throbber
TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`CAC1QUE,lNC.,
`
`Opposer,
`
`v.
`
`VlRl\/l/\,‘( l,llVllTl7.D,
`
`9/‘\/\J\;\_/\./\J\y\;\y
`
`Opposition No. 91/183,603
`Mark: LA CACICA
`Serial No. 76/681,489
`
`Applicant
`
`
`CACIQUE, INC’S MOTION FOR SUMMARY JUDGMENT AND
`SUPPORTING MEMORANDUM OF LAW
`
`Pursuant to Rule 56 of the Federal Rules of Civil Procedure and Trademark Rule
`
`2.116, Opposer, Caeique, Inc. (hereinafter “Cacique” or “Opposer”) respectfully moves
`
`for SLlmmEl1"_V judgment on its claim of likelihood of confusion in Count
`
`I of the
`
`Opposition, and requests that registration be denied to the mark LA CACICA, which is
`
`the subject of U.S. Application Serial No. 76/681,489, filed in the name of Virmax
`
`Limited (hereinafter “/\pplic.ant”)
`
`for coffee in Class 030. Opposer relies on the
`
`pleadings, the record of the USPTO and the Declarations of Ju Chang, Tirso Iglesias, III
`
`and the Declai'ation Report of Dr. R. B Butters Professor Emeritus ~English Duke
`
`University English Department, filed herewith and incorporated herein by reference.
`
`This Motion for Summary Judgment is being timely filed since Opposer’s testimony
`
`period has not yet commenced. 37 C.F.R. 2.127(E)(1); TBMP 528.02.
`
`1 . PRELIMINARY STATEMENT
`
`Opposer has been continuously using the CACIQUE mark and variant marks
`
`containing CACIQUE since at least as early 1973. Opposer is the owner of numerous
`
`(VA/\(’V[(‘)[7[:l‘ (incl \’L-1l'l2tni tradeinarl< registrations including:
`
`Adcj)/10 SIM
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`1
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`llllllllllllllllllllllllllllllllllllllllllllllllllllllllllll
`09.13.2012
`Patent t tmamri man Part D1
`
`U5
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`"73
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`

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`1.
`
`EL CACIQUE: Reg. No. 1152572 issued on April 28, 1981 for cheese first
`
`sold in June 1973;
`
`2.
`
`CACIQUE: Reg. No. 2915613 issued on January 4, 2005 for dairy
`
`products; namely cream first sold in 198() ;
`
`3.
`
`CACIQUE: Reg. No. 3,662,558 issued on August 4, 2009 for horchata
`
`first sold in 1996; drinkable yogurt, cheese and meat first sold in 1973; and cake made of
`
`corn first sold in 1996;
`
`4.
`
`CACIQUE: Reg. No. 3,859,152 issued on October
`
`12, 2010 for
`
`preparation of food and beverages first offered i11 1973;
`
`5.
`
`CACIQUE and design: Reg. No. 1215056 issued on November 2,
`
`1982 for sausage first sold in September .1980;
`
`6.
`
`CAC_I_QUE RANCHE1{Q_QUESO FRESCO PART SKIM MILK
`
`: Reg. No. 3745734 issued on February 9, 2010 for dairy products excluding
`
`ice cream, ice milk and frozen yogurt first sold in 2001;
`
`7.
`
`CACIQUE_; CREJWA SALVADORENLQ; GRADE A SALVADORAN
`
`STYLE SOUR CREAM: Reg. No. 3574825 issued on February 17, 2009 for dairy
`
`products excluding ice cream, icc milk and frozen yogurt first sold in 1999; and
`
`8.
`
`CACIQUE FAJVIILY RESERVE: Reg. No. 2963684 issued on June 28,
`
`2005 for dairy products, namely cheese first sold in 1995.
`
`During the 39 years of use of its family of CACIQUE trademarks, Opposer has
`
`publicly sold enormous quantities of branded goods on a nationwide basis through
`
`grocery stores, convenience stores, bodegas, supermarkets and other outlets. The
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`commercial success of Opposer’s CACIQUE brand products for the last 39 years is due
`
`to the successful advertising and niarkcting efforts by Opposer, and the public’s
`
`Adc__0/10 SJM
`
`2
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`

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`recognition and acceptance of the brand resulting in huge and continuous volumes of
`
`sales. By virtue of this extensive usage of the CACIQUE brand for such a long time
`
`Opposer has built up substantial and valuable goodwill
`
`in the CACIQUE family of
`
`brands recognized by consumers long before Applicant’s 2002 alleged date of first use
`
`and long before Applicant’s 2007 filing date.
`
`On September 4., 2007, Applicant filed Serial No. 76/681,489 for the mark LA
`
`CACICA for coffee claiming use in commerce as of November 30, A2002. Opposer timely
`
`opposed that application on several grounds including the grounds that LA CACICA is
`
`likely to cause confusion with Opposer’s registered CACIQUE marks for related and
`
`complementary food products. Opposer’s likelihood of confusion claim warrants
`
`summary judgment as there are no genuine issues of material fact and there is a
`
`likelihood of confusion as a matter of law between CACIQUE and LA CACICA.
`
`Opposer’s prior use and registrations establish its priority.
`
`Opposer’s family of CACIQUE marks for related and complementary goods enjoy
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`great public notoriety and goodwill.
`
`Applicant’s coffee is closely related and
`
`complementary to Opposer’s beverage, food and dairy products. The marks are: (1)
`
`phonetically and visually strikingly similar; (2) mean the same; and (3) create the same
`
`commercial impression. Further, their channels of trade and target markets are the
`
`same. Coffee and Mexican—style cheese, sausage cream, horchata and drinkable yogurt
`
`are often purchased for use together for breakfast and other meals which further
`
`enhances the likelihood of confusion. Applicant’s applied for product is coffee. The
`
`uncontroverted facts demonstrate that, as a matter of law, LA CACICA for coffee is likely
`
`to cause confusion with Opposer’s mark, EL CACIQUE/CACIQUE. Opposer respectfully
`
`Adcmci/it) SJM
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`3
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`

