El Encanto, Inc.v.Taco Bueno Restaurants, Inc.

Trademark Trial and Appeal Board

Jun 1, 2004

No. 91122414 (T.T.A.B. Jun. 1, 2004)

Hearing: Mailed: June 1, 2004
February 17, 2004 csl
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
El Encanto, Inc.
v.
Taco Bueno Restaurants, Inc.
_____
Opposition Nos. 91121868 and 91122414
to application Serial Nos. 75456422
and 75456275, both filed March 25, 1998
_____
Paul Adams of Peacock, Myers & Adams, P.C. for El Encanto,
Inc.
Michael Friedland of Knobbe, Martens, Olson & Bear, LLP for
Taco Bueno Restaurants, Inc.
Before Simms, Holtzman and Rogers, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
El Encanto, Inc. (opposer), a New Mexico corporation,
has opposed the applications of Taco Bueno Restaurants,
Inc. (applicant), a Texas corporation, to register the
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opp. Nos. 91121868 and 91122414
2
marks shown below for restaurant services.1

1 Application Serial Nos. 75456422 and 75456275, both filed March
25, 1998, based on applicant’s allegations of a bona fide
intention to use the marks in commerce. Applicant stated in the
former application that the word “BUENO” translates as “good,”
and in the latter application that “BUENO” translates as “good,”
“all right,” “okay,” “kind,” “simple,” “fine,” “right,” “sound,”
“funny,” “surprising” or “amazing.” Applicant disclaimed the
word “BUENO” in the first listed application during prosecution
of that application, and, after the oral hearing, moved to amend
the second listed application to also include a disclaimer of the
word “BUENO” in that application. Opposer did not object, and we
hereby grant applicant’s motion to amend that application, and
the following statement will be entered: No claim is made to the
exclusive right to use the word “Bueno” apart from the mark as
shown.
In the second application above, applicant described its mark
as consisting “in part, of the stylized word TACO forming a
face.”
We shall refer to the first mark above as the “BUENO-in-a-
bubble” mark and the second mark as a-T-c—o with “BUENO-in-a-
bubble.”
Opp. Nos. 91121868 and 91122414
3
In its applications, applicant claimed ownership of
Registration No. 1,197,032, issued June 1, 1982 (renewed)
for the mark TACO BUENO (“TACO” disclaimed) for restaurant
services, and Registration No. 1,842,523, issued June 28,
1994 (Section 8 affidavit accepted; Section 15 affidavit
filed) for the mark BUENO EXPRESS (“EXPRESS” disclaimed)
for restaurant services.
As grounds for opposition, opposer has asserted that
it is one of the largest distributors of Southwestern-style
foods in the United States; that it has used the mark BUENO
in connection with its business since May 15, 1951; that
its food products are sold to a wide range of general
grocery wholesalers, distributors, retailers, private and
institutional food service providers, restaurants and
individuals; that opposer is very well-known in such
channels of trade as restaurant sales; and that applicant’s
marks so resemble opposer’s previously used and registered
marks, all including the word “BUENO,” for numerous food
products and services, as to be likely to cause confusion,
to cause mistake or to deceive. Opposer also alleges that
its marks are famous and would be diluted by registration
of applicant’s marks, and that the word “BUENO” in
applicant’s marks is merely descriptive of a characteristic
or quality of applicant’s food and its services. Applicant
Opp. Nos. 91121868 and 91122414
4
has denied the essential allegations of the notices of
opposition.2
A trial was conducted, both parties took testimony and
filed notices of reliance on official records and discovery
responses, and opposer filed a notice of reliance on
portions of printed publications. In addition, applicant
submitted stipulated affidavit testimony. Both parties
filed briefs and were represented at an oral hearing held
in these consolidated cases.3
Opposer’s registrations include, in chronological
order of registration, the following: Registration No.
1,538,311, issued May 9, 1989, Section 8 and 15 affidavits
accepted and filed, respectively, for the mark BUENO and
design (referred to as “BUENO-with-the-little-guy” mark,
shown in the lower part of the mark reproduced below) for
such goods as dehydrated sweet corn, cooked corn, cracked
sweet corn, peppers, processed green and red chile, shrimp,
minced onions, brown sugar and spices; Registration No.
