Sigma Alimentos, S.A. de C.V.

Trademark Trial and Appeal Board

Jul 3, 2007

No. 78572318 (T.T.A.B. Jul. 3, 2007)

Mailed:
July 3, 2007
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sigma Alimentos, S.A. de C.V.
________

Serial Nos. 78572313 and 78572318
_______

Albert B. Kimball, Jr., of Bracewell & Patterson, L.L.P.
for Sigma Alimentos, S.A. de C.V.

Pamela N. Hirschman, Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______

Before Bucher, Holtzman and Zervas, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Sigma Alimentos, S.A. de C.V., a Mexican corporation,
seeks registration on the Principal Register of the marks
SOLÉ and SOLÉ LIGHT in the special forms shown below:

for goods identified in the applications, as amended, as
“soy based beverages not being milk substitutes” in
International Class 32.1

1 Application Serial No. 78572313 for the mark SOLÉ (stylized)
was filed on February 22, 2005 based under Section 44(e) of the
Trademark Act upon applicant’s Mexican registration number
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 78572313 and 78572318
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These cases are before the Board on appeal from the
final refusals of the Trademark Examining Attorney to
register these marks based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark
Examining Attorney has found that Applicant’s marks, when
used in connection with the identified goods, so resemble
the following mark:

registered for “spring water” in Int. Class 32,2 as to be
likely to cause confusion, to cause mistake or to deceive.
Applicant and the Trademark Examining Attorney have
fully briefed the cases. At the request of the Trademark
Examining Attorney, these two appeals have been
consolidated. We affirm the refusals to register.
Applicant argues that there is no likelihood of
confusion given that the connotation of the identical term,
“solé,” changes when used in connection with the respective

843455, issued on July 20, 2004. Similarly, application Serial
No. 78572318 for the mark SOLÉ LIGHT (stylized) was filed on
February 22, 2005 based under Section 44(e) of the Trademark Act
upon applicant’s Mexican registration number 863274, issued on
December 9, 2004.

2 Registration No. 2179791 issued on August 11, 1998 based on
an application filed on February 22, 1995 claiming first use
anywhere and first use in commerce at least as early as January
1992; Section 8 affidavit (six-year) accepted and Section 15
affidavit acknowledged.
Serial Nos. 78572313 and 78572318
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goods; that there is no relationship between the products;
and that evidence of extensive third party use of marks
containing the word “sole” demonstrates that the cited mark
is an extremely weak mark.
By contrast, the Trademark Examining Attorney contends
that the sound, appearance and connotation of Applicant’s
mark is identical to the cited mark.
Similarly, the Trademark Examining Attorney argues that the
dominant feature of applicant’s stylized mark is the
same “Solé” inasmuch as the descriptive word, “Light,” has
been disclaimed in Applicant’s second mark. She points out
that on this record, there is no demonstration that the
word “solé” is either weak or diluted for the identified
goods. She contends that the record does show that the
involved goods are related and will be sold through the
same channels of trade to the same classes of ordinary
consumers.
Preliminary matter
Applicant offered new evidence with its appeal brief
not made of record prior to the appeal. The Trademark
Examining Attorney has correctly objected to the tardy
submissions of this material. Under 37 C.F.R. § 2.142, the
current record should have been complete prior to the
Serial Nos. 78572313 and 78572318
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filing of the appeal. Therefore, we will not consider
Exhibit A, a copy of U.S. Reg. No. 2694736 [SOLEVITA for
fruit juice beverages] and Exhibit F, a TESS printout of
the summary results of a search for applications and
registrations for marks containing the term (or prefix)
“Sole” for goods in International Class 32.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood
of confusion is based upon our analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the issue. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood
of confusion analysis, however, two key, although not
exclusive, considerations are the similarities between the
marks and the relationship 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).
Serial Nos. 78572313 and 78572318
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The marks
We turn first to the du Pont factor that focuses on
the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
In making this determination, our focus should be
placed on the recollection of the average consumer who
normally retains a general rather than a specific
impression of trademarks. Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106 (TTAB 1975).
We agree with the Trademark Examining Attorney that
Applicant’s mark is identical to the cited
mark. These marks are identical in sound, appearance,
connotation and commercial impression. As to sound and
appearance, these stylized marks have the same four letters
in the same order. Significantly, both have a distinctive
accent mark over the final letter “e.”
As to connotations, applicant has constructed a
complicated explanation for why they are different. In
short, Applicant postulates that the first two letters of
its mark, S-O- suggest soja (or soya), and the final
letters, –olé, bring to mind a word of cheer in Spanish,
Serial Nos. 78572313 and 78572318
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together thereby suggesting “a soy beverage product with
noteworthy or commendable character or contents … ” Yet,
the very same mark, when used by Registrant in connection
with “spring water,” has the connotation, according to
Applicant, of sunlight or clarity – the word SOLÉ as “sun.”
We are not persuaded by this reasoning. Whether used
with Registrant’s product or Applicant’s product, the term
“Solé” is arguably arbitrary or fanciful. There are
suggestions from third-party registrations in the record
that perhaps SOLE (without the accent mark) is Italian for
“sun.” However, we find that Applicant appears to be
reaching with this elaborate construct of two distinct,
suggestive connotations for the same mark when applied to
the respective goods.
This is not a case where the connotation of the term
is deemed to be clearly different as applied to the
respective goods.3 For example, the Board found that the
mark PLAYERS on men’s underwear and shoes would not result
in consumer confusion as to the source of the goods. See
In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984):
“PLAYERS” for shoes implies a fit, style,
color and durability adapted to outdoor
activities. “PLAYERS” for men’s underwear

