Consejo Regulador del Tequila, A.C.v.Lucien G. Lallouz

Trademark Trial and Appeal Board

Jan 25, 2021

91238809 (T.T.A.B. Jan. 25, 2021)

Mailed: January 25, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Consejo Regulador del Tequila, A.C.

v.

Lucien G. Lallouz
_____

Opposition No. 91238809
_____

Marie Anne Mastrovito of Abelman, Frayne & Schwab,
for Consejo Regulador del Tequila, A.C.

Robert M. Schwartz of Robert M. Schwartz, P.A.,
for Lucien G. Lallouz.
_____

Before Mermelstein, Wolfson, and Dunn,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Applicant, Lucien G. Lallouz, seeks registration on the Principal Register of the
mark TEQUONIAC (in standard characters) for “Alcoholic beverages, except beer” in
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91238809
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International Class 33.1 Consejo Regulador del Tequila, A.C. (“Opposer”) opposes
registration of Applicant’s mark, alleging that the prefix “TEQU-” creates an
immediate association with Opposer’s certification mark TEQUILA, for “distilled
spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant”
in International Class A,2 inducing purchasers to purchase Applicant’s beverages
under the mistaken belief that they contain spirits distilled from the blue tequilana
weber variety of agave plant that have been certified as TEQUILA. Therefore,
Opposer claims, Applicant’s mark is either deceptive under Trademark Act Section
2(a) or deceptively misdescriptive under Section 2(e)(1), 15 U.S.C. §§ 1052(a) and
1052(e)(1). 1 TTABVUE 4-5.3 Opposer also opposes registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles Opposer’s mark as to be likely to cause confusion,
mistake, or deception. 1 TTABVUE 4.4

1 Application Serial No. 87504647, filed June 26, 2017, based on Applicant’s allegation of a
bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).
2 Registration No. 5225126 for the certification mark TEQUILA, issued June 20, 2017 and
including the certification statement “[t]he certification mark ‘Tequila’, as used by persons
authorized by the Consejo Regulador del Tequila, A.C. (‘CRT’ or ‘Certifier’), certifies that (1)
the goods are manufactured in Mexico from a specific variety of the blue agave plant grown
in certain regions of Mexico as defined by Mexican law and standards; (2) the goods are
manufactured in Mexico in compliance with Mexican law and standards including
fermentation, distillation, aging, the percentage of blue agave sugars and physical- chemical
specifications; and (3) the finished product is or contains within it the goods manufactured in
accordance with (1) and (2) above.”.
3 All citations in this opinion to the opposition record are to TTABVUE, the docket history
system for the Trademark Trial and Appeal Board.
4 To the extent Opposer intended to allege Applicant’s use of the TEQUONIAC mark would
be unlawful under Alcohol and Tobacco Tax and Trade Bureau regulations, Notice of
Opposition ¶¶ 14-16, 1 TTABVUE 5, Opposer waived the claim by failing to address it in its
brief. See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1422-23 n.7
Opposition No. 91238809
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Applicant denied the salient allegations in the Notice of Opposition and alleged
that Opposer failed to state a claim upon which relief may be granted. 6 TTABVUE.
Insofar as Applicant neither filed a motion to dismiss for failure to state a claim
during the interlocutory phase of this proceeding, nor argued this asserted
insufficiency in its brief, Applicant’s purported defense is deemed waived. Alcatraz
Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB
2013), aff’d mem., 565 F. App’x 900 (Fed. Cir. 2014).
The case has been fully briefed.
I. THE RECORD
The record includes the pleadings, and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the subject application. The record also includes the
following evidence submitted by the parties.
A. Opposer
Opposer filed a Notice of Reliance, 19 TTABVUE, on:
 Status and title copy of Opposer’s federal certification mark
registration for TEQUILA (Att. 1, 19 TTABVUE 6-17);

