Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 CONAGRA, INC. SUBSTITUTED FOR DEL MONTE CORPORATION
JOSE LUIS SAAVEDRA, D.B.A., EMPACADORA "TAPATIO"
Cancellation No. 13,949
September 4, 1987
Hearing: June 24, 1987
Richard Compere and Jeffrey Handelman and Willian, Brinks, Olds, Hofer, Gilson & Lione Ltd. for ConAgra, Inc.
Warren T. Jessup, Kieth D. Beecher, Richard D. Slehofer and Jessup, Beecher & Slehofer for Jose Luis Saavedra, d.b.a., Empacadora "Tapatio"
Before Sams, Rice and Krugman
A petition has been filed to cancel a registration for the mark 'TAPATIO' for meatless hot sauce. [FN1]
As grounds for cancellation, petitioner asserts that respondent's mark so resembles petitioner's previously used and registered marks PATIO and design for enchilada dinner composed of enchiladas with chili gravy and beans, [FN2] PATIO for tortillas, tacos, enchiladas, burritos, and prepared dinners consisting of combinations of enchiladas, tamales, chili gravy, tacos, refried beans and rice [FN3] and PATIO (stylized) for a variety of frozen and canned prepared foods, including Mexican style food such as tamales, enchiladas, etc. [FN4] as to be likely, when applied to respondent's goods, to cause confusion, mistake or to deceive. Petitioner has further alleged that the registered mark constitutes deceptive matter under Section 2(a) of the Act since the mark is the name applied to persons or things originating in Guadalajara, Mexico; that respondent's goods do not originate in Guadalajara, Mexico; that Mexican style food products acquire greater quality or salability in the minds of persons of Mexican heritage if such goods are perceived as originating in Mexico; and that respondent applied TAPATIO to its product, signifying that the product originated in Guadalajara, Mexico, knowing that such designation would bestow upon its product an appearance of greater quality or salability not actually possessed by it with the intention of inducing or misleading a particular class of consumer into purchasing the product. Alternatively, petitioner alleges that if the mark is not found to be deceptive under Section 2(a), it is primarily geographically deceptively misdescriptive under Section 2(e)(2) of the Act since a portion of the purchasing public will make a goods-place association between respondent's meatless hot sauce and Guadalajara, Mexico and, because of the mark used in connection with the goods, be deceived into believing that said goods originate in Guadalajara when, in fact, they do not. [FN5]
Respondent, in its answer to the petition for cancellation, has denied the allegations therein.
The record consists of the pleadings, the file of respondent's registration, petitioner's three pleaded registrations, status and title copies of which have been made of record pursuant to a notice of reliance, a number of printed publications available to the general public relied on by petitioner, portions of a discovery deposition (and exhibits) taken by petitioner of respondent Jose Luis Saavedra and relied on by petitioner, a number of printed publications available to the general public relied on by respondent, a number of third-party registrations relied on by respondent and testimony (and exhibits) taken by both parties. Both parties have filed briefs on the case and petitioner has filed a reply brief. Both parties were represented at an oral hearing held before this panel.
*2 Petitioner's priority in its PATIO mark has been established by the introduction into evidence of its pleaded registrations, two of which have filing dates prior to the date of first use alleged by respondent, and by the testimony of Brenda Bock, petitioner's director of marketing for frozen ethnic foods and development brands. The Bock testimony shows that petitioner sells its PATIO food products in supermarkets and other food stores across the country. Gross sales of PATIO products have ranged from approximately $11 million in 1969 to $24.6 million in 1983. Petitioner advertises its PATIO products in newspapers, television and through point-of-sale promotions and advertising expenditures were $1.9 million in 1969, increasing to $5.5 million in 1983.
With respect to the goods sold under the TAPATIO and PATIO marks, there can be no serious dispute that both petitioner and respondent market complementary, closely related food products. Petitioner markets a whole range of Mexican style food products, including tacos, tamales, burritos, enchiladas, etc. Many if not all of these products are consumed with one or more types of sauces, including a hot sauce of the type sold by respondent. Petitioner, while not separately selling any sauce under its PATIO marks, has testified that some of its Mexican-style combination dinners include a cup of sauce for use with the other food items contained in the combination dinners. Accordingly, we are satisfied that the respective products sold by the parties are all complementary food items purchased by the same potential customers for consumption at a Mexican-style meal. Moreover, we recognize that these products are all relatively low-cost items sold to ordinary consumers who would not be likely to take particular care in their purchase.
