Rivers IP Holdings, LLC

This Opinion is Not a
Precedent of the TTAB
Mailed: September 11, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Rivers IP Holdings, LLC
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Serial No. 97811850
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William L. Niro and Sofia Quezada Hastings of Aronberg Goldgehn Davis & Garmisa,
for Rivers IP Holdings, LLC.
Akin Adejunmobi, Trademark Examining Attorney, Law Office 105,
Jennifer L. Williston, Managing Attorney.
_____
Before Thurmon, Lebow, and Brock,
Administrative Trademark Judges.
Opinion by Brock, Administrative Trademark Judge:
Applicant Rivers IP Holdings, LLC seeks registration on the Principal Register of
the mark shown below for “Fast casual take away restaurant services featuring
Mexican food served to patrons in a casino” in International Class 43:1
1 Application Serial No. 97811850 was filed on February 25, 2023, under Section 1(a) of the
Trademark Act, 15 U.S.C. §1051(a), alleging December 15, 2022 as the date of first use
anywhere and in commerce.
The mark description is: The mark consists of the wording “TACO SUERTE” in stylized
capital lettering in yellow. Above the wording is a design of a yellow and red flame. The color
white represents the transparent background and is not claimed as a feature of the mark.

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The application disclaims TACO and includes the following translation statement:
The English translation of “SUERTE” in the mark is “luck”.
The Examining Attorney refused registration of Applicant’s mark 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 SUERTE, registered on the Principal Register for
“Restaurant services; Bar services; Catering services” in International Class 43.2 The
cited registration contains the following translation statement: The English
translation of “SUERTE” in the mark is “luck”.
After the refusal was made final, Applicant appealed; the full prosecution history
is complex, but the Examining Attorney provides a useful summary in his first
Examiner’s brief.3 After a remand to the Examining Attorney and subsequent
narrowing of the issues on appeal (the remaining issue is the likelihood of confusion
The color(s) red and yellow is/are claimed as a feature of the mark.
Citations are to the downloadable .pdf versions of documents in the Trademark Status &
Document Retrieval (TSDR) database.
2 Registration No. 5492412 issued on June 12, 2018.
3 8 TTABVUE. Citations to the briefs and other appeal records refer to TTABVUE, the
Board’s online docket system.

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refusal),4 Applicant was granted leave to file a supplemental brief5 and did so,6 and
the Examining Attorney filed a second brief.7 We have reviewed and considered all of
the arguments in the briefs and evidence of record.
For the reasons explained below, we affirm the refusal to register.
I. Likelihood of Confusion
“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).
4 August 15, 2025 Request for reconsideration after final action denied.
5 See August 16, 2025 Board Order, 17 TTABVUE, and December 8, 2025 Corrected Board
Order, 20 TTABVUE.
6 18 TTABVUE. Applicant’s supplemental brief, see 20 TTABVUE, is largely a rehashing of
its original brief, at 6 TTABVUE. We cite to Applicant’s supplemental brief in this decision.
7 21 TTABVUE.

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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,
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).
Here, Applicant argues the first, second, third, fourth, sixth, seventh, eighth,
twelfth, and thirteenth DuPont factors.
Similarity or Dissimilarity of the Services
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration ….’” In re Detroit
Ath. Co., 903 F.3d 1297, 1306 (Fed. Cir. 2018) (quoting DuPont, 476 F.2d at 1361).
“This factor considers whether ‘the consuming public may perceive [the respective
goods and services of the parties] as related enough to cause confusion about the
source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 752
(Fed. Cir. 2014) (substitution in original) (quoting Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 1267 (Fed. Cir. 2002)). “In analyzing the services, the

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Board ‘considers [t]he similarity or dissimilarity and nature of the … services as
described in an application or registration ….’” In re OSF Healthcare Sys., No.
88706809, 2023 TTAB LEXIS 353, at *8 (quoting In re Embiid, No. 88202890, 2021
TTAB LEXIS 168, at *29).
The “services need not be identical or even competitive to find a likelihood of
confusion. … They need only be related in some manner and/or if the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that [they] emanate from the same source.” Id. (internal quotations omitted).
Additionally, “[i]t is sufficient for a finding of likelihood of confusion if relatedness is
established for any item encompassed in the identification of [services] in a particular
class in an application.” In re Ye Mystic Krewe of Gasparilla, No. 90522364, 2025
TTAB LEXIS 412, at *9 (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc.,
648 F.2d 1335, 1336 (CCPA 1981)).
The relatedness of services may be established based on (1) the language of the
involved identifications of services, which may show, on the face of the identifications,
that the services are literally or legally identical, or are otherwise intrinsically
related, and (2) evidence of third-party uses or registrations, which may show that
the identified services are commonly offered by the same entity under the same mark.
See, e.g., OSF Healthcare, 2023 TTAB LEXIS 353, at *9.
The recitation of services in the cited registration is “Restaurant services; Bar
services; Catering services.” Applicant’s recitation of services, as amended, is “Fast
casual take away restaurant services featuring Mexican food served to patrons in a