 An excerpt from the website of the Alcohol and Tobacco Tax and
Trade Bureau of the United States Department of Treasury (TTB)
located at www.ttb.gov, titled “Certificate of Age and Origin
Requirements for Imported Alcohol Beverages” that lists certificate
of age and origin requirements for distilled spirits, including
“Tequila” (Att. 2, 19 TTABVUE 18-22);

 An excerpt from the www.ttb.gov website titled “Industry Circular
Number 2006-3 Standard of Identity for Tequila” (Att. 3, 19
TTABVUE 23-27); and

(TTAB 2014); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1426 n.3
(TTAB 2013).
Opposition No. 91238809
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 Excerpts from three online sources defining “cognac,” including as
a geographic indicator for brandy from France (Att. 4, 19
TTABVUE 28-47).

B. Applicant
Applicant filed the testimonial declaration of Lucien G. Lallouz and accompanying
exhibits A-P, 26 TTABVUE.5
Applicant also filed a Notice of Reliance, 27 TTABVUE, on:
 The USPTO file history for Opposer’s application that matured into its
pleaded Registration No. 5225126 for TEQUILA, including a copy of the
specimen filed in that application (Attachments 1-a through 1-e; 27-28
TTABVUE);
 Online dictionary definition of “cognac” (Attachment 2; 29 TTABVUE);
 Printed publications showing the meaning of the suffix “-iac” and
evidence of words ending in “-niac” unrelated to cognac (Attachments
3-a through 3-c; 29 TTABVUE); and
 Copies of TESS printouts for third-party registrations for marks
including the letter string “TEQU” or “TEKI” and copies of Internet
pages showing use thereof (Attachments 4-a through 4-d-2-b, and 5-a-
1 through 5-e-2; 29 TTABVUE).
II. Entitlement to a Statutory Cause of Action
Entitlement to a statutory cause of action6 is a threshold issue in every inter
partes case. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965