Turning to the marks, petitioner contends that the respective marks share the common dominant element PATIO with the only difference between the marks being respondent's addition of the prefix TA. Petitioner points to the inherently distinctive nature of its PATIO marks as applied to Mexican-style food products and argues that the success and impact it has enjoyed in the marketplace as evidenced by the steadily increasing sales revenues and advertising expenditures further reinforces the likelihood that purchasers would believe that respondent's goods sold under the TAPATIO mark are somehow related to petitioner's PATIO foods.
Respondent, on the other hand, emphasizes that its mark is a Spanish word which is properly pronounced with the emphasis on the third syllable (i.e. TAH-PAH-TEE-O) and that the marks, taken in their entireties, engender dissimilar impressions. [FN6]
As petitioner has correctly pointed out, citing Yamaha International Corp. v. Stevenson, 196 USPQ 701, 703 (TTAB 1977) and E.I. duPont de Nemours & Co. v. BIG CHIEF S.A., 189 USPQ 358, 359 (TTAB 1975), there is no such thing as a correct or proper pronunciation of a trademark. We note that respondent's mark, as registered, appears in all upper case letters with no accent mark. [FN7] In our view, the mark is susceptible of being pronounced in a number of different ways and we reject respondent's contentions to the contrary. Nevertheless, while we concede the possibility that the last three syllables in TAPATIO may be pronounced somewhat similarly to PATIO, it is our view that the marks as a whole are dissimilar and that purchasers would not ascribe a common source or sponsorship to complementary, low-cost food products sold under the marks. The word 'patio,' while originally derived from the Spanish language, has become an ordinary, everyday English word meaning a court or courtyard of a house or other building, especially an inner court open to the sky. See: Webster's Third New Dictionary of the English Language (1976). By contrast, the term 'tapatio' conveys a totally different commercial impression compared to patio. To the majority of consumers in the United States who do not understand Spanish, the term would not be understood but would convey a vague Spanish connotation. To those consumers who do understand Spanish, the term may or may not be understood since 'tapatio' is not an ordinary Spanish word but, rather, a 'nickname' for persons or things from Guadalajara. In any event, even to those consumers who understand Spanish and who also understand the significance of the term 'tapatio,' the connotation of the term would be completely different from that engendered by the term 'patio.' We think the overall differences in the marks visually, and in the commercial impressions engendered, greatly outweigh the potentially similar pronunciation between the last three syllables of respondent's four-syllable mark and petitioner's mark. We conclude, therefore, that notwithstanding the relative success petitioner has enjoyed with its PATIO products, the marks are sufficiently dissimilar to avoid a likelihood of confusion as to source or sponsorship for purposes of Section 2(d) of the Act.
