IP Law Daily, TRADEMARK—D.P.R.: Marks for spices were dissimilar despite common word and design elements, (Sep 27, 2022)

By Deirdre Kennedy, J.D.

The marks were found to be generic and no evidence of actual confusion was presented.

A trademark infringement claim brought by a company against a competitor, both of which were involved in the production and distribution of spices, was dismissed by the federal district court in Puerto Rico because the parties’ composite marks—ESPECIAS MONTERO DESDE 1959 (and design) and ESPECIAS NATURALES BY SOFRITO MONTERO (and design)—were substantially dissimilar in sight, sound and meaning with regard to their protectable elements. The word ESPECIAS is generic for “spices”; the word MONTERO is a surname without evidence of acquired distinctiveness; and the design elements of the respective marks were not similar (Especias Montero, Inc. v. Best Seasonings Group, Inc., September 23, 2022, López-Soler, G.).

Plaintiff Especias registered the mark ESPECIAS MONTERO DESDE 1959 with the USPTO. Especias claimed that Best Seasonings is infringing its trademark by using the words ESPECIAS and MONTERO in its product labeled ESPECIAS NATURALES BY SOFRITO MONTERO, and that Best Seasonings is infringing the design of its mark by using the name MONTERO, along with a design which consists of green leaves, the color brown, and a chef’s hat. Especias sought preliminary and permanent injunction, as well as damages, for trademark infringement under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and the Puerto Rico Trademark Act, and for unfair competition and unjust enrichment under Article 26 of the Puerto Rico Civil Code.

Best Seasonings filed a counterclaim seeking a declaration that the purportedly infringing mark (ESPECIAS NATURALES BY SOFRITO MONTERO) was in use prior to Especias’ first use in commerce of ESPECIAS MONTERO DESDE 1959 and its subsequent registration in the USPTO. In considering Best Seasonings’ request for summary judgment, the court applied the Pignons likelihood of confusion factors.

Similarity of the marks and designs. The similarity of marks inquiry is the most important factor in the Pignons analysis when the parties are direct competitors. The degree of similarity between two marks is determined by analyzing their sight, sound, and meaning. However, when a mark is a composite, as the mark ESPECIAS MONTERO DESDE 1959, the court must test its validity and distinctiveness by looking at it as a whole, rather than dissecting it into its component parts. Nonetheless, when evaluating a composite mark, the court affords less weight to those portions of a mark that are generic. In its analysis of the total impression of the marks, the court thus focused on the non-generic portions of each mark.

When a mark has been registered in the USPTO, it is presumed non-generic. However, this presumption is rebuttable if the alleged infringer demonstrates that the mark is generic. In this case, Best Seasonings argued that the word ESPECIAS in the ESPECIAS MONTERO DESDE 1959 mark is generic because it merely identifies the nature of the good (a spice), and that Especias admitted as much when it sought to disclaim the exclusive use of the word ESPECIAS apart from the mark when it sought registration in the USPTO.

The court agreed with Best Seasonings that the word ESPECIAS in ESPECIAS MONTERO DESDE 1959 was a generic portion of the mark. When the party claiming infringement uses the term to describe the product in a generic manner, it suggests that the term is generic. Especias’ decision to disclaim the use of the word “spices” apart from the mark provided support for this conclusion.

Best Seasonings also argued that MONTERO is a surname over which Especias cannot claim exclusivity. Surnames used as trademarks are inherently indistinctive or weak. Surnames are permitted trademark protection only when shown to have become strong marks by acquiring distinctiveness through secondary meaning. Especias did not submit any evidence of secondary meaning. The court thus concluded that MONTERO has not acquired secondary meaning and is an inherently weak portion of ESPECIAS MONTERO DESDE 1959.

Having concluded that the word ESPECIAS is generic and that the word MONTERO has not acquired a secondary meaning, the court evaluated the total impression of the two marks without comparing their individual features and affording less weight to generic terms. Both marks use the word ESPECIAS. The court looked at both marks without the word ESPECIAS: MONTERO DESDE 1959 and NATURALES BY SOFRITO MONTERO. When compared as a whole, the court found the composite terms to be somewhat similar because the surname MONTERO is included in both, but concluded that they were sufficiently dissimilar. The phrases look and sound different, have different meanings and communicate different things. When compared in sight, sound and meaning, the marks were sufficiently dissimilar.