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casino,” but at the time of filing, it described its services as “Restaurant and bar
services.”8 Accordingly, as the Examining Attorney argues,9 the nearly identical and
broadly worded language in the cited registration – “Restaurant services; Bar
services;”–encompass Applicant’s more limited services. Applicant cannot avoid the
overlap by narrowing within the same field of the overlapping services; the overlap
itself remains. Applicant’s recitation of services is thus legally identical in part to
Registrant’s recitation of services.
In addition, the Examining Attorney offered the following evidence of third-
parties providing two types of restaurant services under the same mark: 1) take away
services inside a casino, similar or identical to Applicant’s (i.e., “Fast casual take
away restaurant services featuring Mexican food served to patrons in a casino” and
differing only in the type of food served) and 2) restaurant services offered apart from
a casino, like Registrant’s (including, inter alia, “Restaurant services”):
• BUBBAKOO’S BURRITOS;10
• VELVET TACO;11
• QDOBA;12
• MOE’S;13
• DEL TACO;14
• NATHAN’S;15
8 February 25, 2023 Application.
9 21 TTABVUE 5.
10 April 3, 2025 Subsequent final office action, 107-14.
11 Id. at 115-20.
12 Id. at 121-29.
13 Id. at 130-37.
14 Id. at 138-45.
15 Id. at 21-30.

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• WINGSTOP;16
• POPEYES;17
• STEAK ‘N SHAKE;18
• BURGER KING;19
• WAHLBURGERS;20
• SUBWAY;21
• MCDONALD’S;22 and
• FATBURGER.23
In particular, we note that in the first five examples – BUBBAKOO’S BURRITOS,
VELVET TACO, QDOBA, MOE’S, and DEL TACO – appear to offer services similar
to Applicant’s, namely, “Fast casual take away restaurant services featuring Mexican
food served to patrons in a casino” and also operate standalone locations separate
from those inside the casino. These third-party uses show that it is common for
restaurants, including fast food restaurants, to operate within casinos and elsewhere.
Applicant’s argument that it “has sufficiently differentiated its services from
Registrant’s services”24 by focusing on the inclusion of bar services in the cited
registration is unpersuasive because it is sufficient to establish relatedness for any
one item in a class. See Gasparilla, 2025 TTAB LEXIS 412, at *9. Additionally,
Applicant cannot restrict the scope of a cited registration by argument or extrinsic
16 Id. at 30-40.
17 Id. at 41-49.
18 Id. at 50-57.
19 Id. at 58-64.
20 Id. at 65-76.
21 Id. at 77-84.
22 Id. at 85-93.
23 Id. at 94-106.
24 18 TTABVUE 18.

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evidence.25 See Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1323
(Fed. Cir. 2014) (“It was proper, however, for the Board to focus on the application
and registrations rather than on real-world conditions....”); Octocom Sys. Inc. v.
Houston Comput. Servs., Inc., 918 F.2d 937, 942 (Fed. Cir. 1990) (“The authority is
legion that 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 regardless of what
the record may reveal as to the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to which the sales of goods are
directed.”).
In sum, the services are legally identical in part and the Examining Attorney’s
evidence confirms this inherent relationship in the marketplace. The second DuPont
factor weighs heavily in favor of a conclusion of likely confusion.
Similarity or Dissimilarity of Trade Channels and Classes of
Consumers
The third DuPont factor “considers ‘[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.’” Detroit Ath., 903 F.3d at 1308 (quoting DuPont,
476 F.2d at 1361).
Despite the in-part identical nature of the services, Applicant argues that there
are meaningful differences under the third DuPont factor.26 Applicant points to the
different geographic locations of Applicant’s and Registrant’s businesses, the
differing styles of service offered at each, the different customers, and different
25 Id.
26 Id. at 19.

