Mariscos Congelados Los Arcos, Inc.

Trademark Trial and Appeal Board

Jul 16, 2009

No. 77320242 (T.T.A.B. Jul. 16, 2009)

Mailed: July 16, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Mariscos Congelados Los Arcos, Inc.
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Serial Nos. 77320207 and 77320242
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Kathleen A. Pasulka of Procopio Cory Hargreaves & Savitch
LLP for Mariscos Congelados Los Arcos, Inc.

April K. Roach, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Seeherman, Hairston and Grendel, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Applications were filed by Mariscos Congelados Los
Arcos, Inc. to register the marks reproduced below for
“restaurant services” in International Class 43.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 77320207 and 77320242
2

Serial No. 773202071 Serial No. 773202422
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
each of applicant’s marks, when used in connection with
applicant’s services, so resembles the previously
registered mark LOS ARCOS reproduced below,

for “restaurant services,”3 as to be likely to cause
confusion, mistake or deception.

1 Serial No. 77320207, filed November 2, 2007, based upon an
allegation of a bona fide intention to use the mark in commerce
in connection with the identified services. The word RESTAURANT
is disclaimed and the application includes the statement that the
wording “LOS ARCOS” translates into English as “THE ARCHES.”
2 Serial No. 77320242, filed November 2, 2007, based upon an
allegation of a bona fide intention to use the mark in commerce
in connection with the identified services. The word RESTAURANT
is disclaimed and the application includes the statement that the
wording “SABOR! LOS ARCOS” translates into English as “FLAVOR!
THE ARCHES.”
3 Registration No. 1128429 issued December 25, 1979; renewed. The
registration contains the statement that “LOS ARCOS” translated
into English means “THE ARCHES.”
Ser Nos. 77320207 and 77320242
3
When the refusals were made final, applicant appealed.
Applicant and the examining attorney have filed briefs.4 In
view of the common questions of law and fact that are
involved in these two applications, and in the interests of
judicial economy, we have consolidated the applications for
purposes of final decision. Thus, we have issued this
single opinion.
Our determination under Section 2(d) is based on an
analysis of all of the 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 & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).

4 We note that applicant attached an exhibit to its brief which
consists of the results of a Google search of “los arcos cabo san
lucas.” The examining attorney’s objection to this exhibit is
well-taken and the untimely exhibit has not been considered.
Trademark Rule 2.142(d).
Ser Nos. 77320207 and 77320242
4
We turn first to a consideration of the services
identified in the applications and the cited registration.
The services identified in the applications and the
registration are restaurant services and, as such, are
identical. Applicant does not argue otherwise.
Furthermore, we must presume that the services will be
offered in the same channels of trade and will be bought by
the same classes of purchasers. See Canadian Imperial Bank
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ3d 1813 (Fed.
Cir. 1987); and In re Smith and Mehaffey, 31 USPQ2d 1531
(TTAB 1994). In view of the above, the du Pont factors of
the similarity of the services, the channels of trade and
classes of purchasers weigh in favor of a finding a
likelihood of confusion.
We also find, under the du Pont factor of conditions
of purchase, that the broadly identified “restaurant
services” identified in applicant’s applications and in the
cited registration must be deemed to include inexpensive
restaurant services which are or could be purchased by
ordinary consumers on impulse, without a great deal of care
or sophistication. This du Pont factor accordingly weighs
in favor of a finding of likelihood of confusion.
We turn next to the du Pont factor of whether
applicant’s marks and the cited mark are similar or
Ser Nos. 77320207 and 77320242
5
dissimilar, when compared in their entireties in terms of
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 test under this du Pont 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 in terms of their overall commercial
impression that confusion as to the source of the services
offered under the respective marks is likely to result.
Furthermore, although the marks at issue must be considered
in their entireties, it is well-settled that one feature of
a mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). For instance, “that a particular feature
is descriptive or generic with respect to the involved
goods or services is one commonly accepted rationale for
giving less weight to a portion of a mark … .” 224 USPQ at
751. Finally, “[w]hen marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likelihood of
confusion declines.” Century 21 Real Estate Corp. v.
Ser Nos. 77320207 and 77320242
6
Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992).
Although there are specific differences between
applicant’s marks shown below,

