Safeway Inc.v.ROK Drinks LLC

Trademark Trial and Appeal Board

Apr 29, 2020

92067036 (T.T.A.B. Apr. 29, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 29, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Safeway Inc.
v.
ROK Drinks LLC
_____

Cancellation No. 92067036
_____

Jordan S. Weinstein, Michelle M. Mikol, and Sarah P. Harrell of Barnes &
Thornburg LLP for Safeway Inc.

W. Andrew Pequignot and Lisa F. Moore of Moore Pequignot LLC
for ROK Drinks LLC.
_____

Before Cataldo, Lykos and Lynch,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On October 6, 2017, Safeway Inc. (“Petitioner”) filed a petition to cancel ROK
Drinks LLC’s (“Respondent”) registration on the Principal Register for the standard
character mark BANDERO for “distilled spirits” in International Class 331 on the
grounds that Respondent’s mark so resembles Petitioner’s previously used and
registered marks BANDOLERO for tequila that it is likely to cause confusion,

1 Registration No. 5271747, issued on August 22, 2017 from an application filed August 13,
2015.
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mistake, or deception of prospective consumers under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d). In the Petition to Cancel,2 Petitioner alleges use in commerce
of its marks “since as early as 1987” and pleads ownership of the following
registrations: Registration No. 18033763 for the mark BANDOLERO in typed form4
on the Principal Register for “wines and spirits; namely, tequila” in International
Class 33 and Registration No. 33151835 for the stylized mark BANDOLERO on the
Principal Register for “tequila” in International Class 33. The translation statement
on each registration reads as follows: “The English translation of the mark
“BANDOLERO” is ‘bandit.’” Pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R.
§ 2.122(d)(1), both pleaded registrations were properly made of record for purposes of
trial with the Petition to Cancel.6

2 Petition to Cancel ¶¶ 2-4; 1 TTABVUE 3-4.
Portions of the record have been designated confidential pursuant to the Board’s Standard
Protective Order automatically in place for all inter partes proceedings. The majority of
citations to the record refer to the redacted, publicly available versions of each submission on
TTABVUE, the Board’s online docketing system. The number preceding “TTABVUE”
corresponds to the docket entry number; the number(s) following “TTABVUE” refer to the
page number(s) of that particular docket entry. See Turdin v. Trilobite, Ltd., 109 USPQ2d
1473, 1476 n.6 (TTAB 2014). Only the docket entry number is provided for portions of the
record designated confidential.
3 Registered November 9, 1993 based on an application filed February 5, 1993; renewed.
4 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings;
the preferred nomenclature was changed to conform to the Madrid Protocol. See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012); see also TRADEMARK
MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (Oct. 2018).
5 Registered October 23, 2007 based on an application filed April 26, 2006; renewed.
6 Petition to Cancel, Exhibits 1 and 2 (printouts of Registration Nos. 1803376 and 3315183
from USPTO Trademark Electronic Search System (TESS) and Assignments databases
showing current owner, status and title); 1 TTABVUE 8-17.

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In its answer, Respondent admits that the U.S. Patent and Trademark Office
(“USPTO”) records indicate that Petitioner is the owner of its pleaded registered
marks and that the registrations are subsisting; that “tequila is a type of distilled
spirit;” that the specimen of use supporting its registration shows BANDERO used
in connection with “premium” tequila; and that the filing dates of Petitioner’s
applications to register precede the filing date of Respondent’s BANDERO
application.7 Otherwise, Respondent denies the salient allegations of the Petition to
Cancel. Respondent asserts various affirmative defenses, including laches, which
Respondent expressly stated in its trial brief that it was no longer pursuing.8
The case is fully briefed. Petitioner, as plaintiff in this proceeding, bears the
burden of establishing its standing and Section 2(d) claim by a preponderance of the
evidence. See Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1107 (TTAB 2007).
I. The Record
The record includes the pleadings, and pursuant to Trademark Rule 2.122(b), 37
C.F.R. § 2.122(b), Respondent’s registration file. Petitioner introduced the testimony
declaration of Maryrose Rinella, Director of Own Brands Product Manager for the
beverage, snack and alcohol division of Petitioner (“Rinella Decl.”) with Exhibits A-E
(11 TTABVUE – confidential; 12 TTABVUE – public). Petitioner also submitted

