Productos Verde Valle, S.A. de C.V.

Trademark Trial and Appeal Board

Nov 2, 2018

No. 87137207 (T.T.A.B. Nov. 2, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 2, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Productos Verde Valle, S.A. de C.V.
_____

Serial No. 87137207
_____

Alan S. Nemes of Husch Blackwell LLP,
for Productos Verde Valle, S.A. de C.V.
Parker Howard, Trademark Examining Attorney, Law Office 117,
Travis Wheatley, Acting Managing Attorney.
_____

Before Zervas, Taylor and Hightower,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Productos Verde Valle, S.A. de C.V. (“Applicant”) seeks registration on the
Principal Register of the standard character mark SONIA for “sauces; chili sauce; hot
sauce,” in International Class 30.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood

1 Application Serial No. 87137207 was filed on August 12, 2016, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 87137207
- 2 -
of confusion with the mark in U.S. Registration No. 5167500,2 SONIA SONI LIFE IS
A RECIPE (in standard characters) for, in relevant part, “spices, spice blends; spice
rubs” in International Class 30.3 The registration includes the following statement:
“The name(s), portrait(s), and/or signature(s) shown in the mark identifies ‘SONIA
SONI,’ whose consent(s) to register is made of record.”
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. Both Applicant and the Examining
Attorney filed briefs.
We affirm the refusal to register.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by §2(d) goes to the cumulative effect of differences in the essential characteristics of

2 Issued March 21, 2017.
3 The registration also includes services classified in International Class 41 that were not
cited as a bar to registration.
Serial No. 87137207
- 3 -
the goods and differences in the marks.”). These factors, and any other relevant du
Pont factors in the proceeding now before us, will be considered in this decision.
A. The Goods
It is well settled that the goods of Registrant and Applicant need not be identical
or competitive, or even be offered through the same channels of trade, to support a
holding of likelihood of confusion. It is sufficient that the respective goods are related
in some manner, and/or that the conditions and activities surrounding the marketing
of the goods are such that they would or could be encountered by the same persons
under circumstances that could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same source. See Coach Servs. Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012)
(citation omitted); Hilson Research, Inc. v. Society for Human Resource Management,
27 USPQ2d 1423 (TTAB 1993). The issue here, of course, is not whether purchasers
would confuse the goods, but rather whether there is a likelihood of confusion as to
the source of these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB
2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
In making our determination regarding the relatedness of the goods, we must look
to the goods as identified in the application and the cited registrations. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Giovanni Food Co., 97
USPQ2d 1990, 1991 (TTAB 2011).
Serial No. 87137207
- 4 -
Applicant’s goods are identified as “sauces; chili sauce; [and] hot sauce” and
Registrant’s goods are identified as “spices, spice blends; [and] spice rubs.” The
Examining Attorney maintains that the goods are related because they are of a type
commonly offered by the same entity under the same mark, are often sold and sought
at the same retail sources, and are complementary because sauces and spices may be
used together for seasoning food. The Examining Attorney also maintains that sauces
often include spices.
In support of this position, the Examining Attorney made of record web pages from
various websites showing use of the same mark for both sauces and spices. The uses
include:
• McCormick (www.mccormick.com)4 showing sauces
with spices as a key ingredient and spices sold under
the MCCORMICK mark and sauces and spices sold
under the ZATARAIN’S mark;
• Target (www.target.com)5 showing sauces sold
under the ZATARAIN’S mark;
• Tony Chachere’s (www.tonychachere.com)6 showing
spices sold under the TONY CHACHERE’S mark;
• Cajun Grocer (www.cajungrocer.com)7 showing
sauces sold under the TONY CHACHERE’S mark;

4 May 24, 2017 Office Action; TSDR pp. 8-12. Complete URLs may be found in the cited TSDR
records.
5 Id. at 13.
6 Id. at 14.
7 Id. at 15-16.
Serial No. 87137207
- 5 -
• Dean & DeLuca (www.deanandeluca.com)8 showing
chili dipping sauce and spices sold under the DEAN
& DELUCA mark;
• Goode Company (www.goodecompany.com)9
showing barbeque sauce and steak seasoning sold
under the GOODE CO. mark;
• IKEA (www.ikea.com)10 showing sauces and spice
mix sold under the IKEA mark;
• John Henry’s Food Products
(www.johnhenrysfoodproducts.com)11 showing
sauces and spice rubs sold under the JOHN
HENRY’S mark; and
• Williams Sonoma (www.williamssonoma.com)12
showing cooking sauces and spices sold under the
WILLIAMS-SONOMA mark.
We find this evidence sufficient to show that Applicant’s “sauces; chili sauce; [and]
hot sauce” are related and complementary to Registrant’s “spices, spice blends; [and]
spice rubs,” such goods all being flavorings for food that are often sold by the same
source under the same mark. The evidence also shows that spices may be a key
ingredient in sauces, or may be interchangeable in a recipe, for example, using hot
sauce instead of chili powder.
We find Applicant’s argument that the evidence does not show use of “Registrant’s
mark on Applicant’s goods” unavailing. As stated, the goods need not be identical;
rather, they need only be related in such a manner that they could be encountered by