and registrant’s mark LOS ARCOS, we find that, on balance,
the similarities outweigh the differences.
In comparing the marks, we first note that each of the
involved marks is dominated by the identical term LOS
ARCOS. LOS ARCOS is the entirety of registrant’s mark.
Insofar as applicant’s marks are concerned, although they
include the additional terms, M.C. and SABOR!
respectively, such terms simply modify the term LOS ARCOS.
Moreover, not only is the disclaimed word RESTAURANT in
applicant’s marks the generic name for applicant’s
services, but it appears below the words M.C. LOS ARCOS and
SABOR! LOS ARCOS and in a smaller font. Thus, it has
little, if any, impact on the commercial impression created
by the marks. Furthermore, although the fanciful lobster
design in each of applicant’s marks is prominent, it is the
Ser Nos. 77320207 and 77320242
7
literal portions which would be regarded by purchasers as
the principal source-signifying portions of the marks since
it is the literal elements thereof which typically would be
used when customers call for or refer to the services. See
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Thus, the dominant portions of the involved marks are
identical. Although the marks are dominated by the
identical term, we must, of course, consider the marks in
their entireties. In doing so, for the reasons discussed
above, we find that applicant’s marks and registrant’s mark
are similar in sound and appearance.
With respect to meaning, we recognize that M.C. and
SABOR! added to LOS ARCOS in applicant’s respective marks
gives these marks a somewhat different connotation from
registrant’s mark. Nonetheless, the meaning of LOS ARCOS
remains the same in the involved marks, and the
similarities in sound and appearance outweigh any
differences in connotation.
Furthermore, when registrant’s mark and each of
applicant’s marks are considered in their entireties, the
marks engender sufficiently similar overall commercial
impressions so that, if identical services were offered
thereunder, confusion would be likely to occur among
consumers. That is, it is reasonable to conclude that
Ser Nos. 77320207 and 77320242
8
consumers familiar with registrant’s LOS ARCOS mark will
view M.C. LOS ARCOS RESTAURANT and design and SABOR! LOS
ARCOS RESTAURANT and design as identifying new restaurants
originating from or affiliated with registrant. Indeed,
because of the fanciful lobster design in each of
applicant’s marks, consumers may believe that the marks
identify new seafood restaurants originating from or
affiliated with registrant. Again, the fact that each of
the involved marks is dominated by the identical term LOS
ARCOS plays a significant role in our analysis. The
du Pont factor of the similarity of the marks weighs in
favor of a finding of likelihood of confusion.
Applicant, in contending that the marks are not
similar, asserts that the term LOS ARCOS is widely used in
the restaurant field and that the commonality of the term
is an insufficient basis upon which to find that the marks
are confusingly similar. Applicant introduced the results
of an Internet search of the words “los arcos restaurant”
(ten hits). Applicant’s evidence does not compel a finding
of no likelihood of confusion in this case. As the Federal
Circuit has stated, “[t]he probative value of third-party
trademarks depends entirely upon their usage.” Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en
1772, supra at 73 USPQ2d 1693. At best, the uses comprise
Ser Nos. 77320207 and 77320242
9
evidence that the consuming public could be potentially
cognizant of third-party use of the term “Los Arcos.” The
record, however, is devoid of any evidence of the consuming
public’s awareness of such uses; nor is there any
information as to, for example, how long the websites have
been operational or the extent of public exposure to the
sites. Where the “record includes no evidence about the
extent of [third-party] uses … the probative value of this
evidence is minimal.” Han Beauty, Inc. v. Alberto-Culver
Co., 236 F.3d 1333, 57 USPQ2d 1557, 1561 (Fed. Cir. 2001).
In view thereof, we cannot conclude that there is such
significant third-party use of “Los Arcos” marks or trade
names that consumers are likely to make a distinction
between registrant’s mark and applicant’s marks if these
marks were used in connection with identical services.
In view of the foregoing, we conclude that consumers
familiar with registrant’s restaurant services offered
under the mark LOS ARCOS would be likely to believe, upon
encountering either of applicant’s marks M.C. LOS ARCOS
RESTAURANT and design or SABOR! LOS ARCOS RESTAURANT and
design for identical services, that such services originate
from or are somehow affiliated with the same source.
Decision: The refusals to register in application
Serial Nos. 77320207 and 77320242 are affirmed.