2,167,011, issued June 23, 1998, Section 8 and 15
affidavits accepted and filed, respectively, for the mark

2 Opposer has not argued the dilution or mere descriptiveness
claims in its brief. Therefore, we have not considered these
grounds.
3 In its reply brief opposer has requested that we strike a
portion of applicant’s brief because it discusses evidence not of
record in this case. Suffice it to say that we have decided this
case on the testimony and evidence of record. Opposer’s motion
to strike is denied.
Opp. Nos. 91121868 and 91122414
5
From Our Family To Yours BUENO Since 1951 (“BUENO” under
Section 2(f) of the Act) (mark shown below), for
distributorships in the field of pre-packaged foods;

Registration 2,190,265, issued September 22, 1998, for the
mark GRANDMA’S From Our Family To Yours BUENO Since 1951
(“BUENO” under Section 2(f) of the Act) for tortillas;
Registration No. 2,209,480, issued December 8, 1998, for
the mark From Our Family To Yours BUENO Since 1951 (“BUENO”
under Section 2(f) of the Act) for frozen red and green
chiles, whole, diced and pureed; Registration No.
2,234,721, issued March 23, 1999, Section 8 and 15
affidavits accepted and filed, respectively, for the mark
From Our Family To Yours BUENO Since 1951 (“BUENO” under
Section 2(f) of the Act) for various sauces and
concentrates to make sauces; Registration No. 2,263,393,
issued July 20, 1999, for the mark From Our Family To Yours
Opp. Nos. 91121868 and 91122414
6
BUENO Since 1951 (“BUENO” under Section 2(f) of the Act)
for such goods as hominy or cooked corn, processed corn
husks, tortillas, ground corn, tamales, chile powder, red
pepper pods, tacos and whole peppers; Registration No.
2,307,466, issued January 11, 2000, for the mark BUENO
(under Section 2(f)) for fresh corn husks, fresh garlic,
and fresh whole peppers; Registration No. 2,356,896, issued
June 13, 2000, for the mark BUENO (under Section 2(f)) for
food grade paper tamale wraps and cookbooks; Registration
No. 2,370,165, issued July 25, 2000, for the mark BUENO
(under Section 2(f)) for distributorships featuring
prepackaged foods; Registration No. 2,374,448, issued
August 8, 2000, for the mark BUENO (under Section 2(f)) for
such goods as bay leaves, corn meal, corn tortillas,
spices, red peppers, coarse chile and chile powder; and
Registration No. 2,376,755, issued August 15, 2000, for
BUENO (under Section 2(f)) for such goods as shrimp, sweet
processed corn, chile pods, lentils, processed green chile,
dried beans and peppers. Indicating its focus for this
case, opposer states in its brief, at page 5, that it
“relies primarily upon its registrations for the mark BUENO
in block letter form.”
Opposer, also known by the trade name Bueno Foods,
began as a small family-owned grocery store in New Mexico
Opp. Nos. 91121868 and 91122414
7
and became a large Southwestern producer of New Mexican and
Mexican-style foods. It now makes and distributes a full
line of over 150 New Mexican and Mexican food products to
the food service industry (hotels, large chain restaurants,
resorts, casinos, schools, hospitals and penal
institutions) as well as at retail (grocery stores).
Opposer has expanded its operations from New Mexico to
Arizona, Colorado, Utah, Texas, Nevada and California. It
has grown from a business with sales around $1 million in
1972 to annual sales of around $20 million and advertising
expenses near $500,000, employing 240 to 270 employees.
Opposer advertises its food products on radio, television,
in newspapers and magazines, by direct mail, point-of-sale
material, on billboards and at trade shows. Opposer’s
business has also been the subject of a number of articles
in the press.
In addition to sales in grocery stores, opposer’s food
products have also been sold and promoted as the result of
cooperative programs with such restaurants as McDonald’s,
Subway, Burger King and Pizza Hut. For example, some
McDonald’s stores in New Mexico, Arizona, Colorado and
Nevada, have promoted (including by neon signs) and sold a
BUENO green chile double cheeseburger. The associated
cooperative advertising program took place once or twice a
Opp. Nos. 91121868 and 91122414
8
year for about seven years. For several months in 1998
Subway promoted the fact that it had “BUENO green chile on
the side.” Pizza Hut restaurants in New Mexico promoted a
pizza with BUENO green chile. Taco Bell restaurants had
point-of-sale material indicating that BUENO green chile
was available. Some other sit-down food restaurants have
featured opposer’s BUENO food products on their menus and
menu boards (referred to as “menu-co-ops”).
