Productos Lacteos Tocumbo S.A. de C.V.v.Paleteria La Michoacana, Inc.

Trademark Trial and Appeal Board

Jul 13, 2011

No. 92047438re (T.T.A.B. Jul. 13, 2011)

Mailed:
July 13, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Productos Lacteos Tocumbo S.A. de C.V.

v.

Paleteria La Michoacana, Inc.
_____

Cancellation No. 92047438
_____

REQUEST FOR RECONSIDERATION

Stephen L. Anderson of Anderson & Associates for Productos
Lacteos Tocumbo S.A. de C.V.

Rosemary S. Tarlton of Morrison & Foerster LLP for Paleteria
La Michoacana, Inc.
_____

Before Walters, Bergsman and Ritchie,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

On June 17, 2011, respondent, Paleteria La Michoacana,
Inc. filed a request for reconsideration from the May 20,
2011 decision granting the petition for cancellation and
ordering Registration No. 3210304 to be cancelled. The
registration at issue is for the mark LA INDITA MICHOACANA
and design, shown below, for “ice cream and fruit products,
namely fruit bars,” in International Class 30.1

1 Issued February 20, 2007.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Cancellation No. 92047438
2

The pertinent ground for cancellation was likelihood of
confusion. Specifically, petitioner alleged that prior to
any use by respondent of its mark, petitioner and its
related company or licensees have used the marks LA
MICHOACANA NATURAL and design and LA FLOR DE MICHOACAN for,
inter alia, ice cream, fruit ice bars and retail store
services featuring ice cream and fruit ice bars and that
respondent’s mark so resembles petitioner’s marks as to be
likely to cause confusion. Furthermore, petitioner claimed
ownership of Registration No. 2830401 for the mark LA FLOR
DE MICHOACAN, in typed drawing form, for “ice cream,” in
Class 30.2 Also, petitioner claimed ownership of
application Serial No. 78954490 for the mark LA MICHOACANA
NATURAL and design, shown below, for the following goods and
services:
Cones for ice cream; flavored ices;
frozen yoghurt; fruit ice; fruit ice

2 Issued April 6, 2004; Sections 8 and 15 affidavits accepted and
acknowledged. Petitioner’s registration states that “[t]he
English translation for the word [sic] ‘LA FLOR DE MICHOACAN’ in
the mark is ‘The blossom of Michoacan.’”
Cancellation No. 92047438
3
bar; fruit ices; ice; ice candies; ice
cream; ice cream drinks; ice cream
mixes; ice cream powder; ice cubes; ice
milk bars; ice-cream cakes, in Class 30;
and

Retail shops featuring ice cream, fruit
bars, drinks and snacks; retail stores
featuring ice cream, fruit bars, drinks
and snacks, in Class 35.3

Finally, petitioner, in its brief, claimed rights to
the mark LA MICHOACANA and the mark comprising the design of
an Indian girl, shown below (hereinafter “petitioner’s
Indian girl”). In the May 20, 2011 decision, the Board
found that the issue of likelihood of confusion for these
two marks had been tried by implied consent.

In its request for reconsideration, respondent argued
that the Board made three erroneous findings of fact.
First, the petitioner claimed use of its marks in the United

3 Filed August 17, 2006. Petitioner disclaimed the exclusive
right to use the word “Natural.”
Cancellation No. 92047438
4
States through licensees; however, “there was no evidence of
the existence of quality control over use of its mark by
purported licensees with respect to [ice cream].”4 Second,
the evidence surrounding petitioner’s priority was
characterized by contradictions and inconsistencies.5
Finally, the Board erred in finding that petitioner had
established rights in the word MICHOACANA because it “is a
Spanish term referring to the region in Michoacán and the
style of ice cream produced there.”6
Despite respondent’s contention that it has not
reargued issues presented in its trial brief, that is
precisely what it does. Respondent is essentially
disagreeing with our findings of fact and has written a
brief in opposition to the May 20, 2011 decision. For that
reason alone we may deny respondent’s request for
reconsideration. Nevertheless, for the sake of
completeness, we address below respondent’s arguments.
A. Whether petitioner’s licenses had the requisite quality
control?