8 August 11, 2017 Office Action; TSDR pp. 7-10.
9 Id. at 11-12.
10 Id. at 13-16.
11 Id. at 17-20.
12 Id. at 21-28.
Serial No. 87137207
- 6 -
the same consumer under situations that would lead to the mistaken belief that they
originate from the same source. Coach Servs. v. Triumph Learning, 101 USPQ2d at
1723.
We likewise find unpersuasive Applicant’s argument that the goods are unrelated
because Applicant’s goods are sold as Mexican food while Registrant’s goods are sold
as Indian spices. As noted, the question of likelihood of confusion is based on the goods
in the respective application and cited registration, and there are no limitations as to
cuisine in either. An applicant may not restrict the scope of its goods or the scope of
the goods covered in the cited registration by extrinsic argument or evidence. See,
e.g., In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1165 (TTAB
2013); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986). In addition, certain spices
may be used in both Mexican and Indian cuisine.
The du Pont factor of the relatedness of the goods thus strongly favors a finding
of likelihood of confusion.
B. Channels of Trade/Classes of Purchasers
Because there are no limitations as to channels of trade or classes of purchasers
in Applicant’s or Registrant’s identifications of goods, we must presume that
Applicant’s and Registrant’s goods move, or will move, in all channels of trade usual
for these goods, including online and in grocery and specialty food stores and are, or
will be, purchased by the usual classes of purchasers which, in this case, include
ordinary consumers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
Serial No. 87137207
- 7 -
(Fed. Cir. 2012); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). We
accordingly find the channels of trade and classes of consumers to be the same.
The third du Pont factor weighs heavily in favor of a finding of likelihood of
confusion.
C. Conditions of Purchase
The fourth du Pont factor assesses the “conditions under which and buyers to
whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” du Pont,
177 USPQ at 567. Although neither Applicant nor the Examining Attorney addressed
this factor in their briefs, the record reflects that both sauces and spices are relatively
inexpensive items that are subject to purchase without a great deal of care. This
factor thus slightly favors a finding of likelihood of confusion.
D. The Number and Nature of Similar Marks Used on Similar Goods
When present, we must consider evidence of “[t]he number and nature of similar
marks in use on similar goods.” du Pont, 177 USPQ at 567. In this regard, the Federal
Circuit has stated that evidence of the extensive registration and use of a term by
others can be “powerful” evidence of weakness. Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794
F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).
Applicant has made of record various third-party applications and registrations
for marks containing the letters “S,” “O,” “N,” and “A,”13 arguing that Registrant’s

13 February 9, 2018 Request for Reconsideration, Ex. A; TSDR 35-49. At the time the
registrations were made of record, the “registrations” for the marks SONA (Ser. No.
Serial No. 87137207
- 8 -
mark already coexists with other marks in the food classes containing terms visually
and phonetically similar to SONIA and, thus, the cited mark is entitled only to a
narrow scope of protection. Applicant also made of record corresponding internet
evidence showing use on the face of the internet excerpts of these third-party marks.14
The applications and registrations are summarized in table format in Applicant’s
brief and reproduced below:15

87501805) and SONIA’S SWEETS (Ser. No. 87267914) were actually applications, although
the marks have since registered. Because the record on an application must be complete prior
to the appeal, see Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), and since SONA registered
post appeal, the registration has no probative value and has not been considered. See In re
Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); Interpayment Services Ltd. v. Docters
& Thiede, 66 USPQ2d 1463, 1467 n.6 (TTAB 2003) (applications are only probative to show
that the application has been filed). We add, however, that Applicant timely submitted
evidence of third-party use of SONA as a mark, which has been considered. The SONIA’S
SWEETS mark, however, registered prior to appeal and the registration has been considered.
The TSDR citations in this opinion are to the downloaded .pdf format.
14 February 9, 2018 Request for Reconsideration, Exs.B-I; TSDR 50-96.
15 Applicant’s br. pp. 4-5; 7 TTABVUE 9-10.
Serial No. 87137207
- 9 -

