ETLC Trademarks, LLC

This Opinion is Not a
Precedent of the TTAB
Mailed: June 25, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re ETLC Trademarks, LLC
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Serial No. 98604955
_____
Albert Bordas of Albert Bordas, P.A.,
for ELTC Trademarks, LLC.
Curtis French, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____
Before Pologeorgis, Lavache, and Brock,
Administrative Trademark Judges.
Opinion by Brock, Administrative Trademark Judge:
Applicant ETLC Trademarks, LLC seeks registration on the Principal Register of
the mark shown below for “Aprons; Boots; Hats; Shoes; Uniforms; Bottoms as
clothing; Bottoms as clothing for babies, adults, children, women, men; Leather boots;
Tops as clothing for babies, adults, children, women, men” in International Class 25:

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1
According to the translation statement: “EL TORO LOCO” in the mark means “THE
CRAZY BULL.”
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), based on a likelihood of confusion with the standard
character mark EL TORO LOCO, registered on the Principal Register for, inter alia,
“clothing, namely, shirts and hats” in International Class 25 (“Registrant’s Mark” or
“Cited Registration”).2 The Cited Registration also includes a translation statement:
“[t]he English translation of EL TORO LOCO is THE CRAZY BULL.”
1 Application Serial No. 98604955 was filed on June 17, 2024, under Section 1(a) of the
Trademark Act, 15 U.S.C. §1051(a), alleging November 1, 2021 as the date of first use
anywhere and in commerce.
The application includes the following description of the mark: The mark consists of the
stylized lettering of the words “EL TORO LOCO by aldo” with a design of a bull appearing
underneath the words “EL TORO LOCO” and on the side sits the words “by aldo”.
Color is not claimed as a feature of the mark.
The application originally included goods in Classes 9, 18, and 20. After the April 28, 2015
Final Office Action, which pertained to the goods in Class 25 only, the USPTO granted
Applicant’s request to divide the application. This appeal concerns only Application Serial
No. 98604955 and its identified goods in Class 25.
2 Registration No. 3199142 issued on January 16, 2007 and has been renewed. The cited
registration also includes goods in Class 28 but they do not form the basis for the refusal

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Applicant appealed the final refusal to register and both Applicant and the
Examining Attorney filed briefs.3 For the reasons explained below, we affirm the
refusal to register.
I. Evidentiary Issue
The Examining Attorney attached evidence to his brief.4 As we often advise
applicants:
(d) The record should be complete prior to the filing of an appeal.
Evidence should not be filed with the Board after the filing of a notice of
appeal.
(1) In an appeal from a refusal to register, if the appellant or the
examining attorney desires to introduce additional evidence after an
appeal is filed, the appellant or the examining attorney should
submit a request to the Board to suspend the appeal and to remand
the application for further examination.
Trademark Rule 2.142(d), 37 C.F.R. §2.142(d).
Although the Examining Attorney’s submission of evidence with his appeal brief
is untimely, we exercise our discretion to take judicial notice of the dictionary
definitions. See, e.g., Conopco, Inc. v. Transom Symphony OPCO, LLC, No. 91256368,
2022 TTAB LEXIS 194, at *17 n.8.
under Section 2(d). Citations in this decision are to the downloadable .pdf versions of
documents in the Trademark Status & Document Retrieval (TSDR) database.
3 Appeal Brief, 4 TTABVUE; Examiner’s Brief, 6 TTABVUE. Citations to the briefs refer to
TTABVUE, the Board’s online docket system.
4 6 TTABVUE 9 (“The attached definition … defines TOPS as ‘a piece of clothing that you
wear on the upper half of your body, for example, a blouse or shirt.’”); id. at 12-33
(attachments).

