Embotelladora Aga del Pacifico, SA de CVv.Jose Alfonso Serrano Gonzalez

Trademark Trial and Appeal Board

Dec 3, 2008

No. 91175952 (T.T.A.B. Dec. 3, 2008)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB Mailed: December 3, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Embotelladora Aga del Pacifico, SA de CV

v.

Jose Alfonso Serrano Gonzalez
_______

Opposition No. 91175952
to Application No. 78753088
filed on November 14, 2005
_______

Michael P. Martin of Charlston, Revich & Wollitz for
opposer.

Kevin G. Smith of Sughrue Mion, PLLC for applicant.
_______

Before Hairston, Drost, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant seeks registration of the mark CABALLITO
CERRERO (in standard characters) for “tequila,” in
International Class 33.1
Embotelladora Aga del Pacifico, SA de CV filed an
opposition to registration, alleging that applicant’s mark,

1 Based upon use of the mark in commerce. First use: December
20, 2005; first use in commerce: August 23, 2006. The
application includes the following statement: “The English
translation of ‘CABALLITO CERRERO’ is ‘roaming pony.’”
The application was originally filed based on a Mexican
trademark registration for the same mark, pursuant to Trademark
Act § 44(e). Applicant subsequently deleted this basis for
registration and alleged instead use in commerce pursuant to
Opposition No. 91175952

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when used on the identified goods, is likely to cause
confusion, to cause mistake, or to deceive in light of the
previously used and registered trademarks, Trademark Act
§ 2(d); 15 U.S.C. § 1052(d), and that applicant’s use of his
mark would be likely to cause dilution, Trademark Act
§ 43(c); 15 U.S.C. § 1125(c). Opposer’s notice of
opposition pleads ownership of the following registration
and application, both for “soft drinks” in International
Class 32:

Registration No. 15944782 and

Application No. 78737754.3

Trademark Act § 1(a).
2 Issued May 1, 1990. Affidavits under Trademark Act §§ 8, 9,
and 15, accepted, acknowledged, and granted, respectively. The
registration includes the following statement: “The English
translation of the word ‘CABALLITOS’ in the mark is ‘little
horses.’”
3 Filed October 21, 2005. Subsequent to the commencement of this
proceeding, this application matured into Registration No.
3320565, issued October 21, 2007. Opposer has disclaimed the
Opposition No. 91175952

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By his answer, applicant denied the salient allegations
of the notice of opposition.
We sustain the opposition.
I. Record
Pursuant to the Trademark Rules, the record in this
case includes the pleadings and the file of the involved
application. In addition, the record includes the following
items, introduced by opposer during its case-in-chief:
• Notice of reliance on applicant’s responses to
opposer’s discovery requests, filed January 11, 2008;

• Notice of reliance on applicant’s responses to
opposer’s interrogatories, filed under seal, January
14, 2008;

• Notice of reliance on the file of the opposed
application, filed January 14, 2008;4

• Notice of reliance on Registration Nos. 1594478 and
3320565, filed January 14, 2008;

• Notice of reliance on a trademark search report
generated by the USPTO’s TESS system, filed January 14,
2008;

• Testimony of Gustavo Ramirez, opposer’s manager of
corporate marketing, taken December 21, 2007;

• Testimony of Mauricio Uribe, Sales Director of Dos
Amigos Distributors, taken January 10, 2008.

Applicant did not take testimony or file a notice of

exclusive right to use “FRUITS” apart from the mark as shown.
The registration includes the following statement: “The foreign
wording in the mark translates into English as little horses.”
4 Submission of this notice of reliance was unnecessary. The
file of an opposed trademark application is automatically
considered part of the record. Trademark Rule 2.122(b)(1).
Opposition No. 91175952

4
reliance. Nonetheless, applicant attached to his brief what
appears to be an excerpt from a book5 and an article from
the Wikipedia database entry on “tequila,” and requests that
we take judicial notice of both items. Opposer objects,
Reply Br. at 1.
First, we will not take judicial notice of evidence
from Wikipedia or other sources which are available only
online. In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791
n.3 (TTAB 2002); see also, In re IP Carrier Consulting
Group, 84 USPQ2d 1028 (TTAB 2007) (Wikipedia evidence only
admissible when there is an opportunity to verify its
accuracy).
Second, applicant presents his excerpt from Guía del
Artes, as evidence that the term “caballito” refers to a
glass traditionally used for tequila. We cannot determine
whether this material is generally available in the United
States or if the matters stated therein are widely known.
As is the case with applicant’s Wikipedia evidence, it
cannot be said that the matter stated in the proffered book
excerpt “is either (1) generally known within the
territorial jurisdiction of the trial court or (2) capable
of accurate and ready determination by resort to sources
whose accuracy cannot reasonably be questioned.” Fed. R.