Serial No. 87137207
- 10 -

The registrations for SOHNA and SANIA have little probative value because they
have a different commercial impression from SONIA. We simply are unpersuaded by
Applicant’s assertion that the marks SOHNA and SANIA are visually and
phonetically similar to the given name SONIA central to the likelihood of confusion
issue here.
Serial No. 87137207
- 11 -
As regards the evidence of third-party uses, although Applicant has not presented
specific evidence concerning the extent and impact of these uses, it nevertheless
presented “evidence of these marks being used in internet commerce” for food and
beverage items, some of which are related and/or complementary to the goods
identified in the application and cited registration. Jack Wolfskin v. New Millennium
Sports, 116 USPQ2d at 1136; see also Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98
USPQ2d 1066, 1072 (TTAB 2011) (internet printouts “on their face, show that the
public may have been exposed to those internet websites and therefore may be aware
of the advertisements contained therein”). Here, the third-party uses of the marks
SONYA, SOHNA, SANIA, and SONIA’S SWEETS mirror the marks in the third-
party registrations. Applicant has additionally submitted evidence of third-party use
of SONA as a mark identifying tea-based beverages and soy sauce, which we also find
not as similar to SONIA as is Applicant’s mark, which is identical.
The remaining third-party uses and registrations of the marks SONYA for apples
and SONIA’S SWEETS for tea and soy sauce do not evidence such a widespread and
significant use of the name “SONIA,” or its phonetic equivalent “SONYA,” in the food
and food flavoring industries that we can conclude that the cited mark is so weak that
the public would be able to distinguish the source of Registrant’s goods from those of
Applicant by the differences in their respective marks. Cf. Jack Wolfskin v. New
Millennium Sports, 116 USPQ2d at 1136 n.2 (at least 14 relevant third-party uses or
registrations of record); Juice Generation, 115 USPQ2d at 1672 n.1 (at least 26
relevant third-party uses or registrations of record); see also Primrose Ret. Cmtys.,
Serial No. 87137207
- 12 -
LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039 (TTAB 2016)
(weakness found based on at least 85 actual uses of ROSE-formative marks for
similar services and eight similar third-party registrations). We accordingly find this
du Pont factor neutral.
There is also third-party registration evidence of record for multiple sets of marks
including the name Mary or Jenny or Linda or Michael or Robert or Johnny for
various food-related goods and services.16 Applicant argues with respect to this
evidence that it is common for marks featuring a first name to coexist with other
marks with the same first name.
These registrations also have little probative value. First, none include the name
“SONIA” (or a very similar name or term), alone or in combination with other matter,
as do Applicant’s and the cited marks. More importantly, we obviously are not privy
to the records in those cases and, in any event, the approval of those applications and
subsequent registration of those marks cannot control the result of this appeal, which
must be decided on its own facts and record. See In re USA Warriors Ice Hockey
Program, Inc. 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Here, Applicant has failed
to show any commercial weakness in the common term SONIA and thus we accord
Registrant’s mark the usual degree of protection to which inherently distinctive
marks are entitled.
E. The Similarity/Dissimilarity of the Marks
We now consider the du Pont factor of the similarity or dissimilarity of the marks

