Edward R. Acostav.Barmar, LLC

Trademark Trial and Appeal Board

Nov 30, 2006

No. 92043837 (T.T.A.B. Nov. 30, 2006)

Baxley Mailed: November 30, 2006

Cancellation No. 92043837

Edward R. Acosta

v.

Barmar, LLC

Before Quinn, Rogers and Cataldo,
Administrative Trademark Judges

By the Board:

Barmar, LLC ("respondent") has obtained a registration
for the word mark LA PALAPA for "restaurant and bar
services" in International Class 43.1
Edward R. Acosta ("petitioner") filed a petition to
cancel on the ground that respondent's mark is likely to
cause confusion with his previously used word mark LAS

1 Registration No. 2794784, issued December 16, 2003, and
reciting November 24, 2001 as the date of first use and date of
first use in commerce. The involved registration matured from
application Serial No. 78176411, which was filed on October 21,
2002, based on an assertion of use in commerce under Trademark
Act Section 1(a), 15 U.S.C. Section 1051(a).
"La" is a Spanish singular form of the English word "the,"
while "palapa" is a Spanish word that means "palm roof." The
Collins Spanish Dictionary (6th ed. 2000). In addition, a
"palapa" is defined as "a traditional Mexican shelter roof with
palm leaves or branches. ... a structure, esp. on a beach, of
similar kind." The New Oxford American Dictionary 1230 (2001).
We hereby take judicial notice of these dictionary definitions.
See University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This decision is not citable as a
precedent of the Trademark Trial and
Appeal Board.
Cancellation No. 92043837
2
PALAPAS for "restaurant, catering, and prepared take-out
services."2 Respondent, in its answer, denied the salient
allegations of the petition to cancel and asserted
affirmative defenses.
On September 13, 2005, respondent filed a motion for
summary judgment on the unpleaded affirmative defenses that
petitioner has no standing in this case and is not the
proper party plaintiff herein. After full briefing of that
motion, the Board, in a May 16, 2006 order, denied that
motion, stating that petitioner has demonstrated "a
plausible claim of rights" in the pleaded mark.3 May 16,
2006 order at 3.

2 "Las" is a Spanish plural form of the English word "the."
Cassell's Spanish Dictionary (1959). We take judicial notice of
this dictionary definition. See University of Notre Dame du Lac
v. J.C. Gourmet Food Imports Co., supra.
Although not stated expressly in the petition to cancel,
petitioner's claim is made under Trademark Act Section 2(d), 15
U.S.C. Section 1052(d).
Petitioner also alleged in the petition to cancel that
registration of the involved mark would cause "dilution of the
distinctive quality of" his pleaded mark. However, petitioner
did not allege in the petition to cancel that his pleaded mark
became famous prior to the filing date of the application that
matured into respondent's involved registration and/or
respondent's first use of its involved mark. See Toro Co. v.
Torohead, Inc., 61 USPQ2d 1164 (TTAB 2001). Accordingly,
petitioner did not properly plead a dilution claim in this
proceeding. Based on the foregoing, we will treat the petition
to cancel as setting forth a Section 2(d) claim only.

3 In respondent's brief in support of its motion for summary
judgment, respondent contended that petitioner's application
Serial Nos. 76514282 and 76514283 for the marks LAS PALAPAS and
design and LAS PALAPAS in standard character form, both for
"[r]estaurant, catering, and prepared take-out food services" in
International Class 43, were refused registration on the ground
of likelihood of confusion with six applications that respondent
Cancellation No. 92043837
3
This case now comes up for consideration of
petitioner's motion (filed August 7, 2006) for summary
judgment on his Section 2(d) claim. The motion has been
fully briefed.
As an initial matter, we note that petitioner's reply
brief is eleven pages long and thus exceeds the ten-page
limit for reply briefs in connection with motions in Board
inter partes proceedings. See Trademark Rule 2.127(a).
Accordingly, petitioner's reply brief has received no
consideration in our decision.
In support of his motion for summary judgment,
petitioner alleges that he began operating his first
restaurant under his pleaded mark as a sole proprietorship
in 1981; that he subsequently opened and operated several
additional restaurants under his pleaded mark as a sole
proprietorship; that, on January 28, 1993, he was granted