According to opposer’s marketing manager, there is
some crossover between brand recognition in grocery stores
and in the food services business (restaurants, etc.). In
fact, he testified that it was opposer’s brand recognition
at the retail level (grocery stores) that led some
restaurants to use and promote opposer’s food products.
Brunick dep., pp. 28, 29. Further, opposer’s president,
Ms. Jacqueline Baca, testified, at p. 27:
…[O]ur strength in retail will affect end
users, our consumers who purchase products
at food-service restaurants. And I mean
it’s kind of like Tabasco sauce. If you’re
looking at their retail presence, they also
have a strong food service presence. So
people will ask for Tabasco at the
restaurant. I mean there’s a strong, strong
interplay in just even talking to people in
the industry.
Many, many times the reasons we’ve been
able to sell to some of these large chains
is because of our credibility in the retail
industry and our brand name knowledge and it
conveys quality and authenticity, and that’s
Opp. Nos. 91121868 and 91122414
9
what consumers are looking for and that that
end user is going to demand that product.
And that they know about it and they are
going to demand it. And it adds credibility
to the products that they are serving, as
well. So there’s a huge interplay.
On the issue of why she thought confusion was likely,
opposer’s president testified, at pp. 25-26:
A. Well, because of the registration of -–
of Bueno in a bubble, the Bueno in a bubble
mark. It seems to have caused confusion
with -- with our sales reps out in the
field, and that was a big concern to me.
And the similarity of the products, not
–- in that we’re offering products through
other restaurant chains to the end users and
–- and it just seemed like it would –- it
could conceivably be confusing to consumers
of both –- of those kinds of products in
both retail and food service.
And because it could be confusing –- if
it is confusing to the end user, I think
that it really hampers our ability to do co-
op promotion or sell our product to other
food service chains or restaurants because
of their concern of it being confusing to
that end user. And all of those things
combined, I guess, caused us to decide to
oppose this.
Opposer’s president also testified that she was not
aware of applicant before these opposition proceedings.
Further, opposer’s marketing manager testified that
applicant is not a competitor of opposer. Brunick dep., p.
62.
Concerning third-party use of marks containing the
word “BUENO,” opposer’s witnesses testified that they are
Opp. Nos. 91121868 and 91122414
10
familiar with such third-party food product marks as Buenos
Nachos and Rogelio Bueno.
Some of opposer’s witnesses testified that when
wearing a shirt with the Bueno mark identifying their
employer, they have been asked by such people as airport
employees, construction workers, supermarket clerks and
restaurant cashiers whether they worked for Taco Bueno, the
applicant. Opposer acknowledges in its brief (p. 37) that
this evidence is “slight.”
Applicant is a quick-service Mexican restaurant chain
whose first restaurant opened in Abilene, Texas, in 1967.
Lloyd dep., p. 8. Applicant now operates 119 restaurants
in Texas and Oklahoma, serving almost 20 million people in
2001 with annual revenue of over $100 million in recent
years. Applicant advertises its restaurant services on
television and radio, in newspapers and by direct mail.
Advertising expenditures for recent years have been several
million dollars per year.
According to applicant’s witnesses, applicant’s
restaurants are often referred to as simply “Bueno,” both
by employees and customers. Applicant’s director of
security testified that he was aware of this as far back as
the 1970s. Jacobson dep., pp. 32, 33, 80, 97; Lloyd dep.,
Opp. Nos. 91121868 and 91122414
11
p. 99; and Veale dep., pp. 15, 16.4 The president of
applicant’s former advertising agency, Mr. Richard Zien,
analogized this shortening of the name to the general
public’s referring to Coca-Cola as simply Coke. Relying
upon personal visits to applicant’s restaurants, Mr. Zien
testified on behalf of his advertising agency, at pp. 14-15
and 29:
These young people, they liked the brand.
But young people refer to this brand as
“Bueno” was the essence of really what I
think they told us. And they used it
interchangeably with Taco Bueno, but they
used it really on -- in a singular fashion:
“Let’s go to Bueno,” “Let’s do Bueno,” “We
love Bueno,” “Buenos the place.”
We didn’t really hear a lot of people
talk about Taco Bell that way. They didn’t
say “Let’s go to the Bell”… But we heard
from a lot of people that for Taco Bueno
just referring to this brand singularly as
Bueno.