3 Applicant cites to In re Sears, Roebuck and Co., 2 USPQ2d
1312 (TTAB 1987) [CROSS-OVER, when applied to brassieres, is
suggestive of the construction of the bras, and hence is not
likely to be confused with CROSSOVER for women’s outerwear].
Serial Nos. 78572313 and 78572318
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implies something else, primarily indoors in
nature.

In the instant case, however, “Solé” appears to be a
fanciful or coined term – creating exactly the same
connotation for soy-based beverages as for water.
Accordingly, we find that the mark is identical to
the cited mark in sound, appearance, connotation
and commercial impression. Presumably the low-fat version
of this product will be marketed under the mark .
While the addition of the highly descriptive term, “Light,”
below the term “Solé,” and in somewhat smaller letters,
creates obvious differences in both sound and appearance,
we agree with the Trademark Examining Attorney that the
connotations and commercial impressions remain the same.
Alleged Weakness of “Sole”

Applicant has submitted for the record a listing taken
from the United States Patent and Trademark Office’s TESS
database of both registrations and applications (Exhibit
E). This exhibit shows that nearly three hundred (294)
marks contain the word “sole.” However, for a variety of
reasons discussed below, this is not a demonstration that
Registrant’s mark should be given a narrowed scope of
protection.
Serial Nos. 78572313 and 78572318
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First, a perusal of this list demonstrates that there
are very few examples of the word “solé” (having the accent
mark on the final letter “e”). Most are simply the word
“sole.” These latter examples are drawn from marks used in
connection with all forty-five classes of goods and
services – with a disproportionate share of them having to
do with footwear and related services. In any case,
Applicant’s listing includes pending applications, which
have absolutely no probative value. Even third-party
registrations are entitled to little weight in this context
– and as pointed out by the Trademark Examining Attorney,
Applicant has merely submitted a listing rather than
providing TESS printouts of any individual registrations.
Accordingly, as to the du Pont factor focusing on the
number and nature of similar marks in use on similar goods,
we have to conclude this factor supports a finding of
likelihood of confusion herein.
Relationship of the goods

Accordingly, we turn to the similarity or
dissimilarity and nature of the goods as described in the
application and cited registration. With both Registrant
and Applicant using substantially the same designation,
“the relationship between the goods on which the parties
use their marks need not be as great or as close as in the
Serial Nos. 78572313 and 78572318
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situation where the marks are not identical or strikingly
similar.” Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ
70, 78 (TTAB 1981). See also In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) [“[E]ven when
goods or services are not competitive or intrinsically
related, the use of identical marks can lead to an
assumption that there is a common source.”].
In order 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 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 producer. See In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). We agree
with Applicant that our analysis must focus on the way the
goods are encountered in the marketplace by typical
consumers and whether they will be confused as to the
source of the products. See 3 J. Thomas McCarthy, MCCARTHY
ON TRADEMARKS AND UNFAIR COMPETITION, § 23:58 (4th ed. 2004) [a
tribunal must “attempt to recreate the conditions under
which prospective purchasers make their choices” so as to
Serial Nos. 78572313 and 78572318
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arrive at a “realistic” evaluation of likelihood of
confusion].
Other than the obvious fact that both products are
liquids, Applicant argues that there is no relationship
between Registrant’s water and its soy-based beverages.
Applicant is correct in noting, for example, that we
certainly have no per se rule that all beverages are
related. However, the Trademark Examining Attorney has
supplied for the record a half-dozen third-party
registrations showing the same mark registered in
connection with both goods:

for, inter alia, “ … light
beverages in the nature of non-
alcoholic drinks … soy based
beverage used as a milk substitute
… water, namely, spring water,
drinking water, aerated water …
instant soy drink powder” in Int.
Class 32;4

4 Registration No. 2402321 issued to AFC Trading & Wholesale
Inc. on November 7, 2000 based upon an application filed on May
21, 1997 claiming first use anywhere and first use in commerce at
least as early as May 1981; Section 8 affidavit (six-year)
accepted and Section 15 affidavit acknowledged.

