IP Law Daily, TRADEMARK—TTAB: DILUSA composite mark for food products denied registration, (Mar 8, 2024)

By Saurabh Kashyap, B.A., LL.B.

The Board found a likelihood of confusion with the registered, phonetically similar, and inherently distinctive DI LUSSO mark serving similar goods to similar consumers through overlapping trade channels.

In a non-precedential decision, the Trademark Trial and Appeal Board (TTAB) sustained Hormel Foods, LLC’s (Opposer) opposition against the trademark application for the proposed mark DILUSA (stylized characters, composite mark) by Empacadora Dilusa de Aguascalientes S.A. de C.V. (Applicant) citing a likelihood of confusion between the proposed mark and the opposer’s pre-existing DI LUSSO mark for food products under International Class 29 (Hormel Foods, LLC v. Empacadora Dilusa, March 4, 2024, Lebow, M.).

Background. The Applicant applied for registration of the proposed mark DILUSA on the Principal Register in International Class 29 under Section 1(b) of the Trademark Act based on a bona fide intention to use the mark in commerce. The trademark application described the mark as “consisting of the term DILUSA and design; the term DILUSA appears in white inside a waving blue flag; there are two curved horizontal lines that appear below the waving flag design with the larger one appearing above the small smaller one; the top curved horizontal line is red, and the bottom curved horizontal line is green; the remaining white in the drawing is background and is not part of the mark." The colors blue, white, red, and green were claimed as a feature of the mark.

The Opposer, Hormel Foods, LLC, opposed the application, alleging that the Applicant's mark for the identified goods will likely cause confusion with, and dilution by blurring and tarnishing, its registered mark DI LUSSO. Opposer claimed prior use of and ownership of registrations for DI LUSSO (in standard character and typed format) covering various food products in International Classes 29 and 30.

Standing to oppose. Hormel Foods established its standing by demonstrating ownership of DI LUSSO registrations and a reasonable belief that the registration of the proposed mark DILUSA would damage its interests.

Likelihood of confusion. To determine the likelihood of confusion, the Board, as always, applied the factors set forth in In re E. I. duPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973).

Mark similarity. The TTAB's examination of DI LUSSO and DILUSA marks underscored a significant degree of visual and phonetic similarity. The Board compared the two marks, noting that both comprised the prefix "DILU" followed by a suffix that only varied by the final vowel—“O” in "DI LUSSO" and “A” in "DILUSA." This subtle variation was deemed insufficient to differentiate the marks significantly in the minds of consumers. Drawing upon precedents such as In re Pellerin Milnor Corp., the TTAB illustrated how minor phonetic distinctions often do not alter the overall commercial impression of a mark. Additionally, the Board considered the standard character form of "DI LUSSO," which allowed for variable presentation, further blurring the distinctions between the two marks in potential commercial use.

Nature of the goods. Empacadora Dilusa's application for "DILUSA" sought to cover a broad spectrum of food products directly intersecting with categories already covered by Hormel Foods' DI LUSSO registrations, such as meats and cheeses. This legal identity between certain goods under both marks fundamentally increased the risk of consumer confusion. The Board reasoned that if the goods are legally identical or closely related, consumers might erroneously believe they originate from the same source.

Trade channels and consumer base. Analyzing the trade channels through which DI LUSSO and DILUSA goods were likely to be distributed, the TTAB presumed that identical goods are often sold in similar commercial spaces to the same categories of consumers. The Board posited that the shared characteristics of the goods and their undifferentiated presence in the market channels significantly elevate the risk of confusion among consumers, who may not distinguish between the two brands while making purchasing decisions.

Conditions of purchase. The TTAB also considered the nature of purchasing decisions involved with the goods under the DI LUSSO and DILUSA marks, particularly noting that many of these products could be subject to impulse buying. The Board observed that certain food products, due to their relatively low price and everyday usage, may not invoke a high level of scrutiny from buyers before purchase. Citing Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000), the Board emphasized that in scenarios where consumers make quick purchase decisions, the likelihood of confusion is notably heightened.

Strength of the opposer’s mark. The Board evaluated the inherent distinctiveness and commercial strength of the Opposer’s DI LUSSO mark. Suggestive of luxury, the mark was found inherently distinctive, positioned on the suggestive-arbitrary continuum of trademark strength.

Additionally, the TTAB considered Hormel Foods’ evidence of commercial strength, including sales data and marketing efforts, which underscored the mark's visibility and recognition in the marketplace. The Board highlighted the mark's moderate commercial strength, supported by Hormel's substantial investment in advertising and the broad distribution of DI LUSSO branded products. Thus, the TTAB determined that the DI LUSSO mark enjoys a significant degree of legal protection.

Conclusion. Upon thorough examination, the TTAB concluded that the similarities between the two marks, combined with the identical nature of certain goods and their shared commercial channels of trade, sufficiently established a likelihood of confusion. Consequently, the opposition by Hormel Foods was sustained, and the application for the proposed mark DILUSA was denied registration based on Section 2(d) of the Trademark Act.

The Case is Opposition No. 91275380.

Attorneys: Cynthia A. Moyer ( Fredrikson & Byron, P.A.) for Hormel Foods, LLC. Felipe Rubio (Rubio & Associates) for Empacadora Dilusa de Aguascalientes S.A. de C.V.

Companies: Hormel Foods, LLC; Empacadora Dilusa de Aguascalientes S.A. de C.V.

Cases: Trademark USPTO