IP Law Daily, TRADEMARK—TTAB: EL BURRO marks were not likely to be confused in Mexican restaurant context, (Jun 6, 2023)

By Kevin M. Finson, J.D.

The mark EL BURRO BORRACHO was not likely to be confused with the mark EL BURRO despite both being used for Mexican restaurants because the mark was commercially weak.

A Mexican restaurant did not show a likelihood of confusion existed in competing marks that shared the words El Burro, the Trademark Trial and Appeal Board has held. The burro word and associated images of donkeys were widely used by many different Mexican restaurants (El Burro, Inc. v. Knuckle Sandwich LLC, May 26, 2023, Wolfson, F.).

Knuckle Sandwich, LLC (Knuckle) was the registered owner of the standard character mark EL BURRO BORRACHO for “restaurants” in International Class 43. El Burro, Inc. (Burro) petitioned for cancellation of Knuckle’s mark on the basis of prior use and registration of the standard character mark EL BURRO and an associated composite mark for a variety of services including “restaurant services” in International Class 43. After briefly noting that Burro possessed an entitlement to a statutory cause of action and priority in its mark, the board considered the DuPont factors for which there was evidence of record.

Similarity of services, marks and channels of trade. The board noted that the services were identical, as both parties offered restaurant services, which weighed in favor of a likelihood of confusion. Because the services were identical, the board presumed the channels of trade and classes of consumers were likewise identical. These factors weighed in favor of a likelihood of confusion.

Reviewing the marks themselves, the board held that they were similar in appearance and pronunciation due to the shared element “el burro”. The word “burracho”, meaning “drunken,” simply modified the shared element and did not substantially change the commercial impression. This factor, therefore, also weighed in favor of a likelihood of confusion.

Strength of petitioner’s mark. Knuckle argued that Burro’s mark was intrinsically and commercially weak, however, identifying eleven third-party vendors who used EL BURRO, alone or with other words, for Mexican-style restaurants. The board held that while the mark was arbitrary in relation to Mexican restaurants, and therefore inherently strong, the prevalence of similar marks used by third parties made it commercially weak.

Actual confusion. Additionally, there was no evidence of actual confusion in the record, but also no evidence from which the board could draw the conclusion that the marks had co-existed in the marketplace in such a way as to cause confusion in the first place. This factor was neutral.

Balancing the factors, the board held that the weakness of the term “el burro” outweighed the other factors and that the mark EL BURRO BORRACHO was not likely to be confused with the mark EL BURRO in the crowded field of Mexican restaurants using similar marks. Therefore, the petition for cancellation was denied.

The Case is Cancellation No. 92075933.

Attorneys: Eric Goodman (Goodman Mooney, LLP) for El Burro, Inc. Ronald P. Wargo (Friedemann Goldberg Wargo Hess LLP) for Knuckle Sandwich LLC.

Companies: El Burro, Inc.; Knuckle Sandwich LLC

Cases: Trademark USPTO