previously filed, and that one of those six applications matured
into the registration which is involved in this proceeding.
Exhibits to petitioner's brief in response to the motion for
summary judgment include copies of USPTO records of petitioner's
two applications, obtained from the Trademark Electronic Search
System (TESS). A review of those copies indicates that
petitioner's two applications were filed on May 15, 2003, i.e.,
more than sixteen months prior to the filing of petitioner's
petition to cancel. However, petitioner did not rely upon those
applications in the petition to cancel as bases for his standing
to maintain this proceeding, and petitioner did not rely on his
applications to establish his standing in response to
respondent's motion for summary judgment. Further, petitioner
has not sought leave of the Board to amend his petition to cancel
to rely upon those applications as a basis for his standing
herein, and the Board, in denying respondent's motion for summary
judgment, did not deem the petition to cancel to have been
Cancellation No. 92043837
4
Texas Registration No. 052410 for the involved mark;4 that,
in 1985, he created Las Palapas de San Antonio, Inc. ("San
Antonio, Inc."), a Texas corporation of which he was the
sole shareholder, to oversee restaurants operated under the
involved mark; that he authorized San Antonio, Inc. to use
the pleaded mark in connection with the pleaded services,
but at all times retained control of the goods and services
offered thereunder; that, in 2001, he converted San Antonio,
Inc. to Las Palapas de San Antonio, Ltd. ("San Antonio,
Ltd."), a Texas limited liability company; that he was and
is the sole member of L.P. ERA 1, LLC ("ERA"), the general
partner of San Antonio, Ltd.; and that he authorized San
Antonio, Ltd. to use the pleaded mark in connection with the
pleaded services, but at all times retained control of the
goods and services offered thereunder. Petitioner further
alleges that, as his restaurants flourished, he became
convinced that franchising was his next logical step; that,
in 1997, he formed Las Palapas Enterprises, Inc.
("Enterprises"), a Texas corporation of which he was and is
the sole shareholder; that he authorized Enterprises to use
the pleaded mark in connection with the pleaded services,

amended by agreement of the parties. See TBMP Section 528.07(a)
(2d ed. rev. 2004).

4 Petitioner's brief in support of his motion for summary
judgment refers to Texas Registration No. "5241017." In view of
the copy of Registration No. 052410 that was submitted in support
Cancellation No. 92043837
5
but at all times retained control of the goods and services
offered thereunder; that, in 1997, he also formed Las
Palapas Franchises Ltd. ("Franchises"), a Texas limited
liability company with Enterprises as the general partner;
that petitioner authorized Franchises to use the pleaded
mark in connection with the pleaded services, but at all
times retained control of the goods and services offered
thereunder; that, through various franchising agreements
that petitioner authorized, Franchises licensed use of the
pleaded mark in connection with the pleaded services and at
all times retained control of the goods and services offered
thereunder; and that, since 1999, use of the involved mark
in connection with the involved services has expanded
through a franchising system through which petitioner
retains control. In addition, petitioner contends that
there are currently thirteen restaurants open under the
pleaded mark, eight of which were in operation prior to the
filing date of the application that matured into
respondent's involved registration and/or respondent's first
use of its involved mark. Accordingly, petitioner contends
that petitioner has standing to maintain this proceeding;
that petitioner is the senior user of his pleaded mark; that
the marks at issue are substantially identical and convey
substantially the same commercial impression; that the marks

of petitioner's motion, we presume that the reference to Texas
Cancellation No. 92043837
6
are used in connection with substantially identical
services; that the services are provided to the same class
of consumers in the same channels of trade; and that
services provided under the marks at issue are relatively
inexpensive and subject to impulse buying. Based on the
foregoing, petitioner contends that his motion for summary
judgment should be granted and that respondent's involved
registration should be cancelled.
As evidentiary support for his motion for summary
judgment, petitioner has included a declaration of his
attorney, Michael A. Moreno, which introduces the following
evidence: 1) a copy of Texas Registration No. 052410 for
the mark LAS PALAPAS and design; 2) a copy of the articles
of conversion of San Antonio, Inc. to San Antonio, Ltd.; 3)
a copy of the articles of organization for ERA; 4) a copy
obtained from the TESS database of the USPTO's record for
application Serial No. 76514283 for the word mark LAS
PALAPAS; 5) a copy obtained from the TESS database of the
USPTO's record for application Serial No. 76514282 for the
word mark LAS PALAPAS and design; and 6) copies of excerpts
from petitioner's and respondent's Internet websites.
As additional support for his motion for summary
judgment, petitioner has included his declaration. Therein,
petitioner attests that he has used the pleaded mark in

Registration No. "5241017" is a typographical error.
Cancellation No. 92043837
7
connection with the pleaded services since 1981; that he
commenced franchising of restaurants under the involved mark
in 1997; that he has controlled the nature and quality of
goods and services sold under the mark; and that there are
currently thirteen restaurants open under the pleaded mark,
all of which are located in San Antonio, Texas.
Petitioner's declaration introduces the following evidence:
1) a copy of the articles of incorporation for San Antonio,
Inc.; 2) a copy of the articles of incorporation for
Enterprises; 3) copies of newspaper and magazine articles
from 1981, 1994, and 1997 concerning his restaurants; 4) a
copy of a television advertisement contract from 2000
between Enterprises and KMOL-TV, a San Antonio, Texas
television station; and 5) a copy of a renewal application
for Texas Registration No. 052410 for the mark LAS PALAPAS
and design.
In response to petitioner's motion, respondent contends
that genuine issues of material fact remain with regard to
ownership of petitioner's pleaded mark.5 Accordingly,
respondent asks that the motion for summary judgment be
denied.
Summary judgment is an appropriate method of disposing
of a case in which there are no genuine issues of material

