Mecanicos Unidos S.A. v. Victorio, LLC, and TMS Services, Inc.

THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB

Mailed: July 2, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Mecanicos Unidos S.A.
v.
Victorio, LLC, and TMS Services, Inc. dba Victorio Kitchen Products
_____

Cancellation No. 92058060
_____

Jesus Sanchelima of Sanchelima & Associates, P.A.,
for Mecanicos Unidos.

Dax D. Anderson of Kirton McConkie,
for Victorio, LLC and TMS Services, Inc. dba Victorio Kitchen Products.
_____

Before Ritchie, Adlin, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Mecanicos Unidos (“Petitioner”) has petitioned to cancel the following

registrations owned by Victorio, LLC, which were assigned to it by TMS

Services, Inc. dba Victorio Kitchen Products (collectively “Respondents”):
Cancellation No. 92058060

1. VICTORIO, in standard character form,1 for

International Class 7: Kitchen machines, namely, electric
standing mixers; Electric food blenders; Electric food choppers;
Electric food grinders for household use; Electric food
preparation apparatus, namely, tumblers for marinating food;
Electric food processors; Electric food slicers; Mixers; Canning
machines.

International Class 8: Hand operated food dicers; Hand-
operated food processor; Kitchen knives; Meat tenderizer,
namely, a kitchen mallet; Thin-bladed kitchen knives; jar
wrenches for use in canning.

International Class 11: Electric dehydrators.

International Class 21: Hand-operated food grinders; Non-
electric food blenders; Food preserving jars of glass; Household
containers for foods; Servingware for serving food; Non-electric
pressure cookers; Non-electric pressure cooking saucepans;
Serving tongs; Utensils for barbecues, namely, forks, tongs,
turners; Household utensils, namely, graters; Household
utensils, namely, sieves; Household utensils, namely, skimmers;
Household utensils, namely, spatulas; Household utensils,
namely, strainers; Household utensils, namely, turners;
Household utensils, namely, funnels, tongs, jar lifters and lid
lifters for use in canning.

1 Application Serial No. 77396957 was filed on February 14, 2008, claiming first use
and first use in commerce on January 1, 2004 for the goods in International Classes
8 and 21. A statement of use was then filed on January 16, 2009, claiming dates of
first use and first use in commerce on April 28, 2008 for the goods in International
Classes 7 and 11. Registration No. 3620483 was issued on May 12, 2009. As
discussed herein, a Section 8 affidavit was filed on May 20, 2014, after the initiation
of this cancellation proceeding, deleting certain goods.

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Cancellation No. 92058060

2.

2 for

International Class 7: Canning machines; Electric coffee
grinders; Electric food blenders; Electric food choppers; Electric
food grinders for household use; Electric food preparation
apparatus, namely, tumblers for marinating food; Electric food
processors; Electric food slicers; Electric ice crushing machines;
Electric ice shaving machines; Electric Mixers; Electric mixers
for household purposes; Kitchen machines, namely, electric
standing mixers.

International Class 8: Hand operated food dicers; Hand-
operated food processor; Hand-operated kitchen appliance for
dicing, mincing, slicing and chopping food; Non-electric ice
crushers; Thin-bladed kitchen knives.

International Class 11: Electric dehydrators.

International Class 21: Cooking pots; Food preserving jars of
glass; Hand-operated coffee grinders; Hand-operated food
grinders; Household utensils, namely, strainers; Household
utensils, namely, funnels, tongs, jar lifters, and lid lifters for use
in canning; Non-electric food blenders; Non-electric juicers;
Servingware for serving food.

The registration includes the following description of the mark:

The mark consists of the word “Victorio” with a wavy line
extending under the word. Color is not claimed as a feature of
the mark.

The Second Amended Petition to Cancel, which is the operative pleading

2Application Serial No. 85801420 was filed on December 12, 2012, claiming first use
and first use in commerce on January 31, 2008, for the goods in International
Classes 7 and 8, and November 30, 2012 for the goods in International Class 11 and
21. Registration No. 4379606 was issued on August 6, 2013.