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`requests the Trademark Trial and Appeal Board enter summary judgment against
`
`Applicant on (f)pp0scr’s Count I claim.
`
`11. STATEMENT OF UNCONTROVERTED FACTS
`
`A.
`
`Opposer’s ownership and use of CACIQUE
`
`Since 1973 Opposer has adopted and used CACIQUE as its brand for its family of
`
`(7/\CI()U1.§ food and beverage products including, cheese, cream, horchata (rice drink),
`
`dr-inkable yogurt and sausage. Valuable common law rights have been generated and
`
`earned over 39 years of continuous and substantially exclusive use of CACIQUE in
`
`commerce. (Chang ‘H 4), (Iglesias 113). Opposer’s trademark enjo_vs great commercial
`
`success and is available at many regional and national retail stores including Wal Mart,
`
`C()S'l‘C0, Ralphs, Publix, Kroger, Albertsons to name a few. (lglesias 117).
`
`1.
`
`Opposer’s federal registrations cover a large variety of food and
`
`beverage products.
`
`[Tour (4) of the Opposer’s eight (8) federal registrations were issued
`
`by the US. Patent and 'l‘rade.marl< Office prior to 2()07 and before the Applicant’s 2007
`
`filing date. (Chang 112).
`
`2.
`
`Opposer has spent and continues to spend substantial time and
`
`money branding, packaging, advertising and promoting its CACIQUE products. For the
`
`five (5) years preceding the filing date of Applicant’s September 2007 application to
`
`register LA CACICA, Opposer has expended. approximately fifty million dollars
`atlxcrtisiiiig for its C/\(,.‘IQUI’§ branded
`
`($50,000,000.00) on promotion, packaging and
`
`line of products. (lglesias1l8).
`
`Adc__9/10 SJM
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`4
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`

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`B.
`
`The Application for LA CACICA
`
`Applicant filed its trademark application to register LA CACICA for coffee on
`
`September 4, 2007 alleging first use of its mark in commerce at
`
`least as early as
`
`November 30, 2002.
`
`III. ARGUMENT
`
`/\.
`
`1 m 111z11’3;.,111_(._ig111e11t _t:1,1,_1_(lz;1Ll
`
`Summary judgment
`
`is appropriate where there are no genuine disputes of
`
`material fact, thus allowing the ease to be resolved as a matter of law. Fed. R. Civ. P.
`
`56(a). The party seeking summary judgment bears the burden of demonstrating the
`
`absence of an_\,‘ genuine dispute as to any material fact, and that it is entitled to a
`
`judgment under the applicable law. See Celotex Corp. v. Catrett, 477 U.S. 317, 323
`
`(1986). In deciding a motion for summary judgment, “[t]he evidence of the non—movant
`
`is to be believed, and all justifiable inferences are to be drawn in his favor.” Boston
`
`Sczkniti/ic Corp. 1). Johnson & Johnson, 647 F.3d 1353, 99 USPQ2d 1001 (Fed. Cir. 2011)
`
`quoting Anderson U. L1'berl.y Lobby, Inc, 477 US. 242, 255, 106 S. Ct. 2505, 91 L.Ed.2d
`
`202 (1986). A dispute is genuine only if, on the entirety of the record, a reasonable jury
`
`could resolve a factual matter in favor of the non-movant. Sweats Fashion, Inc. U.
`
`Pannill 1\’nitting Co., 833 F.2d 1560, 1562, 4 USPQ2d 1793, 1795 (Fed. Cir. 1987). The
`
`purpose of summary judgment is one of judicial economy, that is, to save the time and
`
`expense of a useless trial where no genuine issue of material fact remains. Pure Gold,
`
`Inc. v. Syntax (USA) Inc, 739 F.2d 624, 626, 222 USPQ 741, 743 (Fed. Cir. 1984).
`
`Resolution of inter partes trademark proceedings via summary judgment is to be
`
`encouraged. Phoenix Closures Inc. v. Yen Shaing Corp., 9 USPQ2d 1891, 1892 (TTAB
`
`1988).
`
`It is not enough for the non—mo\'ant to simply demur in response to a motion for
`
`/\(lc___0/ l 0 RIM
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`5
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`

