been disclaimed, if we were to treat MEXICALI
as descriptive we would, in effect, be treating the entire
mark as descriptive, and this would violate the Section
7(b) protections accorded to this registration. Thus, we
do not accept applicant’s argument that the term MEXICALI
in the cited mark should be given little significance in
our comparison of the marks.
Applicant is correct that, in determining the issue of
likelihood of confusion, marks must be compared in their
entireties, although there is nothing improper in stating
that, for rational reasons, more or less weight has been
given to a particular feature of a mark. See, In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). We disagree, however, with applicant’s
position that the word FRESH, the hyphen in MEXI-CALI and
the design element in applicant’s marks are the elements
that should be accorded greater weight. Although in some
cases we have found that the first part of a mark is likely
to be impressed on the mind of a purchaser, we do not think
Ser No. 78187142
6
that is the case with the word FRESH in applicant’s mark.
Because of the special form in which the mark is depicted,
the words MEXI-CALI stand out visually as the dominant
portion of the mark. Because the words FRESH and GRILL are
shown in the same type font, but one that is different from
the font for MEXI-CALI, and because these words are
descriptive of applicant’s services (and have been
disclaimed), as the words are depicted in the mark they
appear as a single descriptive phrase, FRESH GRILL,
advising prospective customers that applicant offers a
grill with fresh or made-to-order food.
As for the design element in applicant’s mark, as we
have frequently stated, if one of the marks comprises both
a word and a design, then the word is normally accorded
greater weight because it would be used by purchasers to
request the goods or services. In re Appetito Provisions
Co., 3 USPQ2d 1553 (TTAB 1987). In fact, the Court has
pointed out that "because restaurants are often recommended
by word of mouth and referred to orally, it is the word
portion of applicant's mark which is more likely to be
impressed on the consumer's memory." In re Dixie
Restaurants Inc., supra at 41 USPQ2d 1534, quoting Giant
Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565,
1570, 218 USPQ 390, 395 (Fed. Cir. 1983). In this case,
Ser No. 78187142
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the design element of applicant’s mark is an abstract
design that appears as a background showcasing the word
elements of the mark; thus, it is appropriate to consider
the word rather than the design portion of the mark as
dominant.
With respect to the hyphen, consumers are not likely
to note or remember that applicant’s mark has a hyphen,
while the registrant’s mark does not. The impression of
MEXICALI in both marks is the same.
Accordingly, when the marks are compared in their
entireties, and giving more weight to the dominant
elements, we find that the marks are similar in appearance.
They are also highly similar in pronunciation. The only
difference is the additional word FRESH in applicant’s
mark, but since this word merely describes a characteristic
of applicant’s services, the difference in pronunciation
due to this word, just as the difference in appearance,
does not serve to distinguish the marks.4 In terms of
connotation, too, the marks are virtually identical.

4 Applicant cites ConAgra, Inc. v. Saavedra, 4, USPQ2d 1245
(TTAB 1987), as analogous to the present situation. That case
involved TAPATIO for hot sauce and PATIO for Mexican style food.
However, although applicant has cited the case as part of its
argument that the marks are dissimilar in sound, in that case the
Board found that there was a similarity in pronunciation of those
marks, but that it was outweighed by the differences in
connotation. As discussed infra, here the connotations of the
marks are virtually the same.
Ser No. 78187142
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Although the additional word FRESH advises that applicant
uses fresh ingredients and/or serves made-to-order food,
consumers will view this as informational matter which does
not change the overall connotation of the words MEXI-CALI
GRILL. This situation is very different from those cited
by applicant in which the addition of a word to an existing
mark can create a mark with a very different connotation.
Compare Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432
F.2d 1400, 167 USPQ 529 (CCPA 1970), in which PEAK PERIOD
for personal deodorants was found not to be likely to cause
confusion with PEAK for dentifrice. This situation is also
different from the cases cited in applicant’s response to
the first Office action, in which identical marks were
found to have different connotations because of the goods
on which they were used. Here, of course, the services are
identical.
