`ESTTA282217
`ESTTA Tracking number:
`05/06/2009
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91189245
`Defendant
`PUERTO RICO COFFEE ROASTERS, LLC
`NESTOR M. MENDEZ GOMEZ
`PIETRANTONI MENDEZ & ALVAREZ LLP
`POPULAR CTR 209 MUNOZ RIVERA AVE , 19TH FL
`SAN JUAN, PR 00918
`UNITED STATES
`nmendez@pmalaw.com
`Answer and Counterclaim
`Nestor M. Mendez Gomez
`nmendez@pmalaw.com, mtrelles@pmalaw.com, arivera@pmalaw.com,
`trademarks@pmalaw.com
`/nestor m. mendez gomez/
`05/06/2009
`Answer to Notice of Opposition and Counterclaim.PDF ( 12 pages )(136726
`bytes )
`Attachment to Answer to Notice of Opposition and Counterclaim.pdf ( 16 pages
`)(662607 bytes )
`Registrations Subject to the filing
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`Registration No
`Registrant
`
`3194740
`Cafe Rio, Inc.
`2825 East Cottonwood Parkway, Suite 360
`Salt Lake City, UT 84121
`UNITED STATES
`Goods/Services Subject to the filing
`
`Registration date
`
`01/02/2007
`
`Class 032. First Use: 1997/10/00 First Use In Commerce: 1997/10/00
`All goods and services in the class are requested, namely: Beverages, namely, fresh fruit drinks and
`soft drinks of all varieties for consumption on or off the premises
`
`Registration No
`Registrant
`
`3204242
`Cafe Rio, Inc.
`2825 East Cottonwood Parkway, Suite 360
`Salt Lake City, UT 84121
`UNITED STATES
`Goods/Services Subject to the filing
`
`Registration date
`
`01/30/2007
`
`Class 025. First Use: 1997/10/00 First Use In Commerce: 1997/10/00
`All goods and services in the class are requested, namely: Clothing, namely men's, women's and
`children's clothing, namely, t-shirts, sweatshirts, polo shirts, golf shirts, long-sleeve shirts, jackets,
`turtlenecks, sweaters, caps, baseball caps, golf caps
`
`Registration No
`Registrant
`
`3194739
`Cafe Rio, Inc.
`
`Registration date
`
`01/02/2007
`
`
`
`2825 East Cottonwood Parkway, Suite 360
`Salt Lake City, UT 84121
`UNITED STATES
`Goods/Services Subject to the filing
`
`Class 021. First Use: 2002/10/00 First Use In Commerce: 2002/10/00
`All goods and services in the class are requested, namely: Containers for food and beverages,
`disposable cups, drinking cups, mugs, lids for food service tins
`
`Registration No
`Registrant
`
`3184160
`Cafe Rio, Inc.
`2825 East Cottonwood Parkway, Suite 360
`Salt Lake City, UT 84121
`UNITED STATES
`Goods/Services Subject to the filing
`
`Registration date
`
`12/12/2006
`
`Class 029. First Use: 2003/03/00 First Use In Commerce: 2003/03/00
`All goods and services in the class are requested, namely: Complete prepared meals for
`consumption on or off the premises consisting primarily of beef, poultry, pork, fish or vegetables, and
`guacamole, salads, salads with shredded braised beef, salads with shredded chicken breast, salads
`with shredded pork barbacoa, fajita grilled steak salads, fajita grilled chicken salads and tortilla
`chicken soup, cooked black beans and cooked pinto beans; and, beverages, namely, milk for
`consumption on or off the premises
`Class 030. First Use: 2003/03/00 First Use In Commerce: 2003/03/00
`All goods and services in the class are requested, namely: Burritos, cheese burritos, shredded
`braised beef burritos, shredded chicken burritos, shredded pork barbacoa burritos, fajita grilled steak
`burritos, fajita grilled chicken burritos, enchiladas, tacos, tacos with shredded beef, tacos with
`shredded pork and tacos with pork barbacoa, chips and salsa; and, bakery desserts, namely,
`chocolate cheese flan and lime pie
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`RIO ,
`CAFE
`corporation
`
`INC .
`
`,
`
`a
`
`Utah
`
`Opposer
`
`v.
`
`Puerto
`
`Rico Coffee Roasters,
`
`LLC,
`
`a
`
`Puerto
`
`Rico
`
`limited
`
`liability company,
`
`Applicant
`
`NOTICE OF OPPOSITION
`
`Opposition no. 91189245
`
`ANSWER TO NOTICE OF OPPOSITION
`
`COMES
`
`NOW Puerto Rico Coffee Roasters,
`
`LLC
`
`(hereinafter
`
`“P.R. Coffee Roasters” or defendant),
`
`through the undersigned
`
`counsel,
`
`and in response to Cafe Rio Inc.’s (hereinafter “Café
`
`Rio" or plaintiff) Notice of Opposition to the registration of
`
`Serial No. 77062424 respectfully alleges and prays:
`
`1. The first paragraph of the Notice of Opposition requires no
`
`answer, as it alleges plaintiff's address.