`
`gment. Rather, the non-movant has the burden of setting out what specific
`summary j ud
`evidence could be offered at. trial that sh()ws that there is a genuine issue of material fact
`to be tried. See Sweats Fashions, 833 F.2d at 1562-63, 4 USPQ2d at 1795-96.
`In this
`Opposition, the salient facts cannot be disputed and summary judgment in favor of
`
`Opposer is appropriate.
`
`B.
`Opposefs Standing and Priority
`Opposer owns the mark CACIQUE and variations thereof reflected in U.S.
`
`,
`Registration Nos. 1152572, 3859152, 3662558,
`and 3745734. Four (4) of these registrations predate Applicant’s September 2007 filing
`date and one registration, EL CACIQUE, Reg. No. 1152572, predates App1icant’s cl
`Some of Cacique’s
`registrations are
`
`aimed
`
`first date of use of Noveniber 30, 2002.
`
`incontestable. Priority is 1;o~t an issue in this matter. (Chang, il2).
`C.
`LA CACICA is Like_ly to Cause Confusion with Opposer’sCACIQUE
`
`Considering the factors relevant to a determination of likelihood of confusion
`from the case of In re E. I. du Pont de Nemours 81 C0., 476 F.2d 1357, 177 USPQ 563
`
`(C.C.P.A. 1973) the following are relevant.
`1 .
`Ib§..§.i.m_il.§1.Iit}f._.9_F.,Cl.i.S.Simiblifif...Qf2Ih.§_[Tl§I:lSflI1_Ib§iI;§i1.UI‘€ti§§,§S.IQ
`
`appearar_1__c;e,_sound,_meaning and commercial impression.
`()pp0ser’s E1 CACIQUE/CACIQUE and Applicants LA CACICA marks have the
`same meaning.
`(Butters it 9(i), (ii) and (iii)). The terms CACIQUE and CACICA are
`merely the grammatically masculine and feminine forms of the same Spanish word for
`
`6
`
`

`
`“chief/leader.” (Butters 11 9-10) . Discounting the word “LA1” which is not distinctive,
`
`the comparison of the mark CACIQUE and CACICA reveals that the similarity of these
`
`two marks as to sound, meaning and commercial impression is very high. In fact, the
`
`two words are the same word in two different grammatical forms. The pronunciation of
`
`the marks is almost identical. For American speakers who know little or no Spanish, the
`
`likelihood of confusion between CACIQUE and CACICA would be great. (Butters 1111 9(i)
`
`tl1rough(\'ii) and 24).
`
`Further, confusion is also likely for Spanish speakers who
`
`understand that the meaning of the marks is the same.
`
`(Butters 11 9-24). When the
`
`marks look alike and sound alike and have the same meaning and commercial
`
`impression this factor favors a finding of likelihood of confusion.
`
`2.
`
`The Sl1I1_l_l,Z-_._1__I_‘Vll'y o1;____g_l_i_ssini_ila1*it\',,__a,r;ti nature, of the goods or services
`
`as descrilaedflin an apliication or registration or in connection with which a prior mark is
`
`Coffee, on the one hand, and horehata, drinkable yogurt, Mexican-style cream
`
`and cheese, on the other hand, are diflerent goods. However, Opposer’shorchata (a rice
`
`drink) and drinkable yogurt are beverages. These products are related to App1icant’s
`
`coffee beverage.
`
`In addition, some of Opposer’s products are complementary to coffee.
`
`Persons who drink coffee at a meal also consume Mexican sausage, cream and cheese at
`
`the same time. Coffee, sausage, cream and cheese are complementary staple foods.
`
`(Chang W 4, \ ,6 and 7).
`
`In Festin Foods v. Premium Coffee Distributors, Inc., Opposition No, 85,931 to
`
`Application Serial No. 74/127,609jiZed on December 31, 1990; hearing on January 11
`
`1 “L3” is the feminine Spanish term for the article “the.” “E1” is the masculine Spanish term for
`the article “the.”
`
`