The marks also convey essentially identical commercial
impressions. Because of the descriptive significance of
FRESH, consumers familiar with the mark MEXICALI GRILL for
restaurant services are likely to believe, upon seeing the
applied-for mark, that it is a variation of the
registrant’s mark in which the FRESH characteristic of the
services is being touted.
Ser No. 78187142
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We therefore find that the du Pont factor of the
similarity of the marks favors a finding of likelihood of
confusion.
In reaching this conclusion, we have considered the
strength of the registrant’s mark. Although, as we
previously stated, we may not accept applicant’s
characterization of the mark as descriptive, we can
consider whether it is suggestive. In that connection, we
have reviewed the listing submitted by applicant of a
search summary obtained from the USPTO TESS system which
lists applications and registrations by their mark and
serial number or registration number. We point out that
submitting a mere listing of marks and registration/serial
numbers is not the proper way to make registrations of
record. Rather, copies of the official records themselves,
or the electronic equivalent thereof, that is, printouts of
the registrations (and not just selected information such
as mark and registration number), taken from the USPTO
electronic records, must be submitted. See In re Volvo
Cars of North America Inc., 46 USPQ2d 1455, n. 2 (TTAB
1998). However, because applicant submitted this list in
response to the first Office action, and the Examining
Attorney did not advise applicant of this fact, but, quite
Ser No. 78187142
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the contrary, discussed the registrations, we have
considered the list for whatever probative value it may
have.5 The list, which the Examining Attorney has
acknowledged as being marks for restaurant services,
consists of seven third-party registrations for marks which
include the term MEXICALI, as well as the cited
registration. (The third-party applications have no
probative value, as they are evidence only of the fact that
an application was filed.) Of the seven registrations, we
note that four have been cancelled since the time applicant
prepared the list. Two registrations, both for JULIO
TUMATOES’S MEXICALI BORDER CAFE, are owned by the same
entity, and the third is for MEXICALI BLUES RESTAURANT &
BAR. Third-party registrations may be used in the same
manner as dictionary definitions, that is, to show the
meaning of a mark or a portion of a mark. See Mead Johnson
& Company v. Peter Eckes, 195 USPQ 187 (TTAB 1977).
However, we cannot conclude from this limited evidence that
MEXICALI has a suggestive meaning that would entitle the
registered mark MEXICALI GRILL to a narrow scope of
protection. Moreover, even if the scope of protection were
limited, it would still extend to prevent the registration

5 Accordingly, the Examining Attorney’s objection to the third-
party registrations, raised in her appeal brief, is denied.
Ser No. 78187142
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of applicant’s highly similar mark FRESH MEXI-CALI GRILL
and design for identical services.
Applicant has also argued that the du Pont factor of
the number and nature of similar marks in use on similar
goods or services favors applicant’s position. To that
end, applicant has made of record the search summaries
retrieved by searches using the Yahoo! and Google search
engines. These consist of limited excerpts that appear on
a search results page, rather than submissions from the
actual websites that are referenced in the excerpt. The
Board has previously stated that a search result summary
from a search engine, such as Yahoo! or Google, which shows
use of a phrase as key words by the search engine, is of
limited probative value. See TBMP § 1208.03 and cases
cited therein.
We have carefully examined all of the excerpts on the
various search results pages submitted by applicant. We
note, first of all, that there are many duplicate listings.
In fact, applicant appears to have submitted the results of
Yahoo! searches of “mexicali grill” and “mexi-cali grill,”
which searches retrieved the identical “hits.” Many of the
submissions do not indicate any goods or services, or the
listing is so truncated that they have no value in showing
use of MEXICALI marks for restaurant services. See, for
Ser No. 78187142
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example, a heading for “Mexicali-Grill” with only a url,
and no further information; and “Girls at MexiCali
Grill.jpg” with a reference to a Web Page Creator. Other
listings show only that the two words MEXICALI and GRILL
appear separately in the excerpt, e.g., “Tacos Mexicali”
[heading], “Pontiac Grill”; “A ring of Mexicali Nachos
surrounding a bed of rice which is topped with your… of
fresh ground sirloin and grill it to perfection…”;
“Mexicali Kabobs. INGREDIENTS. 1 pkg … Prepare barbecue
grill.” There are even listings in Italian with a url
having the IT top level domain, which we infer relates to
an establishment in Italy.