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Cancellation No. 92058060

in this proceeding, asserts grounds of fraud and likelihood of confusion based

on Petitioner’s prior common law use of the mark VICTORIA for various

kitchen products, including non-electric grain grinders, in use in the United

States since 1974. 48 TTABVUE 3.3

The Answer to the Second Amended Petition denies the salient allegations

therein, except that Respondents make some relevant admissions regarding

priority and use, including the following:

Para. 1: . . . Respondent admits that Petitioner has used and
continues to use in commerce in the United States the mark
VICTORIA for non-electric grain grinders since at least as early
as 1974. 51 TTABVUE 2.

Para. 5: . . . Respondent admits that Petitioner has used and
continues to use in commerce in the United States the mark
VICTORIA for non-electric grain grinders prior to Respondent’s
applications’ filing dates. 51 TTABVUE 3.

Para. 21: Registrant TMS did not acquire rights for the mark
VICTORIO for the goods listed in the registrations subject to the
cancellation proceedings by a written assignment from anyone.
48 TTABVUE 8; 51 TTABVUE 4.

Respondents also alleged various putative affirmative defenses including

their “Third Affirmative Defense: Equitable Estoppel,”4 as discussed below.

Both parties filed briefs, and Petitioner filed a reply brief.

3 Petitioner also pleaded rights to Application No. 85958716, which was filed on
June 13, 2013 and issued as Registration No. 4494141 on March 11, 2014, after this
cancellation was initiated.
4 In addition to equitable estoppel, Respondents’ brief argues that laches applies.

Petitioner objects that laches was not raised as an affirmative defense in the Answer
to the Second Amended Petition, however. The objection is sustained, and thus, we
give the laches affirmative defense no consideration.

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Cancellation No. 92058060

I. The Record and Evidentiary Issues

The record consists of the pleadings and the files of the involved

registrations. The record also includes the following depositions taken by

Petitioner during either its trial or rebuttal period, together with exhibits

thereto:5 deposition of Andres Felipe Mejia, Petitioner’s Managing Director,

dated January 18, 2017, 68 TTABVUE and 69 TTABVUE confidential;

rebuttal deposition of Mr. Mejia, dated December 20, 2017, 107 TTABVUE;

deposition of Dustin Palmer, President of Palmer Wholesale, Victorio Kitchen

Products and Respondent Victorio, LLC, dated January 20, 2017, 71

TTABVUE and 72 TTABVUE confidential; and deposition of Manuel A.

Gaunaurd, III, entrepreneur and former distributor for Petitioner, dated

January 17, 2011, 67 TTABVUE. In addition to these depositions, Petitioner

submitted eleven notices of reliance, including discovery responses from

Respondents, third-party registrations, Internet screenshots, and excerpts

from Petitioner’s discovery deposition of Respondents’ Fed. R. Civ. Proc. Rule

30(b)(6) witness, Dustin Palmer, dated November 19, 2005. 65 TTABVUE.

Respondent submitted the following depositions, taken during its

testimony period, together with exhibits thereto: deposition of Dustin Palmer,

dated March 29, 2017, 99 TTABVUE, 100 TTABVUE, and 101 TTABVUE

confidential; and deposition of Floris Chad Copier, Respondents’ former

attorney, dated March 28, 2017, 98 TTABVUE. Respondent also submitted

5As noted, several of the witnesses were deposed more than once, including during
Petitioner’s trial and rebuttal period, and/or during Respondents’ trial period.

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Cancellation No. 92058060

fourteen notices of reliance, including Internet screenshots of products

offered under the mark VICTORIO; Internet searches for the meaning of the

terms “Victoria” and “Victorio;” search results from the USPTO TESS

database for the term “VICTORIA;” printouts from the USPTO ID manual;

and printouts of third-party registrations for the term “Victoria;” as well as

additional excerpts from the Rule 30(b)(6) discovery deposition submitted by

Petitioner, for completeness.

Petitioner objected to Respondents’ originally-filed sixth and fourteenth

notices of reliance as containing improper material, in response to which the

Board allowed Respondents time to refile appropriate material, properly

labeled in the notices of reliance. 91 TTABVUE, 97 TTABVUE. In its brief,

Petitioner maintained its objection to the revised notices of reliance filed by

Respondents as 92 TTABVUE and 93 TTABVUE. We find, however, that the

revised notices of reliance and accompanying evidence comply with the

Trademark Rules and have been considered, except as noted herein.