5 Applicant filed an amended testimonial declaration at 30 TTABVUE that included a
previously missing document, and amended paragraph 18 of the declaration to refer to the
document, but was otherwise unchanged.
6 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting Section 13
and 14 remain applicable. See Spanishtown Enters., Inc. v. Transcend Resources, Inc., 2020
USPQ2d 11388, at *2 (TTAB 2020).
Opposition No. 91238809
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F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v.
Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)).
A party in the position of plaintiff may oppose registration of another’s mark where
such opposition is within the zone of interests protected by the statute, 15 U.S.C.
§ 1063, and the plaintiff’s reasonable belief in damage is proximately caused by
registration of the defendant’s mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298,
2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020).
Opposer made of record its pleaded registration for the TEQUILA certification
mark by filing a Notice of Reliance on a copy of the registration certificate, along with
a printout obtained from the USPTO’s TSDR database showing the registration’s
current status and title in Opposer. Trademark Rule 2.122(d)(1); 37 C.F.R.
§ 2.122(d)(1). We find that Opposer’s pleaded registration forms the basis for a
likelihood of confusion claim under 15 U.S.C. § 1052(d) that is not wholly without
merit. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). See also Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012). Applicant does not dispute Opposer’s
entitlement to a statutory cause of action.
Once a plaintiff has shown entitlement on one ground, it has the right to assert
any other legally sufficient ground in an opposition or cancellation. See, e.g., Coach
Servs., 101 USPQ2d at 1727-28. (“[O]nce an opposer meets the requirements for
[entitlement], it can rely on any of the statutory grounds for opposition set forth in 15
U.S.C. § 1052.”). Thus, Opposer is also entitled to challenge Applicant’s attempt to
Opposition No. 91238809
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register TEQUONIAC as deceptive under Section 2(a), or as deceptively
misdescriptive under Section 2(e)(1).
III. Applicant’s Motion to Amend
On October 7, 2020, after Opposer filed its main trial brief but before Applicant
filed his main trial brief, Applicant filed a motion to amend the identification of goods
in his application to: “distilled spirits, namely, spirits distilled from the blue tequilana
weber variety of agave plant.” 34 TTABVUE. Opposer filed a response opposing the
motion as untimely, requesting suspension, and arguing that the amendment “should
not be permitted absent a judgment in favor of Opposer as to the deleted goods.” 36
TTABVUE. Noting that Opposer did not consent to the amendment, the Board
deferred its consideration and denied Opposer’s request to suspend proceedings. 38
TTABVUE 2-3. We now address Applicant’s motion to amend the identification of
goods in his application.
Where an applicant agrees to accept judgment against it as to the goods it proposes
to delete (i.e., the broader identification of goods that was present at publication), the
Board may grant such amendment even if the opposer does not consent. Trademark
Rule 2.133(a), 37 C.F.R. § 2.133(a); Brooklyn Brewery Corp. v. Brooklyn Brew Shop,
LLC, 2020 USPQ2d 10914, at *5 (TTAB 2020) (granting amendment because
defendant consented to entry of judgment as to its broader recitation, the amendment
narrowed the scope of the identification, and the specimens of record supported the
goods as amended). See also Grand Canyon W. Ranch, LLC v. Hualapai Tribe, 78
USPQ2d 1696, 1698 (TTAB 2006) (finding that in moving to amend its application to
delete those services for which opposer claimed applicant did not use the mark as of
Opposition No. 91238809
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the filing of the application, “applicant has essentially agreed to accept judgment with
respect to those services”).
Typically, an applicant seeking to amend its identification of goods must make the
amendment prior to trial in order to prevail. Giant Food Inc. v. Std. Terry Mills, Inc.,
229 USPQ 955, 956 (TTAB 1986). An unconsented motion to amend that is not made
prior to trial, and which, if granted, would affect the issues involved in the proceeding,
normally will be denied by the Board unless the matter is tried by express or implied
consent of the parties pursuant to Fed. R. Civ. P. 15(b). See TRADEMARK TRIAL AND
APPEAL BOARD MANUAL (TBMP) § 514.03. In this case, although the matter was not
tried by consent, the Board exercises its discretion to grant Applicant’s motion for the
following reasons. First, we find that Applicant consented to judgment on all three of
Opposer’s pleaded claims with respect to the original identification of goods.7 Second,
Opposer had fair notice that Applicant was willing to amend its goods because
Applicant had offered to limit its description of goods throughout the proceeding,
through written offers, during telephone discussions and in the declaration of Lucien
Lallouz. 26 TTABVUE 5, ¶ 24.
Third, and most importantly, we find that to grant Applicant’s motion in this case
would not unfairly prejudice Opposer. Indeed, the record clearly reflects the actual
differences that exist between distilled spirits of any type and those made from the

