ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1390779
`10/21/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer information
`
`Name
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Correspondence
`information
`
`El Encanto, Inc.
`
`10/20/2024
`
`2001 4TH STREET SW
`ALBUQUERQUE, NM 87102
`UNITED STATES
`
`TROY S. LAWTON
`PEACOCK LAW P.C.
`P.O. BOX 26927
`ALBUQUERQUE, NM 87125
`UNITED STATES
`Primary email: docketing@peacocklaw.com
`Secondary email(s): dpeacock@peacocklaw.com, menaje@peacocklaw.com,
`tlawton@peacocklaw.com
`505-998-1500
`
`Applicant information
`
`Application no.
`
`98029198
`
`Opposition filing
`date
`
`Applicant
`
`10/21/2024
`
`HARBAR LLC
`320 TURNPIKE STREET
`CANTON, MA 02021
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`04/23/2024
`
`Opposition period
`ends
`
`10/20/2024
`
`Class 030. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Low carbohydrate food, namely, low carbo-
`hydrate tortillas; Mexican food, namely, low carbohydrate flour tortillas; tortillas
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`2374448
`
`Register
`
`Principal
`
`Registration date
`
`08/08/2000
`
`Application date
`
`11/17/1998
`
`Foreign priority
`date
`
`NONE
`
`

`

`Word mark
`
`Design mark
`
`BUENO
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 030. First use: First Use: May 15, 1951 First Use In Commerce: Mar 1,
`1964
`[ bay leaves, ] blue corn meal, blue corn tortillas, stick cinnamon, dried red pep-
`pers, coarse red peppers, coarse chile, chile marinade, chile chipotle powder,
`chile powder, coriander, ground cinnamon, [ cloves, ] cumin, corn chips, corn
`meal, corn tortillas, fajita seasoning, flour tortillas, [ minced garlic and ]
`powdered garlic, [ garlic salt, and whole dehydrated garlic, candy cake decora-
`tions in sprinkle form, ] green chile powder, jalapenos, [ chamomile, ] corn meal
`with liquid additives, menudo spice mixture for seasoning tripe, [ mint leaves, ]
`mole mix cooking sauce, nutmeg, whole and powdered oregano, [ sprouted
`wheat flour, parsley flakes, brown sugar, ] dried crushed dehydrated peppers, [
`sage, ] sopaipilla flour base mix to prepare fried bread, taco seasoning mix, taco
`shells, and sauces, namely, green chile garden green sauce, green chile garden
`concentrates to make sauces, green chile sauce with pork, green chile with pork
`concentrates to make sauces, red chile enchilada sauce, and red chile sauce,
`processed edible anise seeds for flavoring, burritos, burritos containing sausage
`and eggs, dried jalapeno peppers for use as seasoning, rolled tacos, tamales
`and hominy with small portions of cooked corn
`
`U.S. registration
`no.
`
`1538311
`
`Register
`
`Principal
`
`Registration date
`
`05/09/1989
`
`Word mark
`
`Design mark
`
`BUENO
`
`Application date
`
`02/18/1987
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 029. First use: First Use: May 15, 1951 First Use In Commerce: Mar 1,
`1964
`CHICOS (DEHYDRATED SWEET CORN), POSOLE (HOMINY OR COOKED
`CORN), CHACALES (CRACKED SWEET CORN), JALAPENOS
`(PEPPERS-DRIED, ROASTED OR FROZEN), PROCESSED GREEN CHILE,
`PROCESSED RED CHILE, CAMARON ENTERO (WHOLE SHRIMP), CAMA-
`RON (SHREDDED SHRIMP), CHILE PODS (DEHYDRATED RED CHILE
`PODS), GREEN CHILE STEW (MEAT, POTATOES, TOMATOES AND
`SPICES), MINCED ONIONS, [ OJA ] * HOJA * (PROCESSED EDIBLE CORN
`HUSK)
`Class 030. First use: First Use: May 15, 1951 First Use In Commerce: Mar 1,
`1964
`PILONCILLO (BROWN SUGAR), CANELA (STICK CINNAMON - A SPICE),
`COMINOS (CUMIN - A SPICE), GROUND CINNAMON AS A SPICE, WHOLE
`AND CRUSHED PIQUIN (SMALL, THIN PUNGENT PEPPERS AS A SPICE),
`CHILE POWDER, WHOLE GARLIC, GRANULATED GARLIC AND GARLIC
`POWDER, WHOLE OREGANO AND OREGANO POWDER, ANISE SEED AS
`A SPICE, CILANTRO (CORIANDER AS A SPICE), CHILE ANCHO (DRIED
`RED PEPPERS AS A SPICE), CHILE PODS (DRIED RED PEPPERS AS A
`
`