`
`In the event an
`
`answer
`
`is required, Defendant asserts that it is without
`
`knowledge or information sufficient to form a belief as to
`
`the truth of the averment.
`
`2. As
`
`to ‘the second paragraph of
`
`the Notice of Opposition,
`
`Defendant
`
`lacks sufficient knowledge or information to form
`
`a belief as to the truth of the averment.
`
`
`
`
`
`Defendant admits that it acquired its interest
`
`in and to
`
`the Cafe Rico mark and design subject of Application Serial
`
`No.
`
`77062424 to by way of an assignment
`
`from Cafe Rico,
`
`Inc. which was received and recorded at the U.S. Patent and
`
`Trademark Office (U.S.P.T.O.) on August 25, 2008.
`
`Defendant admits paragraph 4.
`
`Defendant
`
`admits
`
`that Plaintiff
`
`is
`
`the
`
`owner
`
`of
`
`the
`
`Registration described at paragraph 5,
`
`subject
`
`to the
`
`qualification that Registration No. 2,668,739 disclaimed
`
`the word “cafe” and.
`
`that
`
`the registration includes only
`
`restaurant services.
`
`Defendant
`
`admits
`
`that Plaintiff
`
`is
`
`the
`
`owner of
`
`the
`
`Registration described at paragraph 6,
`
`subject
`
`to the
`
`qualification that Registration. No. 2,671,574 disclaimed
`
`the word “cafe” and that
`
`the registration includes only
`
`restaurant services.
`
`Defendant
`
`admits
`
`that Plaintiff
`
`is
`
`the
`
`owner
`
`of
`
`the
`
`Registration described at paragraph 7,
`
`subject
`
`to the
`
`qualification that Registration No.
`
`3,194,740 disclaimed
`
`the word “cafe” and that the registration includes only the
`
`goods listed at paragraph 7.
`
`Defendant
`
`admits
`
`that Plaintiff
`
`is
`
`the
`
`owner
`
`of
`
`the
`
`Registration described at paragraph 8,
`
`subject
`
`to the
`
`qualification that Registration No. 3,204,242 disclaimed
`
`
`
`
`
`the word “cafe” and that the registration includes only the
`
`goods listed at paragraph 8.
`
`Defendant
`
`admits
`
`that
`
`Plaintiff
`
`is
`
`the
`
`owner
`
`of
`
`the
`
`Registration described at paragraph 9,
`
`subject
`
`to the
`
`qualification that Registration No. 2,389,800 disclaimed
`
`the word “cafe” and that the registration includes only the
`
`goods listed at paragraph 9.
`
`10.
`
`Defendant
`
`admits
`
`that Plaintiff
`
`is
`
`the
`
`owner
`
`of
`
`the
`
`Registration described at paragraph 10,
`
`subject
`
`to the
`
`qualification that Registration No. 2,262,789 disclaimed
`
`the words “cafe Mexican grill” and that
`
`the registration
`
`includes only the goods listed at paragraph 10.
`
`11.
`
`Defendant
`
`admits
`
`that
`
`Plaintiff
`
`is
`
`the
`
`owner
`
`of
`
`the
`
`Registration described at paragraph 11,
`
`subject
`
`to the
`
`qualification that Registration No.
`
`3,194,739 disclaimed
`
`the word cafe and that
`
`the registration includes only the
`
`goods listed at paragraph 11.
`
`12.
`
`Defendant
`
`admits
`
`that Plaintiff
`
`is
`
`the
`
`owner
`
`of
`
`the
`
`Registration described at paragraph 12,
`
`subject
`
`to the
`
`qualification that Registration No.
`
`3,184,160 disclaimed
`
`the word cafe and that
`
`the registration includes only the
`
`goods listed at paragraph 12.
`
`13.
`
`Defendant admits that on December 12, 2006, Café Rico,
`
`Inc.
`
`filed an application pursuant
`
`to Section 1(a) of the Lanham
`
`
`
`
`
`14.
`
`15.
`
`16.
`
`Act,
`
`15 U.S.C.
`
`§§ 1051 et seq.,
`
`to register the Cafe Rico
`
`mark
`
`and
`
`design, which
`
`application bears
`
`serial
`
`no.
`
`77062424.
`
`Defendant admits paragraph 14.
`
`Defendant admits paragraph 15.
`
`As
`
`to paragraph 16, Defendant admits only that Plaintiff
`
`alleged use of the “Cafe Rio” mark in its applications for
`
`the registrations mentioned in paragraphs 5-10 since 1997.
`
`Defendant denies that Plaintiff's use of the Cafe Rio mark
`
`for
`
`restaurant
`
`services preceded Defendant's use of
`
`the
`
`Cafe Rico mark.
`
`Defendant clarifies that
`
`the application
`
`for registration of the Café Rico mark assigned Serial No.