7 Answer ¶¶ 3 and 4; 4 TTABVUE 3-4.
8 Respondent’s Brief, p. 2 n.1; 22 TTABVUE 7. Respondent also asserted the affirmative
defense of failure to state a claim upon which relief may be granted. Insofar as Respondent
neither filed a formal motion to dismiss pursuant to Fed R. Civ. P. 12(b)(6) during the
interlocutory phase of this proceeding, nor argued this defense in his main brief, the defense
is deemed waived. See Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d
1750, 1752 n.6 (TTAB 2013), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.).
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notices of reliance during both its main (14 TTABVUE – Exhibits F-M) and rebuttal
(20 TTABUVE – Exhibits N-O) testimony periods. Respondent submitted no
testimony declarations or testimony depositions but made of record a notice of
reliance with Exhibits 1-32 (17 TTABVUE).
II. Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015); John W.
Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). Petitioner
must prove its standing by showing a real interest in the outcome of the proceeding
and a reasonable basis for believing that it would suffer damage if the mark is
registered. See 15 U.S.C. § 1063; Empresa Cubana Del Tabaco v. Gen. Cigar Co., 111
USPQ2d at 1062. A “real interest” is a “direct and personal stake” in the outcome of
the proceeding. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir.
1999).
Petitioner has demonstrated through the USPTO database printouts made of
record with its Petition to Cancel that it is the owner of its pleaded registrations for
the mark BANDOLERO for tequila and that the registrations are valid and
subsisting.9 Petitioner has established its standing to bring a Section 2(d) claim that
is plausible. See Lipton Indus. Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ

9 Petition to Cancel, Exhibits 1 and 2 (printouts of Registration Nos. 1803376 and 3315183
from USPTO Trademark Electronic Search System (TESS) and Assignments databases
showing current owner, status and title); 1 TTABVUE 8-17.
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185, 189 (CCPA 1982). Respondent does not challenge Petitioner’s standing to bring
this proceeding.10
III. Section 2(d) Claim
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), prohibits the registration
of a mark that
[c]onsists of or comprises a mark which so resembles a
mark registered in the Patent and Trademark Office, or a
mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used
on or in connection with the goods of the Respondent, to
cause confusion, or to cause mistake, or to deceive.
We will concentrate on the mark BANDOLERO in typed form, shown in Registration
No. 1803376 on the Principal Register for “wines and spirits; namely, tequila” in
International Class 33. If a likelihood of confusion is found as to this registration, it
is unnecessary to consider Petitioner’s registration for a stylized version of this mark.
Conversely, if likelihood of confusion is not found as to the mark in this registration,
we would not find it as to the marks in the other pleaded registrations. See, e.g., In re
Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. Priority
Typically, in a cancellation proceeding in which both parties own registrations,
the petitioner must prove priority of use. See Brewski Beer Co. v. Brewski Bros., Inc.,
47 USPQ2d 1281 (TTAB 1998). Here, Respondent in its trial brief does not dispute
Petitioner’s priority; nonetheless, in order to prevail Petitioner must still establish

10 Respondent’s Brief, p. 2 n.1; 22 TTABVUE 7.
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priority.11 Because Petitioner’s Registration No. 1803376 is of record, Petitioner may
rely on the registration as proof that the mark was in use as of the filing date of the
underlying application. See Trademark Act § 7(c); see also J.C. Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960, 144 USPQ 435, 437 (CCPA 1965). Petitioner’s registration
issued on November 9, 1993 from an application filed February 5, 1993. This is long
prior to the August 13, 2015 filing date of Respondent’s underlying application, which
is the earliest date on which Respondent is entitled to rely given the absence of any
evidence of earlier use. Accordingly, Petitioner has established priority.
B. Likelihood of Confusion
Having established priority, the remaining issue in this case is likelihood of
confusion. Our analysis is based on all of the probative evidence of record. In re E. I.
DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(“DuPont”). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In making our determination, the Board has considered each
DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co.,
912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be
assigned to each DuPont factor depending on the evidence presented. See Citigroup
Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993)

11 Respondent’s Brief, p. 2 n.1; 22 TTABVUE 7.
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(“[T]he various evidentiary factors may play more or less weighty roles in any
particular determination”).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods. See In re Chatam Int’l
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”). These
factors, and the other DuPont factors argued by each party, are discussed below.
1. The Goods
First we consider the goods as identified in Petitioner’s and Respondent’s
registrations.12 See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052
(Fed. Cir. 2018); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Computs. Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and Hewlett-Packard Co.
v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). The identified
goods in Respondent’s registration are “distilled spirits.” As unrestricted, the
identification encompasses all types of “distilled spirits” including “tequila” as
identified in Petitioner’s Registration No. 1803376. See, e.g., In re Hughes Furniture
Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded
identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified

12 We observe that Respondent does not address this DuPont factor in its brief.
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‘residential and commercial furniture.’”). Thus, on their face, the parties’ goods are
in-part legally identical;13 therefore, this DuPont factor weighs heavily in favor of
finding a likelihood of confusion.
2. The Established, Likely-to-Continue Channels of Trade and Classes
of Consumers