5 Alberto Ruy Sanchez Lac, Guía del Artes (1998). Although this
book is labeled “Bilingual Edition,” and includes text in both
English and Spanish, it appears to have been published in Mexico.
Opposition No. 91175952

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Evid. 201(b). We accordingly sustain opposer’s objection to
judicial notice in both instances.6
II. Applicable Law
Our determination under Trademark Act § 2(d) 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 In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); In re Dixie Rests. Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods [or services] and
differences in the marks.” Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209
(TTAB 1999).

6 We hasten to add that consideration of this evidence would not
change the result in our analysis.
Opposition No. 91175952

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III. Background
A. Applicant7
Applicant uses his mark on tequila imported into the
United States from Mexico. Applicant first used the mark in
the United States on August 23, 2006, as evidenced by an
invoice indicating a sale in the amount of $58.00 for
“TEQUILA CABALLITO CERRERO REPOSADO 750 ML 12 B/C.” Exh.
CABA 0001. It appears from the evidence of record that this
was applicant’s only sale of tequila under the mark at the
time of trial. Although applicant indicated that his
product is advertised on two web sites, Interrog. 18, the
nature of such advertisement is not apparent, and applicant
also stated that he has expended no money on advertisement
of the product. Supp. Resp., Interrog. 19. Applicant also
uses or intends to use the mark on promotional items such as
brochures, pens, posters, t-shirts, hats, and cocktail
stirrers, Interrog. 5, and that he promotes or intends to
promote his goods through trade shows, advertising
brochures, and promotional giveaways. Interrog. 13.
B. Opposer
According to the testimony of Gustavo Ramirez, opposer

7 As noted, applicant did not submit testimony or a notice of
reliance. Our discussion of applicant and its business is thus
gleaned from the pleadings, the subject application and opposer’s
evidence, including those of applicant’s discovery responses
which opposer has properly made of record by notice of reliance.
Factual statements in applicant’s brief which are not supported
by the record have been disregarded.
Opposition No. 91175952

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is a 45-year old Mexican firm producing soft drinks,
including mandarin, pineapple, strawberry, and tamarind
flavored sodas, among others. Opposer sells approximately
six million cases of drinks per year in Mexico under various
CABILLITOS marks and the mark SIDRAL AGA. Opposer
introduced status and title copies of its pleaded
registrations under notice of reliance.
Although it is clear that opposer’s products are sold
in this country, the record does not reveal the extent of
opposer’s exports to the United States. During his
testimony, Mr. Ramirez identified advertising circulars from
several Spanish language newspapers in southern California,
indicating opposer’s products for sale in supermarkets in
that area. While the circulars evidenced CABILLITOS soft
drinks at several small supermarket chains, opposer provided
no circulation numbers for the advertisements or sales
figures for the product at such markets. Mr. Ramirez
testified that CABILLITOS is “a very well-known brand here
in the U.S. by the Hispanic people, Mexican-American people.
Very famous here. .... Because Mexican-American people
remember that trademark from Mexico.” Ramirez Dep. pp. 25-
26.
Mr. Ramirez, who testified that he is fluent in both
English and Spanish, testified that the word CABALLITOS
means “little horses,” and that he was not aware of any
Opposition No. 91175952

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relevance of that term with respect to beverages. P. 27.
IV. Discussion
A. Standing and Priority
Opposer made its pleaded registrations of record, thus
establishing its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Indus.,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982). Moreover, because opposer’s pleaded
registrations are of record, priority is not an issue. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).
B. Likelihood of Confusion
1. The Fame Of The Prior Marks (Sales,
Advertising, Length of Use)

We begin with a discussion of the fame of opposer’s
marks because fame, when found, is entitled to great weight
in a likelihood of confusion analysis. Recot Inc. v.
Becton, 214 F.3d 1322, 54 F.2d 1894 (Fed. Cir. 2000); Kenner
Parker Toys, Inc. v. Rose Art Indus., 963 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992).
We find opposer’s assertions of fame to be unsupported
by the record. Mr. Ramirez testified that opposer sells
approximately six million cases of soft drinks per year in
Mexico. However, opposer has not provided a meaningful
Opposition No. 91175952