…But what 18-to 34-year-olds tend to do
is be less respectful of full -- you know,
they shorten everything, they shorten
everything and paraphrase it to a cooler
hipper kind of language…
* * * * *
…So to the extent that using Bueno as a
separate element would separate us, I’m sure
we thought that was intriguing. But once
again, it was more of a reflection of what
we were hearing from the marketplace and
what apparently they had been for –- I guess
many years prior to us coming along had been
how they had chosen to describe the brand.

4 Mr. Veale, applicant’s executive director of purchasing, is a
20-year veteran with the company.
Opp. Nos. 91121868 and 91122414
12
Applicant’s record also shows that applicant has used
other marks which include the word “BUENO.” For example,
applicant has used the marks BUENO CHILADA and BUENO
PLATTERS for approximately 20 years, BUENO COMBO for
approximately 10 years, BUENO CHILLERS for a cold drink for
over five years, BUENO SIZE for about five years, and the
expression “Have a Bueno Day!” since the 1970s. Applicant
has registered some of these marks, as well as BUENO
EXPRESS for its drive-through restaurant services, and the
expression “WHEN YOU WANT MORE, SAY BUENO!”.
Although the applications herein opposed are based on
applicant’s bona fide intention to use these marks in
commerce, the record shows that applicant began changing
some of its exterior signs to show the BUENO-in-a-bubble
mark near the TACO BUENO service mark.
Applicant’s direct competitors are Mexican restaurants
such as Taco Bell, as well as local competitors such as
Taco Cabana, Taco Mayo and Taco John’s. Applicant was not
aware of opposer until the commencement of these
proceedings. Applicant’s witnesses also testified that
they are aware of no instances of actual confusion.
Further, applicant’s executive director of purchasing, Tom
Veale, testified, at p. 28, that he did not associate
opposer’s food products with applicant’s restaurants (“One
Opp. Nos. 91121868 and 91122414
13
was a restaurant you went to and ate at … and the other one
was a food product in grocery stores.”).
Applicant has introduced evidence of the existence of
various third-party marks containing the word “BUENO” used
in conjunction with restaurant services and food products,
by visiting those restaurants as well as purchasing the
third-party food products. The record includes photographs
of such restaurants as Que Bueno restaurant in Scottsdale,
Arizona; Que Bueno Mexican Grille restaurant in Denver;
Pollo-Bueno restaurant in Dallas, Texas; Bueno Bueno
restaurant in Los Angeles; buenobueno! restaurant in
Mountain View, California; Oh! Que Bueno restaurant in
Kissimmee, Florida, and !Oh Que Bueno! restaurant in
Flushing, New York; Bueno Nalo restaurant in Kailua,
Hawaii; Si Bueno Southside Grill restaurant in McCall,
Idaho; Taqueria Taco Bueno restaurant in Chicago, Illinois;
El Burrito Bueno restaurant in Glendale Heights, Illinois;
Bueno Y Sano restaurant in Amherst, Massachusetts; Buenos
Grill in Reno, Nevada; Buenas Tortillas restaurant in
Brooklyn, New York; Tio Bueno’s restaurant in San Antonio,
Texas; Café Bueno restaurant in Del Rio, Texas; and Burrito
Bueno restaurant in Milwaukee, Wisconsin. The third-party
food products include such products as Rogelio Bueno
Authentic Mole, Café Bueno coffee, Kinder bueno chocolate
Opp. Nos. 91121868 and 91122414
14
bars, Ortego !Que Bueno! Nacho Cheese Sauce and Buena
Comida Tomato Chili Sauce.5
Briefly, opposer argues that confusion is likely both
because it has co-marketing programs with fast-food
restaurants and because food service providers have come to
sell their products in supermarkets. Consumers, aware of
these facts, will associate applicant’s Bueno-in-a-bubble
restaurant services with opposer’s food products, according
to opposer. Opposer believes that this is all the more
likely because fast food restaurant purchases are
relatively inexpensive and may be impulsively made, and
because of the long use and well-known nature of opposer’s
BUENO marks for a wide variety of Mexican-style food
products. According to opposer, when a purchaser of
restaurant services sees applicant’s BUENO-in-a-bubble mark
separate and apart from the TACO BUENO mark, he or she will
associate it with opposer and opposer’s products. Opposer
also argues that its restaurant customers (applicant’s
competitors) interested in offering opposer’s BUENO food
products will recognize the potential for confusion and
will be more reluctant to purchase opposer’s goods.