Next we consider the established, likely-to-continue channels of trade and classes
of consumers. According to the record, Petitioner sells its “bottom-shelf”
BANDOLERO tequila in Safeway-branded grocery stores and other grocery stores
owned by Safeway’s parent corporation, Albertson’s Companies, such as Tom Thumb,
Randalls and Jewel-Osco in 19 states.14 By contrast, Respondent offers a “premium”
tequila under the mark BANDERO15 for sale in liquor stores, restaurants, and via
wholesale alcohol distributors.16 Respondent points to this as evidence of non-
overlapping trade channels because the parties’ tequila will not be sold in the same
grocery stores since Petitioner’s brand is sold primarily, if not exclusively, in its own
affiliates.
This is not a federal trademark infringement action but rather an administrative
proceeding to determine whether Respondent is entitled to maintain its federal

13 “[I]t is sufficient for finding a likelihood of confusion if relatedness is established for any
item encompassed by the identification of goods within a particular class in the application.”
In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing Tuxedo Monopoly, Inc.
v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). See also In re
i.am.symbolic,llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d
1744 (Fed. Cir. 2017)).
14 Rinella Decl. ¶¶ 14 and 16; 12 TTABVUE 4.
15 Id. at 14.
16 Petitioner’s Notice of Reliance, Exhibit J (confidential) at 13 TTABVUE.
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registration. In accordance therewith, because the goods are in-part legally identical
and as identified in the registrations are unrestricted as to trade channels, we must
presume that these particular goods travel in the same ordinary trade and
distribution channels and will be marketed to the same potential consumers,
notwithstanding the record evidence. See In re Viterra Inc., 101 USPQ2d at 1908
(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, the channels of trade and
classes of purchasers are considered to be the same); Am. Lebanese Syrian Associated
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
This includes any type ordinary trade channel for tequila including, where permitted
under state law, grocery stores, regardless of affiliation with Petitioner.
While we acknowledge Petitioner’s evidence that its sales predominantly occur
in Safeway affiliated grocery stores in 19 states, this cannot be a factor in our
determination. Petitioner does not own a concurrent use registration, that is, a
geographically restricted registration. Rather, Petitioner owns a territorially
unrestricted registration, meaning that it presumptively has the exclusive right to
market and sell its brand of tequila not only within those states and grocery stores it
currently markets its tequila, but throughout the entire United States and its
territories. Hence, this DuPont factor also weighs in favor of finding a likelihood of
confusion.
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3. Purchasers and Conditions of Sale
This DuPont factor examines the conditions under which, and to whom, sales
are made. Purchaser sophistication may tend to minimize likelihood of confusion.
Conversely, impulse purchases of inexpensive items may tend to have the opposite
effect.
Respondent argues that its tequila is a premium top-shelf product sought out by
tequila aficionados whereas Petitioner’s bargain priced tequila lacks the same cache.
Petitioner’s BANDOLERO branded tequila is priced to appeal to the price-driven
consumer, retailing at $7.00 - $8.00 for a 750-milliliter bottle,17 whereas the same
sized bottle offered under Respondent’s BANDERO mark retails for around $40.00,
which is approximately the same price as other premium tequilas.18
Again, we are not persuaded by Respondent’s arguments. As identified, the
parties’ respective goods are not limited in any way as to purchasers, conditions of
sale or price. It therefore must be assumed that both parties’ goods are available to
all consumers of legal age to purchase tequila, including ordinary consumers who
may buy inexpensive tequila on impulse. See Packard Press, Inc. v. Hewlett-Packard
Co., 227 F.3d 1352, 56 USPQ2d 1351, 1357 (Fed. Cir. 2000) (must focus on
identifications, regardless of any actual marketplace evidence of “the particular
channels of trade, or the class of purchasers to which sales of the goods or services
are directed”); In re Bay State Brewing Co., Inc., 117 USPQ2d 1958, 1960 (TTAB