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context for this figures, such as evidence of opposer’s
market share for the goods. As the Federal Circuit has
stated, “[r]aw numbers of product sales and advertising
expenses may have sufficed in the past to prove fame of a
mark, but raw numbers alone in today’s world may be
misleading.... Consequently, some context in which to place
raw statistics is reasonable.” Bose Corp. v. QSC Audio
Prods., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir.
2002).
But even if we were able to put opposer’s Mexican sales
in context and conclude that opposer’s marks8 were famous in
Mexico, the question here is whether opposer’s marks are
famous in the United States. On that score, we cannot
accept opposer’s bald assertion that the “brand’s fame in
Mexico has carried over into the U.S., making it extremely
well know [sic] in the Mexican American community.” Opp.
Br. at 19. As noted, there is no evidence of the extent of
opposer’s sales in the United States, the reach of opposer’s
advertising (beyond the several local sales circulars in the
record), or any direct evidence of consumer perception.

8 Mr. Ramirez testified that opposer produces drinks under its
CABALLITOS marks as well as under another mark (SIDRAL AGA).
However, his testimony did not allocate opposer’s Mexican sales
between these marks. To be clear, the relevant question of fame
is not whether opposer is famous, but whether opposer’s marks are
famous. Mr. Ramirez’s testimony of opposer’s gross sales of six
million cases of soft drinks is thus of little probative value,
because that number includes sales under both the SIDRAL AGA and
CABALLITOS marks.
Opposition No. 91175952

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We find that opposer’s evidence of fame falls well
short of the mark on this record, and we thus consider this
factor neutral in our analysis.
2. The Similarity Or Dissimilarity Of The Marks

In comparing marks to ascertain whether confusion is
likely, we consider the marks’ appearance, sound, meaning
and commercial impression. Palm Bay, 73 USPQ2d at 1692.
“[T]he test is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of their
overall commercial impression so that confusion as to the
source of the goods offered under the respective marks is
likely to result.” H.D. Lee Co. v. Maidenform Inc., 87
USPQ2d 1715, 1727 (TTAB 2008).
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks. As the Court of
Appeals for the Federal Circuit observed, “in articulating
reasons for reaching a conclusion on the issue of confusion,
there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Opposition No. 91175952

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Cir. 1985).
The mark in the subject application is CABALLITO
CERRERO. Opposer’s pleaded marks are CABALLITOS and
CABALLITOS FRUITS as used with the following designs:

The marks are similar in appearance and sound in that
they share the common term CABALLITO (in applicant’s mark)
and its plural,9 CABALLITOS (in both of opposer’s marks).
We find that CABALLITO and its plural are the dominant
portion of all three marks. As a general matter, in marks
that contain both figurative and literal elements, it is the
literal portion which dominates, because it is used by
customers in calling for the goods. In re Appetito
Provisions Co., Inc., 3 USPQ2d 1553 (TTAB 1987). That is
especially true where – as here – the figurative elements
reinforce the literal meaning of the words, rather than
creating a different commercial impression.
Further, while applicant’s mark includes the term
“CERRERO” and opposer’s ‘565 Registration includes the term

9 The use of singular and plural forms of CABALLITO provides no
basis for distinguishing the marks. Wilson v. Delauney, 245 F.2d
877, 114 USPQ 339, 341 (CCPA 1957); In re Pix of America, Inc.,
225 USPQ 691, 692 (TTAB 1985).
Opposition No. 91175952

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“FRUITS,” neither term dominates its respective trademark.
In the case of the subject mark, the term CERRERO is
translated by applicant as “roaming,” (see infra) an
adjective modifying CABALLITO. In opposer’s registration,
the term “FRUITS” is disclaimed, presumably because it is
descriptive of an ingredient or flavor of opposer’s soft
drinks. In both cases, the additional wording is
subordinate to the term CABALLITO(S).
In both its registrations, opposer translates
CABALLITOS as “little horses.” Applicant translates his
mark, CABALLITO CERRERO as “roaming pony.” (Although the
parties’ translations of “CABALLITO,” differ, the difference
between “pony” and “little horse” is inconsequential for
these purposes.10) The marks thus present a similar
arbitrary meaning, and as noted above, that meaning is
reinforced by the horse designs included in opposer’s marks.
In sum, we recognize that – considered in their
entireties – the marks differ in several respects.
Nonetheless, we conclude that these differences are
outweighed by the marks’ substantially similarity in
appearance, sound, meaning, and commercial impression. This
finding supports a finding of likelihood of confusion.