Respondent contends that because petitioner failed to
offer any admissible evidence that it exercised any quality
control over its licensees, the Board erred in finding that
petitioner had proven priority of use. We disagree. The

4 Request for reconsideration, p. 3.
5 Id.
6 Id.
Cancellation No. 92047438
5
testimony of the witnesses demonstrates that petitioner is a
family-owned and run business and that there is a unity of
control. Marco Antonio Andrade Malfavón (hereinafter “Marco
Malfavón”) is a director of petitioner. Jorge Andrade
Malfavón (hereinafter “Jorge Malfavón”) is a director of
petitioner, an officer of petitioner’s licensee El
Michoacana Natural, Inc., and the brother of Marco Malfavón.
At the same time that petitioner licensed the marks to El
Michoacana Natural, Inc., it also licensed those marks to
Rigoberto Fernandez.7 Mr. Fernandez is also an officer of
El Michoacana Natural, Inc.8 In 2001, El Michoacana
Natural, Inc. sold various products for manufacturing ice
cream to Rigoberto Fernandez on behalf of petitioner.9
Petitioner’s quality control is further corroborated by the
testimony that the licensees bought ingredients and supplies
from petitioner. Mr. Fernandez identified an October 28,
2003 invoice from petitioner featuring the mark LA
MICHOACANA NATURAL and design for products used to make ice
cream, such as plastics, bags, cans, the sticks, “equipment
so I can get some juices, bags, blender and the lids.”10
Q. Have you also obtained a number of
other products like we’ve seen

7 Marco Malfavón Dep., pp. 34-39, question Nos. 96-110 and
Exhibit 13; Rigoberto Fernandez Dep., pp. 8-10.
8 Rigoberto Fernandez Dep., p. 6.
9 Jorge Malfavón Dep., pp. 18-19.
10 Rigoberto Fernandez Dep., pp. 10-11, Exhibit 14. Marco
Malfavón also identified this exhibit (Marco Malfavón Dep., pp.
40-41, question No. 112, Exhibit 14).
Cancellation No. 92047438
6
before earlier today from
[petitioner] for the purpose of
advertising and promoting the brand
La Flor de Michoacan?

A. From [petitioner] was flavors, all
the materials that I need for
making the ice cream bars, ice
cream, juices, equipment.11

Petitioner also provides uniforms.12
Finally, we note that in its trial brief, respondent
referenced the license agreements which respondent
characterized as purporting “to require the licensee to sell
the products with the same quality as the ones made by the
licensor, and to achieve the highest quality of foods safety
and hygiene.”13 While respondent argues that petitioner
failed to submit any evidence regarding its exercise quality
control, respondent does not point to any evidence that
demonstrates a failure on the part of the licensees to meet
the requirements to provide products and services of
acceptable quality. Thus, there is no evidence that
petitioner’s quality control was ineffectual or nonexistent.

11 Rigoberto Fernandez Dep., p. 21.
12 Rigoberto Fernandez Dep., p. 26.
13 Respondent’s trial brief, p. 20. In the May 20, 2011, we held
that because the licenses were in Spanish without English
translations, they had no probative value. However, because
respondent did not raise any objections to the testimony
regarding the documents and treated them as being of record, we
considered the testimony of the witnesses regarding the
documents.
Cancellation No. 92047438
7
In view of the foregoing, we find that respondent
failed to show that the Board erroneously found that
petitioner’s licenses are invalid.
B. Whether petitioner’s testimony regarding priority was
characterized by contradictions and inconsistencies?

Respondent contends that “the Board erred in finding
that Petitioner’s contradictory, inconsistent, and
unsupported oral testimony sufficiently established that
Petitioner had prior rights in petitioner’s Girl Design and
Petitioner’s Michoacana Marks.”14 Respondent identified the
following purported contradictions and inconsistencies:
1. Neither Mr. Fernandez nor Mr. Malfavón recalled
ever paying any royalties or other consideration to
petitioner;
2. Mr. Fernandez did not understand the license
because he does not speak Spanish;
3. Neither licensee could provide estimates of sales
and revenues for products sold under the licensed marks;
4. The earliest-issued license for Mr. Fernandez to
sell ice cream dates from April 2003, more that two years
after Mr. Fernandez testified that he began manufacturing
petitioner’s licensed products;