Opposer also argues that there is no foundation for the

5 Opposer acknowledges that “[t]he only other use of BUENO alone
is Calavo Growers, Inc.,” which uses the mark BUENO on fresh
avocados. Brief, p. 28.
Opp. Nos. 91121868 and 91122414
15
testimony of how consumers refer to applicant’s restaurants
(as simply “Bueno”). Concerning the third-party marks of
record, opposer argues that they are of relatively little
importance because they are different marks (not BUENO
alone) and because there is no evidence of the duration or
extent of their use for the restaurant services and the
food products which they identify. Furthermore, opposer
contends that this evidence tends to show that purchasers
may have come to distinguish these multiple-word marks, but
not the single word mark BUENO, or that the awareness of
these restaurants is only by small clienteles in the local
areas within which those restaurants operate. Concerning
the lack of evidence of actual confusion, opposer points
out that its presence in applicant’s trading area has been
primarily in West Texas, where applicant has little or no
presence. Any doubt should be resolved in favor of
opposer, the prior user and registrant, opposer argues.
Applicant, on the other hand, maintains that opposer’s
BUENO marks are not famous but in fact weak and entitled to
a narrow scope of protection, because of the descriptive
and laudatory meaning of the Spanish word “bueno” (“good”)
and the demonstrated third-party uses, showing that
purchasers have been conditioned to distinguish these
various marks that incorporate this descriptive element,
Opp. Nos. 91121868 and 91122414
16
and that, in any event, many consumers already refer to
applicant’s restaurants by the word Bueno alone. Moreover,
applicant points to specific differences in the marks,
contending that opposer’s designs convey “family and
tradition” whereas applicant’s marks are more casual or
“modern and irreverent.” Applicant also points to the
absence of actual confusion as evidence that there is no
likelihood of confusion. Applicant notes that neither
party had heard of the other before these opposition
proceedings.
Opposer, as plaintiff in this case, has the burden of
proof to show, by a preponderance of the evidence, priority
and likelihood of confusion. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000).
With respect to priority, that is not an issue here
because opposer relies on its ownership of valid and
subsisting registrations. See King Candy Co. v. Eunice
King’s Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Moreover, the record demonstrates opposer’s prior use of
the mark BUENO in its various marks.
Our determination of likelihood of confusion under
Section 2(d) of the Act is based on an analysis of all of
the probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. See
Opp. Nos. 91121868 and 91122414
17
In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re E.I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Two key considerations are the marks and the goods or
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The means of
distribution and sale, although certainly relevant, are
areas of peripheral inquiry. The fundamental inquiry
mandated by [Section] 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
Considering first the marks, it is well settled, of
course, that marks must be considered and compared in their
entireties, not dissected or split into component parts so
that parts are compared with other parts. This is because
it is the entire mark which is perceived by the purchasing
public, and therefore, it is the entire mark that must be
compared to any other mark. See Kangol Ltd. v. KangaROOS
U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992);
and Franklin Mint Corp. v. Master Manufacturing Co., 667
F.2d 1005, 212 USPQ 233 (CCPA 1981).
In this case, opposer has registered the mark BUENO in
a non-stylized format, as well as with various designs.
Applicant’s marks are BUENO-in-a-bubble, and the same mark
Opp. Nos. 91121868 and 91122414
18
with the letters a-T-c-O. Concerning applicant’s BUENO-in-
a-bubble mark and opposer’s BUENO mark, we believe that
those marks are substantially similar in sound, appearance
and meaning. If they were used in connection with
substantially similar goods or services, confusion would be
likely. Applicant’s second mark, the letters a-T-c-O with
the BUENO-in-a-bubble mark, has differences from opposer’s
marks. It would be pronounced differently from opposer’s
BUENO mark, and has a distinct appearance. As far as any
meaning or significance which may be attributed to that
mark, including the letters a-T-c-O, we can only speculate
whether consumers may see the letters as a fanciful display
of the word “TACO.” In any event, that mark is
substantially different from opposer’s marks.6 If confusion
is likely, it would only be likely in connection with the
BUENO-in-a-bubble mark.