*3 We now turn to the other issues raised by petitioner, namely, whether respondent's mark is deceptive within the meaning of Section 2(a) of the Act and/or deceptively geographically misdescriptive within the meaning of Section 2(e)(2). [FN8]
Where a registration is sought to be cancelled on the ground that the registered mark is primarily geographically deceptively misdescriptive, it is incumbent upon the petitioner, as the plaintiff having the burden of proof, to make a prima facie evidentiary showing that the mark is primarily a geographical term and that purchasers would expect the goods in connection with which the mark is used to have their origin in the geographical locality named in the mark. See: In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982); In re Venice Maid Co., Inc., 222 USPQ 618 (TTAB 1984). Where the mark comprises a geographical term but the geographical significance is minor, obscure, remote or unconnected with the goods, the mark is treated as an arbitrary one. In re Nantucket, supra. Stated differently, if because of the nature of the mark and/or goods involved, purchasers would fail to make the 'goods-place association' required in Nantucket (that is, they would not, upon viewing the mark, conclude that it imparts information about the geographical origin of the goods), the mark would be considered arbitrary. If, however, the public makes a 'goods-place association' and the goods, in fact, come from the place named in the mark, the mark is primarily geographically descriptive. If the public makes a 'goods-place association' but the goods do not come from the place named in the mark, the mark is primarily geographically deceptively misdescriptive. See: In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983). The Board, in the House of Windsor case, went on to distinguish between marks that are primarily geographically deceptively misdescriptive under Section 2(e)(2) (marks which would be registrable on the Principal Register pursuant to Section 2(f) based on a showing of acquired distinctiveness) and marks that are deceptive under Section 2(a) (and unregistrable on either the Principal or Supplemental Register). The Board adopted a materiality test, that is, if it is determined that the deception is material to the purchasing decision, the mark is deceptive under Section 2(a). The Board stated that in distinguishing marks falling within the proscription of Section 2(e)(2) from those also falling within the proscription of Section 2(a), it must look to the evidence presented about the probable reaction of purchasers to a particular geographical term when it is applied to particular goods. If the evidence shows that the geographical area named in the mark is an area sufficiently renowned to lead purchasers to make a 'good-place association,' but the record does not show that the goods (or related goods) are a principal product of that geographical area, the deception will most likely be found not to be material and the mark, therefore, not deceptive. If, on the other hand, the evidence shows that the goods (or related goods) are a principal product of the geographical area named by the mark, the deception will most likely be found to be material and the mark, therefore, deceptive. In re House of Windsor, supra, at 57.
*4 In the present case, petitioner, in support of its position that TAPATIO is primarily a geographical term, has made of record a dictionary definition (Velazques Spanish and-English Dictionary (1974)) of 'tapatio' which defines the term as a 'name applied to persons and things from Guadalajara Mexico'. Petitioner further points to a second dictionary, the EDAF New-Comprehensive Spanish-English Dictionary (1966) which defines 'tapatio' as 'of or pertaining to Guadalajara Mexico' and implies that the Board should take judicial notice of this reference. [FN9] Petitioner has also referred to the TAPATIO registration itself which includes a statement that 'tapatio' means a native of Guadalajara City, capital of the state of Jalisco, in Mexico. Finally, petitioner refers to an article on Guadalajara introduced into the record in connection with the discovery deposition taken of respondent Jose Luis Saavedra. This undated article is taken from National Geographic magazine and entitled 'The Most Mexican City--Guadalajara,' and states that '. . . today tapatio--noun or adjective--identifies anything or anyone Guadalajaran'. In describing the attractions of Guadalajara, the second largest city in Mexico, the article notes that 'Balmy weather, exquisite churches and public buildings, fine restaurants and romantic minstrels lure growing legions of tourists.'
From the foregoing evidence, petitioner concludes that 'tapatio' is commonly used and recognized as a designation for people and things from Guadalajara; that the city has a reputation as a center of exquisite Mexican-style food and cuisine and that, therefore, it would be entirely reasonable for consumers to believe that meatless hot sauce bearing the TAPATIO mark originates in Guadalajara. Moreover, since the goods do not originate in Guadalajara or in any other part of Mexico, petitioner contends that the use of TAPATIO on the goods misleads consumers as to the source of the goods in a way that materially affects their purchasing decision. Alternatively, petitioner contends that if the deception is not material to the purchasing decision, the registered mark should nevertheless be cancelled for the reason that it is primarily geographically deceptively misdescriptive under Section 2(e)(2) of the Act.
We are satisfied that petitioner has established that the term 'tapatio' is, in fact, a term which denotes those people or things from Guadalajara. [FN10] While 'tapatio' itself is not a geographical place, it does connote a geographical location. See: In re Jacks Hi-Grade Foods, Inc., 226 USPQ 1028 (TTAB 1985) (NEAPOLITAN held primarily geographically deceptively misdescriptive as applied to sausage emanating from the United States). Nevertheless, while Guadalajara may be a large, well known city in Mexico, the question is how many people in the United States would know the geographical significance of 'tapatio,' that is, how many people would know it relates to persons or things Guadalajaran? We think the record in this case is inadequate to show that a significant portion of consumers purchasing meatless hot sauce would, upon seeing TAPATIO on a container of meatless hot sauce, conclude that it relates to a place name and that the product came from that place, rather than concluding that it is simply a trademark of a manufacturer engendering a Spanish connotation. While respondent may presently market its meatless hot sauce to Spanish-speaking consumers in this country, there is nothing in the recitation of goods limiting the sale of the product to such a narrow class of consumer and, moreover, there is no evidence that even a significant portion of the Spanish-speaking consuming public recognizes 'tapatio' as a primarily geographical designation. See: In re Societe Generale des Eaux Minerales de Vittel S.A., ---- F.2d ----, 3 USPQ 2d 1450 (Fed. Cir. 1987).