17 Petitioner’s Notice of Reliance Exhibits L and M 14 TTABVUE 47-48, 53.
18 Respondent’s Notice of Reliance, Exhibits 15 and 32, 17 TTABVUE 418-19.
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2016); see also Stone Lion, 110 USPQ2d at 1163-64 (recognizing Board precedent
requiring consideration of the “least sophisticated consumer in the class”). “When
products are relatively low-priced and subject to impulse buying, the risk of likelihood
of confusion is increased because purchasers of such products are held to a lesser
standard of purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1899 (Fed. Cir. 2000) (citations omitted). Furthermore, there is nothing in the
record to suggest that consumers seeking tequila are more discriminating than the
average consumer. The conditions of sale and nature of the prospective consumers
therefore favor finding a likelihood of confusion.
4. The Marks
Keeping in mind that the in-part legal identity of the parties’ goods reduces the
degree of similarity between the marks necessary to find a likelihood of confusion, In
re Viterra, 101 USPQ2d at 1908, we now compare Petitioner’s typed mark
BANDOLERO with Respondent’s standard character mark BANDERO. This DuPont
factor involves an analysis of the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression. Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (citing DuPont, 177 USPQ at 567). “Similarity
in any one of these elements may be sufficient to find the marks confusingly similar.”
In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777
F. App’x (Fed. Cir. 2019) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)).
Accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526
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(CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone
is likely to cause confusion.”).
The proper test regarding similarity “is not a side-by-side comparison of the
marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d
1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal
quotation marks and citation omitted)). Further, the marks “must be considered …
in light of the fallibility of memory ….” In re St. Helena Hosp., 774 F.3d 747, 113
USPQ2d 1082, 1085 (Fed. Cir. 2014) (quotation omitted). The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. In re Bay State Brewing Co., 117 USPQ2d at 1960
(citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991)), aff’d
per curiam, 972 F.2d 1353 (Fed. Cir. 1992); see also In re Binion, 93 USPQ2d 1531,
1534 (TTAB 2009).
Respondent argues that to both English and Spanish speakers, the marks differ
in sound, appearance, connotation and commercial impression. As shown on the
registration certificate and reflected in the evidentiary record, Petitioner’s mark is
the Spanish word “bandolero” which translates to “bandit.”19 Respondent argues that
its mark BANDERO is not a recognized word in the Spanish language, and at most

19 Respondent’s Notice of Reliance, Exhibit 27; 17 TTABVUE 385-88.
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is similar to the word “bandera,” which is Spanish for “flag.”20 As evidence of its intent
to draw on this meaning, Respondent points to its packaging design which features
the Mexican flag on the front of the bottle.21 It also points to a cocktail known as a
“Bandera” that features the colors of the Mexican flag.22 For these reasons,
Respondent contends that Spanish-speaking consumers, who represent an
appreciable segment of the U.S. public, will readily differentiate the marks given
their different meanings; such consumers would perceive BANDOLERO as “bandit”
but view BANDERO as a variant of the Spanish word “bandera” for “flag” or
alternatively as a coined term. In addition, Respondent contends that those
consumers who only speak English will be able to differentiate BANDERO and
BANDELERO based on their different spelling and pronunciation. Respondent
observes that BANDELERO would likely be pronounced with four syllables whereas
BANDERO will be pronounced with three, and that “[w]hile the sounds made at the
beginning of the words are similar (a rock “band” versus a gun “ban”), and the vowel
sound at the end is the same, the number and sound of the syllables in the middle,
“-O-” (as in “oh”) then “-LER-” (as in “lair”) versus “DER” (as in “dare”), are very
different.”23

20 Id.
21 Id. at Exhibit 15; 17 TTABUVE 61, 65 (depicting BANDERO bottle being sold in the
marketplace).
22 Id. at Exhibit 24; 17 TTABVUE 265-75.
23 Respondent’s Brief, p. 10; 21 TTABVUE 15.
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We agree that U.S. consumers who comprehend Spanish will understand
Petitioner’s mark BANDOLERO as “bandit.” By contrast, Respondent’s mark
BANDERO is a coined term or at most a misspelling of the Spanish word for “flag.”
Thus, to Spanish speakers, the marks may indeed project different meanings.
Nonetheless, they are highly similar in sound and appearance. Each mark
commences with the letter string “B-A-N-D” and ends with “E-R-O.” The sole
distinction is the additional letter string “O-L-E” between these two elements in
Petitioner’s mark. While the marks are pronounced differently, the distinction,
because it occurs in the middle of the mark, is slight. Consumers do not focus on
minutia but rather overall impressions. See In re John Scarne Games, Inc., 120 USPQ
315, 315-16 (TTAB 1959) (“Purchasers of game boards do not engage in trademark
syllable counting — they are governed by general impressions made by appearance
or sound, or both.”).
Thus, we find that Respondent’s and Petitioner’s marks, considered as a whole,
while different in meaning and connotation to consumers who comprehend the
Spanish language, are highly similar in appearance and sound. And as noted above,
similarity in any one of these elements may suffice to find the marks confusingly
similar. In re Inn at St. John’s, 126 USPQ2d at 1746. Our finding is further informed
by the fact that the goods are in-part legally identical. As such, we find that the first
DuPont factor weighs in favor of finding a likelihood of confusion.
5. Commercial Strength or Fame
Commercial strength or fame is the extent to which the relevant public recognizes
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a mark as denoting a single source. Fame, if it exists, plays a dominant role in the
likelihood of confusion analysis because famous marks enjoy a broad scope of
protection or exclusivity of use. A famous mark has extensive public recognition and
renown. Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897
(Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992). Because of the extreme deference that we accord
a famous mark in terms of the wide latitude of legal protection it receives, and the
dominant role fame plays in the likelihood of confusion analysis, it is the duty of the
party asserting that its mark is famous to clearly prove it. Coach Servs., 101 USPQ2d
at 1720 (citing Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901,
1904 (TTAB 2007)).
A mark’s commercial strength or fame is not a binary factor in the context of a
likelihood of confusion analysis. Joseph Phelps Vineyards, LLC v. Fairmont Holdings,
LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (“The TTAB applied a
legally incorrect standard in applying an all-or-nothing measure of ‘fame,’ more akin
to dilution analysis.”). Rather, likelihood of confusion fame “varies along a spectrum
from very strong to very weak.” Palm Bay, 73 USPQ2d at 1694 (quoting In re Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003)). Famous marks “enjoy
wide latitude of legal protection” and are “more attractive as targets for would-be
copyists.” Id. Fame for likelihood of confusion purposes arises as long as a “significant
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portion of the relevant consuming public ... recognizes the mark as a source indicator.”
Id.
Commercial strength or fame may be measured indirectly by the volume of sales
and advertising expenditures in connection with the goods or services sold under the
mark, and other factors such as length of time of use of the mark; widespread critical
assessments; notice by independent sources of the goods or services identified by the
marks; and the general reputation of the goods or services. Weider Publ’ns, LLC v. D
& D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014), appeal dismissed per
stipulation, No. 2014-1461 (Fed. Cir. Oct. 10, 2014); see also Bose, 63 USPQ2d at 1308
(recognizing indirect evidence as appropriate proof of strength). In addition, some
context in which to place raw statistics may be necessary (e.g., the substantiality of
the sales or advertising figures for comparable types of products or services). Bose, 63
USPQ2d at 1309. “[T]he proper legal standard for evaluating the fame of a mark
under the fifth DuPont factor is the class of customers and potential customers of a
product or service, and not the general public.” Joseph Phelps Vineyards, 122
USPQ2d at 1734.
Petitioner asserts that its BANDOLERO mark has achieved “significant
commercial strength” due to over 30 years of use and units sold in the past 10 years.24
Petitioner testified as to revenues generated under the BANDOLERO mark for
tequila for the years 2009-2017, and partially for 2018.25 Petitioner also points to