In making these findings, of course, we are well aware
that the word “bueno” is the Spanish word for “good,” and
that, while opposer’s registrations issued pursuant to the
provisions of Section 2(f) on the Act, the word “bueno”
itself nevertheless has obvious descriptive significance
when used in connection with various goods and services.

6 Opposer has “less objection” to the registration of this mark.
Brief, p. 26.
Opp. Nos. 91121868 and 91122414
19
Further, the evidence of record shows that other
restaurants and food manufacturers have used this word as a
part of their restaurant and product names.
We turn therefore to a comparison of opposer’s food
products, distributed to grocery stores and through some
restaurant chains, and applicant’s restaurant services.
First, while opposer argues that food service providers are
expanding into retail sales in supermarkets, as applicant
has pointed out, there is simply no evidence in this record
to support this or to show that consumers are aware of or
perceive this expansion from restaurants into supermarkets.
We also agree with applicant that the fact that a
restaurant may serve opposer’s food products (much like a
restaurant that may feature Tabasco sauce) does not mean
that consumers will necessarily associate that mark
exclusively with that restaurant. In fact, opposer’s
product has been featured and served in a number of fast-
food and sit-down restaurants. Those consumers aware of
opposer’s presence in the restaurant field through the
availability of its products in those establishments would
likely not be confused as to source when they see the
BUENO-in-a-bubble mark identifying separate restaurant
services. As applicant contends, brief, p. 36:
Even at relatively inexpensive restaurants,
Opp. Nos. 91121868 and 91122414
20
it is unlikely that a customer could enter
the building or drive-through, place an order
from the menu, wait for the food to be pre-
pared, pay the bill and possibly eat the food
at the restaurant without learning the source
of the restaurant services.
It is unlikely, in our opinion, that consumers, aware of
opposer’s marks identifying various Mexican and
Southwestern food products available in some restaurants
will believe that a new restaurant, a competitor of those
restaurants where opposer’s products are available, is
somehow associated with opposer’s food products.
The absence of any instances of actual confusion can
be a meaningful factor only where the record indicates
that, for a significant period of time, an applicant’s
sales and advertising activities have been so appreciable
and continuous that, if confusion were likely to happen,
any actual incidents thereof would be expected to have
occurred and would have come to the attention of one or
both of these trademark owners. See Gillette Canada Inc.
v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Here, we
agree with opposer that, due to the geographical separation
of the parties’ territories for the most part, there has
not been an adequate opportunity for confusion to have
occurred. We have not given much weight, therefore, to the
lack of evidence of such confusion in this record.
Opp. Nos. 91121868 and 91122414
21
We agree with applicant that there must be shown more
than a mere theoretical possibility of confusion. Instead,
there must be demonstrated a probability or likelihood of
confusion. See, for example, Witco Chemical Co. v.
Whitfield Chemical Co., 418 F.2d 1403, 164 USPQ 43, 44-45
(CCPA 1969): “We are not concerned with mere theoretical
possibilities of confusion, deception, or mistake or with
de minimis situations but with the practicalities of the
commercial world, with which the trademark laws deal." See
also, Triumph Machinery Company v. Kentmaster Manufacturing
Company Inc., 1 USPQ2d 1826 (TTAB 1987). The Trademark Act
does not speak in terms of remote possibilities of
confusion, but rather, the likelihood of such confusion
occurring in the marketplace. Here, there is only the
slimmest possibility of confusion—-it is not likely. The
fact that neither party had heard of the other before this
proceeding is telling. There is certainly no evidence of
bad faith on applicant’s part to trade on opposer’s
goodwill. In this regard, we believe that the testimony of
long-time employees of applicant who testified as to their
personal knowledge as to how applicant’s restaurants have
been known by customers simply as BUENO is entitled to some
weight, as is applicant’s long use of BUENO in various
other marks (BUENO COMBO, BUENO EXPRESS, WHEN YOU WANT
Opp. Nos. 91121868 and 91122414
22
MORE, SAY BUENO!, etc.). The channels of trade are also
distinct.
After all these years, consumers are not likely to
suddenly expect that opposer has entered the restaurant
business when they see applicant’s specifically different
BUENO-in-a-bubble mark now used in connection with its
separate restaurant services. Confusion is even more
unlikely with respect to applicant’s a-T-c-O BUENO-in-a-
bubble mark for those services.
Decision: These oppositions are dismissed.