10 “pony 1. a small horse of any of several breeds....”
Dictionary.com Unabridged (v 1.1) based on RANDOM HOUSE UNABRIDGED
DICTIONARY (2006). We take judicial notice of this definition. In
re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Opposition No. 91175952

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3. The Similarity or Dissimilarity and Nature of
the Goods

It is a general rule that goods or services need not be
identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is enough that goods
or services are related in some manner or that some
circumstances surrounding their marketing are such that they
would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used or intended to be used therewith, to a mistaken belief
that they originate from or are in some way associated with
the same producer or that there is an association between
the producers of each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Applicant’s goods are identified as “tequila,” while
the goods in opposer’s pleaded registrations are identified
as “soft drinks.” Opposer argues that “[t]hese products are
both beverages and are inextricably related.” Opp. Br. at
17. In response, applicant cites a long line of cases in
which the Board and our primary reviewing courts have
rejected any presumption that alcoholic and non-alcoholic
beverages are related simply because they are both drinks.
App. Br. at 6-7
But just as “[t]here is and should be no per se rule
that alcoholic and non-alcoholic beverages are related
products,” In re Jacob Demmer KG, 219 USPQ 1199, 1201 (TTAB
Opposition No. 91175952

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1983)(emphasis added), the opposite is also true – there is
no per se rule that such products are unrelated. Where
appropriate, the Board and our reviewing court have not
hesitated to find that alcoholic and non-alcoholic beverages
were sufficiently related to support a finding of likelihood
of confusion. For instance, in In re Rola Weinbrennerei Und
Likorfabrik GmbH & Co., 223 USPQ 57 (TTAB 1984), as in this
case, applicant argued that laws controlling the sale and
distribution of alcohol distinguish the goods. We
disagreed:
Applicant stresses the special legal limitation placed
on sale and advertising of alcoholic beverages and the
fact that not all segments of the population (e.g.,
children) can consume them. Nevertheless, it is fair
to say that adults who consume alcoholic beverages can
and do consume soft drinks as well. There are no
limitations as to channels of trade in the descriptions
of goods before us and there can be little question
that alcoholic beverages and soft drinks, traveling in
their respective channels of trade (and, quite likely,
overlapping in many respects) can and would come to the
attention of the millions of adults who drink the
former.

Id. at 58, n.1. See also Pink Lady Corp. v. L.N. Renault &
Sons, Inc., 265 F.2d 951, 121 USPQ 465, 466 (CCPA 1959) (“It
does not seem unreasonable to assume that citrus fruit
juices and wines are likely to be sold in the same stores
over the same counters to the same prospective customers”);
Coca Cola Bottling Co., 188 USPQ at 106 (confusion likely
between BENGAL for gin and BANGEL LANCER and design for club
soda, quinine water, and ginger ale);
Here, opposer has introduced pages from a website,
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www.tequilaquiote.com, which applicant uses to advertise his
product. Uribe Test. at 36-37, exh. 47-48; Resp. to Second
Interrog. No. 3. The website indicates that tequila – and
applicant’s CABALLITO CERRERO tequila in particular – may be
served mixed with soft drinks. “Enjoy it straight in a
traditional tequila shot glass or in a cognac snifter, or if
you prefer, mix it with your favorite juice or soda.” Id.
exh. 47. The website also includes a recipe for a drink
called the “vampiro,” comprising tequila, sangrita, and
grapefruit soda. Id. exh. 48. Grapefruit soda is a soft
drink and is similar to the fruit sodas and drinks produced
by opposer. See Ramirez Test. 20-24, exh. 6-13.
This evidence makes clear that tequila, including
applicant’s specific product, is used and actually
recommended for mixing with soft drinks such as those
produced by opposer. Mr. Ramirez further testified that
soft drinks are sometimes the subject of co-promotions with
tequila (such as SQUIRT and tequila) Ramirez Test. at 28.
While the evidence does not demonstrate that opposer’s and
applicant’s goods are “substantially similar,” as opposer
contends, Opp. Br. at 6, it is nonetheless clear that
tequila and soft drinks may be viewed to some extent as
complementary, and thus associated with each other in the
minds of a substantial portion of the public. This
relationship is sufficient to support a finding of a
Opposition No. 91175952