II. Standing

Standing is a threshold issue that must be proven 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). To establish standing in an inter partes

proceeding, Petitioner must show both “a real interest in the proceedings as

well as a ‘reasonable’ basis for [its] belief of damage.” See Ritchie v. Simpson,

170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). Petitioner has

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Cancellation No. 92058060

provided ample testimony regarding its use of the mark VICTORIA for

various items of kitchenware, as further discussed below. As such, we find

that Petitioner has established its standing by showing that it competes with

Respondents. See Empresa Cubana, 111 USPQ2d at 1062; Kistner Concrete

Products, Inc. v. Contech Arch Technologies, Inc., 97 USPQ2d 1912, 1918

(TTAB 2011); Stuart Spector Designs, Ltd. V. Fender Musical Instruments

Corp., 94 USPQ2d 1549, 1553 (TTAB 2009).

III. Priority

While there is conflicting testimony and evidence as to when Respondents

began manufacturing goods under the VICTORIO mark, Mr. Palmer

confirmed that Respondents and their predecessors were not manufacturing

goods under the VICTORIO mark until at least January 1, 2004, the claimed

date of use of the mark in Respondents’ Registration No. 3620483

(VICTORIO). 65 TTABVUE 22-24. Mr. Palmer testified in his discovery

deposition as follows:6

Q: . . . Now my question to you is: On January 1 of 2004 or
earlier, you did not have a product manufactured bearing the
mark Victorio under your instructions?

A: That is correct.

Respondents did not present argument or evidence that they acquired

rights to the VICTORIO mark from Vitanonio or from any other third party

6 65 TTABVUE 24.

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Cancellation No. 92058060

such that they could claim an earlier priority date.7 Rather, Respondents

made the following admissions in the Answer to the Second Amended

Complaint regarding Petitioner’s earlier use:

Para. 21: Registrant TMS did not acquire rights for the mark
VICTORIO for the goods listed in the registrations subject to the
cancellation proceedings by a written assignment from anyone.
48 TTABVUE 8; 51 TTABVUE 4.

Para. 5: . . . Respondent admits that Petitioner has used and
continues to use in commerce in the United States the mark
VICTORIA for non-electric grain grinders prior to Respondent’s
applications’ filing dates. 51 TTABVUE 3.

Thus there is no dispute that Petitioner has priority for at least non-

electric grain grinders.8 In addition, Petitioner, which is based in Medellin,

Colombia, has established through testimony and supporting documentary

evidence that it has distributed for sale a number of kitchen goods in

commerce in the United States under the mark VICTORIA continuously

since prior to Respondent’s first claimed date of use. 68 TTABVUE 15, 21, 50,

7 Respondents and their predecessor company, The Mending Shed, acted as a
retailer for goods sold under the VICTORIO mark by a third party company named
Vitantonio, until the latter stopped manufacturing under the VICTORIO mark. 71
TTABVUE 14-15. Mr. Palmer concedes that Respondents “had no agreement with
Vitanonio regarding manufacturing” and that Respondents simply acted as a third-
party reseller for this and other brands. 71 TTABVUE 34, 103. When Respondents
became aware that the third party manufacturer, Vitantonio, was no longer
providing kitchenware under the VICTORIO mark, Respondents decided to adopt
the VICTORIO mark for their own kitchen products. 99 TTABVUE 451.
8 Although Respondents argue that Petitioner must show acquired distinctiveness

for its VICTORIA mark because it is a “common name,” Respondents’ argument and
case cites appear to be mistakenly based on Section 2(e)(4) of the Trademark Act
which requires a showing of acquired distinctivess for registration on the Principal
Register of a mark that is “primarily merely a surname.” 109 TTABVUE 42.
Respondents admit that Petitioner’s mark is not primarily merely a surname, but

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Cancellation No. 92058060

312, 20-24; 51 TTABVUE 2.9 Based on the testimony and supporting

documentary evidence, we find that Petitioner has established priority of use

for its kitchenware products including non-electric grain grinders, tortilla

presses, meat grinders, cast iron cookware, and ice shavers.

IV. Likelihood of Confusion

Our determination under Section 2(d) is based on an analysis of all of the

relevant, probative evidence in the record related to a likelihood of confusion.

See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563

(CCPA 1973); see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin

Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In

re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.

2003); and In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.