24 Rinella Decl., ¶ 12.
25 Id. (confidential)
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sales in at least sixteen different chains of stores across nineteen states,26 and
promotion in an Albertsons grocery store circular.27
We find that Petitioner’s sales figures, revenues and promotional efforts fall on
the low end of the commercial strength or fame spectrum. Compare Palm Bay, 73
USPQ2d at 1689 (VEUVE CLICQUOT found famous amongst purchasers of
champagne and sparkling wine based upon sale in 8000 restaurants nationwide,
liquor stores, wine shops and other retail establishments; extensive promotional
campaign consisting of print advertisements in general interest magazines and in
wine specialty magazines, radio ads, point-of-sale displays, wine tastings; unsolicited
recognition in New York Times, Boston Globe, Money Magazine). For example,
Petitioner did not submit representative samples of print advertisements circulated
over a substantial period of time on a national scale, nor did Petitioner submit
evidence of promotional activities in other media such as television or event
promotion. The record is devoid of unsolicited media recognition or industry
accolades. It is also problematic that Petitioner has failed to submit any evidence of
annual advertising expenditures under the mark in the U.S. market. As to revenues,
Petitioner failed to put these numbers in perspective in order to give us a sense of its
U.S. market share. Thus, while Petitioner’s BANDOLERO branded tequila may enjoy
some degree of recognition, its commercial strength or fame is relatively modest. This
DuPont factor therefore is neutral.

26 Id. at ¶ 14, 16, and Attachment C.
27 Respondent’s Notice of Reliance, Exhibit 19; 17 TTABVUE 238-242.
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6. The Number and Nature of Similar Marks in Use on Similar Goods
Next we direct our attention to the number and nature of similar marks in use
on similar goods. In a cancellation proceeding, “[t]he purpose of [a respondent]
introducing third-party uses is to show that customers have become so conditioned
by a plethora of such similar marks that customers have been educated to distinguish
between different such marks on the bases of minute distinctions.” Palm Bay, 73
USPQ2d at 1694; see also Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136
(Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1675-76 (Fed. Cir. 2015).
Before discussing the evidence pertaining to this DuPont factor, we address an
issue raised by Respondent. Respondent urges the Board not to confine its analysis
of third-party uses and marks to tequila or spirits but to consider all types of alcoholic
beverages, including beer and wine. In support of its position, Respondent cites to
case law (e.g., In re Chatam Int’l Inc., 380 F.3d 1340, 1344, 71 USPQ2d 1944 (Fed.
Cir. 2004) (affirming finding that tequila and beer are related goods)), and evidence
in the record that distilled spirits and beers and distilled spirits and wines often come
from the same source and are sold in the same trade channels.28 In addition,

