El Pollo Regio IP, LLC

Trademark Trial and Appeal Board

Apr 9, 2020

87923506 (T.T.A.B. Apr. 9, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: April 9, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re El Pollo Regio IP, LLC
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Serial No. 87923506

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Jerry C. Harris, Jr. of Wick Phillips Gould & Martin, LLP,
for El Pollo Regio IP, LLC.

Keisha M. Hardley Jenkins, Trademark Examining Attorney, Law Office 112,
Renee Severance, Managing Attorney.
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Before Zervas, Bergsman and Pologeorgis,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
El Pollo Regio IP, LLC (“Applicant”) seeks registration on the Principal Register
of the standard character mark AHHH QUE RICO POLLO for “catering services;
restaurant services” in International Class 43.1 Applicant disclaimed the term
POLLO and entered “that rich chicken” as an English translation of the mark.

1 Application Serial No. 87923506, filed on May 16, 2018 claiming a bona fide intent to use
the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 87923506
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The Examining Attorney refused registration pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles the previously registered standard character marks POLLO RICO!
(translated as “chicken, delicious or rich”) and EL POLLO RICO (translated as “the
chicken rich or delicious”), both for “restaurant services” in International Class 432
that, as used in connection with Applicant’s services, they are likely to cause
confusion or mistake or to deceive. Both registrations registered on the Principal
Register to the same Registrants pursuant to Section 2(f) of the Trademark Act, 15
U.S.C. § 1052(f), and include a disclaimer of the exclusive right to use the term
POLLO.
After the Examining Attorney issued a final refusal, Applicant appealed and both
Applicant and the Examining Attorney filed briefs. We affirm the refusal to register.
Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973) (“DuPont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005);
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he

2 Registration No. 4862504 for POLLO RICO! registered on December 1, 2015; Registration
No. 4456914 for EL POLLO RICO registered on December 31, 2013 (Section 8 affidavit
accepted and Section 15 affidavit acknowledged).
Serial No. 87923506
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fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods [and services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). “Not all of the [du Pont] factors are relevant to every case,
and only factors of significance to the particular mark need be considered.” Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed.
Cir. 2012) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir 2010)). All factors “‘must be considered’ when [they] are of record.” In re
Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019) (quoting
In re Dixie Rests, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) (internal
quotation omitted)).
We focus on the refusal to register based on Registration No. 4862504 for the mark
POLLO RICO! (translated as “chicken, delicious or rich”), which is most similar to
Applicant’s mark. If we find likelihood of confusion on the basis of the cited POLLO
RICO! registration, we need not consider Applicant’s mark compared to Registrants’
EL POLLO RICO mark. Conversely, if we do not find a likelihood of confusion with
the registration for POLLO RICO!, we would not find Applicant’s mark likely to cause
confusion with Registrants’ other mark and thus would not affirm the refusal under
Section 2(d). See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
a. The Services, Trade Channels and Classes of Purchasers
We make our determinations regarding the similarity or dissimilarity of the
services, channels of trade and classes of purchasers based on the services as they are
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recited in the application and the cited registration. See Octocom Sys. Inc. v. Houston
Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods [or services] set forth in the
application regardless of what the record may reveal as to the particular nature of an
applicant’s goods [or services], the particular channels of trade or the class of
purchasers to which sales of the goods [or services] are directed.”); Paula Payne Prods.
Co. v. Johnson Publ’g Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Restaurant Services
Because Applicant and Registrants both list restaurant services in their
identifications, their services are identical in part.
Additionally, because they both identify restaurant services without any
restrictions, we must presume that the identical restaurant services will be offered
in the same channels of trade and will be bought by the same classes of purchasers.
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even
though there was no evidence regarding channels of trade and classes of consumers,
the Board was entitled to rely on this legal presumption in determining likelihood of
confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA
1968) (where there are legally identical goods or services, the channels of trade and
classes of purchasers are considered to be the same). Purchasers of restaurant
services, of course, comprise members of the general public.
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Catering Services
The restaurant and catering services need only be “related in some manner and/or
if the circumstances surrounding their marketing are such that they could give rise
to the mistaken belief that [the services] emanate from the same source.” Coach
Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715,
1724 (TTAB 2007)).
The Examining Attorney introduced seven third-party use-based registrations
demonstrating use of the same mark on both restaurant and catering services.3
Third-party registrations that cover services from both a cited registration and an
Applicant’s application are relevant to show that the services are of a type that may
emanate from a single source under one mark. See, e.g., In re Detroit Athletic, 903
F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018); Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Infinity
Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988). In addition, the Examining Attorney
introduced webpages from Mezquite Express, Nevada Chicken Café, and Sardi’s
demonstrating that the same source offers restaurant and catering services under the
same mark.4 Applicant’s and Registrants’ services therefore are considered related
for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d