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II. Analysis
“The Trademark Act [under Section 2(d)] prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion [or] mistake, or to deceive.” In
re Charger Ventures LLC, 64 F.4th 1375, 1379 (Fed. Cir. 2023) (cleaned up). Our
determination under Section 2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors bearing on likelihood of confusion set forth
in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”),
cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 575 U.S. 138, 144 (2015); see also In
re Majestic Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 1103 (CCPA 1976).
Here, we have considered these DuPont factors, as well as any other factor that is
relevant and for which there is evidence and argument of record. See In re Guild
Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019). Varying weight, however, may be
assigned to each DuPont factor depending on the evidence presented. See Citigroup
Inc. v. Cap. City Bank Grp. Inc., 637 F.3d 1344, 1355 (Fed. Cir. 2011); In re Shell Oil
Co., 992 F.2d 1204, 1206 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play
more or less weighty roles in any particular determination”). We weigh the relevant
factors together to determine if, on balance, they indicate that confusion is likely. See,

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e.g., Charger Ventures, 64 F.4th at 1381; Majestic Distilling, 315 F.3d at 1319.
Ultimately, “each case must be decided on its own facts and the differences are often
subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 1199 (CCPA 1973).
Similarity of the Goods
We begin with the second DuPont factor, under which we consider “[t]he similarity
or dissimilarity and nature of the goods or services as described in an application or
registration.” DuPont, 476 F.2d at 1361. We base our analysis on the identifications
in the application and cited registration. See In re Detroit Ath. Co., 903 F.3d 1297,
1306, 1306 (Fed. Cir. 2018) (“The relevant inquiry in an ex parte proceeding focuses
on the goods and services described in the application and registration, and not
on real-world conditions.” (emphasis in italics in original changed to bold)); Stone Lion
Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014) (“‘the
question of registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application’”) (quoting Octocom Sys., Inc. v.
Houston Comput. Servs. Inc., 918 F.2d 937, 942 (Fed. Cir. 1990)).
We focus our analysis on the Application’s “hats” and “tops as clothing for babies,
adults, children, women, men,” and the Cited Registration’s “clothing, namely, shirts
and hats.” Insofar as the Application and Cited Registration both identify “hats,” the
goods are identical in part.
Additionally, some of the goods identified in the Application and listed in the Cited
Registration may encompass the goods of the other. See, e.g., Monster Energy Co. v.
Lo, No. 91225050, 2023 TTAB LEXIS 14, at *20 (“If an application or registration

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describes goods or services broadly, and there is no limitation as to their nature, it is
presumed that the ‘registration encompasses all goods or services of the type
described.”) (quoting Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d
1367, 1373 (Fed. Cir. 2013)).
According to the COLLINS DICTIONARY (AMERICAN ENGLISH VERSION), “[a] top is a
piece of clothing that you wear on the upper half of your body, for example, a blouse
or shirt.”5 Thus, Applicant’s “tops as clothing for babies, adults, children, women,
men” encompasses Registrant’s “clothing, namely, shirts,” and so these goods also are
legally identical. See, e.g., In re Hughes Furniture Indus., Inc., No. 85627379, 2015
TTAB LEXIS 65, at *10 (“Applicant’s broadly worded identification of ‘furniture’
necessarily encompasses Registrant’s narrowly identified ‘residential and commercial
furniture.”’).
The second DuPont factor weighs heavily in favor of a likelihood of confusion.
Overlapping Trade Channels and Classes of Purchasers
Under the third DuPont factor we consider “the similarity or dissimilarity of
established, likely-to-continue trade channels.” DuPont, 476 F.2d at 1361; Detroit
Ath. Co., 903 F.3d at 1306, 1308; Sabhnani v. Mirage Brands, LLC, No. 92068086,
2021 TTAB LEXIS 464, at *20. Because neither Registrant nor Applicant have
limited their channels of trade or classes of consumers for their identified goods, we
must presume that the in-part identical goods will be offered in the same trade
5 https://www.collinsdictionary.com/us/dictionary/english/top, accessed January 27, 2026.
Examiner’s Brief, 6 TTABVUE 12-33.