`
`1995; 1.180: 94 OG, the Board found that Appl
`
`icant’s mark, “CAFE DONA MARIA” for
`
`coffee was confusingly similar to Rcgistranfs mark,
`
`“DONA ROSA” for canned and
`
`bottled Mexican style foods, namely, mole paste, mole en adobo,
`
`green mole, diced
`
`nopalitos (cactus leaves in oil) and refried beans. The Board stated:
`
`In the present case, the record is SllfflCl€7Il’
`
`to establish that coffee
`
`and such staple Mexican-style foods as nopalitos, mole and
`
`refried beans are closely related products which, when sold
`
`under the respective marks of the parties, would give rise to a
`
`likelihood ofconfusion as to the origin or affiliation of the goods.
`
`.
`
`. Because vegetables,
`
`including nopalitos and refried beans,
`
`and products derivedfrom beans, such as mole and coffee, would
`
`be likely to be thought of by consumers as originating with a
`common source, purchasers and prospective customers could
`
`reasonably assume that a staple product like applicants CAFE
`
`DON/—\ MARIA whole bean espresso coffee is a new product
`
`which has been added to opposer’s
`
`line of staple foods.
`
`Moreover, as is obvious,
`
`cof/‘ee
`
`is used as a beverage to
`
`complement the foods served at any meal, including Mexican-
`
`stylefoods like nopalitos, mole and refried beans. Id. at 20.
`
`Simil arly, in In re Asahi Breweries, Ltd, U.S. Serial No. 729,846; 1114:67
`OG (1990), the Board held that Applicant’s mark, NOVA, for coffee and tea so resembled
`k and other dairy products, namely,
`
`‘Registrants mark, NOVA, for pudding custard, mil
`use confusion or mistake. The Board
`
`cream, yogurt and fresh cheese, as to be likely to ca
`
`o pincd,
`
`“We agree with the Examining Attorney that applicant's
`
`coffee and tea are
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`Adc_‘)/10 SIM
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`8
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`related to the milk and cream identified in the cited registration. Milk and cream,
`
`<-o_/_'/lee and tea, are eomplementary products, in that millc or cream is often mixed with
`
`coffee and tea.
`
`'l“hese goods are also sold in the same channels of trade and may be
`
`displayed in close proximity to each other.” When the goods of the registrant and
`
`applicant are related and complementary, this factor favors a finding of likelihood of
`
`confusion.
`
`3.
`
`_'_l:__l_1_V,€,V,__V__S_l,1,_1_1,_,.1,_l_fc_1,_I_f_,l,____t17V or dissimilarity of established, likely to continue
`
`/~\pplicant’s LA CACICA coffee is sold in a national grocery store chain. The
`
`Opposer’s CACIQUE brand foods are also sold nationally in many well known grocery
`
`stores and supermarket chains. (Chang W 4, 5), (lglesias 1l7). Where the established and
`
`likely to continue trade channels are similar this factor favors a finding of likelihood of
`
`confusion.
`
`4.
`
`'_;l_l_l_‘t0VZf___§Q}1_(_l_l_tlO_l1S under flwliicthl and buyers to whom, sales are made,
`
`l.t‘._,L_‘,_:l_V,lf_1__,1__}_)L1lS€” vs. careful, sqphisticated4)urchasmg.
`
`Coffee, drinkable yogurt, sausage, cream, horchata and cheese are staple goods
`
`purchased and consumed by most Americans and Hispanic Americans. None of these
`
`goods are expensive or require any sophistication in making the purchasing decision.
`
`Only the average care a consumer normally exercises is required to purchase branded
`
`products one has purchased in the past, Since these staple products require only an
`
`average degree of care, it is reasonable to cone.lude that the average consumer will think
`
`that LA CAClCA coffee is somehow related to CACIQUE cream and dairy when in fact
`
`there is no connection, affiliation or sponsorship. Therefore this factor favors a finding
`
`of likelihood of confusion.
`
`Adcg__9/10 SJM
`
`9
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`

`
`IV. CONCLUSION
`Upposer has demonstrated the absence of any genuine dispute as to any material
`fact regarding the likelihood of confusion between the two marks, and that it is entitled
`
`issue of material fact and as a matter of law, Applicant’s applied for mark LA CACICA is
`lil<el_\" to cause eonfiision with ()pposer’s C/\ClQUl:) family of marks.
`In View of this,
`CACIQUIC respectfully requests that the Board deny registration of LA CACICA and
`
`enter summary judgment in favor of Opposer.
`
`S(‘pl'(‘Ii1l')(.‘I‘ 16, 2012
`
`l{(%s]3eett'i.1lly submitted,
`</§--*’'‘ ‘'7 39
`An onio de Cardenas, JDIMBA
`DE c£\‘R1>1f«;NAs LAW GROUP, APLC
`199 S. Los Robles Ave, Ste. 440
`Pasadena, CA 91101
`Attorneys for Opposer
`(7a<.*ique, Inc.
`(626) 577-6800
`
`Attachments: Decla1‘atio1’1s
`
`.___._.._....
`CERTIFICATE OF TRAN_S_MITTAI..
`
`I hereby (:erti'f_\' that this MOTION FOR SUMMARY JUDGMENT AND SUPPORTING
`MF.M()IU\NDUM OF LAW was electronically transmitted in PDF format
`to the
`System for Trademark Trial
`
`Trademark Trial and Appeal Board through the Electronic
`
`and Appeals (ILSSTA) on the following date: Septeinher 16, 2012.
`
`
`
`Adc_‘)/l 0 SM
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`10
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`CERTIFICATE OF SERVICE
`
`I hereby certify that CACIQUE, INC’S MOTION FOR SUMMARY JUDGMENT AND
`
`S‘UPPOR'I‘lN(} MEMORANDUM OF LAW was served upon Applicant’s counsel on
`
`September 16, 2012 via first class U.S. Mail, [with a courtesy copy electronically sent] at
`
`the following d(l(lress:
`
`Bradley Cohn, Esq.
`Pattishall, McAuliffe, Newbur_V, Hilliard
`3.11 S. Wacker Drive
`Sufie5ooo
`Chicago, IL 60606
`blc@patishall.com
`
`l'1>‘LJj
`
`mg
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`,+\l|g__’_<)z 1 0 s1 M
`
`1
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`1
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`