28 Respondent’s Notice of Reliance Exhibit 19 (advertising circular offering for sale in Safeway
and its affiliated stores tequila and other distilled spirits together with wine and beer);
Exhibit 25 (articles about third-party entities operating as distilleries and breweries;
printout from Five & 20 Spirits and Brewing website offering for sale beer, wine and spirits;
printout from The Grand Canyon Brewing + Distillery offering for sale beer and vodka under
the Grand Canyon housemark; printout from Tattered Flag brewery and distillery offering
for sale beer, tequila, vodka and gin), and Exhibit 26 (showing the same third-party entities
operating as distilleries and wineries; printout from Charbery distillery and winery website
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Respondent asks the Board to consider third-party uses and marks of the English
equivalent of Petitioner’s mark which, as noted above, is “bandit” under the doctrine
of foreign equivalents.
Within the context of evaluating the second DuPont factor, there is no per se rule
that tequila is related to either beer or wine. In re White Rock Distilleries Inc., 92
USPQ2d 1282, 1285 (TTAB 2009) (“There is no per se rule that holds that all alcoholic
beverages are related.”) (citing G. H. Mumm & Cie v. Desnoes & Geddes Ltd., 917
F.2d 1292, 16 USPQ2d 1635 (Fed. Cir. 1990) and Nat’l Distillers and Chem. Corp. v.
William Grant & Sons, Inc., 505 F.2d 719, 184 USPQ 34 (CCPA 1974)). See also,
TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1207.01(a)(iv) (Oct. 2018)
(“… there can be no rule that certain goods or services are per se related, such that
there must be a likelihood of confusion from the use of similar marks in relation
thereto”). “[E]ach case must be decided on its own facts,” DuPont, 177 USPQ at 567,
meaning that we must look to the particular record before us in making our
assessment. Nonetheless, here under the sixth DuPont factor we consider evidence of
third-party uses and marks for distilled spirits, wine and beer relevant because on
this record, Respondent has shown a commercial relationship between distilled
spirits such as tequila in relation to wine or beer.29 See Century 21 Real Estate Corp.

offering for sale tequila and wine; printout from Elgin Winery and Distillery offering for sale
wine and spirits; printouts from Ranson Wine Co. & Distillery offering for sale wine and
spirits under the Ranson housemark; printout from Six Mile Creek Winery & Distillery
offering for sale wine and spirits; printouts from Sweetgrass Winery and Distillery offering
for sale wine and spirits). 17 TTABVUE 237-242, 276-384.
29 By contrast, in Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128
USPQ2d 1686, 1693 (Fed. Cir. 2018) the U.S. Court of Appeals for the Federal Circuit found
the Board’s analysis under the sixth DuPont factor “legally flawed” when it considered third-
Cancellation No. 92067036
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v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992) (“the “relevant DuPont
inquiry is ‘[t]he number and nature of similar marks in use on similar goods”)
(quoting Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 1548 (Fed. Cir. 1990)).
That is to say, the record shows that wine and beer fall within the realm of “similar
goods” as compared to “tequila” for purposes of considering evidence of third-party
use.
As to whether the doctrine of foreign equivalents applies under this factor, we
need not decide this issue. In this particular case, due to the marks’ similarities in
sound and appearance, third-party evidence of “bandit” marks potentially may have
a bearing on whether consumers might distinguish between BANDOLERO and
BANDERO based on small differences since these marks all share the same initial
letter string of “B-A-N-D.”
With this in mind, we turn to the evidence before us. Respondent argues that
Petitioner’s mark BANDOLERO is entitled to a narrow scope of protection because
the consuming public is exposed to third-party use of marks on similar goods. In
support thereof, Respondent has submitted numerous excerpts from a social media
platform called “Untappd” (https://untappd.com), a website and app where users can
post information on various beers they have sampled and post reviews. Some
examples in the record include:

party uses and marks comprised of the designation OMAHA not only for meat and meat
products but also for “a diverse range of third-party products, such as ‘popcorn,’ ‘wine,’
‘oriental foods,’ and ‘alcoholic beverages.’” The Court, in remanding the case back to the
Board, reasoned that the goods were “clearly dissimilar” insofar as “these goods bear no
relationship to meat or meat-based products” and therefore “are not ‘similar’ to meat
products.” Id. at 1693-94.
Cancellation No. 92067036
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PW is drinking BANDELERO at Peckish Pig Brewpub at
Peckish Pig.
Taylor M. is drinking BANDOLERO by Innovation
Brewing.
Tony is drinking a BANDOLERO by Snipes Mountain
Brewing at Snipes Mountain Brewery.
Lee R. is drinking a BARREL-AGED BANDOLERO by
Snipes.
Dan M. is drinking a BARREL-AGED BANDOLERO by
Iron Fist Brewing Co.
Viktor G. is drinking AMERICAN BANDIT by Breakwater
Brewing Co.
Rob W. is drinking BANDIDOS YANQUIS by Breakwater
Brewing Co.
Dane D. is drinking AND THE BANDIT by Union Brewing
Co.
Anthony W. is drinking ANTONITO BANDITO by Chili
Line Brewing Co.
Stephen C. is drinking BANDIT by Columbus Brewing Co.
Joey is drinking BANDIT by Chili Line Brewing Co.
Justin K. is drinking BANDIT by Kozy Yak Brewing Co.
Anthony W. is drinking ANTONITO BANDITO by Chili
Line Brewing Co.
Molly K. is drinking a BANDIT by Railport Brewing Co.
Steph F. is drinking a BANDIT by White Rooster
Farmhouse Brewing.
James B. is drinking a BANDIT BOURBON STOUT at
Lake Gaston Brewing Company.
Carrie W. is drinking a BANDIT BRETT IPA at Woodland
Empire Ale Craft at Bittercreek Alehouse.
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Joe W. is drinking a BANDIT BREW by Bent River
Brewing Company at Sippi’s American.
Dennis S. is drinking a BANDIT BROWN by City Star
Brewing Company at The Fritzler’s Corn Maize.
Beer and G. is drinking a BANDIT BROWN by Horse
Heaven Hills Brewery.
David B. is drinking a BANDITO BROWN ALE by
Scottsdale Beer.
David B. is drinking a BANDITO IPA by Payette Brewing
Company at Heritage Park.
Ray P. is drinking a BANDITO LIME-ITO by Dirtbags Ales
at Dirtbags Ales Brewery & Taproom.30
Unlike evidence from business-to-consumer (B2C) websites, however, this evidence
merely demonstrates that various individuals have made statements that they tasted
various beers purchased under these trademarks. We are unable to ascertain whether
any of these beers are widely distributed in retail outlets such as liquor or grocery
stores or sold only on tap at the premises of a restaurant or a microbrewery. Thus the
probative value of this evidence is limited since it is difficult to assess the scope of
U.S. consumer exposure.
The majority of Respondent’s remaining evidence of third-party uses and
registrations pertains to wine and beer, not distilled spirits. The evidence of third-
party use can be summarized as follows:
An excerpt from winewatch.com offering BANDOLERO
branded wine from Revolver Wine Co.31

30 Respondent’s Notice of Reliance, Exhibits 10, 11, 16-A, 16-B; 17 TTABVUE 36-42; 75-217.
31 Id. at 12; 17 TTABVUE 43.
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An excerpt from Bandit Wines B2C website
(www.banditwines.com) advertising a variety of BANDIT
branded wines such as pinot grigio, merlot, and red blend.32
An excerpt from Norman’s Liquors & Fine Wines website
(www.normansliquors.com) offering for sale TIME
BANDIT VODKA.33
An excerpt from Wordworth Wine website
(www.wordworthwine.com) offering for sale RESERVE
WILD BANDIT branded wine.34
Excerpt from Old Town Tequila – The Tequila, Mezcal &
More Superstore (www.oldtowntequila.com) offering for
sale tequila under the following relevant trademarks:
BANDOLON, BANDERO, and ZEE BANDIDO DE
AMORES.35
A printout from Bandit Brewing’s Facebook page.36
Printouts from the Two Bandits Brewing Co. website
advertising restaurant and “house brews” at its location in
Hicksville, Ohio.37
Printouts from the Ramirez Liquor website offering for sale
tequila under the trademarks BANDOLON, BRACERO,
and BANDOLERO.38
Printouts from the Ryann’s Wines website located in East
Meadow, New York offering for sale prosecco under the
trademark BANDOLINO.39

32 Id. at Exhibit 13; 17 TTABVUE 46-56.
33 Id. at Exhibit 14; 17 TTABUVE 57.
34 Id. at Exhibit 14; 17 TTABUVE 57-58.
35 Id. at Exhibit 15; 17 TTABUVE 59-74
36 Id. at Exhibit 17; 17 TTABVUE 220-222.
37 Id. at Exhibit 17; 17 TTABVUE 223-229.
38 Id. at Exhibit 18; 17 TTABVUE 230-236.
39 Id. at Exhibit 21; 17 TTABVUE 254.
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Printouts from the Artisanal Beverages website offering for
sale of tequila under the trademark BANDISTAS.40
Printouts from the Cork Tree Fine Wines, Sky View Wines,
and Soeiku Wine websites offering for sale prosecco under
the trademark BANERO.41
Printout from Jewel-Osco Facebook page for TRES
BANDIDOS sangria.42
Printouts from the Los Beltran website offering for sale of
tequila under the trademark BANDOLON.43
Respondent also made of record the following third-party registrations for
tequila, distilled spirits, wine or beer, some of which, such as those associated with
Rebel Wine Co., have corresponding evidence of use:
Registration No. 3945274 for the mark BANDIERA for
“wine,” with the statement that “The English translation
of ‘BANDIERA’ in the mark is ‘flag.’”
Registration Nos. 3974340 and 3311926, owned by Rebel
Wine Co., each for the mark BANDIT for “Alcoholic
beverages except beers,” and “wine.” Rebel Wine Co. also
owns Registration No. 5037223 for the mark TRES
BANDIDOS for “Alcoholic beverages except beers” and
Registration No. 3276857 for the mark WINE BANDITS
for “Alcoholic beverages except beers.”
Registration No. 5396710 for the mark BANDOLINO for
“Wines and sparkling wines.”
Registration No. 4282301 for the mark BANERO for
“Grape wine; Red wine; Sparkling grape wine; Sparkling
wines; White wine; Wine; [ Wines and fortified wines; ]
Wines and sparkling wines.”