7 We read Applicant’s statements, at 34 TTABVUE 4, “This narrowing of the
identification of goods may be dispositive to the issues of deceptive misdescriptiveness
and deceptiveness. It is not intended to effect the consideration of likelihood of
confusion,” as an acknowledgement that the amendment is not dispositive of the
likelihood of confusion claim on the goods as amended.
Opposition No. 91238809
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blue tequilana weber variety of agave plant. By limiting its goods to distilled spirits
that are identified as made from this specific plant variety, a “substantially different
issue for trial” with respect to Opposer’s 2(a), 2(d) and 2(e)(1) claims has been
introduced. Wis. Cheese Grp., LLC v. Comercializadora de Lacteos y Derivados, S.A.
de C.V., 118 USPQ2d 1262, 1266 (TTAB 2016) (“Turning to the third requirement,
Applicant has made a prima facie showing that the proposed amendments serve to
change the nature and character of the goods so as to introduce a substantially
different issue for trial with respect to the Sections 2(a) and 2(e)(1) claims. Indeed,
Applicant has deleted all goods that, as published, were not identified as ’soy-based’
or containing soy, and has amended the remaining goods to specifically state that
they are ‘soy-based.’”).
Accordingly, we grant Applicant’s motion to amend its goods to “distilled spirits,
namely, spirits distilled from the blue tequilana weber variety of agave plant.”
Judgment is entered against Applicant on Opposer’s Sections 2(a), 2(d) and 2(e)(1)
claims as to the mark applied to “alcoholic beverages, except beer,” the goods
encompassed by the original description of goods, with the exception of “distilled
spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant,”
the goods covered by the amended identification.
IV. Deceptive Misdescriptiveness and Deceptiveness Claims
A mark is deceptively misdescriptive under Trademark Act Section 2(e)(1), 15
U.S.C. § 1052(e)(1), if it: (1) misrepresents any fact concerning the goods or services;
and (2) consumers are likely to believe the misdescription. See Hoover Co. v. Royal
Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720, 1723 (Fed. Cir. 2001); In re Moti
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Shniberg, 79 USPQ2d 1309, 1311 (TTAB 2006) (finding the mark “SEPTEMBER 11,
2001” deceptively misdescriptive for books and entertainment services that do not
concern the events of September 11, 2001).
To show deceptiveness under Section 2(a), 15 U.S.C. § 1052(a), a plaintiff must
prove that: (1) the mark consists of or contains a term that misdescribes the
character, quality, function, composition, or use of the goods or services; (2)
prospective purchasers are likely to believe that the misdescription actually describes
the goods or services; and (3) the misdescription is likely to affect the purchasing
decision of a significant portion of relevant consumers. In re Budge Mfg. Co., 857 F.2d
773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988); In re White Jasmine LLC, 106 USPQ2d
1385, 1391–92 (TTAB 2013) (finding deceptive the term “white” in the mark WHITE
JASMINE for tea that is not white tea).
Opposer’s deceptive misdescriptiveness and deceptiveness claims are based on
Opposer’s allegation that the mark TEQUONIAC falsely informs customers that all
the goods identified in the application as published include TEQUILA, i.e., liquor that
has been certified as being processed in accordance with certain standards from “blue
tequilana weber” agave plants. Our grant of the amendment and Applicant’s consent
to judgment on the broader identification of goods narrows the scope of the
identification to goods that, in fact, do include TEQUILA. Assuming, arguendo,
consumers may perceive the TEQUONIAC mark as denoting goods containing
TEQUILA liquor, the mark accurately describes Applicant’s amended goods.
Therefore, Applicant’s mark TEQUONIAC is not misdescriptive of the amended
Opposition No. 91238809
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goods, and it follows that the mark is not deceptively misdescriptive under Section
2(e)(1) or deceptive under Section 2(a) for these goods.
V. Likelihood of Confusion
A. Priority
Because Opposer’s pleaded registration is of record, and Applicant did not
counterclaim to cancel it, priority is not at issue as to the mark and goods covered by
the registration. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1436 n.7
(TTAB 2012).
B. Legal Standard
“The test for determining likelihood of confusion with respect to certification
marks is the same as that applied to trademarks, i.e., the DuPont analysis.” Tea Bd.
of India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1897 (TTAB 2006). However,
because the certification mark owner does not itself use the mark, the question of
whether there is a likelihood of confusion is based on a comparison of the mark as
applied to the goods or services of the certification mark users. Motion Picture Ass’n
of Am., Inc. v. Respect Sportswear, Inc., 83 USPQ2d 1555, 1559-60 (TTAB 2007); Tea
Bd. of India, 80 USPQ2d at 1897.
Our determination of likelihood of confusion is based on an analysis of all 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) (“DuPont”). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
We make that determination on a case-by-case basis, On-Line Careline Inc. v. Am.
Opposition No. 91238809
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Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000), aided by the
application of the factors set out in DuPont, and we consider each DuPont factor for
which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162 (Fed. Cir. 2019); In re Country Oven, Inc., 2019 USPQ2d 443903,
at *2 (TTAB 2019).
“In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and services.”
In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004), cited
in Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *5 (TTAB
2019). See also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed.
Cir. 2017). We also consider the strength of Opposer’s marks, the trade channels for
the goods and services and the conditions under which, and buyers to whom, sales
are made.
C. Relatedness of the Goods
Opposer’s goods are “distilled spirits, namely, spirits distilled from the blue
tequilana weber variety of agave plant.” Applicant’s amended goods are identical to
Opposer’s goods. The second DuPont factor weighs in favor of finding a likelihood of
confusion.
D. Trade Channels and Classes of Consumers
Because the parties’ goods are identical, we must presume that they move through
the same channels of trade and are sold to the same classes of purchasers. See In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Am. Lebanese
Opposition No. 91238809
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Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022,
1028 (TTAB 2011). The third DuPont factor, “established, likely-to-continue channels
of trade and classes of consumers,” weighs in favor of finding a likelihood of confusion.
E. Strength of Opposer’s Mark; Use of Similar Marks
We measure the strength of a plaintiff’s mark both by its conceptual, or inherent,
strength and its commercial, or marketplace, strength to determine the scope of
protection to which it is accorded. In re Chippendales USA, Inc., 622 F.3d 1346, 96
USPQ2d 1681, 1686 (Fed. Cir. 2010).
Opposer’s TEQUILA mark is registered on the Principal Register without a claim
of acquired distinctiveness. It is entitled to a presumption of validity under Section
7(b) of the Trademark Act, 15 U.S.C. § 1057(b), and “moreover, in the absence of a
Section 2(f) claim in the registration, that the mark is inherently distinctive for the
goods.” Tea Bd. of India, 80 USPQ2d at 1899. However, without conceding that
Opposer has rights to the prefix TEQU-, Applicant has shown that the prefix TEQU-
is fairly weak in the relevant marketplace. Applicant submitted copies of third-party
registrations for marks beginning with the letter-string “TEQU-,” such as
TEQUIPONCH, registered for “alcoholic cocktail mixes; prepared alcoholic cocktail,”8
TEQUILADOR, registered for “alcoholic beverages except beers, namely, tequila and
alcoholic beverages based on tequila,”9 and TEQUILCELLO, registered for “alcoholic

