Mama Sita’s Holding Company, Inc.

Trademark Trial and Appeal Board

Oct 6, 2006

No. 76342996 (T.T.A.B. Oct. 6, 2006)

Mailed:
October 6, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mama Sita’s Holding Company, Inc.
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Serial No. 76342996
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Stephen J. Quigley and Lawrence E. Abelman of Abelman
Frayne & Schwab for Mama Sita’s Holding Company, Inc.

Susan Leslie DuBois, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
_______

Before Quinn, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Mama Sita’s Holding Company, Inc. seeks registration
on the Principal Register of the mark shown below:

for “sauces and spices” in International Class 30.1

1 Application Serial No. 76342996 was filed on November 29,
2001 by Marigold Commodities Corporation, a corporation of the
Philippines, based upon applicant’s claim of first use anywhere
and first use in commerce between the Philippines and the USA at
least as early as March 1, 1983. The application was
subsequently assigned to Mama Sita’s Holding Company, Inc., also
a corporation of the Philippines. This assignment was recorded
with the Assignment Branch of the United States Patent and
Trademark Office at Reel 2582, Frame 328.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76342996
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This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this mark based upon Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d). The Trademark Examining Attorney
has found that applicant’s mark, when used in connection
with the identified goods, so resembles the mark MAMACITA
registered for goods identified as “vegetable-based
seasonings, namely, recaito and sofrito”2 also in
International Class 30, as to be likely to cause confusion,
to cause mistake or to deceive.3
The Trademark Examining Attorney and applicant have
filed briefs in the case. We affirm the refusal to
register.
In arguing for registrability, applicant contends that
the marks create totally different commercial impressions;

2 Reg. No. 2201115 issued to Mamacita Inc. on November 3,
1998, Section 8 affidavit (six-year) accepted; Section 15
affidavit acknowledged. The registration notes that the English
language translation of the Spanish language word “mamacita” is
“mommy.”
3 The initial refusal to register was based on two additional
registrations (Reg. Nos. 1829935 and 2258873, both for MAMACITA’S
registered in connection with “fajitas” and “tortillas”
respectively, and both owned by ConAgra, Inc.). Applicant’s
predecessor in interest, Marigold Commodities Corporation, was
the plaintiff in Canc. Nos. 92042183 and 92042181, filed against
ConAgra, Inc.’s two registrations, respectively. The ’183
proceeding against ’935 ended in May 2004 with the petition for
cancellation being granted under Fed. R. Civ. P. 55 when ConAgra,
Inc. failed to file an answer, and the ’181 proceeding against
’873 ended with a consent agreement between the parties.
Serial No. 76342996
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that applicant’s identified items are different in
character from registrant’s goods and would not normally be
sold in the same section of retail food stores as would
registrant’s seasonings; that the MAMACITA mark is weak as
applied to food products; that applicant had an earlier,
now-cancelled registration at the time when a third party
obtained a registration for MAMACITA for “fajitas”4; and
that at this point, given the registrations and
applications made of record, no one party can claim an
exclusive use extending beyond rights to a specific mark
for specifically enumerated goods.
By contrast, the Trademark Examining Attorney contends
that the marks create highly similar overall commercial
impressions; that these goods are very similar and possibly
identical; that the goods would move through the same
channels of trade to the same classes of ordinary
consumers; and finally, that third-party registrations are
accorded little probative value on the question of
likelihood of confusion, even when, in the examples cited

4 Applicant’s earlier Reg. No. 1658369 was for MAMA SITA’S
used in connections with “spices and sauces” issued to Marigold
Commodities Corporation on September 24, 1991; cancelled Sec. 8.
However, it was still extant on April 5, 1994, when ConAgra’s
Reg. No. 1829935, (see footnote 3, supra) issued (as noted
earlier, also now cancelled by applicant’s predecessor-in-
interest).