Serial Nos. 78572313 and 78572318
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for, inter alia, “ … mineral
water, aerated water, soda water …
soy bean juice” in International
Class 32;5
GLACEAU SOY WATER for “non-alcoholic beverages,
namely bottled drinking water
containing soy protein and
isoflavones” in International
Class 32;6

for “soy-based food beverages …”
in Inter. Class 29;
“spring water …” in International
Class 32;7

for, inter alia, “ … soy bean
based beverages” in International
Class 29;
“ … drinking water with herbal
flavoring … mineral water …” in
International Class 32;8

5 Registration No. 2540776 issued on February 19, 2002 based
upon an application filed on March 9, 1998 claiming first use
anywhere and first use in commerce at least as early as August
31, 2001. The Chinese characters in the mark are translated into
the English-language as “Beijing,” “together,” “benevolence” and
“hall.”

6 Registration No. 2566682 issued on May 7, 2002 based upon
an application filed on May 19, 2000 claiming first use anywhere
and first use in commerce at least as early as November 19, 1999.
No claim is made to the words “Soy” and “Water” apart from the
mark as shown.

7 Registration No. 2703078 issued on April 1, 2003 based upon
an application filed on March 20, 2001 later claiming first use
anywhere and first use in commerce at least as early as October
1, 2001.

8 Registration No. 2724628 issued on June 10, 2003 based upon
an application filed on August 25, 1999 claiming first use
anywhere at least as early as June 1998 and first use in commerce
at least as early as July 1999. The English transliteration of
the Chinese characters is “Jin, Lai and Shiang.”
Serial Nos. 78572313 and 78572318
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CALFOOD for, inter alia, “ … soy bean
milk” in International Class 29;
and
“mineral and aerated water and
other non-alcoholic drinks …” in
International Class 32.9

Additionally, among the articles the Trademark
Examining Attorney placed into the record is a study
reported in several online locations showing that healthy
beverages include lots of water and several servings of
nonfat, fortified soy beverages, or the like:
Best Drinks For Watching Your Waistline
If you’re watching your weight to no avail, it might not be the
food you eat that is causing you to get fat. It could be what you
drink.
Even healthy drinks, such as 100 percent fruit juice and milk, can make
us fat if we drink too much of them, especially since most American
adults consume a whopping 21 percent of their daily calories from
beverages, twice as much as the 10 percent recommended by the World
Health Organization. That led a blue-ribbon panel of six leading nutrition
experts to devise healthy beverage guidelines that list what we can drink
and what we should avoid. The idea is to help you realize how many
extra calories you consume just by what you drink.
The group recommends that people should drink more water and limit or
eliminate high-calorie beverages with little or no nutritional value. In
addition, unsweetened tea and coffee, skim or low-fat milk and
artificially-sweetened beverages are fine in moderation. Anything with
sugar–soft drinks, sports drinks, fruit drinks and sweetened tea and
coffee–should be avoided.
Healthy Beverage Guidelines: What You Can Drink
Water: Women should drink at least four servings of water and men
should drink at least six servings a day. As much as possible, your
beverage needs should come from water.
Unsweetened coffee and tea, iced and hot: Up to eight servings a
day of tea and up to four servings of coffee. Do limit caffeine intake to
no more than 400 milligrams a day, which is about 32 ounces of coffee
and 64 ounces of tea.

9 Registration No. 2967385 issued on July 12, 2005 based upon
an application filed on July 7, 2000 later claiming first use
anywhere at least as early as July 1, 2003 and first use in
commerce at least as early as July 13, 2003.
Serial Nos. 78572313 and 78572318
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Nonfat milk or 1 percent fat milk and fortified soy beverages: Up
to two servings. Children and adolescents should drink this much every
day… 10

Finally, as to the related du Pont factors of channels
of trade and the anticipated classes of purchasers, the
Trademark Examining Attorney has provided advertisements
and online ordering forms from supermarkets such as
Giant/Peapod, Safeway, MannaHarvest.net, MyWebGrocer.com,
etc., showing all kinds of non-alcoholic beverages listed
together, e.g., alphabetically by type. While it is not
clear from this evidence that these respective beverages
would necessarily be sold in the “same aisles” (the
Trademark Examining Attorney’s conclusion) in a brick-and-
mortar grocery market, it is clear that they are promoted
side-by-side, they do move through the same general
channels of trade, and may well be seen as alternatives
during the same shopping trip when the average consumer may
be looking for healthy, bottled beverages. There is no
indication that the goods are expensive or that prospective
purchasers are sophisticated. On the contrary, these
beverages would both seem to be firmly in the category of
impulse items.

10 Healthy Beverage Guidelines reported by the AMERICAN JOURNAL OF
CLINICAL NUTRITION, available at http://www.beverageguidancepanel.org
(accessed by the Trademark Examining Attorney on March 30, 2006).

Serial Nos. 78572313 and 78572318
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Conclusion
Applicant’s marks are both substantially the same as
Registrant’s cited mark, the goods are related and appear
to move through the same channels of trade to the same
classes of ordinary purchasers. Accordingly, we find that
there is a likelihood of confusion herein.
Decision: The refusals to register these marks based
upon Section 2(d) of the Lanham Act are hereby affirmed.