8 Registration No. 5019106, issued August 9, 2016. TESS printout at 29 TTABVUE 192.
9 Registration No. 4951487, issued May 3, 2016. TESS printout at 29 TTABVUE 203.
Opposition No. 91238809
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beverages, namely, tequila-based beverages.”10 Even where the record lacks proof of
actual third-party use and the extent of third-party use, third-party registration
evidence may show that a term carries a highly suggestive connotation in the relevant
industry and therefore may be considered somewhat weak. Jack Wolfskin Ausrustung
Fur Draussen GmbH 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, 1675 (Fed. Cir. 2015). These registrations suggest that marks
beginning with TEQU- are suggestive of goods consisting of or comprising TEQUILA
liquor.
With regard to the mark’s commercial strength, Opposer argues that “TEQUILA
is a strong mark with widespread public recognition,” having been used “to certify
distilled blue agave spirits for decades” and being the subject of “specific U.S.
regulations which govern its importation and sale.” 33 TTABVUE 12. Applicant
counters that Opposer “commandeered an arguably generic term and it will take time
for the mark to have other meaning. The registration for the certification mark
TEQUILA only issued on June 20, 2017.” 35 TTABVUE 35.
Opposer submitted “Industry Circulars” distributed by the TTB (Attachments 2
and 4 to its Notice of Reliance) to support its position that its mark is well-known. In
particular, Circular No. 2006-3 states that an “agreement between the Office of the
United States Trade Representative and the Secretaría de Economía of Mexico
regarding trade in Tequila was signed on January 17, 2006” and that such agreement