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menus.27 Applicant’s arguments and evidence here are unpersuasive. “The third
DuPont factor—like the second factor—must be evaluated with an eye toward the
channels specified in the application and registration, not those as they exist in the
real world.” Detroit Ath., 903 F.3d at 1308 (citing In re i.am.symbolic, llc, 866 F.3d
1315, 1325-27 (Fed. Cir. 2017)).
Applicant’s identification of services contains trade channel restrictions: “Fast
casual take away restaurant services featuring Mexican food served to patrons in a
casino.” Applicant argues that this language differentiates it from Registrant’s
services, yet it does so by pointing to those “real world” conditions rather than “with
an eye toward the channels specified in the application.” Id. That is, Applicant argues
that confusion is unlikely because it “only operates within Rivers Casino® in Illinois.
The food offered under the TACO SUERTE name is limited to adults who are patrons
in the casino. No children are permitted. The customer base is very narrow given
these conditions.”28 Applicant also points to the Declaration of Devon Maddox,
Applicant’s Vice President and General Counsel, who distinguishes Registrant’s
business as “a single full-service sit-down restaurant operating under the name
Suerte serving classic Mexican dishes with a full service bar. Their services are
advertised and sold only in the Austin TX area.”29
27 Id. at 19-20.
28 Id. at 20.
29 July 17, 2025 Request for reconsideration after final action, 6-7, ¶¶2, 5.

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Here, the recitations of services are legally identical in part. “[I]t 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.” In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012) (internal
quotation omitted). Applicant’s narrowing of its identification – whether viewed
under the second DuPont factor or the third – is still a narrowing within Registrant’s
broader field and is thus not a meaningful restriction. Moreover, the Examining
Attorney’s evidence showed many third-parties offering restaurant services both
within and outside of casinos, including Mexican-style restaurants.30 The third
DuPont factor weighs in favor of a conclusion of likely confusion.
Purchasing Conditions
The fourth DuPont factor considers “[t]he conditions under which and buyers to
whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” DuPont,
476 F.2d at 1361. The conditions and buyers are based on the language in Applicant’s
identification of services. Stone Lion, 746 F.3d at 1324 (identification language is
controlling, not evidence of “current activities”).
Applicant argues that the appearance of its walk-up counter inside Rivers Casino
distinguishes the source of its services to approaching consumers because “[i]t is only
considered to be a restaurant because it sells some type of food, as the Registrant’s
establishment does.”31 This is not evidence that Applicant’s – or Registrant’s –
30 See n.10-23 supra.
31 18 TTABVUE 20-21. We are not persuaded by Applicant’s implicit argument that its
services are not restaurant services because it does not offer a sit-down restaurant. The third-

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customers are sophisticated or likely to take more care in purchasing the respective
services. Gasparilla, 2025 TTAB LEXIS 412, at *13-14 n.15 (citing Cai v. Diamond
Hong, Inc., 901 F.3d 1367, 1371 (Fed. Cir. 2018) (internal citation omitted). We cannot
infer that Applicant’s or Registrant’s customers will take greater than ordinary care
when purchasing their meals. We presume that the standard of care for purchasing
the services is that of the least sophisticated potential purchaser. See Stone Lion, 746
F.3d at 1325. The least sophisticated purchaser of restaurant services is a member of
the general public who may exercise less caution when making purchases, and we
have no evidence in the record to suggest that casino patrons are more careful when
purchasing restaurant services. Rather, it is just as likely that customers, upon
encountering Applicant’s restaurant under a nearly identical mark (as will be
discussed), will think it is a casino-based, fast casual outpost of Registrant’s “original”
sit-down Mexican restaurant. We find the fourth DuPont factor to be neutral.
Number and Nature of Similar Marks in Use on Similar Services
Before turning to a comparison of the marks themselves, we consider the sixth
DuPont factor because it may affect the scope of protection to which the cited mark is
entitled. Heil Co. v. Tripleye GmbH, No. 91277359, 2024 TTAB LEXIS 494, at *47-
48. There are “two prongs of analysis for a mark’s strength under the sixth [DuPont]
party evidence shows the word “restaurant” on websites in connection with walk-up counters.
See, e.g., April 3, 2025 Subsequent final office action, 31-35, 41-42. Indeed, to establish the
weakness of the SUERTE term, Applicant conversely urged us to consider its use on marks
for coffee shops and beer. See July 24, 2024 Request for reconsideration after final action.

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factor: conceptual strength and commercial strength.” See, e.g., Spireon, Inc. v. Flex
Ltd., 71 F.4th 1355, 1362 (Fed. Cir. 2023).
We consider whether the cited mark SUERTE 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. Specifically, third-party
registered marks containing the SUERTE element common to both Registrant’s and
Applicant’s marks can show that element has a normally understood and well-
recognized descriptive or suggestive meaning. Spireon, 71 F.4th at 1363 (citations
omitted).
In this regard, Applicant asserts that there are ten third-party registrations for
goods and services similar to the cited registration,32 namely, SUERTE for
“Restaurant services; Bar services; Catering services.” We note PALOMA SUERTE,
Registration No. 6741099 for “Bar services; Restaurant services,”33 but the other nine
SUERTE marks are registered in connection with specific foods or drinks: alcoholic
beverages (five), non-alcoholic beverages, olive oil, chips, and candy.34
32 18 TTABVUE 15.
33 July 24, 2024 Request for reconsideration, 83.
34 Id. at 85-102.