1997). In any likelihood of confusion analysis, two key considerations are the

similarities between the marks and the similarities between the goods. See

Federated Foods, Inc. v. Fort Howard Co., 544 F.2d 1098, 192 USPQ 24, 29

(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the

rather is a given name, and we find that it is arbitrary and inherently distinctive.
See 99 TTABVUE 385, 76 TTABVUE 31, 93 TTABVUE 133, 93 TTABVUE 141.
9 Independent distributor Manuel A. Gaunard, III confirmed that he began selling

Petitioner’s VICTORIA kitchen products in the United States via a local distributor
in 1999, and then as an official distributor direct from Colombia in 2002. 67
TTABVUE 13, 14. These include sales of Petitioner’s VICTORIA kitchen products
via such major distribution outlets in the United States as Sears, Kmart, and Wal-
Mart. 67 TTABVUE 20. Mr. Gaunard’s testimony included sales reports and order
forms from between 2002 and 2006. 67 TTABVUE 26, 55, 77, 81. He further stated
that during this time period, he marketed Petitioner’s “Victoria cast iron tortilla
products, the Victoria grain mills, the Victoria meat grinder, the Victoria comal in
cast iron, the Victoria griddles and grills in cast iron, and the lemon and lime

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Cancellation No. 92058060

cumulative effect of differences in the essential characteristics of the goods

and differences in the marks.”). We discuss the du Pont factors for which

there is relevant argument and evidence. See Coach Servs., Inc. v. Triumph

Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012).

A. Similarity of the Marks

We consider and compare the appearance, sound, connotation and

commercial impression of the marks in their entireties. Palm Bay Imps., 73

USPQ2d at 1692. In comparing the marks, we are mindful that the test is not

whether they 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

goods and/or services offered under the respective marks is likely to result.

San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683,

196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d

1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5,

1992). The proper focus is on the recollection of the average consumer, who

retains a general rather than specific impression of the marks. Winnebago

Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);

Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).

Petitioner’s VICTORIA mark and Respondents’ VICTORIO mark are

highly similar in sight and sound, with the only difference being the final

squeezers in cast aluminum, by Victoria” in the United States, including at trade
shows. 67 TTABVUE 26.

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Cancellation No. 92058060

vowel. As for commercial impression, Victoria and Victorio are both first

names, the former primarily for females, and the latter primarily for males.

99 TTABVUE 385, 76 TTABVUE 31, 93 TTABVUE 175. 93 TTABVUE 133,

93 TTABVUE 141. Thus, with the high degree of similarity in sight and

sound, consumers may view the VICTORIO mark, for various kitchenware

products, as an extension of the VICTORIA line of other kitchenware

products, plausibly in a his-and-hers setup.

While Respondents’ mark is an illustrated drawing,

with what Respondent describes as a “wavy line extended under the word”

VICTORIO, the design feature does not significantly change the commercial

impression of the mark. Rather, it is the words that consumers are likely to

use to call for or refer to the goods. See In re Viterra Inc., 671 F.3d 1358, 101

USPQ2d 1905, 1911 (Fed. Cir. 2012)(citing CBS Inc. v. Morrow, 708 F.2d

1579, 218 USPQ 198, 200 (Fed. Cir. 1983)).

Overall, while the connotation of the marks may differ, we find that the

marks are nevertheless highly similar in sight, sound, and commercial

impression for likelihood of confusion purposes. Thus, the first du Pont factor

weighs strongly in favor of finding a likelihood of confusion.

B. Strength of Petitioner’s VICTORIA mark

Both parties ask us to consider the strength of Petitioner’s VICTORIA

mark. Petitioner argues that its VICTORIA mark is commercially and

conceptually strong. To support this assertion, Petitioner refers generally to

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Cancellation No. 92058060

to its international use of the VICTORIA mark, its appearance at trade

shows, and its renown in Colombia. 108 TTABVUE 45.

Fame, where it exists, plays a dominant role in assessing a likelihood of

confusion. Kenner Parker Toys Inc. v. Rose Arts Indus., Inc., 963 F.2d 350, 22

USPQ2d 1453 (Fed. Cir. 1992). However, Petitioner has fallen far short of

establishing that its VICTORIA mark is well known, much less famous. A

famous mark has extensive public recognition and renown. Bose Corp. v. QSC

Audio Products 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 Industries, Inc., 963 F.2d 350, 22

USPQ2d 1453, 1456 (Fed. Cir. 1992). Fame may be measured indirectly by

the volume of sales and advertising expenditures of the goods and services

identified by the marks at issue, “by the length of time those indicia of

commercial awareness have been evident,” widespread critical assessments

and through notice by independent sources of the products identified by the

marks, as well as the general reputation of the products and services. Bose

Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1305-1306 and 1309.