Especias also claimed that the design of Best Seasonings’ mark was confusingly like the Especias’ mark. Specifically, it claimed that Best Seasonings promoted its products using typography and colors which incorporate elements of the Especias mark: the image of green leaves, the color brown in the word NATURALES, the chef’s hat with leaves, and the word MONTERO. As with word marks, when comparing design marks, similarity is determined on the basis of the total effect of the designation, rather than a comparison of individual features. Even when there could be an overlap in the elements of the marks, the marks may be deemed sufficiently dissimilar if the similarities are limited to generic or descriptive elements. As it pertains here, the image of a green leaf and a cook’s hat is highly descriptive of the goods: spices for cooking. These images have “weak source-identifying attributes.” The similarities in both designs are centered around generic features and Especias did not put forth any evidence of secondary meaning for the images at issue.

The court further noted that the focus of the Especias mark is the word MONTERO, and the focus of the Best Seasonings mark are the two words ESPECIAS NATURALES. Viewed in the context of a marketplace, the designs created a distinct impression and, like the word marks at issue, were dissimilar. Therefore, this factor weighed against a finding of likelihood of confusion.

Similarity of the goods or services. Because both parties were in the business of selling spices and seasonings, there was no dispute as to the similarity of the goods sold by the parties. This factor therefore, weighed in favor of finding a likelihood of confusion.

Relationship between channels of trade, advertising and prospective clients. It was undisputed that Especias and Best Seasonings use similar channels of trade. Both parties also advertise their products on their own webpages, through various social media accounts and on retail points of sale. Since both Especias and Best Seasonings are based in the southern part of Puerto Rico and have online presence, the court concluded that their target client base is the same: people in Puerto Rico and online consumers. These three factors weighed in favor of finding a likelihood of confusion.

Evidence of actual confusion. Evidence of actual confusion is “often deemed the best evidence of possible future confusion”. But if there is no evidence of actual confusion, and the marks have been in the same market, side by side, for a substantial period of time, there is a strong presumption that there is little likelihood of confusion. Evidence provided by Especias was determined to be inadmissible and, therefore, this factor weighed against a finding of likelihood of confusion.

Defendant’s intent in adopting the mark. Especias claimed that Best Seasonings adopted a mark confusingly similar because Montero Arroyo has been litigating the ownership of his shares in Especias and has sought its dissolution in a litigation currently pending before the Puerto Rico Court of First Instance, and because Especias refused several business propositions made by Best Seasonings. The court determined, however, that the fact that the owners of the corporations litigating this case are family members with a history of legal feuds and unsuccessful business ventures did not in any way demonstrate that Best Seasonings acted with intention to deceive customers or to benefit from Especias’ mark. This factor also weighed against a finding of likelihood of confusion.

Strength of the mark and design. Trademark strength can be assessed by weighing both its conceptual and commercial strength. Especias claims ESPECIAS MONTERO DESDE 1959 is strong because it is registered in the USPTO. However, registered in the USPTO is not indicative of strength or enough to make a mark strong. Further, Especias’ claim that its mark is strong because it has been using the name ESPECIAS MONTERO since the company was founded in 1959, and, in 2017, it launched an aggressive marketing campaign for the mark was also not evidence of conceptual or commercial strength. The court noted that ESPECIAS MONTERO DESDE 1959 is a composite mark comprised of at least two weak terms (ESPECIAS and MONTERO), and there is no secondary meaning that would “overcome the mark’s initial weakness” of being generic. The word mark is not distinctive nor conceptually strong. Neither was the design conceptually strong.

Especias also failed to submit any evidence to establish the commercial strength of the mark in its field of business. While Especias alleged that it began an aggressive marketing campaign after the rebranding in 2017, it failed to present evidence of advertising and promotion efforts, number of sales and number and type of customers, or customers surveys demonstrating recognition of the mark to support a finding of commercial strength. Therefore, the strength factor also weighs against a finding of likelihood of confusion.

Accordingly, the court concluded that the words and designs of ESPECIAS MONTERO DESDE 1959 and ESPECIAS NATURALES BY SOFRITO MONTERO were substantially dissimilar in sight, sound and meaning. The court’s conclusion that there was no triable issue of fact as to the likelihood of confusion between the two marks under the Lanham Act also defeated Especias’ infringement claim under the Puerto Rico Trademark Act. Accordingly, Best Seasonings’ Motion for Summary Judgment was granted, and Especias’ complaint was dismissed with prejudice.

The Case is No. 20-1740 (GLS).

Attorneys: Ramon Luis Nieves-Perez (RL Legal & Consulting Services, LLC) for Especias Montero, Inc. Albeniz Couret-Fuentes (Sepulvado, Maldonado & Couret) for Best Seasonings Group, Inc. d/b/a Sofrito Montero.

Companies: Especias Montero, Inc.; Best Seasonings Group, Inc. d/b/a Sofrito Montero

Cases: Trademark GCNNews PuertoRicoNews