14 Request for reconsideration, p. 6.
Cancellation No. 92047438
8
5. The undated photographs of the licensee’s
purported use of petitioner’s marks do not support use of
the petitioner’s marks dating back to 2001.15
As indicated in the May 20, 2011 decision at pages 28-
29, the testimony of petitioner’s witnesses regarding the
first use of petitioner’s marks as of 2001 was clear,
convincing, consistent and uncontradicted. In view of the
close relationship between petitioner and the licensees, the
facts that the witnesses could not recall paying any
royalties, could not estimate the sales and revenues for the
licensed products, or that Mr. Fernandez did not understand
the license because he does not speak Spanish indicate that
petitioner and its licensees view the written licenses as
“legal” formalities. That petitioner has not enforced all
the terms of the license does not invalidate the existence
of the license and the clear, consistent and uncontradicted
testimony that petitioner began use of the marks through its
licensees in 2001.
Assuming Mr. Fernandez failed to get a Florida license
to manufacture ice cream until after he had been
manufacturing ice cream for two years, determining whether
the use of petitioner’s mark is lawful involves two
questions: (1) whether a court or government agency having
competent jurisdiction under the statute involved has

15 Id. at pp. 8-10.
Cancellation No. 92047438
9
previously determined that party is not in compliance with
the relevant statute; or (2) whether there is a per se
violation of a statute regulating the sale of a party's
goods. Automedix Inc. v. Artivent Corp., 95 USPQ2d 1976,
1984 (TTAB 2010); General Mills Inc. v. Healthy Valley
Foods, 24 USPQ 1270, 1273 (TTAB 1992). In this case, there
has been no final determination of noncompliance by a court
regarding the manufacture of ice cream by Mr. Fernandez.
Thus, respondent is left with demonstrating that the pre-
2003 activities of Mr. Fernandez were per se violations of
Florida law.
[I]t is incumbent upon the party
charging that the use was unlawful to
demonstrate by clear and convincing
evidence more than that the use in
question was not in compliance with
applicable law. Such party must prove
also that the non-compliance was
material, that is, was of such gravity
and significance that the usage must be
considered unlawful — so tainted that,
as a matter of law, it could create no
trademark rights — warranting
cancellation of the registration of the
mark involved.

General Mills Inc. v. Healthy Valley Foods, 24 USPQ2d at
1274. Furthermore, “there must be some nexus between the
use of the mark and the alleged violation before the
unlawfulness of a shipment can be said to result in the
invalidity of a registration.” Id. citing Satinine Societa
v. P.A.B. Produits, 209 USPQ 958, 967 (TTAB 1981). In this
regard, we find that respondent failed to show that there
Cancellation No. 92047438
10
was a per se violation of any Florida law. Respondent did
not submit a copy of the Florida statute requiring Mr.
Fernandez to obtain a license before manufacturing ice cream
so we cannot analyze the affect of the failure by Mr.
Fernandez to obtain the license.16 Moreover, respondent
failed to prove that the failure of Mr. Fernandez to obtain
a license was so significant that the use of the trademarks
were unlawful.
Finally, the undated photographs of the licensee’s
purported use of petitioner’s marks were introduced into
evidence as representative of the use of the marks since
2001. The probative value of the testimony was to
illustrate of how petitioner’s licensee’s used petitioner’s
marks since 2001. We did not make our finding that
petitioner used its marks as of 2001 based solely on the
undated photographs.
In view of the foregoing, we find that respondent
failed to show that the Board erroneously ignored
inconsistent and contradictory statements by petitioner’s
witnesses regarding petitioner’s first use of its marks.

16 In respondent’s trial brief, p. 40 n. 23, respondent explained
that “FLA. STAT. § 503.041 requires that any frozen dessert plant
that manufactures frozen desserts ‘must hold a valid license.’”
(Emphasis in the original). “A failure to obtain a license
constitutes a misdemeanor of the second degree. FLA. STAT.
§ 503.071.”
Cancellation No. 92047438
11
C. Whether “Michoacana” is merely descriptive and/or
primarily geographically descriptive of ice cream?

Respondent contends that “[i]n the context of ice cream
products, the term MICHOACANA is merely descriptive and/or
primarily geographically descriptive and thus is only
protectable upon a showing of secondary meaning.”17
Mr. Gutierrez testified that while he
lived in Mexico and before moving to the
United States in 1986, he saw “La
Michoacana” used on the front of ice
cream shops (I.G. TD, 10:2-5; 10:8-24;
11:6-14), and the words were used in
arrays of different colors and different
lettering, with some used with different
versions of an Indian girl (I.G. TD,
10:2-5; 10:8-11:14.) He also testified
that he saw the ice cream being made in
the shops and those shops were in states
other than Michoacan. (I.G. TD, 11:12-
19.) …