`

`SPICE), MANZANILLA (CHAMOMILE AS A SPICE), CHILE ARBOL (DRIED
`RED PEPPER AS A SPICE), BAY LEAVES AS A SPICE, JALAPENOS
`(PEPPERS - DRIED OR ROASTED AS A SPICE), HABAS (HORSE BEANS AS
`A SPICE), PANOCHA (SPROUTED WHEAT FLOUR), CORN TORTILLAS, ME-
`NUDO MIX (SPICE MIXTURE FOR SEASONING TRIPE), WHOLE WHEAT
`TORTILLAS, BLUE CORN TORTILLAS, WHITE MASA (FLOUR WITH LIQUID
`ADDITIVES, PRIMARILY WATER), FLOUR TORTILLAS, SOPAIPILLA MIX
`(FLOUR BASE MIX USED TO PREPARE FRIED BREAD), MASA (CORN
`MEAL WITH LIQUID ADDITIVES, PRIMARILY WATER), BLUE MASA (BLUE
`CORN MEAL WITH LIQUID ADDITIVES, PRIMARILY WATER), CORN MEAL,
`BLUE CORN MEAL, BURRITOS, RELLENOS (WHOLE GREEN CHILE
`STUFFED WITH CHEESE AND COVERED WITH FLOUR AND SPICES),
`SAUSAGE AND EGG BURRITOS, ROLLED TACOS, ROLLED ENCHILADAS,
`TAMALES, CHILE PORK, SAUCE (FROZEN RED CHILE WITH PORK),
`TOSTADA CHIPS (CORN MEAL-BASED), CORN CHIPS, TACO SHELLS,
`BLUE CORN CHIPS
`
`U.S. registration
`no.
`
`2376755
`
`Register
`
`Principal
`
`Registration date
`
`08/15/2000
`
`Application date
`
`11/17/1998
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`BUENO
`
`NONE
`
`Class 029. First use: First Use: May 15, 1951 First Use In Commerce: Mar 1,
`1964
`Dry shredded shrimp, whole shrimp, cracked sweet processed corn, dehydrated
`sweet corn, dehydrated red chile pods, lentils, processed green chile, whole
`green stuffed chille rellenos, processed edible corn husk; frozen red chile puree,
`vegetable stew with chicken or beef, frozen jalapeno peppers, roasted jalapeno
`peppers, habas, namely, dried beans, and peppers, namely, whole dehydrated
`peppers
`
`U.S. registration
`no.
`
`2307466
`
`Register
`
`Principal
`
`Registration date
`
`01/11/2000
`
`Application date
`
`11/17/1998
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`BUENO
`
`NONE
`
`Class 031. First use: First Use: May 15, 1951 First Use In Commerce: Mar 1,
`1964
`Fresh corn husk [ Fresh garlic, ] and Fresh whole peppers
`
`U.S. registration
`no.
`
`3351120
`
`Register
`
`Principal
`
`Application date
`
`02/26/2007
`
`