`
`EXHIBIT A
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`CACIQUE, INC.,
`Opposer,
`v.
`
`VIRMAX LIMITED,
`Applicant
`
`)
`)
`)
`)
`)
`)
`
`Opposition No. 91/183,603
`Mark: LA CACICA
`Serial No. 76/681,489
`
`DECLARATION OF JU CHANG IN SUPPORT OF OPPOSER’S MOTION FOR
`SUMMARY JUDGMENT
`
`I, JU CHANG, ESQ. hereby declare as follows:
`
`1.
`
`I am an attorney working for De Cardenas Law Group, APLC, counsel of
`
`record for Opposer in the above-referenced matter. I submit this Declaration in support
`
`of Opposer’s Motion for Summary Judgment under Rule 56 of the Federal Rules of Civil
`
`Procedure and Trademark Rule 2.116. The facts set forth herein are based upon my
`
`personal knowledge and/or my review of the firm’s record for this matter.
`
`2.
`
`Opposer owns and currently uses in commerce the CACIQUE trademark
`
`alone and in combination with other words forming variations for all of the goods
`
`reflected in U.S. Registration Nos. 1152572, 3662558, 3859152, 1215056, 2915613,
`
`2963684, 3574825 and 3745734. These registrations are valid and enforceable. Four of
`the registrations were issued prior to 2007.
`I attach hereto a true and accurate copy of
`
`each valid and existing certificate of registration taken from the records of the U.S.
`
`Patent and Trademark Office and a picture of the CACIQUE trademark on a group of
`
`Opposer’s products.
`
`

`
`3.
`
`In 2009, Ronald R. Butters, Ph.D., a linguistic scientist, expert and
`
`consultant in the field of linguistics, was engaged by Opposer to prepare a Declaration
`
`and Report regarding the meaning and interpretation of the terms “cacique” and
`
`“cacica” for speakers of English and Spanish in the United States and whether likelihood
`
`of linguistic confusion would arise by their concurrent use for similar or complementary
`
`goods. Attached hereto find a true, accurate and complete copy of Dr. Butters’
`
`November 12, 2009 Report as part of this Declaration. This Report was served on
`
`Applicant in 2009 by Opposer as part of Opposer’s expert witness disclosure.
`
`4.
`
`Opposer sells food and dairy products including cheese and cream through
`
`grocery stores, major retail chains, local supermarkets, bodegas and convenience stores
`
`and has done so for almost 40 years. This long and substantially exclusive use of
`
`CACIQUE has created valuable common law rights and goodwill resulting in a
`
`commercially successful business based on the brand. Opposer’s CACIQUE products
`
`are sold for less than $20.00 Attached hereto is a true and accurate photograph of
`
`Opposer’s branded CACIQUE cheese sold at WalMart stores and CACIQUE cream
`
`product sold at WalMart stores and online at http:_L[www.walmart.com/ip/Cacique—
`
`Table-Cream-15-ozQ0451930#ProductDetail..
`
`5.
`
`Applicant sells and/or has sold LA CACICA brand coffee for a price less
`
`than $20.00 through Whole Foods, a national supermarket chain
`
`6.
`
`Coffee, horchata, and drinkable yogurt are related beverages. Coffee,
`
`cream, sausage and dairy products are complementary products that are food staples
`
`regularly eaten together at the same meal.
`
`

`
`7.
`
`Coffee and cream or dairy products are routinely marketed and sold by the
`
`same jurisdic entity throughout the United States. Attached to this Declaration find true
`
`and accurate copies of seven (7) third party federal registrations issued in the last eleven
`
`months showing that the registrants sell both coffee and cream and/or dairy products.
`
`8.
`
`Opposer served interrogatories and Documents Requests upon Applicant.
`
`Despite numerous meet and confer attempts by Opposer, Applicant failed to ever
`
`respond.
`
`9.
`
`True and correct copies of the following TTAB decisions are being
`
`submitted herewith in support of Opposer’s Motion for Summary Judgment: (1) Festin
`
`Foods v. Premium Cofifee Distributors,
`
`Inc., Opposition No. 85,931, hearing on
`
`January 11, 1995; 1180.94 OG; and (2) In re Asahi Breweries, Ltd. U.S. Serial No.
`
`729,846; 1114:67 OG (1990).
`
`I swear under penalty of perjury the foregoing is true and correct to the best of
`
`my knowledge. Executed on September 14, 2012, at Irvine, California,
`
`in Orange
`
`County.
`
`
`
`

`
`Attachments:
`
`Paragraph 2: True and correct copies of Registration Nos. 1152572, 2915613, 3662558,
`
`1215056, 2915613, 2963684, 3574825 and 3745734 from the USPTO records are being
`
`submitted herewith.
`
`

`
`Int. Cl.: 29
`
`Prior U.S. Cl.: 46
`
`United States Patent and Trademark Office
`
`Reg. No. 1,152,572
`Registered Apr. 23, 1981
`
`TRADEMARK
`Principal Register
`
`EL CACIQUE
`
`Cheese
`Cacique
`corporation)
`442 S. Fair Oaks
`Pasadena, Calif. 91105
`
`Company
`
`lnc.
`
`(California
`
`For: CHEESE. in CLASS 29 (US. Cl. 46).
`First use Jun.
`l973; in commerce Jun. 1973.
`The mark “El Cacique“ translated into English
`means “prince, nobleman among the Indians, political
`leader, or boss.
`
`Ser. No. 223,074, filed Jul. 12, 1979.
`
`RICHARD A. STRASER, Primary Examiner
`
`