Here, while the confidential record contains some sale figures, the number

is without context, and on its own does not indicate a very high level of

consumer exposure in the United States. 69 TTABVUE. Thus, Petitioner has

not carried its burden of showing that its VICTORIA mark is famous, or even

commercially strong.

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Cancellation No. 92058060

Respondents, for their part, argue that there are numerous third-party

registrations that incorporate the term “VICTORIA” or derivations thereof,

which render the term weak. 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) (citing Juice Generation, Inc. v. GS Enters. LLC,

794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). In particular,

Respondents asserts that:

[T]here are currently 836 active registrations that include the
term “victoria” or different language equivalents, and 106
registered marks for VICTORIA, or different language
equivalents, by itself. There are also 45 active, registered marks
that use the term “victoria” or other different language
equivalents for goods related to kitchen, food, or grinders.
109 TTABVUE 43.

As support for these assertions, Respondents refer to search results

showing a mere list of trademark registrations in its revised fourteenth

notice of reliance. Id. Petitioner objected to the lists, however, as being

improper evidence. Petitioner further objected that, to the extent information

can be gleaned from the lists, the third-party registrations are largely for

unrelated goods.

In order to make a third-party registration of record, a copy of the

registration, either a status copy of the paper USPTO record showing title, or

a copy taken from the electronic records of the Office should be submitted. In

re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456 n. 2 (TTAB

1998); and In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). Merely

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Cancellation No. 92058060

listing registrations, as Respondents have done here, is insufficient to make

them of record. In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n. 2 (TTAB

1998). Accordingly, we sustain the objection to those materials, and we do not

consider them.

Respondents did include, in addition to the lists, printouts from the TESS

electronic system of 17 third-party registrations that include the term

“VICTORIA” or similar wording. 93 TTABVUE 74-126. These are unavailing

on the question of the strength of Petitioner’s mark, however, since while 13

identify various food and beverage-related products, only one identifies any of

the kitchenware items for which Petitioner has established rights:

Registration No. 3768287, for VICTORIAKITCHEN, identifying, among other

things, “cooking utensils.” 93 TTABVUE 116. See Omaha Steaks Int’l, Inc. v.

Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed.

Cir. 2018) (Emphasizing that the “’relevant du Pont inquiry is ‘[t]he number

and nature of similar marks in use on similar goods.’” [cites omitted]

(emphasis in original)).

Thus, Respondents’ evidence falls well short of the “voluminous” and

“extensive” evidence presented in Jack Wolfskin, 116 USPQ2d at 1136; or of

that in Juice Generation, 115 USPQ2d at 1673 n.1 (at least twenty-six

relevant third-party uses or registrations of record). Consequently, we accord

this evidence minimal weight.

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Cancellation No. 92058060

Keeping in mind that findings of strength and fame are not an all-or-

nothing concept in Board proceedings, we find that there is insufficient

evidence to make a finding as to the commercial strength or weakness of

Petitioner’s mark, and we consider this factor to be neutral. Cf. Joseph Phelps

Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d

1733, 1735 (Fed. Cir. 2017) (per curiam) (fame in the 2(d) context is not an

all-or-nothing measure and a showing of some fame “warrants reasonable

weight, among the totality of the circumstances”).

As to the conceptual strength, there is no evidence that the term

VICTORIA is weak as applied to Petitioner’s kitchenware products, and, as

noted above, we find it to be inherently distinctive.

C. Similarity of the Goods and Channels of Trade

Next, we examine the similarities and dissimilarities of the goods and the

channels of trade. With regard to Registration No. 3620483, the remaining

goods are:

International Class 7: Electric food grinders for household use;
Electric food processors; Canning machines.

International Class 8: Hand-operated food processor; Thin-
bladed kitchen knives; jar wrenches for use in canning.

International Class 11: Electric dehydrators.

International Class 21: Hand-operated food grinders; Non-
electric food blenders; Serving tongs; Household utensils,
namely, funnels, tongs, jar lifters and lid lifters for use in
canning.