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likelihood of confusion.
4. The Similarity Or Dissimilarity Of
Established, Likely-To-Continue Trade
Channels

Opposer notes that its soft drinks are sold in grocery
stores, liquor stores, Mexican restaurants, restaurants and
catering trucks, Ramirez Test. at 11, and that many of these
outlets also sell tequila. Opp. Br. at 8. Opposer has also
provided advertisements for grocery store chains indicating
the sale of both tequila and soft drinks. Opposer concludes
that the channels of trade for the parties’ goods are
therefore “identical.”
While the evidence provides some support for opposer’s
argument, our cases caution that little can be concluded
merely from the fact that two items can both be found in
retail outlets such as a grocery store or served in a
restaurant. Hi-Country Foods Corp. v. Hi Country Beef
Jerky, 4 USPQ2d 1169, 1171-72 (TTAB 1987). Such reasoning
would require a conclusion that virtually all food and
beverage items (and many other goods) are related in this
respect. We therefore conclude that this factor is neutral
or – at most – slightly favors opposer.
5. Other Factors
Based on the record testimony, opposer argues that the
goods in question may be subject to impulse buying, a factor
which would favor a finding of a likelihood of confusion.
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Opp. Br. at 19, see Ramirez Test. at 31; Uribe Test. at 35.
However, as applicant argues, the testimony of Mr. Ramirez
and Mr. Uribe in this regard consisted of the witnesses’
conclusory opinions on this issue, and was not supported by
specific factual testimony or other evidence to support this
opinion. Nonetheless, we recognize that tequila need not be
unusually expensive, and that soft drinks are typically
inexpensive. Further, we note that applicant has introduced
no evidence indicating that tequila sales are characterized
by careful deliberation. We thus conclude that purchasers
of the parties’ goods are not likely to exercise more than
ordinary care in their purchasing decisions.
Applicant points out that there is no evidence of
actual confusion. The issue in this case is likelihood of
confusion. While evidence of actual confusion is highly
relevant, its absence is not, particularly where the
evidence shows that there has been little opportunity for
such confusion to occur. In re RSI Syst. LLC, 88 USPQ2d
1445, 1451 (TTAB 2008).
Finally, opposer argues that applicant was aware of
opposer’s mark prior to adopting his mark and filing the
subject application. Opp. Br. at 20. However, opposer does
not cite any evidence tending to show that applicant acted
in bad faith in filing his application. Although the
evidence indicates that opposer’s mark was included in the
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results of a trademark search by applicant, we note that
applicant may have believed that use of his mark would not
create a likelihood of confusion. While we would disagree
with that conclusion, we decline to elevate every case of
likelihood of confusion into evidence of bad faith.
We conclude that these factors are neutral in our
likelihood of confusion analysis.
C. Dilution
Fame is a prerequisite to a finding of dilution.
Trademark Act § 43(c)(1). Inasmuch as opposer failed to
demonstrate that its mark is famous, its dilution claim must
fail. See Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1180
(TTAB 2001)(“Fame for dilution purposes is difficult to
prove. ... The party claiming dilution must demonstrate by
the evidence that its mark is truly famous.”)
D. Applicant’s Use of the Mark in Commerce
Opposer argues that applicant’s use of the subject
mark11 is “grossly insufficient to warrant maintaining a
federal registration....” Opp. Br. at 11. Whether
applicant has made use of his mark in commerce sufficient to
support his application was not pleaded as a ground for
opposition, nor was it tried by the parties’ express or
implied consent. Accordingly, we give this issue no further

11 From the discovery materials made of record by opposer, it
appears that applicant’s only use of its mark in the United
States is a single sale of 12 bottles, for $58.00.
Opposition No. 91175952

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consideration.
V. Conclusion
After careful consideration of the evidence of record,
we conclude that opposer has established its claim of
likelihood of confusion under Trademark Act § 2(d). Opposer
has established ownership of its pleaded registrations, and
the marks therein are substantially similar to the mark in
the subject application. Likewise, opposer has established
that its goods, “soft drinks,” are related in purpose and
use to applicant’s “tequila.”
We conclude that registration of applicant’s CABALLITO
CERRERO mark would give rise to a likelihood of confusion in
view of opposer’s previously-used marks.

Decision: The opposition is accordingly sustained.