`

`Registration date
`
`12/11/2007
`
`Word mark
`
`Design mark
`
`BUENO
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 029. First use: First Use: Dec 31, 1986 First Use In Commerce: Dec 31,
`1986
`Prepared food products, namely, processed vegetables in the nature of cut chile
`peppers for sale and use in the restaurant setting
`
`U.S. registration
`no.
`
`3960577
`
`Register
`
`Principal
`
`Registration date
`
`05/17/2011
`
`Word mark
`
`Design mark
`
`BUENO
`
`Application date
`
`03/23/2010
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`Attachments
`
`NONE
`
`Class 030. First use: First Use: May 15, 1951 First Use In Commerce: May 15,
`1951
`Salsa
`
`75590291#TMSN.png( bytes )
`73645386#TMSN.png( bytes )
`75590297#TMSN.png( bytes )
`75590292#TMSN.png( bytes )
`77116734#TMSN.png( bytes )
`77966251#TMSN.png( bytes )
`Notice of Opposition__CARBBUENO_TSL v1.pdf(145086 bytes )
`
`Signature
`
`/Troy S. Lawton/
`
`Name
`
`Date
`
`TROY S. LAWTON
`
`10/21/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EL ENCANTO, INC.,
`
`
`Opposer,
`
`
`v.
`
`Harbar LLC,
`
`
`Applicant.
`
`
`
`
`
`
`Application No.: 98/029,198
`
`
`For: CARBBUENO
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`
`
`
`
`El Encanto, Inc., dba Bueno Foods, a New Mexico corporation, having its principal place
`
`of business at P.O. Box 293, Albuquerque, New Mexico 87103 ("Opposer" or “Bueno Foods”),
`
`hereby files this opposition to registration of the application filed by Harbar LLC ("Applicant"), as
`
`Bueno Foods believes that it will be damaged by registration of Application Serial No.
`
`98/029,198 for CARBBUENO (“Applicant’s Mark”), and requests that registration to Applicant be
`
`refused.
`
`Applicant’s Mark is for “Low carbohydrate food, namely, low carbohydrate tortillas;
`
`Mexican food, namely, low carbohydrate flour tortillas; tortillas” in Class 30. It was filed on June
`
`6, 2023. The mark published for opposition on April 23, 2024, in the Official Gazette of the
`
`United States Patent and Trademark Office. Bueno Foods is now filing the opposition to the
`
`above application with this Notice of Opposition.
`
`
`
`
`
`
`
`
`
`

`

`As grounds of opposition, it is alleged that:
`
`1.
`
`Bueno Foods opposes Trademark Application Serial No. 98/029,198 under
`
`Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Applicant's Mark so resembles Bueno
`
`Foods' trademarks (listed below), that when used on or in connection with the goods of
`
`Applicant, it is likely to cause confusion, or to cause mistake, or to deceive.
`
`2.
`
`Bueno Foods opposes Applicant's Mark because Applicant’s Mark would dilute
`
`the distinctive quality of Bueno Foods' famous marks (listed below). There is a likelihood of
`
`dilution of the distinctive quality of Bueno Foods' trademarks, in violation of Section 43(c) of the
`
`Lanham Act, 15 U.S.C. § 1125(c). Bueno Foods' trademarks (defined below) were famous prior
`
`to the filing date of the CARBBUENO application.
`
`3.
`
`On information and belief, Applicant began using its Applicant’s Mark in
`
`connection with the goods covered by Applicant’s Mark in the ordinary course of trade in the
`
`United States after the filing date of June 6, 2023.
`
`4.
`
`Opposer, Bueno Foods, offers and sells various goods and products using its
`
`marks, including tortillas, corn, blue corn, whole wheat, and flour tortillas, as well as Mexican
`
`foods, using its BUENO marks (“BUENO Marks”) as follows (see also the attached certificates
`
`of registration incorporated herein by reference):
`
`
`
`
`
`[Continues on Next Page]
`
`
`
`