40 Id. at Exhibit 22; 17 TTABVUE 255-260.
41 Id. at Exhibit 23; 17 TTABVUE 262-264.
42 Id. at Exhibit 28; 17 TTABVUE 390.
43 Id. at Exhibit 31; 17 TTABVUE 411-415.
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Registration No. 4682901 for the stylized mark BOLERO
and design for “wine.”
Registration No. 5149090 for the mark BANDISTAS for
“spirits,” with the statement that “The English translation
of ‘BANDISTAS’ in the mark is ‘band man.’”44
Active third-party registrations may be relevant to show that a mark or a portion of
a mark is descriptive, suggestive, or so commonly used that the public will look to
other elements to distinguish the source of the goods. See, e.g., Jack Wolfskin, supra;
Juice Generation, 115 USPQ2d at 1674-75; In re Hartz Hotel Servs., Inc., 102 USPQ2d
1150, 1153-54 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB
1991); In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911-12 (TTAB 1988);
Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). While the
record does not allow us to draw any conclusions as to the descriptive or suggestive
meanings of such registered marks, it does show that it is not uncommon for such
marks to commence with the letter string “B-A-N-D,” especially for wine.
Taken together, we find that the evidence of third-party use and marks in
connection with spirits, wine and beer commencing with the letter string “B-A-N-D”
show that Petitioner’s mark has some degree of weakness. For this reason, a
likelihood of confusion is limited to those marks “as to which the resemblance to
[Petitioner’s mark] is striking enough to cause one seeing it to assume that there is
some connection, association or sponsorship between the two.” Anthony’s Pizza &
Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009),

44 Id. at Exhibits 1-9; 17 TTABVUE 9-34.
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aff’d, 415 Fed. Appx. (Fed. Cir. 2010). This sixth DuPont factor therefore weighs
somewhat against finding a likelihood of confusion.
7. Extent of Potential Confusion
Last, we consider the extent of potential confusion, i.e., whether de minimis or
substantial. Since the goods are in-part legally identical and marketed in the same
trade channels to the same purchasers, the potential for confusion therefore cannot
be deemed de minimis. Accordingly, this DuPont factor favors a finding of likelihood
of confusion.
8. Balancing the Factors
As explained above, the sixth DuPont factor weighs somewhat against a likelihood
of confusion. While there are instances where a single DuPont factor is dispositive
(see, e.g., Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed.
Cir. 1991)), we find that the sixth DuPont factor does not play such a role here, given
the “striking” similarity in the marks in sound and appearance when compared as a
whole, in particular as applied to in-part legally identical goods. See, e.g., Anthony’s
Pizza, 95 USPQ2d at 1283 (“The evidence of third-party registration and use of
ANTHONY’S, although one factor (and a significant one under the facts in this case)
to be considered, does not persuade us of a different result, because we believe that
this factor is outweighed by the other factors.”). Despite differences in connotation
and commercial impression, overall, the marks are similar in sound and appearance.
The in-part legal identity of Respondent’s and Petitioner’s goods and their
overlapping channels of trade and classes of purchasers not only weigh heavily in
favor of a finding of likelihood of confusion, but also reduce the degree of similarity
Cancellation No. 92067036
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between the marks necessary to find a likelihood of confusion. Because Petitioner’s
and Respondent’s registrations are unrestricted, we must assume that they
encompass all levels of quality of tequila sold at all price points. This means that we
must take into account that a consumer may not exercise a high degree of care when
making a purchasing decision. In addition, we do not find the commercial strength of
Petitioner’s mark, while on the low end of the scale, significantly diminished by third-
party use or registrations. Weighing these factors, we find confusion likely. In
reaching this conclusion, we have carefully considered all of the evidence pertaining
to the relevant DuPont factors, as well as all of the parties’ arguments with respect
thereto.
Accordingly, we find that Petitioner has proved its standing, priority, and
likelihood of confusion by a preponderance of the evidence.
Decision: Petitioner’s Section 2(d) claim is sustained and the Petition to Cancel
is granted. Respondent’s registration will be canceled in due course.