This is not to say that there are no references to
restaurants using “MEXICALI GRILL” in their names. One
restaurant, “Deadhead George’s Mexicali Grill,” which is
described as being in the Florida Keys, appears in several
“hits.” Another excerpt, headed “Tulsa Dining Guide for
Restaurants,” lists “Mexicali Border Cafe.” There are
several excerpts that list “Mexicali Grill,” but these may
well be references to the registrant. We note that the
address listed in registrant’s registration is on Santa
Cruz Avenue in Los Gatos, California, and several of the
excerpts listing a “Mexicali Grill” indicate that it is in
California. Moreover, it may well be that all of the
Ser No. 78187142
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“Mexicali Grill” restaurants listed in the search summaries
are the registrant’s establishments; certainly there is no
way for us to tell from the limited information that
applicant has provided that they are not. Even for those
excerpts that clearly show third-party usage of MEXICALI
marks, we have no way of knowing the extent of the
geographic area in which these restaurants operate, or the
exposure the marks have had.
In short, we cannot say, based on this record, that
“Mexicali Grill” marks have been so widely used that
consumers will distinguish among them based on the
additional word FRESH, a hyphen, and an abstract background
design.
Accordingly, we find that this du Pont factor is
neutral.
The next du Pont factor we consider is that of the
conditions under which and buyers to whom sales are made,
i.e. "impulse" vs. careful, sophisticated purchasing.
Although applicant acknowledges that the ordinary consumers
for restaurant services are the general public, rather
than, for example, those in a technical field who would
have a particular expertise, applicant argues that because
consumers encounter so many marks for restaurants during
their lifetimes, they “have developed a degree of
Ser No. 78187142
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sophistication” and “have learned to distinguish even
subtle distinctions between marks as applied in the field
of restaurant services.” Brief, p. 13. Applicant also
asserts that “customers of Applicant are knowledgeable
consumers and specifically choose Applicant’s restaurants,”
and that customers of registrant are also assumed to be
knowledgeable consumers.
We are not persuaded by these arguments. The
identification of “restaurant services” encompasses all
types of restaurants. Therefore, we must assume that
registrant’s and applicant’s restaurants may be inexpensive
restaurants which consumers might impulsively decide to
stop in to get a quick bite to eat. In such circumstances,
they are not likely to exercise great care in examining the
service mark, or engage in an extended analysis of service
marks to determine whether marks as similar as applicant’s
and registrant’s identify two different sources of the
restaurant services, or are variant marks indicating a
single source. As a result, consumers who are familiar
with the registrant’s MEXICALI GRILL for restaurant
services are likely to simply assume, upon seeing FRESH
MEXI-CALI GRILL and design for the same services, that it
is another mark identifying restaurant services emanating
Ser No. 78187142
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from the same source. Accordingly, we find that this du
Pont factor favors a finding of likelihood of confusion.
The final factors that applicant has addressed are
those dealing with evidence of actual confusion. There is
no evidence of actual confusion, but we find this of little
probative value in this case, since we have not had an
opportunity to hear from the registrant; there is no
evidence regarding the extent to which either applicant or
registrant uses its mark, and thus we are not able to
determine whether there has been an opportunity for
confusion to occur; and evidence of actual confusion is
notoriously difficult to obtain. We therefore deem these
factors to be neutral.
Neither the Examining Attorney nor applicant has
discussed any other du Pont factors. We note, though, that
with respect to the factor as to potential extent for
confusion, because restaurant services are offered to all
members of the public, the potential for confusion is
substantial.
After reviewing the evidence on all the relevant du
Pont factors, we find that applicant’s use of its applied-
for mark in connection with restaurant services is likely
to cause confusion with the mark MEXICALI GRILL for
restaurant services.
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Decision: The refusal of registration is affirmed.