`

`Mark
`
`BUENO
`
`Registration
`
`2,374,448
`
`Registration
`Date
`August 8,
`2000
`
`1,538,311
`
`May 9, 1989
`
`
`
`
`
`
`
`Goods/Services
`
`IC 030: Bay leaves, blue corn
`meal, blue corn tortillas, stick
`cinnamon, dried red peppers,
`coarse red peppers, coarse chile,
`chile marinade, chile chipotle
`powder, chile powder, coriander,
`ground cinnamon, cloves, cumin,
`corn chips, corn meal, corn tortillas,
`fajita seasoning, flour tortillas,
`minced garlic and powdered garlic,
`garlic salt, and whole dehydrated
`garlic, candy cake decorations in
`sprinkle form, green chile powder,
`jalapenos, chamomile, corn meal
`with liquid additives, menudo spice
`mixture for seasoning tripe, mint
`leaves, mole mix cooking sauce,
`nutmeg, whole and powdered
`oregano, sprouted wheat flour,
`parsley flakes, brown sugar, dried
`crushed dehydrated peppers, sage,
`sopaipilla flour base mix to prepare
`fried bread, taco seasoning mix,
`taco shells, and sauces, namely,
`green chile garden green sauce,
`green chile garden concentrates to
`make sauces, green chile sauce
`with pork, green chile with pork
`concentrates to make sauces, red
`chile enchilada sauce, and red
`chile sauce, processed edible
`anise seeds for flavoring, burritos,
`burritos containing sausage and
`eggs, dried jalapeno peppers for
`use as seasoning, rolled tacos,
`tamales and hominy with small
`portions of cooked corn
`
`IC 029: Chicos (dehydrated sweet
`corn), posole (hominy or cooked
`corn), chacales (cracked sweet
`corn), jalapenos (peppers-dried,
`roasted or frozen), processed
`green chile, processed red chile,
`camaron entero (whole shrimp),
`camaron (shredded shrimp), chile
`pods (dehydrated red chile pods),
`green chile stew (meat, potatoes,
`tomatoes and spices), minced
`
`

`

`onions, oja (processed edible corn
`husk)
`
`IC 030: Piloncillo (brown sugar),
`canela (stick cinnamon - a spice),
`cominos (cumin - a spice), ground
`cinnamon as a spice, whole and
`crushed piquin (small, thin pungent
`peppers as a spice), chile powder,
`whole garlic, granulated garlic and
`garlic powder, whole oregano and
`oregano powder, anise seed as a
`spice, cilantro (coriander as a
`spice), chile ancho (dried red
`peppers as a spice), chile pods
`(dried red peppers as a spice),
`manzanilla (chamomile as a spice),
`chile arbol (dried red pepper as a
`spice), bay leaves as a spice,
`jalapenos (peppers - dried or
`roasted as a spice), habas (horse
`beans as a spice), panocha
`(sprouted wheat flour), corn
`tortillas, menudo mix (spice mixture
`for seasoning tripe), whole wheat
`tortillas, blue corn tortillas, white
`masa (flour with liquid additives,
`primarily water), flour tortillas,
`sopaipilla mix (flour base mix used
`to prepare fried bread), masa (corn
`meal with liquid additives, primarily
`water), blue masa (blue corn meal
`with liquid additives, primarily
`water), corn meal, blue corn meal,
`burritos, rellenos (whole green
`chile stuffed with cheese and
`covered with flour and spices),
`sausage and egg burritos, rolled
`tacos, rolled enchiladas, tamales,
`chile pork, sauce (frozen red chile
`with pork), tostada chips (corn
`meal-based), corn chips, taco
`shells, blue corn chips
`
`IC 029: Dry shredded shrimp,
`whole shrimp, cracked sweet
`processed corn, dehydrated sweet
`corn, dehydrated red chile pods,
`lentils, processed green chile,
`whole green stuffed chille rellenos,
`processed edible corn husk; frozen
`
`BUENO
`
`2,376,755
`
`August 15,
`2000
`
`
`
`
`
`