`
`77062424 asserts that
`
`the mark has been used in commerce
`
`since at
`
`least 2000. Defendant affirmatively alleges that
`
`the actual date of first use in commerce of the Cafe Rico
`
`mark
`
`is much
`
`earlier:
`
`since
`
`at
`
`least
`
`1936.
`
`See,
`
`Cooperativa de Cafeteros de Puerto Rico v. F. Colon Colon,
`
`91 Puerto Rico Reports 380-381
`
`(Supreme Court of Puerto
`
`Rico, 1964)
`
`(“We have painstakingly examined the record of
`
`the oral and documentary evidence admitted at
`
`the hearings
`
`of
`
`the case and in our
`
`judgment it was fully established
`
`that the color scheme, design and words
`
`‘Cafe Rico’
`
`in the
`
`label of appellant's bag have acquired a secondary meaning
`
`in the market of roasted and ground coffee in Puerto Rico
`
`
`
`
`
`as
`
`a
`
`result
`
`of
`
`the
`
`following circumstances:
`
`7
`In
`
`1936
`
`appellant acquired by purchase the trademark ‘Cafe Rico’
`
`registered
`
`in
`
`Puerto Rico
`
`and
`
`the
`
`trademark
`
`‘Rico’
`
`registered in the United States Patent and Trademark Office
`
`and it has continuously and ostentatiously used it since
`
`then, except
`
`that
`
`in 1948 it registered said mark with a
`
`special design in which it packs and sells its roasted and
`
`ground coffee, which it had been utilizing ever
`
`sincem”)
`
`(emphasis
`
`added)
`
`(copy
`
`of
`
`the
`
`referenced decision is
`
`included as Attachment 1).
`
`Defendant denies paragraph 17.
`
`Defendant denies paragraph 18.
`
`In
`
`response
`
`to paragraph
`
`19, Defendant
`
`reasserts
`
`and
`
`incorporates by reference all
`
`its previous paragraphs in
`
`this Answer.
`
`In response to paragraph 20, Defendant denies
`
`that
`
`the
`
`“Cafe Rio” mark and the “Café Rico” mark are confusingly
`
`similar.
`
`In the alternative,
`
`if the marks are deemed to
`
`be
`
`confusingly similar,
`
`then because Defendant
`
`is
`
`the
`
`senior user of the Cafe Rico mark, its mark must be allowed
`
`17.
`
`18.
`
`19.
`
`20.
`
`registration and Plaintiff's marks must be cancelled.
`
`21.
`
`Defendant denies paragraph 21.
`
`Defendant affirmatively
`
`alleges that it is the senior user of
`
`the Café Rico mark
`
`
`
`
`
`and that the use of Cafe Rico precedes the use of Cafe Rio
`
`by some sixty years.
`
`22.Defendant denies paragraph 22.
`
`23.Defendant denies paragraph 23.
`
`AFFIRMATIVE DEFENSES
`
`1. Plaintiff's Notice of Opposition fails to state any claim
`
`upon which relief may be granted.
`
`2.Plaintiff’s claims are barred by the doctrines of
`
`laches,
`
`waiver, estoppel, and acquiescence.
`
`3. Plaintiff lacks standing to initiate this proceeding.
`
`4. Plaintiff's registrations of
`
`the Cafe Rio mark are not
`
`valid,
`
`since other‘ persons had used the mark or
`
`it
`
`is
`
`confusingly similar to those of other, senior users.
`
`5.There is no likelihood of confusion between Plaintiff's and
`
`Defendant's marks.
`
`6.In the alternative,
`
`if there is a likelihood of confusion,
`
`then Defendant must be deemed the senior user, as the Café
`
`Rico mark has been continuously used in commerce by it and
`
`its predecessors for over seventy years, whereas Plaintiff
`
`has
`
`been using its Café Rio mark
`
`in connection with
`
`restaurant services at the earliest since 1997.
`
`7. Defendant
`
`reserves the right
`
`to amend its .Answer
`
`to the
`
`Notice of Opposition and its Affirmative Defenses.
`
`
`
`
`
`WHEREFORE Defendant requests that
`
`the Notice of Opposition in
`
`proceeding 91189245 be denied and the Cafe Rico mark, Serial No.
`
`77062424 be registered.
`
`COUNTERCLAIM
`
`Puerto Rico Coffee Roasters, LLC (“P.R. Coffee Roasters” or
`
`Defendant),
`
`a Puerto Rico corporation with an address of Parada
`
`16 1/2, 1103 Fernandez Juncos Ave., Santurce, Puerto Rico 00907,
`
`believes that
`
`it
`
`is being or will be damaged by and requests
`
`cancelation
`
`of Registration
`
`Numbers
`
`M 3,194,740;
`
`3,194,740;
`
`3,204,242; 3,194,739; 3,184,160.
`
`As grounds for the Petition to Cancel, P.R. Coffee Roasters
`
`alleges that:
`
`1.