Registration No. 4379606 identifies the following:

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Cancellation No. 92058060

International Class 7: Canning machines; Electric coffee
grinders; Electric food blenders; Electric food choppers; Electric
food grinders for household use; Electric food preparation
apparatus, namely, tumblers for marinating food; Electric food
processors; Electric food slicers; Electric ice crushing machines;
Electric ice shaving machines; Electric Mixers; Electric mixers
for household purposes; Kitchen machines, namely, electric
standing mixers.

International Class 8: Hand operated food dicers; Hand-
operated food processor; Hand-operated kitchen appliance for
dicing, mincing, slicing and chopping food; Non-electric ice
crushers; Thin-bladed kitchen knives.

International Class 11: Electric dehydrators.

International Class 21: Cooking pots; Food preserving jars of
glass; Hand-operated coffee grinders; Hand-operated food
grinders; Household utensils, namely, strainers; Household
utensils, namely, funnels, tongs, jar lifters, and lid lifters for use
in canning; Non-electric food blenders; Non-electric juicers;
Servingware for serving food.

Petitioner has established priority of use for kitchenware products

including non-electric grain grinders, tortilla presses, meat grinders, cast

iron cookware, and ice shavers. Respondents’ president, Dustin Palmer,

conceded the similarity of the goods as various items of kitchenware with

similar functions. 71 TTABVUE 179. Respondents’ brief also discusses the

identification of the goods as “distinctions without differences.” 109

TTABVUE 25-26. Respondents argue that the kitchenware items for which

Petitioner has established priority “were largely limited to ethnic and

commercial items such as tortilla presses, cast iron skillets, grain grinders,

electric meat grinders, lemon and lime squeezers, and hand corn mills.” 109

TTABVUE 48. The evidence, including an analysis of the identification of

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Cancellation No. 92058060

goods in Petitioner’s pleaded application that later issued as Registration No.

4494141, does not support this limitation. We find the goods to be similar and

complementary.

Respondents do not include any limitations in the channels of trade for

their identified goods. The parties attend some of the same trade shows,

including the 2013 International Houseware Show. 68 TTABVUE 25; 229.

Also, both sell via third-party Internet resellers such as Amazon.com. 68

TTABVUE 210, 212; 107 TTABVUE 44.10 We find the channels of trade to be

similar and overlapping. The second and third du Pont factors also weigh in

favor of finding a likelihood of confusion.

D. Conditions of Sale

Petitioner urges us to consider the relatively low level of purchasing care

likely to be exercised by consumers of kitchenware products, arguing that

they may be considered “impulse” purchases. 108 TTABVUE 44. Respondents

argue, however, that there is no evidence that consumers would purchase

these items on impulse. 109 TTABVUE 50.

We must base our determination on the least sophisticated consumer.

Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110

USPQ2d 1157, 1163 (Fed. Cir. 2014) (affirming that TTAB properly

considered all potential investors for recited services, which included

10 Further information supporting these findings is included in the confidential
record. To the extent Petitioner asks us to consider the variety of goods on which its
mark is used, and the extent of potential confusion, the evidence does not support a

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Cancellation No. 92058060

sophisticated investors, but that precedent requires consumer care for

likelihood-of-confusion decision to be based “on the least sophisticated

potential purchasers”). Nevertheless, the evidence of record shows the

parties’ grain mills are offered for sale in the range of $44.99 to $72.99, with

third-party items offered in a similar price range. 104 TTABVUE 7. We thus

find that the ordinary consumer of the relevant kitchenware products will

likely exercise a moderate degree of care in purchasing the parties’ products.

We find this fourth du Pont factor to slightly weigh against finding a

likelihood of confusion.

E. Actual confusion and Length of Concurrent Use

Petitioner asks us to consider instances of actual confusion between its

VICTORIA mark and Respondents’ VICTORIO mark. Respondents, on the

other hand, ask us to consider the length of time the parties have coexisted in

the marketplace without confusion as to the marks. We consider each of these

factors in turn.

Petitioner presented testimony by its general manager, Andres Mejia,

that “Our distributor in the US have received several mails [sic] regarding

information or warranty claims for products by Victorio.” 107 TTABVUE 46.

The emails were attached as Exhibit 42. 107 TTABVUE 118-120. Petitioner

argues that the emails evidence consumer confusion since they include

questions and requests from consumers regarding kitchenware items that

finding beyond those discussed here, that the goods are similar and complementary,
and the channels of trade are similar and overlapping.