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channels to the same classes of consumers. See Detroit Ath. Co., 903 F.3d at 1306,
1308 (when there are no restrictions on channels of trade or classes of consumers in
the identifications of an application or registration, it is presumed that the goods are
sold in “all normal trade channels to all the normal classes of purchasers”); In re
Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012) (“it is well established that, absent
restrictions in the application and registration, goods and services are presumed to
travel in the same channels of trade to the same class of purchasers.”) (quotation
omitted). This factor also weighs heavily in favor of a likelihood of confusion.
Applicant argues that the goods in the Cited Registration “are consistently
marketed in direct association with the ‘EL TORO LOCO’ monster truck”6 and “used
exclusively in connection with merchandise related to monster truck competitions, a
specialized segment of motorsport entertainment.”7 As noted above, however, the
Cited Registration contains no such restrictions. We must base our comparisons
under the third DuPont factor on the goods as identified in the involved application
and Cited Registration. Sabhnani, 2021 TTAB LEXIS 464, at *25 (“[A]s with the
relatedness of the goods, the similarity or dissimilarity of the channels of trade must
be determined based on the identifications of goods in the parties’ registrations rather
than current real-world conditions”).
The third DuPont factor also weighs strongly in favor of a conclusion that
confusion is likely.
6 4 TTABVUE 17.
7 Id.at 18.

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Number and Nature of Similar Marks in Use on Similar Goods
Before turning to a comparison of the marks, we consider the number and nature
of similar marks in use on similar goods under the sixth DuPont factor. DuPont, 476
F.2d at 1361. This factor “is a measure of the extent to which other marks weaken
the assessed mark,” Spireon, Inc. v. Flex Ltd., 71 F.4th 1355, 1362 (Fed. Cir. 2023),
and indicates whether it is “entitled to only a narrow scope of protection.” Omaha
Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324 (Fed. Cir. 2018)
(quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772,
396 F.3d 1369, 1373 (Fed. Cir. 2005)).
“[T]he strength of a mark is not a binary factor” and “varies along a spectrum from
very strong to very weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
1338 (Fed. Cir. 2015) (internal citations omitted). “The weaker [the registrant’s]
mark, the closer [an applicant] mark can come without causing a likelihood of
confusion and thereby invading what amounts to its comparatively narrower range
of protection.” Id. (internal citations omitted). When evaluating the strength or
weakness of a mark, we look at the mark’s inherent conceptual strength based on the
nature of the term itself and its commercial strength in the marketplace. See Spireon,
71 F.4th at 1362 ((“There are two prongs of analysis for a mark’s strength under the
sixth factor: conceptual strength and commercial strength.”); In re Chippendales
USA, Inc., 622 F.3d 1346, 1353-54 (Fed. Cir. 2010) (measuring both conceptual and
marketplace strength); Made in Nature, 2022 TTAB LEXIS 228, at *24.

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In this manner, an applicant in an ex parte appeal can contract the scope of
protection otherwise accorded a cited mark by adducing evidence of conceptual and/or
commercial weakness. “When a field is crowded with similar marks, the theory is that
customers will be more adept at distinguishing marks from each other and are less
likely to be confused by similar marks.” Apex Bank v. CC Serve Corp., 156 F.4th 1230,
1235 (Fed. Cir. 2025) (citing Juice Generation, 794 F.3d at 1338). In this case,
Applicant challenges only the conceptual strength of the cited mark.
We consider whether the cited mark EL TORO LOCO is conceptually weak, as
argued by Applicant. At the outset, we note that the mark is registered on the
Principal Register without a claim of acquired distinctiveness, and thus carries a
presumption under Trademark Act Section 7(b), 15 U.S.C. §1057(b), that it is
inherently distinctive. See, e.g., New Era Cap Co. v. Pro Era, LLC, No. 91216455,
2020 TTAB LEXIS 199, at *29. This does not preclude Applicant from disputing the
Cited Mark’s conceptual strength with competent evidence such as third-party
registrations.
Applicant argues “that the [EL TORO LOCO] mark or a portion of the mark is
descriptive, suggestive, or frequently used so that consumers will look to other
elements to distinguish the source of the goods or services.”8 In support. Applicant
points to 18 third-party registrations for marks that include the term TORO.9 Third-
8 4 TTABVUE 21.
9 Id. at 23-4. Applicant also includes a screenshot of a USPTO trademark search showing 32
results. To the extent that the search results include additional registrations that were not
introduced into the record, we do not consider them. “[M]erely listing third-party
registrations does not make them of record.” In re ZeroSix, LLC, No. 88981832, 2023 TTAB
LEXIS 209, at *1-3 (citing In re Peace Love World Live, LLC, No. 86705287, 2018 TTAB