3 First Office Action dated August 15, 2018, TSDR 8–29.
4 Final Office Action dated March 12, 2019, TSDR 2-31.
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1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-
69, 1271-72 (TTAB 2009).
The webpages demonstrate that catering and restaurant services are offered on
the same websites, and even on the same webpages, to the general public. We find,
therefore, that catering and restaurant services travel in the same trade channels
and are offered to the same classes of purchasers.
Applicant does not dispute that the services, trade channels and classes of
purchasers are similar.
The DuPont factors regarding the similarity of the services, the channels of trade,
and classes of purchasers strongly favor a finding of likelihood of confusion for both
Applicant’s restaurant and catering services.
b. The Similarity of the Marks
We now consider whether Applicant’s and Registrants’ marks are similar when
viewed in their entireties in terms of appearance, sound, connotation and commercial
impression. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., 73 USPQ2d at
1689). The test under the this DuPont factor is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but rather whether the
marks are sufficiently similar that confusion as to the source of the services offered
under the respective marks is likely to result. See In re i.am.symbolic, LLC, 866 F.3d
1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Coach Servs., 101 USPQ2d at 1721.
The focus is on the recollection of the average purchaser, who normally retains a
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general rather than a specific impression of trademarks. See Mini Melts, Inc. v.
Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC,
118 USPQ2d 1084, 1089 (TTAB 2016); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975). We note that the average purchasers are members of the general
public.
In addition, where, as here, the restaurant service are in-part identical and the
catering services are highly similar to restaurant services, the degree of similarity
between the marks necessary to find a likelihood of confusion declines. See Cai v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); In re
Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 94 USPQ2d at 1260; In re Max
Capital Grp., Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
Applicant’s mark and the cited registrations contain the term “RICO POLLO,”
and there is no other wording in Registrants’ mark. While there is no explicit rule
that we must find the marks similar where an applicant’s mark incorporates all of a
registrant’s mark, the fact that Registrants’ mark is subsumed by Applicant’s mark
increases the similarity of the two marks. See, e.g., China Healthways Inst. Inc. v.
Xiaoming Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (applicant’s
mark CHI PLUS is similar to opposer’s mark CHI both for electric massagers); The
Wella Corp, v. Calif. Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)
(CALIFORNIA CONCEPT and surfer design for men’s cologne, hair spray,
conditioner and shampoo likely to cause confusion with the mark CONCEPT for cold
permanent wave lotion and neutralizer); Coca-Cola Bottling Co. of Memphis,
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Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105
(CCPA 1975) (applicant’s mark BENGAL LANCER for club soda, quinine water and
ginger ale is similar to BENGAL for gin); In re Riddle, 225 USPQ 630, 632 (TTAB
1985) (“Richard Petty’s Accu Tune” for automotive service centers specializing in
engine tune-ups and oil changes likely to cause confusion with “Accutune” automotive
testing equipment.”).
Of course, the marks are in Spanish and have no meaning to non-Spanish
speakers. Due to the shared wording, non-Spanish speaking consumers, being
familiar with Registrants’ mark RICO POLLO! and encountering Applicant’s AHHH
QUE RICO POLLO mark on identical and closely related services, may well confuse
the marks, and misremember one as the other. See Stabilisierungsfonds fur Wein v.
Peter Meyer Winery GmbH, 9 USPQ2d 1073, 1075 (TTAB 1988) (likelihood of
confusion found between GOLDTROPFCHEN and GOLDENER TROPFEN: “to those
American customers who do not speak German and thus do not know how the
respective marks translate into English, we agree with opposers’ counsel that both
marks may be seen as the familiar word ‘gold’ ‘followed by a jaw-breaking string of
consonants.’”). See also Bottega Veneta, Inc. v. Volume Shoe Corp., 226 USPQ 964
(TTAB 1985) (likelihood of confusion found between BOTTEGA VENETA and
BORSA VENETO).
Those who speak Spanish, however, will recognize immediately that “AHHH QUE
RICO POLLO” translates to “ahh, that rich (or delicious) chicken” and “POLLO
RICO” translates to “delicious chicken” or “rich chicken.” The Examining Attorney
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maintains that “[t]he wording ‘AHHH QUE’ denotes an expression or sound of
enjoyment (‘ah, that’) and merely modifies ‘RICO POLLO.’”5 Applicant does not
contest this characterization and we accept it as valid. By denoting an expression of
enjoyment, the wording “AHHH QUE” functions similarly to the exclamation mark
in Registrants’ mark which shows excitement and does not alter the common
commercial impression created by “RICO POLLO.”
Applicant does not contest the similarity in meaning or appearance between the
marks due to the shared wording, but rather argues that “POLLO and RICO -- are
descriptive of the goods or services to which the respective marks relate”; and that
“[g]iven the descriptiveness of the words in common, it is unlikely that consumers
would be confused based on the commonality of the words ‘POLLO’ and RICO.’”6 The
mark, however, even if registered under Section 2(f) with a claim of acquired
distinctiveness, resides on the Principal Register and is entitled to the presumption
of validity under Section 7(b) of the Trademark Act, 15 U.S.C. § 1057. We therefore
cannot accept that Registrants’ mark is merely descriptive. Additionally, while it may
be that POLLO RICO! is not the strongest of trademarks, even marks that are
deemed “weak” are still entitled to protection under Section 2(d) against the
registration by a subsequent user of a similar mark for identical or related services.
See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109
(CCPA 1974); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010).