*5 We conclude, therefore, that since the geographical significance of the term 'tapatio' is lost on the public because of obscurity, it is, in effect, an arbitrary designation and we find that the petition to cancel based on Sections 2(a) and/or 2(e)(2) of the Act is not well taken. See: In re Bavaria St. Pauli Brauerei AG, 222 USPQ 926 (TTAB 1984); In re Brauerei Aying Franz Inselkammer KG, 217 USPQ 73 (TTAB 1983). [FN11]
Decision: The petition for cancellation is dismissed with prejudice.
J. D. Sams
J. E. Rice
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Registration No. 1,228,964 issued March 1, 1983. The registration certificate states that 'TAPATIO' is a Spanish term meaning a native of Guadalajara City, capital of the state of Jalisco, in Mexico.
FN2. Registration No. 714,474 issued April 25, 1961. Renewed.
FN3. Registration No. 1,151,164 issued April 14, 1981.
FN5. Petitioner has also alleged that use of respondent's mark may disparage or falsely suggest a connection between respondent and petitioner. However, this allegation has not been pursued by petitioner and we will not give it any further consideration in this opinion.
FN6. In this regard, we note that in an effort to demonstrate how TAPATIO is actually pronounced in radio advertisements, respondent introduced a number of exhibits in connection with the Saavedra testimony deposition in the nature of a cassette tape of a radio ad as well as advertising copy for radio ads and a number of invoices from radio stations (exhibits R-111-121 inclusive). These exhibits were objected to by petitioner on the ground that they were not produced during discovery in response to discovery requests although these materials were clearly encompassed by the requests. We agree and while we are of the view that these materials are not significant in the determination of any of the issues before us, they have been excluded from consideration in the disposition of this case.
FN7. Respondent attempted during the course of this proceeding to amend its mark to one in special form showing an accent mark over the letter 'i' and to add a statement indicating the proper pronunciation of the word. This motion to amend was denied by the Board in a ruling issued June 13, 1984.
FN8. While the Board finds that there is no likelihood of confusion from the contemporaneous use of the respective marks, nevertheless, petitioner has shown sufficient standing to raise these other issues, namely, it has shown that it has a commercial interest in its own mark and a reasonable basis for its belief that it is or will be damaged by the continued existence of respondent's registration, namely, a belief in likelihood of confusion that is not wholly with merit. See: Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
FN9. The Board has no objection to taking judicial notice of dictionary definitions although the better practice here would have been to make a copy of the relied on definition of record. We also note, as a matter of interest, that the Spanish-English reference dictionaries in the Board's own library, the 1959 and 1978 editions of Cassell's Spanish-English English-Spanish Dictionary contain no listing for the word 'tapatio.'
FN10. Respondent's testimony that 'tapatio' has come to connote a macho, 'he-man' image by virtue of its being the name of a number of soccer teams in the Los Angeles, California area is not persuasive and there is no supporting evidence for such a speculative conclusion.
FN11. We point out that even assuming, arguendo, that the record in this case was sufficient to show that 'tapatio' was primarily a geographical term and that purchasers would make a 'goods-place association' between respondent's goods and Guadalajara, Mexico, the record is totally devoid of any evidence that respondent's goods or any goods related to those of respondent are a principal product of Guadalajara. Petitioner's assertion that Guadalajara is known for its exquisite Mexican-style cuisine is simply unsupported by any evidence of record. Accordingly, we would not, in any event, find the mark to be deceptive under Section 2(a) of the Act.