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party registrations may “prove that some segment of a mark has a normally
understood and well recognized descriptive or suggestive meaning, leading to the
conclusion that that segment is relatively weak” in connection with the goods or
services. Juice Generation, 794 F.3d at 1339 (internal quotation omitted). Even if
“there is no evidence of actual use” of “third-party registrations,” such registrations
“may be given some weight to show the meaning of a mark in the same way that
dictionaries are used.” Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917 (CCPA
1976).
A “controlling inquiry is the extent of third-party marks in use on ‘similar’ goods
or services’ offered to ‘the relevant public.’” Omaha Steaks, 908 F.3d at 1324 (citing
Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir.
1992)). None of the third-party registrations identify clothing goods; all identify
entertainment and education services.10 As it has not been established that these
services are identical or even related to the goods identified in the Cited Registration,
we do not rely on these third-party registrations. Apex Bank, 156 F.4th at 1236.
Moreover, none of the third-party registrations contains the phrase EL TORO LOCO,
LEXIS 220, at *17 n.17 (“[T]he list does not include enough information to be probative. The
list includes only the serial number, registration number, mark, and status (live or dead) of
the … registrations. Because the goods are not listed, we do not know whether the listed
registrations are relevant.”).
Applicant also points to four of its own registrations; we will address these registrations
under the thirteenth DuPont factor, below.
10 Registration No. 5701137 additionally identifies gaming machines and Registration Nos.
6115966 and 5902161 additionally identify recorded media.

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as in the Application and Cited Mark,11 so they are less like the Cited Mark than
Applicant’s own mark.
As there is no evidence of conceptual (or commercial) weakness of the Cited Mark,
we accord the Cited Mark the normal scope of protection of an inherently distinctive
mark. Thus, the sixth DuPont factor is neutral.
Similarity of the Marks
Under the first DuPont factor, we consider the “similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.” DuPont, 476 F.2d at 1361; see also Stone Lion, 746 F.3d at 1319.
“Similarity is not a binary factor but is a matter of degree.” Monster Energy, 2023
TTAB LEXIS 14, at *44 (quoting In re St. Helena Hosp., 774 F.3d 747, 752 (Fed. Cir.
2014) (internal quotation omitted)). Also:
it is well established that the test to be applied in
determining likelihood of confusion is not whether marks
are distinguishable on the basis of a side-by-side
comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of memory
over a period of time. That is to say, the emphasis must be
on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks.
Sealed Air Corp. v. Scott Paper Co., No. 72391022, 1975 TTAB LEXIS 236, at *6.
The marks must be considered in their entireties, but “in articulating reasons for
reaching a conclusion on the issue of confusion, there is nothing improper in stating
11 Two are for EL TORO marks, but again, these marks do not contain the entirety of EL
TORO LOCO.

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that, for rational reasons, more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on consideration of the marks in
their entireties.” Detroit Ath. Co., 903 F.3d at 1305 (quoting In re Nat’l Data Corp.,
753 F.2d 1056, 1058 (Fed. Cir. 1985)). We also keep in mind that, “where, as here, the
goods at issue are identical, the degree of similarity necessary to support a conclusion
of likely confusion declines.” Viterra, 671 F.3d at 1363 (cleaned up; citation omitted).
Here, the goods are identical in part.
The Cited Mark is EL TORO LOCO in standard characters and Applicant’s mark
is:
Both Applicant and Registrant provided translations for the wording EL TORO
LOCO as THE CRAZY BULL.
Applicant’s mark incorporates the Cited Mark in its entirety. “Marks have
frequently been found to be similar where one mark incorporates the entirety of
another mark, as is the case here.” TiVo Brands LLC v. Tivoli, LLC, No. 91221632,
2018 TTAB LEXIS 439, at *51-52; see also In re Mighty Leaf Tea, 601 F.3d 1342, 1347-
48 (Fed. Cir. 2010) (finding ML similar to ML MARK LEES (stylized)); Coca-Cola