`

`red chile puree, vegetable stew
`with chicken or beef, frozen
`jalapeno peppers, roasted jalapeno
`peppers, habas, namely, dried
`beans, and peppers, namely,
`whole dehydrated peppers
`
`BUENO
`
`2,307,466
`
`January 11,
`2000
`
`IC 031: Fresh corn husk and Fresh
`whole peppers
`
`BUENO
`
`3,351,120
`
`December
`11, 2007
`
`IC 029: Prepared food products,
`namely, processed vegetables in
`the nature of cut chile peppers for
`sale and use in the restaurant
`setting
`
`BUENO
`
`3,960,577
`
`May 17,
`2011
`
`IC 030: Salsa
`
`
`
`5.
`
`For over half a century, Opposer Bueno Foods has been and is still engaged in
`
`the manufacture, distribution, sale, marketing, and promotion in interstate commerce within the
`
`United States of its tortilla and Mexican foods and related products using its Bueno Marks.
`
`6.
`
`Bueno Foods’ BUENO Marks, now, and since at least as early as March 1, 1964,
`
`have been used by Bueno Foods on or in connection with Bueno Foods’ tortillas and Mexican
`
`foods in United States commerce. As a result of such use, Bueno Foods’ BUENO Marks have
`
`become associated in the minds of the purchasing public with Bueno Foods as a source of
`
`origin of Bueno Foods’ tortillas and Mexican foods.
`
`7.
`
`Opposer, Bueno Foods, has continuously, extensively, and progressively used
`
`the BUENO Marks and has expanded its markets, distribution channels, and sources
`
`represented by the BUENO Marks. If registration of the CARBBUENO Mark sought here to be
`
`registered is granted to Applicant, the effect would be to deny to Registrant its legitimate
`
`business interest in its BUENO Marks and the opportunity to continue expanding the use of its
`
`BUENO Marks to new products and services and forestall legitimate expansion of its business.
`
`Opposer’s and Applicant’s products and services, venues, and services for sale, distribution,
`
`and advertising of products are sufficiently related and are commonly used or purchased by the
`
`
`
`
`
`

`

`same potential customer such that the public would assume that the products come from the
`
`same source and the confusion would restrict and interfere with, and damage Opposer, Bueno
`
`Foods’ business.
`
`8.
`
`Since initial use of its BUENO Marks, Opposer, Bueno Foods, has continuously
`
`and extensively used, advertised, promoted, and offered and sold Bueno Foods’ goods bearing
`
`the BUENO Marks with the result that Bueno Foods’ customers, potential customers, and those
`
`engaged in the manufacture, distribution, restaurant, and sale of seasoning products have come
`
`to know and recognize Bueno Foods’ BUENO Marks and associate the same with Bueno Foods
`
`and/or the goods sold by Bueno Foods. Bueno Foods thus has expanded its markets,
`
`expanded its distribution channels and sources, and has built up extensive goodwill in
`
`connection with the development, marketing, distribution, and sale of products under its BUENO
`
`Marks.
`
`9.
`
`Opposer, Bueno Foods, is very well known in the food channels of trade,
`
`including whole foods, preserved and prepared foods, prepared and processed meals, frozen
`
`and canned foods, and sales to and through distributors, retailers, private, retail, and
`
`institutional food service providers, restaurants, and individual consumers.
`
`10.
`
`Opposer, Bueno Foods’ products and services are sold, advertised, and
`
`promoted to a wide range of general grocery wholesales, distributors, and retailers, private and
`
`Institutional food service providers, restaurants, and individual consumers.
`
`11.
`
`Applicant’s CARBBUENO Mark is a colorable imitation of, and so resembles
`
`Opposer’s BUENO Marks when applied to the goods of the Applicant that it will likely cause
`
`confusion or cause mistake or deceive consumers, under Trademark Act Section 2(d), 15
`
`U.S.C. § 1052(d), resulting in damage and detriment to Opposer and its reputation.
`
`12.
`
`Opposer’s and Applicant’s goods are related in that both market tortillas,
`
`including flour and whole wheat tortillas.
`
`
`
`
`
`