10 Registration No. 5176772, issued April 4, 2017. TESS printout at 29 TTABVUE 210.
Opposition No. 91238809
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“aims to protect trade in Tequila and ensure that bulk exports of Tequila from Mexico
to the United States continue without interruption.” 19 TTABVUE 24. However,
there is nothing in the Circulars which identifies Opposer as the controlling entity of
TEQUILA, and there is no evidence that consumers have or would ever encounter
these technical documents. In fact, this evidence supports Applicant’s argument that
the term TEQUILA does not have strong recognition as a certification mark. Opposer
has not shown that its mark is commercially well-known.
In addition, Applicant submitted evidence to illustrate how the three third-party
registered marks (TEQUIPONCH, TEQUILADOR, and TEQUILCELLO) appear on
the goods: 11

The Federal Circuit has held that evidence of third-party use is relevant to show
that a term (such as TEQU-) “may have a normally understood and well-recognized

11 TEQUIPONCH at https://www.oldtowntequila.com, attached to Applicant’s Notice of
Reliance at 29 TTABVUE 194; TEQUILADOR at https://www.proof66.com, 29 TTABVUE
205; and TEQUICELLO at https://www.oldtowntequila.com, 29 TTABVUE 212.
Opposition No. 91238809
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descriptive or suggestive meaning, leading to the conclusion that that [term] is
relatively weak,” and “can show that customers have been educated to distinguish
between different marks on the basis of minute distinctions.” Primrose Ret. Cmtys.,
LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1036 (TTAB 2016)
(quoting Jack Wolfskin, 116 USPQ2d at 1136). This evidence tends to refute
Opposer’s unsupported contentions that there is an association in the minds of
consumers between distilled spirts made from the blue tequilana weber variety of
agave plant and marks which begin with the prefix TEQU-, and that such marks
with the prefix TEQU- are merely a shortened version of, and create the same
commercial impression as, Opposer’s TEQUILA certification mark.
In view of the above, DuPont factor 5 (“fame of the prior mark”) is neutral. DuPont
factor 6 (“number and nature of similar marks in use on similar goods”) favors a
finding of no likelihood of confusion.
F. Similarity of the Marks
We next consider whether the marks are similar in their overall appearance,
sound, connotation, and commercial impression, Palm Bay Imps., 73 USPQ2d at
1692, bearing in mind that where goods are identical, the degree of similarity
necessary to find likelihood of confusion need not be as great as where there is a
recognizable disparity between the goods. Coach Servs., 101 USPQ2d at 1721;
Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698
(Fed. Cir. 1992). The 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
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impression such that persons who encounter the marks would be likely to assume a
connection between the parties. Coach Servs., 101 USPQ2d at 1721; see also Double
Coin Holdings, 2019 USPQ2d 377409, at *6 (TTAB 2019).
The marks TEQUILA and TEQUONIAC look somewhat alike because they share
the first four letters, “TEQU.” They are not likely to sound alike when spoken, even
though there is “no correct pronunciation of a trademark that is not a recognized
word,” StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1331-32, 111
USPQ2d 1649, 1651 (Fed. Cir. 2014), because the “I” in TEQUILA, when coupled with
the letters “QU,” is pronounced as the English word “key,”12 whereas the addition of
the letter “O” to the “QU” in TECQUONIAC will likely result in the “QUO” portion
being pronounced as the Latin word “quo,” as in “status quo.”13 It seems likely to us
that a majority of prospective purchasers, on encountering Applicant’s mark
TEQUONIAC, will pronounce its second (and third) syllables differently than that of
Opposer’s mark TEQUILA.
With respect to the marks’ connotations, there is no dispute that consumers who
recognize the term “TEQUILA” as a certification mark will know that it certifies a
particular distilled spirit that is made from a specific variety of the blue agave plant