`
`Puerto Rico Coffee Roasters
`
`and its predecessors in
`
`interest
`
`have been using the mark
`
`“Cafe Rico”
`
`in
`
`commerce
`
`in connection with coffee
`
`since at
`
`least
`
`1936.
`
`2.
`
`Cafe
`
`Rico,
`
`Inc.,
`
`Puerto
`
`Rico Coffee Roasters’
`
`predecessor in interest
`
`in the Café Rico mark applied
`
`for its registration in international class (I.C.)
`
`30
`
`for use
`
`in connection with coffee on December
`
`12,
`
`2006. That application bears Serial No. 77062424.
`
`3.
`
`On January 2, 2007, Counter—defendant Cafe Rio,
`
`Inc.
`
`was
`
`issued Registration No.
`
`3,194,740 for
`
`the mark
`
`“Cafe Rio”
`
`in I.C.
`
`42
`
`for “beverages,
`
`namely fresh
`
`
`
`
`
`fruit drinks
`
`and soft drinks of all varieties for
`
`consumption on or off the premises.” Cafe Rio,
`
`Inc.,
`
`claimed a date of first use in commerce of October
`
`1997.
`
`On January 30, 2007, Counter—defendant Cafe Rio,
`
`Inc.
`
`was
`
`issued Registration No. 3,204,242 for
`
`the mark
`
`“Cafe Rio”
`
`in I.C.
`
`25
`
`for use
`
`in connection with
`
`“clothing,
`
`namely men's,
`
`women's
`
`and
`
`children's
`
`clothing, namely t—shirts,
`
`sweatshirts, polo shirts,
`
`golf shirts,
`
`long—sleeve shirts,
`
`jackets,
`
`turtlenecks,
`
`sweaters, caps, baseball caps, golf caps.” Café Rio,
`
`Inc.,
`
`claimed a date of first use
`
`in commerce of
`
`October 1997.
`
`On January 2, 2007, Counter—defendant Cafe Rio,
`
`Inc.
`
`was_
`
`issued Registration No. 3,194,739 for
`
`the mark
`
`“Cafe Rio”
`
`in I.C.
`
`21
`
`for use
`
`in connection with
`
`“containers for
`
`food and beverages, disposable cups,
`
`drinking cups, mugs,
`
`lids
`
`for
`
`food service tins.”
`
`Cafe Rio,
`
`Inc.,
`
`claimed a date
`
`of
`
`first
`
`use
`
`in
`
`commerce of October 2002.
`
`On December
`
`12,
`
`2006, Counter—defendant Cafe Rio,
`
`Inc., was
`
`issued Registration No. 3,184,160 for
`
`the
`
`mark
`
`“Cafe Rio”
`
`in I.C.
`
`29
`
`and
`
`30
`
`for
`
`use
`
`in
`
`connection
`
`with
`
`“complete
`
`prepared meals
`
`for
`
`
`
`
`
`consumption
`
`on
`
`or
`
`off
`
`the
`
`premises
`
`consisting
`
`primarily of beef, poultry, pork,
`
`fish or vegetables,
`
`and guacamole,
`
`salads,
`
`salads with shredded. braised
`
`beef, salads with shredded chicken breast, salads with
`
`shredded pork barbacoa,
`
`fajita grilled steak salads,
`
`fajita grilled chicken salads
`
`and tortilla chicken
`
`soup,
`
`cooked black beans and cooked pinto beans;
`
`and
`
`beverages, namely, milk for consumption on or off the
`
`premises”(cl.
`
`29);
`
`and “burritos,
`
`cheese burritos,
`
`shredded braised beef burritos,
`
`shredded
`
`chicken
`
`burritos,
`
`shredded pork barbacoa burritos,
`
`fajita
`
`grilled
`
`steak
`
`burritos,
`
`fajita
`
`grilled
`
`chicken
`
`burritos, enchiladas,
`
`tacos,
`
`tacos with shredded beef,
`
`tacos with shredded pork and tacos with pork barbacoa,
`
`chips
`
`and
`
`salsa;
`
`and,
`
`bakery
`
`desserts,
`
`namely,
`
`chocolate cheese flan and lime pie” (cl. 30).
`
`Cafe
`
`Rio,
`
`Inc., claimed a date of first use in commerce of
`
`March, 2003.
`
`Puerto
`
`Rico
`
`Coffee
`
`Roasters,
`
`Inc.,
`
`and
`
`its
`
`predecessors
`
`in interest have used the “Cafe Rico”
`
`mark since at
`
`least 1936,
`
`long before any use of the
`
`“Cafe Rio” mark by counter—defendant
`
`and certainly
`
`before the earliest claimed dates of use in commerce
`
`
`
`
`
`of
`
`the registrations set
`
`forth in paragraphs 3~6 of
`
`this Counterclaim.
`
`To this day, P.R. Coffee Roasters continues using the
`
`“Cafe Rico” mark.