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Cancellation No. 92058060

Petitioner does not sell under the VICTORIA mark. In this regard, there is

insufficient information in the emails as to whether consumers are actually

confused, and if so, whether any such confusion is specifically with regard to

goods produced by Respondents under the VICTORIO mark.11 Thus, we do

not find that there is persuasive evidence of actual confusion.

As to the length of coexistence, Respondents argue that Petitioner’s

VICTORIA mark has been in use for decades alongside third-party use of the

VICTORIO mark for kitchen products such as fruit strainers. Respondents

admit that they “do not claim this early use date, but point to it merely to

show the marks on the good have coexisted for decades.” 109 TTABVUE 50.

In fact, Respondents’ president, Dustin Palmer, has admitted that

Respondents did not begin use of their VICTORIO mark until at least 2004,

and that Respondents did not obtain any rights to the mark from prior, third-

party users. 65 TTABVUE 22-24; 71 TTABVUE 22, 34. There is insufficient

evidence of meaningful opportunities for confusion to have occurred in the

11Respondents also argue that the statements in the emails are hearsay, and cannot
be considered for the truth of the matter. See FED. R. EVID. 801(d). Even if
considered, to the extent the emails are indicative of consumer perceptions, we find
insufficient evidence that they refer to actual confusion between the marks.

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marketplace since Respondents’ first use date. Nike Inc. v. WNBA Enters.

LLC, 85 USPQ2d 1187,1202 (TTAB 2007).

We find these factors to be neutral.

F. Conclusion on Likelihood of Confusion

Considering all of the arguments and evidence of record as they pertain to

the relevant du Pont factors, we find that Petitioner has established priority

in a mark that is highly similar, for goods that are related and

complementary and that travel through some of the same channels of trade

to some of the same consumers. Although some consumers may exercise a

slightly higher degree of care in purchasing decisions regarding the relevant

goods, this is outweighed by the strong similarity of the marks, the goods,

and the channels of trade.

Overall, and considering all of the du Pont factors for which there is

argument and evidence, we find that there is a likelihood of confusion

between Petitioner’s VICTORIA mark, for which it has established common

law rights, and the marks subject to Respondent’s registrations.

V. Affirmative Defense of Equitable Estoppel

As noted, in the Answer to the Second Amended Complaint, Respondents

included an affirmative defense of “equitable estoppel.” “The elements of

equitable estoppel are (1) misleading conduct, which may include not only

statements and action but silence and inaction, leading another to reasonably

infer that rights will not be asserted against it; (2) reliance upon this conduct;

and (3) due to this reliance, material prejudice if the delayed assertion of

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Cancellation No. 92058060

such rights is permitted.” Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes,

Inc., 971 F.2d 732, 23 USPQ2d 1701, 1703 (Fed. Cir. 1992) (emphasis in

original). See also 15 U.S.C. § 1069.

Respondents’ pleading of this affirmative defense is based on allegations

of Petitioner’s “silence and inaction” in asserting any rights against a third

party’s use of the VICTORIO mark. Respondents did not present argument or

evidence that they acquired rights to the VICTORIO mark from any third

party, however, and instead admitted that they did not. See 71 TTABVUE 22,

34; 48 TTABVUE 8; 51 TTABVUE 4. To the extent that Respondents argue

that the affirmative defense of equitable estoppel may be invoked because of

conduct by Petitioner with respect to Respondents’ registration of the

VICTORIO mark, this was not pleaded by Respondents.

Furthermore, the evidence indicates that Petitioner contacted

Respondents upon learning of their use of VICTORIO in 2011. 68 TTABVUE

227-228. From that time until this cancellation proceeding was filed in 2013,

the parties were engaged in ongoing discussions, during which time the

parties discussed possible resolution of their differences. See 68 TTABVUE

229; 99 TTABVUE 468; 107 TTABVUE 90-101, 129-130, 229. Respondents

have not carried their burden of proving the affirmative defense of equitable

estoppel.

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DECISION: The petition for cancellation is granted on the ground of

likelihood of confusion under Section 2(d) of the Trademark Act.12

12In light of our finding on likelihood of confusion, we need not address Petitioner’s
remaining claim of fraud. See, e.g., Chanel, Inc. v. Makrczyk, 110 USPQ2d 2013,
2027 (TTAB 2014) (“Insofar as we are sustaining the opposition on this ground, we
need not consider opposer’s remaining claims ….”).

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