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As to the commercial strength of the cited mark, Applicant submitted evidence of
six restaurants, a coffee shop, and a beer that include the term SUERTE:
• SUERTE BAR & GRILL in Texas;
• LA SUERTE in Kentucky;
• QUE BUENO SUERTE in Colorado;
• SUERTE EATERY in California;
• SUERTE CANTINA in California;
• LA SUERTE DE SAKE in North Carolina;
• SUERTE COFFEE in Washington; and
• SUERTE LAGER.35
The sixth DuPont factor requires consideration of similar marks in use on
“similar” goods or services. DuPont, 476 F.2d at 1361. Under the sixth factor, the
similarity of the services identified in a cited registration to the goods or services
identified in third-party registrations must be shown in every case unless it is self-
evident from the identifications of goods or services. Cf. Omaha Steaks Int’l, Inc. v.
Greater Omaha Packing Co., 908 F.3d 1315, 1325 (Fed. Cir. 2018) (finding that the
Board erred in considering third-party uses of marks for goods and services such as
oriental foods, alcoholic beverages, café food, or grocery delivery services where the
applicant had failed to show that those goods and services were “similar” to the
parties’ meat products).
Applicant claims that it has established that the cited mark is weak36 because it
has shown examples of SUERTE marks registered or used in connection with “the
same or related goods and services”37 as the cited registration, but this is based on
35 Id. at 23-80.
36 18 TTABVUE 16.
37 Id. at 15.

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Applicant’s assertion only, not evidence. That is, the cited registration identifies
“Restaurant services; Bar services; Catering services”, so third-party marks used in
connection with these services will be probative as Applicant has not established that
any other goods and services are “related” to the services identified in the cited
registration. Gasparilla, 2025 TTAB LEXIS 412, at *13-14 n.15 (“Attorney argument
is no substitute for evidence.”). We find that Applicant has not offered 19 examples,
as it claims.38 Of the third-party registrations, only the PALOMA SUERTE
registration for “Bar services; Restaurant services” is similar on its face to the cited
registration. Of the third-party uses, we find only the six restaurants similar to the
cited registration.
We find the evidence of one registration and six restaurants is a far cry from the
type of evidence relied upon in other cases. See, e.g. Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1373
(Fed. Cir. 2015) (“voluminous evidence” of marks with paw print design elements);
Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334 (Fed. Cir. 2015) (twenty-six
three-word marks containing the word). The sixth DuPont factor is neutral.
Comparison 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 Co. v. Lo,
38 Id. at 16. Applicant includes the cited mark in its total count as well.

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No. 91225050, 2023 TTAB LEXIS 14, at *44 (quoting St. Helena Hosp., 774 F.3d at
752 (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 cited mark is SUERTE and Applicant’s mark is (TACO
disclaimed). 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 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., 903 F.3d at 1305 (quoting In re Nat’l Data
Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985)).
For marks comprised of both wording and a design, greater weight is often given
to the wording, because it is the wording that purchasers would use to refer to or
request the goods or services. See, e.g., Viterra, 671 F.3d at 1366 (“the verbal portion
of a word and design mark likely will be the dominant portion”). We find this point
applicable here, where the design is not striking or unusual. Many restaurant patrons

Serial No. 97811850
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likely find a flame design rather ordinary for a “Fast casual take away restaurant
services featuring Mexican food ….”
Further, we find that SUERTE in Applicant’s mark is dominant because Applicant
disclaimed the term TACO, which is merely descriptive or even generic for Applicant’s
“restaurant services featuring Mexican food.” See In re Dixie Rests. Inc., 105 F.3d
1405, 1407 (Fed. Cir. 1997) (Board properly found that DELTA was dominant in THE
DELTA CAFE and design, which disclaimed the generic word CAFE); In re Binion,
No. 76590702, 2009 TTAB LEXIS 701, at *7-8 (concluding that confusion was likely
between BINION’S for “hotel and bar services” and BINION'S ROADHOUSE for
“restaurant services” where descriptive word ROADHOUSE received less weight
than BINION’S when comparing the marks as a whole).
Applicant’s TACO SUERTE & Design mark is thus similar in appearance and
sound to the cited SUERTE mark, differing only by the term TACO. The marks share
a similar meaning, as SUERTE in the marks means “luck.” Applicant’s addition of
the descriptive term TACO does little to distinguish the marks. Double Coin Holdings
Ltd. v. Tru Dev., 2019 TTAB LEXIS 347, *22 (“if a junior user takes the entire mark
of another and adds a generic, descriptive or highly suggestive term, it is generally
not sufficient to avoid confusion.”). In fact, adding the descriptive term TACO may
enhance the likelihood of confusion, as consumers may perceive Applicant’s TACO
SUERTE restaurant as a Mexican-style fast casual outpost of Registrant’s original
restaurant. Id. (“ROAD WARRIOR looks, sounds, and conveys the impression of
being a line extension of WARRIOR.”).