`
`The “Cafe Rico” mark is a well—known mark for coffee
`
`and through many years of consistent and valid use and
`
`a substantial amount of time and effort in advertising
`
`and
`
`promotion
`
`has
`
`become
`
`synonymous with quality
`
`ground coffee.
`
`There is extensive goodwill associated
`
`with the “Cafe Rico” mark.
`
`10.
`
`Cafe Rio,
`
`Inc.’s Registrations 3,194,740; 3,204,242;
`
`3,194,739;
`
`and 3,184,160 must be cancelled on
`
`the
`
`grounds
`
`that
`
`such marks
`
`so resemble the “Cafe Rico”
`
`mark previously used
`
`in commerce
`
`by
`
`P.R. Coffee
`
`Roasters,
`
`Inc., and its predecessors in interest so as
`
`to be
`
`likely to cause
`
`confusion, mistake,
`
`or
`
`to
`
`deceive.
`
`11.
`
`Cafe Rio,
`
`Inc.’s Registrations 3,194,740; 3,204,242;
`
`3,194,739; and 3,184,160, used in connection with the
`
`goods
`
`listed at paragraphs 3-6 of
`
`this Answer are
`
`confusingly similar to the “Café Rico” mark used in
`
`connection with coffee.
`
`10
`
`
`
`
`
`12.
`
`The “Cafe Rico” mark has priority over the “Cafe Rio"
`
`mark, as the former has been in continuous use since
`
`at least 1936.
`
`13.
`
`Accordingly,
`
`P.R.
`
`Coffee
`
`Roasters
`
`respectfully
`
`requests
`
`that
`
`the Board order
`
`the cancellation of
`
`Registrations
`
`3,194,740;
`
`3,204,242;
`
`3,194,739;
`
`and
`
`3,184,160.
`
`WHEREFORE, P.R. Coffee Roasters prays that
`
`the Board order
`
`the
`
`cancellation
`
`of Registrations
`
`3,194,740;
`
`3,204,242;
`
`3,194,739; and 3,184,160.
`
`Respectfully submitted this 6th day of May 2009.
`
`PIETRANTONI MENDEZ & ALVAREZ LLP
`BANCO POPULAR CENTER
`
`SUITE 1901, 19“ FLOOR
`209 MUNOZ RIVERA AVENUE
`
`SAN JUAN, PUERTO RICO 00918
`
`/s/ Nestor M. Méndez Gomez
`NESTOR M. MENDEz—GOMEz ESQ
`
`nmendez@pmalaw.com
`
`W£ /
`
`MARIA D. TRELL S HER
`
`NDEZ
`
`mtrelles@pmalaw.com
`
`11
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this date, May 6, 2009,
`
`copy of
`
`this document has been sent
`
`to: Grant R. Clayton and Terrence J.
`
`Edwards, Clayton, Howarth & Cannon, P.C., P.O. Box 1909, Sandy,
`
`Utah 84091-1909.
`
`CERTIFICATE OF TRANSMITTAL
`
`I hereby certify that a true copy of the foregoing is being
`
`filed electronically with the TTAB via ESTTA on this day, May 6,
`
`2009, and also,
`
`this correspondence is being deposited with the
`
`United States Postal Services as first class mail
`
`in an envelope
`
`addressed
`
`to:
`
`Commissioner
`
`for
`
`Trademarks,
`
`PO
`
`Box
`
`1451,
`
`Alexandria, VA 22313-1451.
`
`PIETRANTONI MENDEZ & ALVAREZ LLP
`BANCO POPULAR CENTER
`
`SUITE 1901, 19“ FLOOR
`209 MUNOZ RIVERA AVENUE
`
`SAN JUAN, PUERTO RICO 00918
`
`/s/ Néstor M. Méndez Gomez
`NESTOR M. MENDEZ-GOMEZ ESQ
`
`nmendez@pmalaw.com
`
`
`
`MARIA D. TRELLES HER A DEZ
`
`mtrelleS@pmalaw.com
`
`12
`
`
`
`360
`
`THE BANK or NOVA SCOTIA 12. VELEZ RULLAN
`
`[91 P.R.R. 347
`
`the warehouse or pier in San Juan to appellee’s bakery in
`Utuado.
`
`in order to receive the flour,
`(3) As a general rule,
`Laguna had to sign a “delivery check” or receipt according
`to the practice in this type of business, so as to establish
`that he had authority, at least implied, for that purpose.
`
`(4) Appellee accepted drafts from Soldevila after the
`flour was received, and at times, in order to receive it, but
`in all of these cases of drafts he paid the flour invoices at
`1S3old1<:vila’s oflice, and then the latter paid the drafts at the
`an .
`(5) It is possible that Laguna signed drafts on other
`occasions and that in the two drafts in question Laguna’s
`signature was taken because “it was well known that he was
`absolutely trusted by Vélez Rullan.”