12 According to the Merriam-Webster dictionary, “tequila” is pronounced: tə-ˈkē-lə. At
https://www.merriam-webster.com/dictionary/tequila, accessed January 6, 2021. The Board
may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet
Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983), including online dictionaries that exist in printed format or regular fixed editions. In
re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
13 The term “quo” is defined in the Merriam-Webster dictionary as “something received or
given for something else” and is pronounced ˈkwō. At https://www.merriam-webster.com/
dictionary/quo, accessed January 6, 2021.
Opposition No. 91238809
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grown in Mexico, which is manufactured in Mexico in compliance with Mexican
standards. See Certification Statement for Reg. No. 5225126, 19 TTABVUE 7. On the
other hand, Applicant’s TEQUONIAC mark is a coined word with no meaning.
Opposer argues that because the suffix “-iac” means “pertaining to,”14 consumers will
assume that Applicant’s goods “pertain to tequila” and thus the mark has similar
connotations to Opposer’s mark. 33 TTABVUE 12. However, there is nothing in the
record to suggest that consumers are likely to perceive the letters TEQU- as
equivalent to TEQUILA, or know that “-iac” in medical terminology means
“pertaining to,” or that such meaning is ascribed to terms in fields outside of medicine.
In sum, although the marks are slightly similar in appearance because they start
with the same letters, the second and third syllables of each mark are so different
that the marks do not sound alike or have similar meanings. In overall commercial
impression, “Tequila has significance as a designation of geographic origin,” Luxco,
Inc. v. Consejo Regulador Del Tequila, A.C., 121 USPQ2d 1477, 1497 (TTAB 2017),
whereas TEQUONIAC has no such significance.
The first DuPont factor strongly favors a finding of no likelihood of confusion.
G. Conditions of Sale
Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
DuPont, 177 USPQ at 567. Applicant points out that the goods must meet TTB

14 Applicant submitted a printout from https://globalrph.com/medterm/i/ showing that in
medical terminology, “-iac” as a suffix means “pertaining to.” 29 TTABVUE 11.
Opposition No. 91238809
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standards, and argues, without supporting evidence, that purchasers are thus likely
to exercise caution in making purchasing decisions. Opposer counters that the
purchasers are “general consumers.” 39 TTABVUE 9. The mere fact that the goods
at issue must meet TTB standards is insufficient to support a finding that customers
of the goods exercise caution in their purchase.
We find this DuPont factor to be neutral.
H. Balancing the Factors
We have carefully considered all of the evidence and argument of record. While
the goods and their trade channels are identical, we find that these factors are
outweighed in this case by the dissimilarity of the marks and the use by unrelated
third parties of similar marks on the same goods. See Sock It to Me v. Aiping Fan,
2020 USPQ2d 10611, *13 (TTAB 2020) (quoting Kellogg Co. v. Pack’em Enters. Inc.,
951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why,
in a particular case, a single duPont factor may not be dispositive”); Champagne Louis
Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460 (Fed. Cir.
1998) (“[O]ne DuPont factor may be dispositive in a likelihood of confusion analysis,
especially when that single factor is the dissimilarity of the marks.”).
The other factors we have considered, factors 4 (conditions of sale) and 5 (fame)
are neutral. Consequently, we find that Opposer has not borne its burden to
demonstrate likelihood of confusion by a preponderance of the evidence with regard
to those goods covered by the amended identification.
Opposition No. 91238809
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Decision: Applicant’s motion to amend the identification of goods in its
application to “distilled spirits, namely, spirits distilled from the blue tequilana weber
variety of agave plant” is granted. Opposer’s claims under Sections 2(a), 2(d) and
2(e)(1) are sustained as to the goods encompassed by the original description of goods
with the exception of “distilled spirits, namely, spirits distilled from the blue
tequilana weber variety of agave plant.” The claims are dismissed with regard to
those goods covered by the amended identification. Applicant’s application will
proceed to issuance of a Notice of Allowance in due course as to “distilled spirits,
namely, spirits distilled from the blue tequilana weber variety of agave plant.”