Ms. Gutierrez testified that when she
was a girl living in Mexico and before
she moved to the United States in 1999,
she saw ice cream parlors making ice
cream on the premises throughout
different cities with different owners
that had a “La Michoacana” sign. (P.G.
TD, 13:6-16; 13:22-14:1.) … “some of
them would have a little girl.” (P.G.
TD; 14:6-8; 14:14-22; see also, 85:13-
86:2.) …

It is apparent that in Mexico, no one
party has exclusive rights to either “La
Michoacana” or use of an Indian girl in
connection with ice cream. Rather, as
Ms. Gutierrez testified, “I know there’s
a state in Mexico call Michoacan” and
“[t]he style of paleta with a lot of
fruit, its supposed to be a tradition or

17 Request for reconsideration, p. 11.
Cancellation No. 92047438
12
something that was created in
Michoacan.” (P.G. TD, 69:3-8.).18

Respondent also relies on the testimony of Marco
Malfavón who testified regarding petitioner’s adoption and
use of the mark LA MICHOACANA and LA MICHOACANA NATURAL in
Mexico.
LA MICHOACANA is the trademark which
have been working for decades, and
arises under which we come from the
State of Michoacan. Hence, the idea to
register a trademark using the NATURAL
element to show that are products are
made from natural fruits. Under this
trademark LA MICHOACAN NATURAL we have
marketed and distributed products such
as dairy products, “paleta” and
comestible ice creams and water.19

While both Ignacio and Patricia Gutierrez testified
that LA MICHOACANA is commonly used as the name for ice
cream stores in Mexico, neither provided any further
testimony as how that might relate to its use in the United
States. Although Ms. Gutierrez said that the “paleta” (a
fruit bar) “was supposed to be a tradition or something that
was created in Michoacan,”20 she did not explain whether
that was known in the United States.
In the May 20, 2011 decision, we acknowledged that to
analyze the word marks, we must first determine the meaning
of the word “Michoacana.” Michoacán is a state in west-

18 Respondent’s trial brief, pp. 29-30.
19 M. Malfavón testimony upon written questions, No. 53.
20 Patricia Gutierrez Dep., p. 69.
Cancellation No. 92047438
13
central Mexico.21 The term “La Michoacana” means “the woman
from Michoacán.”22 “La Michoacana” or “the woman from
Michoacán” suggests that the product may originate in
Michoacán, but is not merely descriptive or primarily
geographically descriptive.
This finding is corroborated by the three third-party
registrations with the word “Michoacana” or
“Michoacan” listed below introduced by respondent through
its notice of reliance.
1. Registration No. 1552163 for the mark LA
MICHOACANA for tortillas. The translation statement in the
registration provides that “[t]he English translation of the
words ‘La Michoacana’ in the mark is “A woman from the
Michoacan region of Mexico.” Registrant did not disclaim
the word “Michoacan” and registration is on the Principal
Register with no claim of acquired distinctiveness.
2. Registration No. 3623346 for the mark EL SABOR DE
MICHOACAN for ice cream and sherbet. The translation
statement in the registration provides that “[t]he English
translation of the words ‘El Sabor de Michocan’ in the mark

21 Encyclopedia Britannica (2011). The Board may take judicial
notice of information in encyclopdias. B.V.D. Licensing Corp. v.
Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed. Cir.
1988) (encyclopedias may be consulted); Sprague Electric Co. v.
Electrical Utilities Co., 209 USPQ 88 (TTAB 1980) (standard
reference works). See also respondent’s responses to
interrogatory Nos. 7, 9 and 26.
22 Registration Nos. 1552163 and 2145216 attached to respondent’s
notice of reliance.
Cancellation No. 92047438
14
is the flavor of Michoacan.” Registrant disclaimed the
exclusive right to use the name “Michoacan”; and
3. Registration No. 2145216 for the mark LA
MICHOACANA PARADISIO SORBET and design for, inter alia,
frozen fruit bars and ice cream. The translation statement
in the registration provides that “[t]he English translation
of ‘La Michoacana Paradiso’ is the “The woman from Michoacan
Paradise.’” Registrant did not disclaim the exclusive right
to use “La Michoacana.”
As indicated above, we find that the term “Michoacana”
when used in connection with ice cream and/or fruit bars has
some significance suggesting a connection with “Michoacan”
but it is not clear to what extent people in the United
States would understand or recognize that connection.
Decision: Respondent’s request for reconsideration is
denied.