5 Respondent submitted no evidence in support of its brief in
response.

Cancellation No. 92043837
8
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). The party moving
for summary judgment has the initial burden of demonstrating
that there is no genuine issue of material fact remaining
for trial and that it is entitled to judgment as a matter of
law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1987);
Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d
1560, 4 USPQ2d 1793 (Fed. Cir. 1987). The nonmoving party
must be given the benefit of all reasonable doubt as to
whether genuine issues of material fact exist, and the
evidentiary record on summary judgment, and all inferences
to be drawn from the undisputed facts, must be viewed in the
light most favorable to the nonmoving party. See Opryland
USA, Inc. v. Great American Music Show, Inc., 970 F. 2d 847,
23 USPQ2d 1471 (Fed. Cir. 1992).
When the moving party's motion is supported by evidence
sufficient to indicate that there is no genuine issue of
material fact, and that the moving party is entitled to
judgment, the burden shifts to the nonmoving party to
demonstrate the existence of specific genuinely-disputed
facts that must be resolved at trial. The nonmoving party
may not rest on the mere allegations of its pleadings and
assertions of counsel, but must designate specific portions
of the record or produce additional evidence showing the
existence of a genuine issue of material fact for trial. In
Cancellation No. 92043837
9
general, to establish the existence of disputed facts
requiring trial, the nonmoving party "must point to an
evidentiary conflict created on the record at least by a
counterstatement of facts set forth in detail in an
affidavit by a knowledgeable affiant." Octocom Systems Inc.
v. Houston Computer Services Inc., 918 F.2d 937, 941, 16
USPQ2d 1783, 1786 (Fed. Cir. 1990).
As a party moving for summary judgment on his Section
2(d) claim, petitioner must establish that there is no
genuine dispute that 1) he has standing to maintain this
proceeding; 2) that he is the prior user of his pleaded
mark; and 3) that contemporaneous use of the parties'
respective marks for their respective services would be
likely to cause confusion, mistake or to deceive consumers.
See Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60
USPQ2d 1733, 1735 (TTAB 2001).
We turn to whether there is a genuine issue of material
fact as to petitioner's standing to maintain this
proceeding.6 The starting point for a standing

6 Contrary to petitioner's assertion, the Board did not determine
in the May 16, 2006 order that petitioner has standing to
maintain this proceeding. Rather, the Board found that
"respondent has failed to establish that there are no genuine
issues of material fact regarding its assertion that petitioner
has no standing, so that the petition should be denied and the
case dismissed without trial." May 16, 2006 order at 3. Had the
Board determined in that order that petitioner has standing to
maintain this proceeding, the Board could have entered partial
summary judgment in petitioner's favor on the issue of standing,
notwithstanding that it was not the moving party on the earlier
motion. The Board did not, however, do so.
Cancellation No. 92043837
10
determination in a cancellation proceeding is Trademark Act
Section 14, 15 U.S.C. Section 1064, which provides, in
relevant part, that "[a] petition to cancel a registration
of a mark, stating the grounds relied upon, may ... be filed
as follows by any person who believes that he is or will be
damaged... by the registration of a mark on the principal
register...." Thus, Section 14 establishes a broad class of
persons who are proper petitioners; by its terms, the
statute only requires that a person have a belief that he
would suffer some kind of damage by the continued
registration of the mark. However, in addition to meeting
the broad requirements of Section 14, a petitioner must have
a real interest in the proceeding, i.e., a personal interest
in the outcome of the proceeding, and must have a reasonable
basis for a belief of damage. There is no requirement that
actual damage be established to prove standing or to prevail
in a cancellation proceeding. See Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
Based on the foregoing, we find that the evidence of
use of the LAS PALAPAS mark by petitioner and his related
entities, in connection with his pleaded services, is
sufficient to establish that there is no genuine issue of
material fact that petitioner has a real interest in the
proceeding and has a reasonable basis for a belief of

Cancellation No. 92043837
11
damage.7 Accordingly, there is no genuine issue of material
fact regarding petitioner's standing to maintain this
proceeding.
We turn next to the issue of whether there is a genuine
issue of material fact regarding petitioner's asserted
priority of use. To establish priority on a likelihood of
confusion ground brought under Trademark Act Section 2(d), a
party must prove that, vis-à-vis the other party, it owns "a
mark or trade name previously used in the United States ...
and not abandoned...." Trademark Act Section 2, 15 U.S.C.
Section 1052. A plaintiff may establish its own prior
proprietary rights in a mark through actual use or through
use analogous to trademark use, such as use in advertising
brochures, trade publications, catalogues, newspaper
advertisements and Internet websites, if sufficient to
create a public awareness of the designation as a trademark
identifying the party as a source. See Trademark Act
Sections 2(d) and 45, 15 U.S.C. Section 1052(d) and 1127;
T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d