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Additionally, the dominant portion of Applicant’s mark comprises the entirety of
the registered mark. “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 Bottling Co. of Memphis, TN, 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).
We therefore find the marks similar in appearance, sound, meaning, and overall
commercial impression. “It is not improper for the Board to determine that, for
rational reasons, it should give more or less weight to a particular feature of the mark
provided that its ultimate conclusion regarding the likelihood of confusion rests on a
consideration of the marks in their entireties.” QuikTrip West, Inc. v. Weigel Stores,
Inc., 984 F.3d 1031, 1035 (Fed. Cir. 2021) (internal citations omitted, cleaned up).
Considering the marks in their entireties, id., the marks are similar in all respects
and the first DuPont factor weighs in favor of a conclusion of likely confusion.
Actual and Potential Confusion; Marketplace Realities
The seventh DuPont factor considers “[t]he nature and extent of any actual
confusion,” the eighth “[t]he length of time during and conditions under which there
has been concurrent use without evidence of actual confusion,” and the twelfth looks

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to “[t]he extent of potential confusion, i.e., whether de minimis or substantial.”
DuPont, 476 F.2d at 1361. The thirteenth DuPont factor considers “[a]ny other
established fact probative of the effect of use.” Id.
Applicant argues that there has been no confusion in the marketplace despite its
use of its mark since December 2022.39 A lack of evidence of actual confusion carries
little weight in an ex parte case, where the owner of the cited registration is not a
party. Majestic Distilling, 315 F.3d at 1317 (lack of evidence of actual confusion
carries little weight in an ex parte case). In addition, we have insufficient evidence of
the kind of marketplace circumstances that can lead to actual confusion. Guild
Mortg., 912 F.3d at 1380-81 (suggesting that “evidence of concurrent use of the two
marks for a particularly long period of time—over 40 years—in which the two
businesses operated in the same geographic market—southern California—without
any evidence of actual confusion” may be probative under the eighth DuPont factor,
even in an ex parte appeal).
Then, turning to the twelfth DuPont factor, Applicant also argues that “the
likelihood of confusion is at best de minimis given the distinct differences in the
marks themselves, the physical distance between each use, the visibility (or lack of
visibility) to ordinary consumers, the plethora of other uses of the term SUERTE in
related goods and services throughout the U.S. and the additional words that
distinguish the nature of the services provided.”40
39 18 TTABVUE 21.
40 Id. at 22.

Serial No. 97811850
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Moving to the last DuPont factor, Applicant concludes with a series of unsupported
statements that consumers in Austin, Texas and Des Plaines, Illinois are unlikely to
encounter Applicant’s mark and the cited mark.41 “A consumer encountering the term
SUERTE would not have any immediate impression that it was a restaurant,”
Applicant states – also without supporting evidence or supporting case law.
We treat the seventh, eighth, twelfth, and thirteenth factors as neutral. See, e.g.,
RxD Media, LLC v. IP Application Dev. LLC, No. 91207333, 2018 TTAB LEXIS 37,
at *7-8, aff’d, 377 F.Supp.3d 588 (E.D. Va. 2019), aff’d, 986 F.3d 361 (4th Cir. 2021)
(quoting U.S. v. Dunkel, 927 F.2d 955, 956 (7th Cir.1991) (“A skeletal ‘argument,’
really nothing more than an assertion, does not preserve a claim [for appellate
review] .... Judges are not like pigs, hunting for truffles buried in briefs.”)).
II. Conclusion: Balancing of the DuPont Factors
The marks are similar, the services are in-part legally identical, the trade
channels overlap; DuPont factors one, two, and three weigh in favor of a likelihood of
confusion. The factors regarding purchasing conditions, mark weakness, actual and
potential confusion, and the thirteenth factor are neutral. Balancing these factors,
with all factors weighing in favor of a likelihood of confusion or neutral and no factors
against, Applicant’s mark is likely to cause confusion with the cited mark in
Registration No. 5492412.
41 Id.

Serial No. 97811850
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Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.