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Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526
F.2d 556, 557 (CCPA 1975) (finding BENGAL similar to BENGAL LANCER &
Design); In re Integrated Embedded, No. 86140341, 2016 TTAB LEXIS 470, at *31
(“[L]ikelihood of confusion is often found where the entirety of one mark is
incorporated within another”) (finding BARR and BARR GROUP similar).
The Examining Attorney argues that “the marks are dominated by the arbitrary
wording EL TORO LOCO,”12 while Applicant argues that its “mark is dominated by
a stylized bull design.”13 Applicant also argues that the wording in its mark BY:
ALDO differentiates the marks by “identifying its source and linking it to Aldo
Espinosa, whose consent to register the name is of record.”14 The Examining Attorney
downplays the effect of the bull design, asserting that it actually “reinforces the
commercial impression of the [shared] wording EL TORO LOCO and does not create
a commercial impression different from the registered word mark.”15
When evaluating a composite mark consisting of words and a design, the word
portion is normally accorded greater weight because it is likely to make a greater
impression upon purchasers, be remembered by them, and be used by them to refer
to or request the goods. See Viterra, 671 F.3d at 1362; CBS Inc. v. Morrow, 708 F.2d
1579, 1581-82 (Fed. Cir. 1983); Made in Nature, 2022 TTAB LEXIS 228, at *49-50;
Sabhnani, 2021 TTAB LEXIS 464, at *39-40.
12 6 TTABVUE 4.
13 4 TTABVUE 12.
14 Id.
15 6 TTABVUE 5.

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Visually, at first blush, we agree with Applicant that the bull design is striking,
and in appearance, the marks have visual differences. That being said, we also note
that the cited mark is in standard-character format. Thus, Registrant could display
its mark in the same font, style, size or color identical or similar to the manner in
which the wording EL TORO LOCO appears in Applicant’s mark, thereby
heightening the likelihood of confusion. In re Aquitaine Wine USA, LLC, No.
86928469, 2018 TTAB LEXIS 108, at *13-14; In re Strategic Partners Inc., No.
77903451, 2012 TTAB LEXIS 80, at *6.
Turning to the sound of the marks, here, we find it is appropriate to give the word
portions of the marks greater weight. EL TORO LOCO is the entirety of the Cited
Mark and the first portion of Applicant’s mark that would be spoken, as EL TORO
LOCO BY: ALDO. Purchasers may even shorten Applicant’s mark to EL TORO
LOCO alone, identical to the Cited Mark. See, e.g., Sabhnani, 2021 TTAB LEXIS 464,
at *45 (the “similarity in sound will be greater if consumers engage in ‘the penchant
of consumers to shorten marks”); In re Bay State Brewing Co., No. 85826258, 2016
TTAB LEXIS 46, at *9. On the other hand, even if consumers recognize the
differences in the marks, those consumers familiar with the cited, registered EL
TORO LOCO mark may perceive Applicant’s EL TORO LOCO BY: ALDO and design
mark as an extension of Registrant’s goods under an extended version of Registrant’s
Mark. See, e.g., Schieffelin & Co. v. Molson Cos., Ltd., No. 91069312, 1989 TTAB
LEXIS 1, at *12 (“Those consumers who do recognize the differences in the marks
may believe that applicant’s mark is a variation of opposer’s mark that opposer has