`
`Int. Cl.: 29
`
`Prior U.S. Cl.: 46
`
`United States Patent and Trademark Office
`
`Reg. No. 2,915,613
`Registered Jan. 4, 2005
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`CACIQUE
`
`CACIQUE. INC. (CALIFORNIA CORPORATION)
`14940 PROCTOR AVENUE
`CITY OF INDUSTRY. CA 91744
`
`FOR: DAIRY PRODUCTS: NAMELY CREAM. IN
`CLASS 29 (US. CL. 46).
`
`THE ENGLISH TRANSLATION OF THE WORD
`CACIQUE IN THE MARK IS "PRINCE, NOBLEMAN
`AMONG THE INDIANS. POLITICAL LEADER OR
`BOSS".
`
`FIRST us]: 12-31-1980; IN COMMERCE 12-31-1980.
`
`SEER" NO" 76'5°1«*955’ FILED 3'27'2°°3'
`
`OWNER OF U.S. REG. NOS. 1,152,572 AND
`1.215.056.
`
`JOHN E. MICHOS, EXAMINING ATTORNEY
`
`

`
`Int. Cls.: 29, 30 and 32
`
`Prior U.S. Cls.: 45, 46 and 48
`
`United States Patent and Trademark Office
`
`Reg. No. 3,662,558
`Registered Aug. 4, 2009
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`CACIQUE
`
`CACIQUE. INC. (CALIFORNIA CORPORATION)
`14940 PROCTOR AVENUE
`CITY OF INDUSTRY. CA 91744
`
`FOR: 1-IORCHATA. IN CLASS 32 (us. CLS. 45, 46
`AND 48).
`
`FIRST USE 1-0-1996: IN COMMERCE 1-0-1996.
`
`FOR: DRINKABLE YOGURT; CHEESE; MEAT, IN
`CLASS 29 (US. CL. 46).
`
`FIRST USE 6-0-1973; IN COMMERCE 6-0-1973.
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT. STYLE. SIZE. OR COLOR.
`
`OWNER OF U.S. REG. NOS. 1,152,572. 2.915.613
`AND OTHERS.
`
`FOR: CAKE MADE OF CORN, NAMELY. SOPES.
`IN CLASS 30 (US. CL. 46).
`
`SER. NO. 77-447.976. FILED 4-14-2008.
`
`FIRST IYSE 1-0-1996: IN COMMERCE 1-0-1996.
`
`FLORENTINA BLANDU EXAMINING ATTORNEY
`
`

`
`wfimn étatnzz of amen,
`flkintteh $tat2s3 ifiatent ant fllratuzmarls QBff1'1;2
`
`CACIQUE
`
`CACIQIJE INC (CA1.1I»-‘ORNIA cOR1>ORA1‘1ON)
`Reg, No, 3,859,152
`14940 PROCTOR AVE
`_
`RegIstered Oct. 12, 2010 INDUSTRY, CA 91744
`In t. Cl.: 43
`FOR: PREPARAIION OF FOOD AND BEVERAGES, IN CLASS 43 (US. CLS. 100 AND 101).
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`FIRST USE 12-31-1973; IN COMMERCE 12-314973.
`
`TI U’. MARK CONSISTS OF ST/\NDARD (‘II/\R;\C'[T.RS WITHOUT CI./\IM TO ANY PAR-
`'llCUl,AR 1~ON'1,S'1Y1,1:,S1/,1~;,OR COLOR.
`
`OWNER OF U.S. REG. NOS. 1,152,572, 3,662,558 AND OTHERS.
`
`TIIE ENGLISH IRAN SLAIION OF "CACIQUE" IN THE MARK Is "INDIAN CHIEF".
`
`SER. NO. 77-820,045, FILED 9-3-2009.
`
`CIMMERIAN COLEMAN, EXAI\/[INING ATTORNEY
`
`
`
`H11v;I1->1 1»r111I 11.1.1u14\11;II~ 1'.11\111:1;1d 11.1111-111:1-.I\ (illum-
`
`

`
`Int. Cl.: 29
`
`Prior U.S. Cl.: 46
`
`United States Patent and Trademark Office
`
`Reg. No. 1,215,056
`Registered Nov. 2, 1982
`
`TRADEMARK
`
`Principal Register
`
`
`
`Company
`
`Inc.
`
`(California
`
`Cheese
`Cacique
`corporation)
`442 5. Fair Oaks Ave.
`Pasadena, Calif. 91105
`
`For: SAUSAGE, in CLASS 29 (US. Cl. 46).
`First use Sep. 1980; in commerce Sep. 1980‘
`Owner of U.S. Reg. Nos. 1,152,571 and 1,152,572.
`The lining and stippling shown in the mark is
`shading and a feature of the mark, but does not
`indicate color. The mark “El Cacique",
`from the
`Spanish language means "prince, nobleman among the
`Indians, political leader or boss”.
`
`Ser. No. 322,961, filed Aug. 10, 1981.
`
`JERRY L. PRICE. Primary Examiner
`
`JESSIE N. MARSHALL, Examiner
`
`