5 Examining Attorney’s brief, 6 TTABVUE 8.
6 Applicant’s brief at 8-9, 4 TTABVUE 9-10.
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Applicant also argues that the mark “AHH QUE RICO POLLO” has a different
commercial impression than RICO POLLO! because the registered marks consist
essentially of merely descriptive words while its mark is more in the nature of a
phrase or slogan.7 We are not persuaded by this argument because we do not believe
that consumers of restaurant and catering services will stop and consider the
words/phrase distinction noted by Applicant when considering restaurant or catering
services. Under actual marketing conditions consumers do not necessarily have the
opportunity to make side-by-side comparisons between marks. Dassler KG v. Roller
Derby Skate Corp., 206 USPQ 255 (TTAB 1980).
For the foregoing reasons, the DuPont factor regarding the similarity of the marks
weighs in favor of a finding that confusion is likely.
II. Conclusion
The overlapping and otherwise related services, and identical trade channels and
classes of consumers, as well as the similarity of the marks, all favor a finding of
likelihood of confusion. There is no evidence that others are using the terms POLLO
and RICO for the same or similar services. In view thereof, we find that Applicant’s
mark for its services is likely to be confused with Registrants’ mark for their services.
Decision: The refusal to register under Section 2(d) is affirmed.

7 Applicant’s brief at 9, 4 TTABVUE 10.