Once again we see a trademark applicant trying to win the relatedness of goods argument without first narrowing the descriptions, and trying to win the conceptual weakness argument by not hitting the 10 third-party registration threshold. If you intend to make a real world marketplace argument, then the identifications of goods and services must reflect the real world. Unfortunately, this was a lesson Productos Verde Valle, S.A. de C.V. learned the hard way.
Productos Verde Valle applied to register the mark SONIA (in standard characters) for “sauces; chili sauce; hot sauce.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark SONIA SONI LIFE IS A RECIPE (in standard characters) for, in relevant part, “spices, spice blends; spice rubs.”
The Trademark Office offered evidence showing the same mark being used for both sauces and spices. This evidence was sufficient to put the Tradmark Office in the first position to win the relatedness of goods argument. Productos Verde Valle argued the goods are unrelated because its sauces are sold as a Mexican food product whereas the SONIA SONI LIFE IS A RECIPE spices were sold as an Indian food product. However, the identification of goods descriptions were unrestricted as to a type of cuisine and an applicant may not restrict the scope of its goods or the scope of the goods covered in the cited registration by extrinsic argument or evidence.
The Trademark Trial and Appeal Board also noted that certain spices may be used in both Mexican and Indian cuisine. What this last sentence tells is the level of detail that may be required in order to differentiate the goods. In this case, for example, it would have been sufficient to say “Mexican sauces” and “Indian spices.” To win the relatedness of goods argument, it may be necessary to get very detailed about the real world marketplace. This requires examining the goods and services at issue in detail including not only the nature of the goods, but where they are marketed and who the target consumers are.
When it came to the conceptual weakness factor, Productos Verde Valle did not find any SONIA mark only marks that shared the letters “S”, “O”, “N”, and “A.” Unlike what happened in the CARDITONE case a few days ago where the Board refused to give any weight to the 69 CARDIO third-party registrations because the mark at it issue was CARDI, the Board gave some weight to the third-party registrations offered by Productos Verde Valle. Nevertheless, Productos Verde Valle was only able to find four third-party registrations to support its conceptual weakness argument. Accordingly, the Board did not find that the SONIA mark was weak.
Even if it was found to be a weak term, Productos Verde Valle’s mark was incorporated in its entirety in the SONIA SONI LIFE IS A RECIPE mark. If you are going to make the conceptual weakness argument, you must have something to point to that distinguishes your mark from the other mark that shares the weak term. Therefore, the Board affirmed the registration refusal.