`
`(6) No evidence was oifered as to the fact that, prior to
`or at the time of delivering the flour corresponding to the
`two drafts which Laguna accepted on behalf of appellee,
`the latter had any knowledge of said acceptance.
`
`(7) There was evidence that appellee paid Soldevila,
`through Alvarado,
`the invoices covered by the drafts in
`question.
`
`(8) The third draft presented in evidence dates from five
`years prior to the two drafts, on which the cause of action is
`based in this case, and it was not definitively proved whether
`appellee’s name signed on the back of the instrument was
`
`written by him or by Laguna, and whether appellant re-
`ceived the amount thereof from appellee, or from Soldevila’s
`oflice, according to the practice established by said office.
`_ In the light of this evidence, we cannot conclude that the
`trial court erred in holding that Laguna lacked implied
`authority to sign the drafts in question, or in failing to
`decide that appellee was precluded from impeaching Laguna’s
`authority to accept
`the drafts on his behalf, since when
`appellee accepted and retained the flour in question, he had
`
`Nov. 17, 1964]
`
`COOPERATIVA CAFETEROS v. CoL6N COLON
`
`361
`
`no knowledge of the acceptance of said drafts nor performed
`any act to induce appellant to discount the drafts and to
`change his position.
`In view of the foregoing, the judgment of the Superior
`Court, Arecibo Part, which,
`in turn, affirms that of the
`District Court, Utuado Part, will be affirmed and the at-
`torney’s fees will be reduced to the amount of $250.
`
`
`COOPERATIVA DE CAFETEROS DE PUERTO RICO, Plaintiff and
`Appellant, v. F. COLON COLON, Defendant and Appellee.
`No. R-62-92.
`Decided November 17, 1964.
`
`2.
`
`1. TRADE—MARKS, ETC.——MARKS AND NAMES SUBJECT or OWNERSHIP——IN
`GENERAL—NArURE or TRADE—MARKs.
`The term Rico used in a trade-mark of ground cofiee is not record-
`able because it is an unrecordable descriptive term pursuant to the
`provisions of the Trade-Mark Act now in force.
`ID.———ID.——DOCTRINE or SECONDARY MEANING.
`This jurisdiction has adopted the doctrine of secondary meaning of a
`descriptive term, from which may arise a new property right con-
`cerning a trade-mark entitled to protection.
`3. WORDS AND PHRASES.
`Doctrine of Secondary Meaning.——In connection with trade-marks,
`the doctrine of secondary meaning of a descriptive term—for the
`purposes of giving protection to an unrecordable trade-mark—
`presupposes that a word or phrase which originally and in that sense
`primarily is incapable of exclusive appropriation with reference to
`an article on the market, because it is geographically or otherwise
`descriptive, might nevertheless have been used so long and so
`exclusively by one producer with reference to his article that in that
`trade and to that branch of the purchasing public the word or phrase
`has come to mean that the article was his product; in other words,
`has come to be, to said producer, his trade-mark.
`4. TRADE—MARKS, ETC.——MARKS AND NAMES SUBJECT or OWNERSHIP——
`DOCTRINE or SECONDARY MEANING.
`The determination of Whether a descriptive word or phrase used to
`designate an article in the market has acquired a secondary?‘ meaning
`is a question of fact.
`ID.——INFRINGEMENT AND UNFAIR COMPE’1‘ITION——AC’l‘IONS——PRESUMP-
`TIONS AND BURDEN or PROOF.
`In a suit for violation of a trade-mark the evidence should be consid-
`
`5.
`
`
`
`
`
`362
`
`COOPERATIVA CAFETEROS v. CoL6N CoL6N
`
`[91 P.R.R. 361
`
`Nov. 17, 1964]
`
`COOPERATIVA CAFETEROS o. CoL6N CoLoN
`
`363
`
`ered in favorable terms to the plaintiff and it devolves on defendant
`to justify the use of the trade-mark and to show that he has exer-
`cised his right with reasonable respect
`towards the rights of the
`owner of the trade-mark.
`
`6.
`
`ID.——MARKS AND NAMEs SUBJECT or 0WNERSHIP—-DOCTRINE or SECOND-
`ARY MEANING.
`
`Different ways of establishing the secondary meaning of a descriptive
`word—unrecordable as a trade-mark—used to identify a product in
`the market—which gives rise to a property right subject to protection
`—are explained in the opinion.
`7. ID.—ID.—ID.
`
`The evidence, as weighed by this Court and as recited in the opinion,
`is suflicient to conclude that in this case it Was fully established that
`the color scheme, design, and the words Café Rico in the label of
`appellant’s bag to sell his product, have acquired a secondary mean-
`ing in the market of roasted and ground coffee in Puerto Rico, which
`create in his favor a property right subject to protection.
`8. APPEAL———REVTEW——QUESTIONS or
`FACT, VERDICTS AND FINDINGS——
`WEIGHING OF Ev1DENCE——FINDINGs THERE0N—0N DOCUMENTARY
`EVIDENCE.