`
`r®3x'\I\ZI3?1i1u'teh $tatess' ifiatmut auh fl£raIn>n1ark {fine
`
`
`
`
`
`Ranchero 2
`[SO I
`. nn.» :4:
`
`
`
`Reg. No. 3,745,734
`Registered Feb. 9, 2010
`
`CACIQUE, INC . (CALIFORNIA CORPORATION)
`14940 PROCTOR AVENUE
`CITY OF INDUSTRY, CA 91744
`
`Int. CI.: 29
`
`FOR: DAIRY I’|<()I)UC I'S EXCI,UI)ING ICE CREAM, ICE MILK ANI) I*R()'/,I-IN Y()(IUR'I}
`IN CLASS 29 (U.S. CL. 46).
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`FIRST USE (lv()~2(')()I_ IN COMI\/IERCE (,I.O—2(I0l.
`
`REGISTRATION LIMITED TO THE AREA COMPRISING THE ENTIRE UNITED STATES
`EXCEPT FOR THE STATES OF ILLINOIS, INDIANA, MICHIGAN AND WISCONSIN PUR~
`SUANT TO THE DECREE OF THE UNITED STATES DISTRICT COURT FOR THE
`NORTI IERN DISTRICT OF ILLINOIS, EASTERN DIVISION, CASE NO. 86-C-8695. CONCUR-
`RI'IN’I' RI{(?IS'I'RA'I'I()N WITII V & V I"()0I)S PROD! IC'I‘S_ INC. 2I~’II S TROOI’ S'I'RI7,ITT.
`CI IIC/\(i(), II. (’>I)<’>(I8.
`
`OWNER OF U.S. REG. NOS. I,I52.572. 2.915.613 AND OTHERS.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "QUESO FRESCO PART SKIM
`MILK CHEESE", APART FROM THE MARK AS SHOWN.
`
`THE MARK CONSISTS OF THE WORDING "CACIQUE," "RANCHERO," "QUESO FRESCO,"
`AND "PART SKIM MILK CHEESE," ALL APPEARING INSIDEA STYLIZED ROPE DESIGN
`WITII A DESIGN OF A MAN ON A BURRO FOLLOWED BYA MAN CARRYING GOODS".
`
`'I'I IIC I-'()RI’.I(}N W()RI)IN(I IN II III MARK'|‘RANSI,A‘I‘IiS INTO IiN(}I.ISI I AS "RANCI II5R()"
`IRANSI,/\‘I'I-IS 'l'() RANCH ANI) "CACIQIIE" 'I'RANSI.A'I"|CS T0 PRINCE, NOBLEMAN
`AMONG THE INDIANS. POLITICAL LEADER OR BOSS.
`
`SER. NO. 77-357,228, I"II.ED 12-20-2007.
`
`JAY FLOWERS, EXAMINING ATTORNEY
`
`
`
`QM)! SIC-»\/zpé
`
`I)II’.'LInI'\'>I Inc U1\iu-«I .\!.vlC.» I’.»lunI mu!
`
`I:.uIu|11;|:’L (JIIIW
`
`

`
`Int. Cl.: 29
`
`Prior U.S. Cl.: 46
`
`United States Patent and Trademark Office
`
`Reg. No. 3,574,825
`Registered Feb. 17, 2009
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`CACIQUE, INC. (CALIFORNIA CORPORATION)
`14040 PROCTOR AVENUE
`CITY OF INDUSTRY, CA 917-H
`
`FOR: DAIRY PRODUCTS EXCLUDING ICE
`CREAM. ICE MILK AND FROZEN YOGURT. IN
`CLASS 29 (US. CL. 46).
`
`FIRST USE 0-0-1999; IN COMMERCE 0-0-1999.
`
`OWNER OF U.S. REG. NOS. 1,152,572, 2,915,613
`A’.\'D OTHERS.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE "CREMA" AND "GRADE A SAL-
`VADORAN STYLE SOUR CREAM". APART FROM
`THE MARK AS SHOWN.
`
`THE MARK CONSISTS OF MAN ON BURRO
`FOLLOWED BY MAN CARRYING GOODS IN
`B/\SI{I£T: FLAG‘. AND WORDS "CACIQUE: CREMA
`SALVADORENA; GRADE A SALVADORAN STYLE
`SOUR CREAM".
`
`THE FOREIGN WORDING IN THE MARK
`TRANSLATES INTO ENGLISH AS CREAM OF
`THE SALVADORIAN FOR “CREMA SALVADORE-
`NA" AND PRINCE. NOBLEMAN AMONG THE
`INDIANS, POLITICAL LEADER OR BOSS FOR
`"CACIQUE".
`
`SEC. ZIP) AS TO "SAL'\'AI)ORENA".
`
`SER. NO. 77-357,263, FILED 12-20-2007.
`
`JAY FLOWERS. EXAMINING ATTORNEY
`
`

`
`Int. Cl.: 29
`
`Prior U.S. Cl.: 46
`
`United States Patent and Trademark Office
`
`Reg. No. 2,963,684
`Registered June 23, 2005
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`CACIQUE FAMILY RESERVE
`
`CACIQUE. II\'C. (CALIFORNIA CORPORATION)
`H940 PROCTOR AVENUE
`CITY OF INDUSTRY, CA 91744
`
`FOR: DAIRY PRODUCTS; NAMELY CHEESE, IN
`CLASS 29 (US. CL. 46).
`
`H
`7 H
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE RESERVE , APART FROM THE
`MARK AS SHOWN.
`
`THE FOREIGN WORDING IN THE MARK
`TRANSLATES INTO ENGLISH AS PRINCE, NOBLE-
`MAN AMONG THE INDIANS, POLITICAL LEADER
`OR BOSS.
`
`FIRST USE 12-25-1995; IN COMMERCE 12-25-1995.
`
`SER, 1\'o_ 76.560547‘ FILED 10.29.2003.
`
`OWNER 01: U5‘ REG_ NOS 1‘153!57_7_ AND
`1.215.O56.
`
`ELII§£I3ETH PIGNATELLO. EXAMINING ATTOR-
`/
`
`