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adopted for use on a different product.”). The marks are thus, at a minimum, similar
in sound.
Last, we consider the meaning and commercial impression of the marks. Here, we
agree with the Examining Attorney that the bull design of Applicant’s mark
reinforces the meaning of the EL TORO LOCO wording (THE CRAZY BULL) shared
by both marks. The mere addition of the BY: ALDO wording does little to change the
commercial impression of the mark, and may, in fact, further increase the likelihood
of confusion. See, e.g., Schieffelin, 1989 TTAB LEXIS 1, at *12 (even consumers who
recognize the differences between BRADOR malt liquor and BRAS D’OR Cognac
brandy may believe applicant’s mark is a variation of opposer’s mark, used for a
different product). This shared meaning, coupled with the identical first phrase when
spoken – which may be even be shortened to only the EL TORO LOCO wording in
both marks – creates a highly similar overall commercial impression.
Despite some visual dissimilarities, we find the marks similar in sound and highly
similar in meaning and overall commercial impression. The first DuPont factor
weighs in favor of a finding of likely confusion.
No Actual Confusion
The seventh and eighth DuPont factors consider the nature and extent of any
actual confusion and the extent of the opportunity for actual confusion.” DuPont, 476
F.2d at 1361. Applicant states only that “Applicant and Registrant have co-existed
for years without any evidence of confusion.”16 The Federal Circuit offered the
16 4 TTABVUE 16.

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following regarding the weight to be given to an assertion of no actual confusion by
an applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we agree with
the Board that Majestic’s uncorroborated statements of no
known instances of actual confusion are of little
evidentiary value. See In re Bissett-Berman Corp., 476 F.2d
640, 642 … (CCPA 1973) (stating that self-serving
testimony of appellant’s corporate president's
unawareness of instances of actual confusion was not
conclusive that actual confusion did not exist or that there
was no likelihood of confusion). A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The opposite
is not true, however. The lack of evidence of actual
confusion carries little weight, [citation omitted], especially
in an ex parte context.
Majestic Distilling, 315 F.3d at 1317.
These DuPont factors are neutral.
The Thirteenth DuPont Factor
As noted above, in its argument that the scope of protection afforded to the Cited
Registration should be limited, Applicant asserts “that its logo design of the bull is in
several of its Federal Registrations, including some that are Incontestable.”17 In ex
parte appeals, we generally consider third-party registrations under the sixth DuPont
factor. See, e.g., In re Embiid, No. 88202890, 2021 TTAB LEXIS 168, at *46; Juice
Generation, 794 F.3d at 1339. In addition to third-party registrations, however,
Applicant also made of record four of its own registrations for various EL TORO
LOCO-formative marks; Applicant’s own registrations are not third-party
17 4 TTABVUE 22 (emphasis in original).

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registrations, of course. Here, we address Applicant’s registrations under the
thirteenth DuPont factor, where we consider “[a]ny other established fact probative
of the effect of use.” DuPont, 476 F.2d at 1361.
Applicant argues that its four EL TORO LOCO-formative marks, shown below,
“are already registered in multiple classes, as a wordmark, and with its specific logo
design is that is recognizable by its consumers.”18 As with the third-party
registrations Applicant submitted, Applicant remains silent regarding the goods and
services identified therein. Applicant’s additional EL TORO LOCO-formative marks
are registered in connection with, inter alia, food services and condiments:
(1)
“providing food and drink via a mobile truck” (Registration No. 4900365, issued
February 16, 2016),
(2)
“Catering services; Mobile catering; Providing of food and drink via a mobile
truck; Restaurant services; Restaurant services, including sit-down service of
food and take-out restaurant services; Restaurant and bar services;
18 Id. at 23.