16 February 9, 2018 Request for Reconsideration, Ex. J; TSDR 97-143.
Serial No. 87137207
- 13 -
and compare them, as we must, in their entireties in terms of sound, appearance,
meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). However, there is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of the mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). That is, “[t]he proper test is not a side-by-
side comparison of the marks, but instead ‘whether the marks are sufficiently similar
in terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs. v. Triumph
Learning, 101 USPQ2d at 1721; see also San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem.,
972 F.2d 1353 (Fed. Cir. 1992). The proper focus is on the recollection of the average
customer, who retains a general rather than specific impression of the marks. L’Oreal
v. Marcon, 102 USPQ2d at 1438; Winnebago Industries, Inc. v. Oliver & Winston, Inc.,
207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975). Here, the average customer includes ordinary consumers seeking
food flavorings in the nature of sauces and spices.
We find, on comparison, that Applicant’s mark SONIA is similar in appearance,
sound, and connotation to the cited standard character mark SONIA SONI LIFE IS
A RECIPE. SONIA is the entirety of Applicant’s mark. Registrant’s mark is
Serial No. 87137207
- 14 -
comprised of the name SONIA SONI and the slogan LIFE IS A RECIPE. Because
LIFE IS A RECIPE imparts a connotation that simply highlights use of the spices
sold under the cited mark, SONIA SONI is the more prominent portion of Registrant’s
mark. The first name SONIA is a notable component of SONIA SONI given its
location as the first part of the mark and, thus, the first word to appear on any label
or to be articulated when pronouncing the mark. See Presto Products Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark
which is most likely to be impressed upon the mind of a purchaser and remembered”);
see also Palm Bay v. Veuve Clicquot, 73 USPQ2d at 1692 (“Veuve” is the most
prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in
the mark and the first word to appear on the label); Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon
encountering the marks, consumers must first notice the identical lead word).
Both Applicant’s and Registrant’s marks are in standard characters and, as such,
their display is not limited to any particular font, style, size, or color. We therefore
must consider that both marks might be used in any stylized display, including the
same or similar lettering style, size, and font, and/or with Registrant emphasizing
the given name SONIA by, for example, displaying it in a larger and bolder typeface.
See In re Viterra, 101 USPQ2d at 1909-10; Citigroup Inc. v. Capital City Bank Group,
Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011).
Applicant argues that its mark suggests a given name while the cited mark
“combines a given name with a nickname or surname as well as an aphorism that
Serial No. 87137207
- 15 -
suggests a life philosophy.” We find the argument unavailing. Consumers viewing
Applicant’s mark are likely to believe that Applicant’s mark is simply a shortened
version of Registrant’s mark, because of “the penchant of consumers to shorten
marks.” In re Bay State Brewing Co., 117 USPQ2d 1958, 1961 (TTAB 2016) (citing In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich,
J., concurring: “the users of language have a universal habit of shortening full names
— from haste or laziness or just economy of words”)). Applicant’s argument that the
phrase LIFE IS A RECIPE carries added distinction because it is the name of
Registrant’s website is likewise unavailing. Consumers may not be aware of
Registrant’s website or, even if they are, the mere existence of the website does not
distinguish Registrant’s mark from Applicant’s mark.
Moreover, likelihood of confusion is not necessarily avoided between otherwise
confusingly similar marks merely by adding or deleting other distinctive matter. If
an important portion of both marks is the same, then the marks may be confusingly
similar notwithstanding some differences. See, e.g., Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (finding that, even
though applicant’s mark PACKARD TECHNOLOGIES, with “TECHNOLOGIES”
disclaimed, does not incorporate every feature of opposer’s HEWLETT PACKARD
marks, a similar overall commercial impression is created); In re Toshiba Med. Sys.
Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (holding VANTAGE TITAN for MRI
diagnostic apparatus, and TITAN for medical ultrasound device, likely to cause
confusion, noting that the marks are more similar than they are different and that
Serial No. 87137207
- 16 -
the addition of applicant’s “product mark,” VANTAGE, to the registered mark would
not avoid confusion); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (holding
CAREER IMAGE (stylized) for clothing and retail women’s clothing store services,
and CREST CAREER IMAGES (stylized) for uniforms, likely to cause confusion,
noting that CAREER IMAGE would be perceived by consumers as a shortened form
of CREST CAREER IMAGES).
We recognize that in comparing the marks, we must consider Registrant’s mark
in its entirety. Thus, we have taken into account all of the differences in appearance,
sound, and meaning between them. We nonetheless find that despite these
differences, given the similarities between the marks in sound, appearance and
meaning due to the shared term SONIA, the marks engender similar overall
commercial impressions.
Accordingly, the similarity between the marks is a factor that weighs in favor of a
finding of likelihood of confusion.
F. Prior Decisions
Both Applicant and the Examining Attorney have relied on a number of prior
decisions, including an unpublished one,17 to bolster their positions with regard to
the likelihood of confusion issue. While our decision is made within the confines of
established statutes, rules and case precedent, as previously stated, it is axiomatic

17 While applicants may cite to non-precedential decisions, such decisions are not binding on
the Board and the Board does not encourage this practice. In re Fiat Grp. Mktg. & Corporate
Commc'ns S.p.A., 109 USPQ2d 1593, 1596 n.6 (TTAB 2014); In re Procter & Gamble Co., 105
USPQ2d 1119, 1121 (TTAB 2012); In re Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB
2011); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1875 n.5 (TTAB 2011).
Serial No. 87137207
- 17 -
that each case must be decided on its own facts. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had
some characteristics similar to [Applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this court.”); In re Merrill Lynch, Pierce,
Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987). We are
therefore obligated and have assessed the registrability of Applicant’s mark on its
own merits and have carefully considered the arguments and evidence of record in
this case, even if not specifically addressed in the decision.
III. Conclusion
When we consider the entire evidentiary record, the relevant likelihood of
confusion factors, and all of the arguments relating thereto, we find the marks
sufficiently similar for confusion to be likely when used in connection with related
and complementary goods in the same trade channels sold to the same consumers.
We thus conclude that prospective purchasers familiar with the registered mark
SONIA SONI LIFE IS A RECIPE for “spices, spice blends [and] spice rubs” would be
likely to believe, upon encountering Applicant’s similar mark SONIA for “sauces, chili
sauce; [and] hot sauce,” that such goods emanate from, or are sponsored by or
affiliated with, the same source.
Decision: The refusal to register Applicant’s mark SONIA under Section 2(d) of
the Act is affirmed.