`
`Paragraph 2 cont.: Opposer’s products displaying the CACIQUE trademark.
`
`
`
`Queso Quesadma
`
`
`
`
`
`Quew Quesadnla
`13559350
`Mme Lhwazi
`
`Chooses
`F rush Cheeses
`Ramchem‘ Quvw Fmsw
`Pamela
`Q9250 Istanco Fresco
`Queso Fresco
`Making Clmtses
`Auda ro
`Queso Qwesadma
`Quew Qucudma
`1’"“F”"°
`Mozzarella
`Oaxaca
`Maul: my jack
`Mancht, go
`Robust Chccaes
`Cuma
`Fnchnlndc
`
`Yog mu
`“ens
`leverages
`Baked Goods
`
`Sour Creams Table Creams
`
`Oaxaca
`,
`V
`‘~—"n.‘;!é:‘t Ukziati
`
`Momemy Jack
`,
`Mme Detw!
`
`Munchtgo
`‘
`More lfietaul
`
`

`
`Paragraph 3: Report of Ronald R. Butters, Ph.D.
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`)
`
`) )
`
`) )
`
`CACIQUE, INC.,
`
`Opposer,
`
`v.
`
`VIRMAX LIMITED,
`
`)
`)
`)
`)
`)
`Applicant
`_____________________________)
`
`Opposition No. 91 183603
`Mark: LA CACICA
`Serial No. 76/681,489
`
`REPORT OF RONALD R. BUTTERS PH.D.
`
`1. This report is submitted on behalf of the Opposer, CACIQUE, INC., in the
`
`above-captioned case.
`
`2. I am a resident of Durham, North Carolina, and Professor Emeritus, Duke
`
`University, where I have served since 1967 as a member of the faculties of the
`
`Departments of English and Cultural Anthropology, and where I at various times chaired
`
`both the English Department and the Linguistics Program. I earned my doctorate in
`
`English with a concentration in linguistics from the University of Iowa, Iowa City, where
`
`I received advanced training in the study of both linguistics and literature. I serve on the
`
`Advisory Board of the New Oxford American Dictionary, published by the Oxford
`
`University Press, and I am an active member of American Dialect Society, American
`
`Name Society, Dictionary Society of North America, Asociacién de Lingiiistica y
`
`Filologia de América Latina, Linguistic Society of America, Southeastern Conference on
`
`Linguistics, International Language and Law Association, and International Association
`
`1
`
`

`
`of Forensic Linguists (of which I am currently the president). A copy of my current
`
`curriculum vitae, detailing my educational background, professional experience, teaching
`
`areas, and publications, is attached hereto as “Exhibit ‘A’.”
`
`3. This declaration is made based on my research, personal knowledge, and
`
`professional expertise.
`
`If sworn as a witness, I could and would testify competently to
`
`the matters stated herein. Insofar as I may continue to review additional information, I
`
`will be able to supplement, revise, or further explain the opinions set forth in this report.
`
`4. In addition to my ongoing academic research interests, I am also self-employed
`
`as a consultant and expert in the field of linguistics.
`
`In this capacity I have testified
`
`and/or served as an expert witness before state and federal trial courts and boards in
`
`California, the District of Columbia, Florida, Georgia, Illinois, Kansas, Louisiana,
`
`Maryland, Massachusetts, Missouri, New York, North Carolina, Ohio, Virginia, and
`
`West Virginia, as well as in proceedings of the United States Patent and Trademark
`
`Office’s Trademark Trial and Appeal Board. A list of all cases in which I have testified
`
`as an expert at trial or by deposition within the preceding four years is attached hereto as
`
`“Exhibit ‘B’.”
`
`5. Linguistics is the scientific study of human language in all
`
`its various
`
`aspects-——historical, cultural, social, and psychological—as exhibited in the spoken and
`
`written forms of the languages and dialects of the world. It encompasses the subfields of
`
`phonology or sound structure; graphemics, which is the relationship between writing
`
`systems and the sounds of languages; morphology or word structure; syntax, the rules
`
`for organizing words into phrases and sentences; semantics or word and sentence
`
`meanings (the subfield of word-meaning alone is termed lexicoiogy); lexicography or
`
`

`
`dictionary making; and pragmatics, the study of how the meanings and interpretations of
`
`sentences are related to each other and to the contexts of language use (including
`
`semiotic contexts, i.e., extralinguistic meaning systems that members of a culture assign
`
`to signs, that is, colors, shapes, visual patterns, and icons). Linguists thus study the
`
`principles that underlie all human languages.
`
`6. Within linguistics, the greatest portion of my teaching and scholarly work has
`
`focused upon contemporary American English and its antecedents, and on languages
`
`influencing, or influenced by, English in the modern world.‘ As “Exhibit ‘A’ ” indicates,
`
`for 40 years I have been active in research, editing,

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