United States: TTAB Test: Is TACOLAND For Music Concerts Confusable With TACO TIERRA & Design For Restaurant Services?

Last Updated: September 28 2018
Article by John L. Welch

The USPTO refused registration of the mark TACOLAND, in standard character form, for "entertainment, namely, live musical concerts" and for "bar and cocktail lounge services," finding the mark confusable with the registered mark TACO TIERRA & Design (shown below) for "restaurant services." The cited registration states that the English translation of TERRA (sic) is LAND. On appeal, applicant argued that the "sight of each mark clearly is different" and that the actual services involved are distinct. How do you think this came out? In re TacoLand Holdings, LLC dba TacoLand, Serial No. 86935545 (September 21, 2018) [not precedential] (Opinion by Judge Thomas W. Wellington).

The Marks: There was no doubt that the Spanish word "tierra" means "land" in English. "Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English words for purposes of making our likelihood of confusion analysis." Of course, Spanish is a common, modern language spoken or understood by an appreciable number of U.S. consumers. The Board therefore concluded that "the many bilingual consumers in the United States will stop and translate TIERRA in the registered mark to 'land.'"

The Board found that TACO TIERRA is the dominant portion of the cited mark, since consumers are likely to focus on the literal portion rather than the design. As to applicant's argument, the Board pointed out that there is no "sight" or "side-by-side" test when comparing marks. It concluded that the marks are similar in connotation and commercial impression.

Although the expression TACO TIERRA is more likely to be understood as suggestive of a menu item, tacos, or Mexican cuisine being featured in the context of Registrant's restaurant services, consumers may also perceive a similar suggestive connotation upon viewing Applicant's TACOLAND in connection with live music, bar and cocktail lounge services. In other words, Applicant's mark is likely to suggest that its entertainment services or its bar and cocktail lounge may have a Mexican theme or that Mexican food, specifically tacos, may be served in conjunction with those services. As discussed, infra, the record demonstrates that it is common for live music venues, as well as bars and cocktail lounges, to also serve food.

As to sound and appearance, there is an obvious similarity due to the inclusion of the term TACO as the first portion of each mark.

The Board found the marks to be "overall more similar than not."

Crowded Field/Weak Mark: Applicant claimed that the "crowded field" of TACO-formative marks demonstrates that the cited mark is weak. However, applicant pointed to only two third-party registrations, one of which had been cancelled. As to the other registration (TACOLANDIA), there was no evidence that the mark is in use or that consumers are aware of it. In sum, there was no evidentiary support for applicant's assertion that the cited mark is weak.

The Services: Examining Attorney Philip Liu contended that applicant's entertainment services and its bar and cocktail lounge services are "closely related" to the restaurant services of the registrant because "it is common practice for the same entity to provide both parties' services and market such services under the same mark." He submitted website excerpts showing that consumers are accustomed to encountering live musical entertainment, restaurant services, and bar and cocktail lounge services under the same mark. Several use-based registrations also covered these services.

The Board found that the relatedness of the services weighed in favor of a finding of likely confusion.

Channels of Trade/Consumers: The evidence regarding relatedness of the services also demonstrated that they are advertised together and are offered at the same locations. Despite applicant's attempt to distinguish the actual services (i.e, its edgy "joint with a colorful past" versus "a family oriented fast food restaurant"), there are no such restrictions in the application and cited registration. The question of registrability must be decided not on the basis of the actual, real world usages but on the services as set forth in the application and registration. The Board must presume that the involved services will be offered in the normal channels of trade for such services, including websites advertising restaurant services, live music, and bar and cocktail lounge services.

Conclusion: Balancing the relevant du Pont, factors, the Board found confusion likely and it affirmed the refusal.

The TTABlog

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