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Restaurant, bar and catering services; Take-out restaurant services;
Restaurants featuring home delivery” (Registration No. 5642537, issued
January 1, 2019),
(3)
“Barbecue sauce; Barbeque sauce; Chimichurri sauce; Garlic-based sauces;
Grilling sauces; Hot sauce; Pico de Gallo sauce; Ready-made sauces; Sauces for
barbecued meat; Steak sauce” and “Catering services; Mobile catering;
Providing of food and drink via a mobile truck; Restaurant services;
Restaurant services, including sit-down service of food and take-out restaurant
services; Restaurant and bar services; Restaurant, bar and catering services;
Take-out restaurant services; Restaurants featuring home delivery”
(Registration No. 5785128, issued June 25, 2019), and
(4) EL TORO LOCO
“Catering services; Mobile catering; Providing of food and drink via a mobile
truck; Restaurant services; Restaurant services, including sit-down service of
food and take-out restaurant services; Restaurant and bar services;
Restaurant, bar and catering services; Take-out restaurant services; Providing
of food and drink via stationary food trailer” (Registration No. 5665531, issued
January 29, 2019).19
In Strategic Partners, 2012 TTAB LEXIS 80, at *2, the applicant centered its
argument against a likelihood of confusion “on its ownership of an existing
registration that has coexisted with the cited registration for over five years.” The
Board found that the marks at issue were similar and that the footwear identified in
the application was related to the clothing identified in the cited registration. In many
19 Id. at 22-3.

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cases, this would lead to a conclusion of a likelihood of confusion. Here, however, the
Board went on to explain that it needed to “balance the similarities between the
marks and goods against the facts that applicant already owns a registration for a
substantially similar mark for the identical goods, and that applicant’s registration
and the cited registration have coexisted for over five years.” Id. at *5-6. It concluded
that:
the present case involves the unique situation presented by
[1] the coexistence of applicant’s existing registration with
the cited registration for over five years, when [2]
applicant’s applied-for mark is [a] substantially similar to
its existing registered mark, [b] both for identical goods.
When we consider these facts under the thirteenth du Pont
factor, we find in this case that this factor outweighs the
others and leads us to conclude that confusion is unlikely.
Id. at *9-10 (numbering added).
Applicant’s registrations issued in 2016 and 2019, and the Cited Registration
issued in 2007. Therefore, Applicant’s registrations have coexisted with the Cited
Registration for at least five years and are not subject to attack by the owner of the
Cited Registration on a claim of priority and likelihood of confusion. See id. at *8.
We set aside for the moment a consideration of whether Applicant’s mark is
“substantially similar” to the marks in its prior registrations and instead examine
whether the Application and prior registrations are for “identical goods.” None of the
registrations identify the goods at issue in the Application, namely, “Aprons; Boots;
Hats; Shoes; Uniforms; Bottoms as clothing; Bottoms as clothing for babies, adults,
children, women, men; Leather boots; Tops as clothing for babies, adults, children,
women, men” and Applicant does not argue otherwise.

Serial No. 98604955
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Because none of the goods or services in Applicant’s registrations are the same as
or have been shown to be substantially similar to the clothing goods identified in the
instant application, they are not particularly probative as to whether there is a
likelihood of confusion with the Cited Registration. See id. at *9-10. Therefore, we
need not decide whether the marks in Applicant’s registrations are substantially
similar to that of the Application.
The thirteenth DuPont factor is neutral.
III. Conclusion: Balancing of the DuPont Factors
Registrant’s and Applicant’s goods are identical in part. The trade channels and
classes of purchasers for Applicant’s and Registrant’s identical in part goods are
presumed to be identical. DuPont factors two and three therefore weigh heavily in
favor of a likelihood of confusion. Although the marks may have some differences in
appearance, these are outweighed by the similarities in sound, and points of identity
in meaning and overall commercial impression. The first DuPont factor weighs in
favor of a finding of likely confusion. The Cited Mark was not shown to have any
conceptual (or commercial) weakness, so the sixth DuPont factor is neutral. The
seventh and eighth DuPont factors relating to actual confusion are also neutral, as is
the thirteenth DuPont factor. Balancing these factors, with all factors either weighing
in favor of a likelihood of confusion or neutral and no factors weighing against,
Applicant’s mark is likely to cause confusion with the Cited Mark.

Serial No. 98604955
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Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.