`

`13.
`
`Opposer’s and Applicant’s goods will be distributed in the same or similar
`
`channels of trade.
`
`14. Most, if not all, of Applicant’s goods that are sold under its CARBBUENO Mark
`
`have flour or wheat flour as an ingredient.
`
`15.
`
`Upon information and belief, Applicant’s CARBBUENO Mark is likely to confuse
`
`and mislead purchasers, potential purchasers, and consumers, including Opposer, Bueno
`
`Foods’ customers and potential customers into mistakenly believing that its goods and services
`
`are provided by, emanate from, or are in some way directly or indirectly associated with Bueno
`
`Foods, to the damage and detriment or Bueno Foods and its reputation. Bueno Foods'
`
`customers and potential customers, and the consuming public, are also likely to be confused,
`
`mistaken, or deceived as to the origin and sponsorship of Applicant's goods provided under
`
`Applicant's asserted CARBBUENO Mark.
`
`16.
`
`Opposer, Bueno Foods, will be damaged by the issuance of registration to
`
`Applicant of its asserted mark CARBBUENO in Class 30 for “Low carbohydrate food, namely,
`
`low carbohydrate tortillas; Mexican food, namely, low carbohydrate flour tortillas; tortillas” set
`
`forth in Applicant’s Mark.
`
`17.
`
`The BUENO Marks would be diluted by the registration of Applicant’s Mark.
`
`18.
`
`Opposer, Bueno Foods, has no control over the nature and quality of Applicant’s
`
`goods which will be distributed and sold by Applicant under the mark it seeks to register, and
`
`possible dissatisfaction with Applicant’s goods, by purchasers or users thereof, would damage
`
`Bueno Foods’ goodwill and reputation.
`
`19.
`
`BUENO Marks and Applicant’s Mark are comprised in either whole or significant
`
`part of the term “BUENO.” The marks share the same overall sound, appearance, and
`
`commercial impression. The mere fact that Applicant’s mark CARBBUENO contains “CARB” is
`
`not enough to rule out confusion, as the word portion “BUENO” will be more likely to be
`
`impressed upon a purchaser’s memory and to be used when requesting the goods. The word
`
`
`
`
`
`

`

`portion of Applicant’s Mark “BUENO” should be considered as the dominant feature and
`
`accorded greater weight in determining whether the marks are confusingly similar.
`
`20.
`
`If registration of the mark sought here to be registered is granted to the Applicant,
`
`the effect would be to create for Applicant statutory rights under the Trademark Act and such
`
`registration would tend to restrict and interfere with, and damage Opposer, Bueno Foods, in the
`
`unhampered conduct of Bueno Foods’ business.
`
`Opposer, Bueno Foods, hereby gives notice under Rule 2.122(d), (37 C.F.R. 2.122(d)),
`
`Trademark Rules of Practice, that after hearing and in any appeal on this opposition proceeding,
`
`it will rely on its registrations and rights thereto as evidence in support of this Notice of
`
`Opposition.
`
`WHEREFORE, Opposer, Bueno Foods, believes and avers that it will be damaged by
`
`registration of the above asserted mark of Harbar LLC and respectfully requests that no
`
`registration issue on Application Serial No. 98/029,198. Opposer, Bueno Foods, prays that this
`
`opposition be sustained and that the application for registration hereby opposed be wholly
`
`denied, and for such other and further relief that may be deemed proper.
`
`
`
`Dated: October 21, 2024
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Respectfully submitted,
`
` EL ENCANTO, INC. dba BUENO FOODS
`
` By /Troy S. Lawton/
` Troy S. Lawton, Esq
` PEACOCK LAW, P.C.
` P. O. Box 26927
` Albuquerque, New Mexico 87125-6927
` Telephone (505) 998-1500
` Attorneys for Opposer
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`