`
`Although the weighing by a trial court of the oral evidence merits
`our greatest respect and consideration, it is not less true that in the
`Weighing of the documentary evidence this Court is in the same posi-
`tion as the trial court.
`(Central Igualdad, Inc. V. Sec. of the Treas-
`ury, 83:44, followed.)
`9. TRADE—MARKS, E'1‘C.——INFRINGEMENT AND UNFAIR COMPETITION-—AC-
`TIoNs-—PREsUMP'rIoNs AND BURDEN OF PROOF.
`In an injunction proceeding enjoining defendant from violating a
`trade-mark, any doubt as to the efl"ectiveness of the remedy sought
`should be decided against the defendant.
`ID.——ID.—WHAT CONSTITUTES ILLEGAL on UNFAIR COMPETITION—RIGHT
`TO USE OF NAME.
`
`10.
`
`The evidence, as Weighed by this Court and as recited in the opinion,
`is sufilcient to conclude that in this case the defendant set out with
`the purpose of trading on the basis of the closest imitation to plain-
`tiff’s trade-mark and label on the bag of coffee, in order to increase
`his sales through the unfair exploitation of plaintiff’s good will,
`creating a confusion in the public consumer, which is
`sufficient
`ground to establish a case of unfair competition.
`INJUNC'1‘ION——ACTIONS FOR INJUNCTION——ESTOPPEL—LACHES.
`The evidence, as summarized in the opinion, does not
`justify the
`conclusion of the trial court that appellant
`is not entitled to any
`equitable remedy because of his delay in requesting it and his behav-
`ior indicative of lack of clean hands.
`
`11.
`
`APPEAL from judgment of Cdndido Ceballos, Judge (Arecibo),
`dismissing complaint
`in injunction proceeding and action
`for damages. Reversed and substituted granting the com-
`plaint and ordering the issuance of a permanent injunction
`restraining defendant from performing certain acts, as well
`as ordering him to pay attorney’s fees in the amount of
`$1,000.
`
`Héctor Gonzdlez Blanes for appellant. Abelardo Romdn Font
`for appellee.
`
`Division composed of Mr. Chief Justice Negrén Fernandez,
`Mr. Justice Blanco Lugo, and Mr. Justice Ramirez Bages.
`
`MR. JUSTICE RAMiREz BAGES‘ delivered the opinion of the Court.
`
`The following are the questions to be considered in
`this case:
`
`the registered trade-mark “Café
`(1) Whether or not
`Rico” is valid and effective.
`
`If it is not, Whether or not it acquired a secondary
`(2)
`meaning which justifies its protection against infringement
`by appellee F. Colon, competitor of appellant Cooperativa
`de Cafeteros de Puerto Rico,
`in the distribution and sale
`of roasted and ground coffee in the local market.
`
`If said mark actually acquired such meaning We
`(3)
`must decide whether the label used by appellee in his coffee
`bag is so similar to that used by appellant
`in his,
`that
`it actually causes confusion in the market and to the con-
`sumers; or Whether there exists the reasonable possibility
`for such confusion.
`
`In case such confusion has been caused, whether
`(4)
`defendant’s action constitutes unfair competition to the
`
`detriment of appellant, which justifies its restraint and the
`awarding of damages that appellant may have suffered.
`
`Appellant requests that appellee and others be enjoined
`from packing and trading, using the bags or containers
`
`they are using, similar to those used by appellant in its
`coffee business, or from selling coffee in such containers or
`
`
`
`
`
`364
`
`COOPERATIVA CAFETEROS 12. CoL6N CoL6N
`
`[91 P.R.R. 361
`
`Nov. 17, 1964]
`
`COOPERATIVA CAFETEROS v. CoL6N CoL6N
`
`365
`
`bags because the word “Rico” has been conspicuously dis-
`played using a design and color scheme-—red and black—
`substantially identical to those corresponding to appellant’s
`trade-mark and trade name, which the latter has been using
`for years and which have become well known to the public
`and identified with appellant’s product so that the presen-
`tation or exhibition of such containers causes confusion in
`
`the market and to the consumers in general due to the obvi-
`ous resemblance with the bags in which appellant sells its
`coffee. It alleges that in this manner appellee profits by
`and unjustly enriches himself with the credit and good will
`acquired by appellant’s coffee, inducing the public, by means
`of unfair competition,
`to buy his product under the mis-
`taken belief that it is plaintiff’s product, as well as dis-
`turbing and creating dangerous inconveniences to appellant
`in the conduct of its business. Lastly, appellant alleges that
`for said reasons it has suffered damages amounting to
`$100,000, which payment it requests.