Serial No. 76342996
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by applicant, the third-party registrations had been
registered for goods that were more closely related to
earlier registrant’s goods than is the case herein.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. See Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (Fed. Cir. 2005). The proper test for
determining the issue of likelihood of confusion is the
similarity of the general commercial impression engendered
by the marks. Due to the consuming public’s fallibility of
memory, the emphasis is on the likely recollection of the
average customer, who normally retains a general rather
Serial No. 76342996
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than a specific impression of trademarks or service marks.
Spoons Restaurants, Inc. v. Morrison, Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d. No. 92-1086 (Fed. Cir. June 5, 1992);
and In re Steury Corporation, 189 USPQ 353 (TTAB 1975).
Both applicant and the Trademark Examining Attorney
recognize the well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, while the marks are compared in
their entireties, “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.” In re National Data Corp., 732 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). If both words
and a design comprise the mark, the words are normally
accorded greater weight because the words are likely to
make an impression upon purchasers that would be remembered
by them and would be used by them in asking for the goods
and/or services. In re Appetito Provisions Co., 3 USPQ2d
1553, 1554 (TTAB 1987); and Kabushiki Kaisha Hattori
Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). See
also Giant Food, Inc. v. Nation’s Food Service, Inc., 710
F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983).
Serial No. 76342996
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Applicant argues that its mark is distinguished from
the cited mark (the word mark MAMACITA in standard
character format) because it incorporates the unique
component SITA’S; in its mark, MAMA and SITA’S are separate
components; while the cited mark is a Spanish language
word, its mark suggests the Italian language; applicant’s
mark is presented in the possessive form; and applicant’s
mark has stylized letters with the addition of a design
component – the portrait of Mama Sita.
MAMACITA
In turn, the Trademark Examining Attorney contends
that in this case, it is most significant that the marks
are phonetic equivalents, despite the fact that there are
slight differences in the exact formatting of the two
marks. For example, the Trademark Examining Attorney
agrees that the applicant’s mark has two words while
registrant’s mark has only one; that applicant spells the
second to last syllable of its mark with a letter “s”
rather than the letter “c”; and that applicant has adopted
the possessive form of the word, “Sita.” Nonetheless, the
Trademark Examining Attorney disagrees with applicant by
contending that the words MAMA SITA’S in applicant’s mark
Serial No. 76342996
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merit much greater weight in determining likelihood of
confusion than does the design feature. Although we agree
with applicant that the design element is not
insignificant, we find this element insufficient to
distinguish applicant’s mark from registrant’s mark.
Applicant’s design element by itself cannot be used in
calling for the goods. On the other hand, this design does
serve to reinforce the “mommy” or “mamacita” connotation of
the mark.
In any case, inasmuch as consumers will call for the
goods in the marketplace by the word portion of the marks,
we find that there is nothing improper in stating that the
audio-literal element has more significance than the design
feature in articulating our reasons for reaching a
conclusion on the issue of likelihood of confusion. See
Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d
1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987), and In re
National Data Corporation, supra at 752.
Finally, we conclude that applicant’s mark, MAMA
SITA’S (and design) creates a substantially similar
commercial impression as does registrant’s mark, MAMACITA.
These two marks are sufficiently similar that their
contemporaneous use on closely-related goods would be
Serial No. 76342996
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likely to cause confusion as to the source or sponsorship
of such goods, and this du Pont factor favors the position
of the Trademark Examining Attorney.
We turn next to the du Pont factor focusing on the
relatedness of the goods as described in the application
and the cited registration. Applicant argues correctly
that there is no per se rule that all food products must be
considered related. Furthermore, applicant argues that its
goods are different enough from registrant’s goods to avoid
a likelihood of confusion.
By contrast, in support of her contention that these
goods are related, the Trademark Examining Attorney asks us
to take judicial notice of the following dictionary
definitions of various goods listed by applicant and
registrant:
Spice: Any of various pungent, aromatic
plant substances, such as cinnamon or
nutmeg, used to flavor foods or beverages.

Sauce: A flavorful seasoning or relish
served as an accompaniment to food,
especially a liquid dressing or topping for
food.

Seasoning: Something, such as a spice or
herb, used to flavor food.

From these definitions, she goes on to argue as
follows:
Serial No. 76342996
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It is clear from the listed definitions that
the goods are highly similar, and perform
the same function – to add flavor to food.
The applicant has not limited the nature of
the spices and sauces in any way, and as
such, they can encompass those listed by the
registrant in a more specific manner. It is
even possible, that by definition, the
applicant’s spices and sauces could include
the more vegetable-based seasonings
identified by the registrant At the very
minimum, these goods are clearly related.
The applicant has identified spices and
sauces, and the term “seasoning,” used by
the registrant to identify its goods, is
defined as “a spice.”

Considering the goods, we find the dictionary definitions
sufficient to conclude that applicant’s goods are closely
related to the goods identified in the cited registration,
and may even be overlapping goods. We are not convinced
otherwise by applicant’s arguments regarding the specific
nature of its goods or registrant’s goods.
Consequently, if the respective goods were to be sold
under the same or similar marks, confusion as to source or
sponsorship would be likely to occur. We note that both
applicant’s goods and registrant’s goods are broadly
identified and, thus, we must presume that applicant’s
goods and registrant’s goods will be sold in all of the
normal channels of trade to all of the ordinary purchasers
for such goods, that is, to members of the general public
in retail establishments that sell food. See Canadian
Serial No. 76342996
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Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987).
We turn next to the du Pont factor focusing on the
number and nature of similar marks in use on similar goods.
As noted earlier, applicant made of record several third-
party registrations (e.g., incorporating variations on the
word MAMACITA within composite marks) that applicant argues
show “a commercial attractiveness and popularity possessed
by the term MAMACITA to an extent that it is now far too
late for any one party to claim a right to exclusive use
extending beyond a specific mark for specific goods.”
However, when one excludes pending applications,
expired registrations and extant registrations for marks
having additional matter and seemingly used in connection
with unrelated goods or services (three registrations for
MAMACITA’S MEXICAN RESTAURANT for restaurant and catering
services, drink mixes and items of clothing, all owned by
the same third party, for example), we agree with the
Trademark Examining Attorney that, except for the cited
registration, there are no such registrations.
Moreover, even if there were third-party registrations
for related food items incorporating the word MAMACITA
within composite marks, they would not establish that the
Serial No. 76342996
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marks shown therein are in use, much less that consumers
are so familiar with them that they are able to distinguish
among such marks. AMF Incorporated v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973).
Furthermore, even weak marks are entitled to protection
against registration by a subsequent user of the same or
similar mark for the same or closely related goods or
services. See Hollister Incorporated v. Ident A Pet, Inc.,
193 USPQ 439 (TTAB 1976).
In conclusion, we find that the marks create quite
similar overall commercial impressions, that applicant’s
goods must be considered to be closely related, if not
identical to registrant’s identified seasonings, and that
applicant has failed to demonstrate that MAMACITA marks are
weak in the field of food products. Accordingly, we find
that applicant’s mark, when used in connection with the
identified goods, so resembles registrant’s mark as to be
likely to cause confusion, to cause mistake or to deceive.
Decision: The refusal to register this mark based
upon Section 2(d) of the Lanham Act is hereby affirmed.