United States: TTAB Orders Cancellation Of AMIGOS FOODS Registration, Third-Party Evidence Fails

Last Updated: November 13 2017
Article by John L. Welch

The Board granted a petition for cancellation of a registration for the mark AMIGOS FOODS for "Wholesale distributorships featuring meat products" [FOODS disclaimed], on the ground of likelihood of confusion with Petitioner's identical, common law mark AMIGOS FOODS for "Prepared Tortillas, Taco Sauce, Picante Sauce (Hot Sauce) and Taco Shells" and "Manufacturing and Packaging Food to the Order and Specification of Others." Respondent argued that AMIGOS FOODS is extremely weak in view of numerous third-party registrations and uses, but the Board found that evidence inadequate. Durrset Amigos, Ltd. d/b/a Amigos Foods v. Amigos Meat Distributors, L.P., Cancellation No. 92060896 (November 3, 2017) [not precedential] (Opinion by Judge T. Jeffrey Quinn).

There was no dispute that Petitioner has standing and priority of use. Petitioner first used the AMIGOS FOODS mark in 2001, nine years before Respondent's first use date.

The Board found the marks to be identical, or (as actually used by Petitioner) nearly so, and this factor weighed heavily in Petitioner's favor. The Board observed that, although the involved services are not identical, "manufacturing and packaging of food products, and their distribution, are part and parcel of the process of getting food from producers to the grocery store."

A grocery store purchasing agent, when ordering food to be produced and packaged from Petitioner under the mark AMIGOS FOODS, will be likely to mistakenly believe, upon encountering Respondent's distribution services of meat products under the mark AMIGOS FOODS, that the services are rendered by the same entity or that there is some affiliation or connection between them.

And so the Board found that the similarity of the services favors a finding of likely confusion.

The Board next found that the channels of trade overlap, since each party renders services "through grocer pipelines." The purchasers are the same: grocery stores. There was no evidence that different purchasing agents are responsible for different lines of products (e.g., private label Mexican food items versus meat). However, the buyers are likely to be relatively sophisticated, and this factor favored Respondent.

Invoking the CAFC's Juice Generation and Jack Wolfskin rulings, Respondent submitted 45 third-party registrations and applications for mark that include AMIGO or AMIGOS for goods or services "somewhat related to food," according to Respondent. It also provided Internet search results showing more than 90 restaurants with names that included AMIGOS, a Google search of "amigos" and "food" showing more than 90 websites and other examples of various AMIGO marks in use in connection with "food-related goods and services." The Board was not impressed.

First, the evidence did not show extensive registration or use of AMIGOS marks "coexisting for the same or similar services as those involved herein." None showed use of AMIGOS in connection with the manufacture and packaging of food products.

Second, Juice Generation and Jack Wolfskin are distinguishable because there the involved marks were not identical.

Respondent has not pointed to any record evidence to support a finding that multiple third parties use any AMIGOS mark, let alone AMIGOS FOODS for services similar to manufacturing and packaging food to the order and specification of others. (citation omitted). Indeed, Mr. Moreno [Respondent's General Manager] stated that other than Petitioner, he is not aware "of any companies by the name Amigos Foods."

To the extent that this evidence did demonstrate any weakness in Petitioner's mark (which the Board found not to be the case), that weakness is outweighed by the other du Pont factors.

The Board rejected Petitioner's claim of actual confusion because the testimony of its witness, Mr. Moreno, as to what its employees encountered was hearsay. Finally, the Board found Petitioner's survey evidence to be of little probative value due to the poor design of the surveys.

On balance, the Board found that the relevant du Pont factors weighed in favor of a finding of likelihood of confusion, and so it granted the petition for cancellation.

TTABlog comment: Some TTAB decisions give a narrow reading to Juice Generation and Jack Wolfskin. This is one of them. I'd like to see one of those cases go up to the CAFC.

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