`Appellee specifically denied the material facts of said
`complaint and as special defenses alleged, in synthesis, that
`the registration of the trade-mark “Rico” was illegal, since
`it is descriptive in nature; that the color scheme red and
`black is not and could not be part of said trade-mark, since
`it is an element of mere decorative function and it has been
`
`the
`used by appellee prior to appellant and then by all
`roasted coffee industry;
`that the words “Puro de Puerto
`Rico,” which appellant uses and claims as part of its trade-
`mark, was not included in its registration and it has used
`it only since a short time ago, and it cannot appropriate it
`for its exclusive use; that the use, by appellant, of the trade-
`mark “Rico” for its roasted and ground coffee and “Puerto
`Rico” for its raw coffee, and its advertising campaign in
`
`the papers, radio, and television using said marks and de-
`
`sign in a context which illegally imparts to the trade-mark
`
`“Rico” a geographical meaning, gives the false and mali-
`
`
`
`cious impression to the public that the coffee produced and
`packed by appellant is the only pure Puerto Rican coffee
`in the market, which is not true; and thus tends to monopo-
`lize the use of the word “Rico” and the pure Puerto Rican
`roasted coffee industry, causing damage to the other pro-
`ducers, and specifically to appellee;
`that as a result
`the
`sales of cofiee decreased during the years 1957-1958, which
`appellee has been realizing for 16 years in containers with
`the same color scheme, general appearance and éoloring of
`the container of which appellant complains,
`in addition to
`the mark “Flor de Borinquen”; that in order to confront
`said competition in 1958 appellee modified the label on his
`container for the sole purpose of making more prominent
`the words “Cafe de Puerto Rico” and also made more promi-
`nent for easy perception that appellee is the producer of
`said coffee and the name of the place of production of said
`coffee;
`that subsequent
`to the commencement of this liti-
`gation appellant has changed the general appearance of its
`container eliminating a noticeable difference that existed
`between litigants’ containers,
`thus increasing any existing
`possibility of confusion; that in view of the foregoing appel-
`lant has not acted in good faith and with clean hands;
`that appellee’s intention was not to pass off his product as
`appellant’s and in order to make the difference between the
`two containers more noticeable the former has ordered that
`in his new containers the word “Puerto” be used instead of
`the abbreviation “Pto.” and that his trade-mark “Flor de
`
`Borinquen” be printed in larger letters and appellee’s name
`clearer and more perceptible. By Way of counterclaim appel-
`
`lee requests that appellant be enjoined from continuing to
`perform said actions and causing the damages alleged,
`in-
`cluding those suffered as a result of and while a temporary
`restraining order requested by appellant against appellee
`was in effect; that the mark “Rico” be declared null and
`
`void, and its registration cancelled; and that appellant be
`
`
`
`
`
`366
`
`COOPERATIVA CAFETEROS v. CoL6N CoL6N
`
`[91 P.R.R. 361
`
`Nov. 17, 1964]
`
`COOPERATIVA CAFETEROS v. CoL6N CoL6N
`
`367
`
`ordered to pay the amount of $100,000 which appellee claims
`for damages. Appellant denied the facts alleged in said
`counterclaim.
`
`After numerous incidents and a lengthy trial in which
`the parties introduced extensive documentary and oral evi-
`dence,
`the trial court finally dismissed the complaint
`in
`this case and declared appellee’s voluntary dismissal of his
`counterclaim with prejudice to the injunction and the order
`of cancellation of the mark and the registration, and with-
`out prejudice as to the damages alleged, through a lengthy
`and painstaking decision in which it made the following
`essential findings of fact:
`.
`r
`(1) That appellant acquired by purchase and was util-
`izing the trade-mark “Rico” which registration expired in
`1944 without it being renewed.
`(2) That in 1948 appellant registered the trade-mark
`“Rico” with a special design of said word, which registra-
`tion is still
`in force and that is the trade-mark to which
`
`appellant refers.
`(3) That the notices to the public for the registration
`of said trade-mark and its renewal were made in black ink
`on white paper without any reference to the color or color
`scheme of the container; but in the petition for registration
`appellant presented a facsimile of the special design in black
`ink on red paper, but the words “Puro de Puerto Rico” did
`not appear in the advertisements or the facsimiles of the
`label of said registered trade-mark, which expression appel-
`lee claims as his alleged slogan or trade name; nor was it
`proved how long appellant has been using the words “Puro
`de Puerto Rico” on said containers to which it has previously
`referred; that the words “Café Rico” on a white background
`on the covers of appellant’s bags and the phrases on the nar-
`row side. of said bag are characteristic of the container which
`
`were not included in the aforesaid petition for registration of
`the trade-mark or in the aforementioned notices to the public.
`(4) That since 1945 appellee has used red containers
`or bags and the trade-marks “Flor de Borinquen” and
`“Dilari,” which have not been registered; that since 1946
`he has been using the color scheme of which appellant com-
`plains, except that the words “Puro de Puerto Rico” were
`set 017‘ as a dominant factor or principal element in a dif-
`ferent arrangement of letters and the type size of the trade-
`mark “Flor ole Borinquen” was made smaller.
`
`(5) That from 19