7 The fact that respondent's involved registration was cited as a
basis for a refusal of registration to petitioner's pending
applications would be sufficient to confer upon petitioner
standing to seek cancellation of respondent's registration for
the registered mark. See Hartwell Co. v. Shane, 17 USPQ2d 1569
(TTAB 1990); TBMP Section 309.03(b) (2d ed. rev. 2004). Although
petitioner did not allege in the petition to cancel that
respondent's involved registration was so cited, we deem the
pleadings amended to rely thereupon. See TBMP Section 528.07(a)
(2d ed. rev. 2004).
Cancellation No. 92043837
12
1879 (Fed. Cir. 1996), vacating PacTel Teletrac v. T.A.B.
Systems, 32 USPQ2d 1668 (TTAB 1994).
Petitioner has established that there is no genuine
issue of fact regarding his priority of use and that he and
his related entities used his pleaded LAS PALAPAS mark prior
to the October 21, 2002 filing date of the application that
matured into the involved registration.8 Specifically, with
regard to petitioner's use of his marks, petitioner has
established, through his declaration, that he made his first
actual use of the LAS PALAPAS mark in 1981, when he opened
his first restaurant under the LAS PALAPAS mark, and has
continuously used the mark since then. Petitioner's
declaration is internally consistent and not characterized
by uncertainty. See Hornblower & Weeks, Inc. v. Hornblower
& Weeks, Inc., supra at 1736. In addition, respondent has
not challenged the veracity of petitioner's testimony.
Although respondent contends that petitioner has failed
to establish ownership of the pleaded mark, petitioner's
declaration indicates that petitioner has at all times
retained control of the goods and services offered under his

8 The dates of use alleged in the application that matured into
the involved registration are not evidence of such use, nor are
the specimens of use in support of that application. See
Baseball America v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847
n.10 (TTAB 2004). Inasmuch as respondent has submitted no
evidence of use, it is entitled to rely only on the filing date
of the underlying application as its constructive use date. See
id. at 1847.

Cancellation No. 92043837
13
pleaded mark by his various entitities. Respondent has
failed either to rebut petitioner's evidence or to raise a
genuine issue concerning whether petitioner's mark functions
as an indication of origin for petitioner's services. See
Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040
(TTAB 1985). Based on the foregoing, there is no genuine
issue of material fact that petitioner is the prior user of
his pleaded LAS PALAPAS mark.
Turning to the likelihood of confusion issue, two key
factors are the degree of similarity of the parties' marks
and the degree of similarity of their respective services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976). As to the word marks at
issue, LAS PALAPAS and LA PALAPA, the marks differ in that
petitioner's mark is plural, whereas respondent's is
singular. Nonetheless, when these marks are considered in
their entireties, there is no genuine issue of material fact
that they are substantially similar in sound, appearance,
meaning and commercial impression. See In re Appetito Co.
Inc., 3 USPQ2d 1553 (TTAB 1987); and In re Pix of America,
Inc., 225 USPQ 691, 692 (TTAB 1985) (pluralization of one of
two involved marks found to be "almost totally insignificant
in terms of the likelihood of confusion of purchasers").
With regard to the similarity of the services at issue,
the question of likelihood of confusion must be determined
Cancellation No. 92043837
14
based on an analysis of the services recited in respondent's
registration vis-à-vis the services recited in petitioner's
petition to cancel. See, e.g., Octocom Systems Inc. v.
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987). As such, the services identified in
registrant's involved registration, i.e., "restaurant and
bar services," are presumed to overlap with petitioner's
services, which are shown by the evidence to be restaurant
and catering services. Based on the foregoing, we find that
petitioner has met his burden by supporting his motion with
declarations and other evidence that establish his right to
judgment.
Accordingly, the burden shifts to respondent to proffer
countering evidence that establishes that there is a genuine
factual dispute for trial, whether as to any of these
aspects of petitioner's case, i.e., standing, priority and
likelihood of confusion, or as to any affirmative defense
respondent may have to petitioner's claim. However,
respondent did not submit any evidence to show that there is
a genuine issue of material fact for trial. In summary,
considering the substantial similarity in sound, appearance,
meaning, and commercial impression of the marks and the
overlapping nature of the services, we find that there is no
Cancellation No. 92043837
15
genuine issue of material fact and that confusion is likely
to result.
In view thereof, petitioner's motion for summary
judgment is granted. Judgment is hereby entered against
respondent and the petition to cancel is granted.
Registration No. 2794784 will be cancelled in due course.