parties' marketing to Spanish speakers in SoCal is not meaningful marketing overlap

Olé Mexican Foods Inc. v. SK Market Inc., 2025 WL 1717646, No.2:25-cv-01877-WLH-BFM (C.D. Cal. May 13, 2025)

Courts have already converged on “everybody uses theinternet to market, so that’s not a significant overlap.” This is the firstdecision I’ve seen to extend the same reasoning to Spanish-language marketing,but since that conclusion was already implicit for English-language marketing(nobody ever claims that overlap in targeting English speakers deserves weight)it’s not that surprising.

Olé sued SK for its use of the Olé City Market; the courtdenied a preliminary injunction.  

Olé has registrations for OLÉ for what the court describesas “authentic Mexican-inspired foods,” which it sells in various grocerystores, including in Southern California. SK Market adopted the Olé City Marketmark for its grocery stores in Southern California. They sell items such asfruits, vegetables, meats, seafood, deli and frozen goods, beverages,detergents, toothpastes, cleaning supplies, and alcohol.

SK filed ITU applications for OLÉ CITY MARKET to use with“retail grocery store services and in retail grocery stores. Olé objected inFebruary 2023 and filed a notice of opposition after June 2023. It also suedfor state and federal trademark infringement/false advertising.

The court found the word marks similar, though distinguishedby the additional words “city” and “market.” The design marks were not similar:

Instead, they were “easily distinguishable from the Olé CityMarket design mark in use of images (bull v. sun), color, font, arrangement andoverall appearance.” Weighed slightly in favor of confusion for the word marksand “decidedly against” for the design marks.

Relatedness of goods: related, but not closely so. Olé’smarks were directly related to specific Mexican foods, while SK’s were for agrocery store selling a wide variety of goods and products. “[T]he Court findspersuasive the distinction between Plaintiff’s sale to customers of certaintypes of packaged Mexican food on the one hand and Defendant’s operation of achain of grocery stores on the other.” But this factor might be “markedly”different if SK sold house-branded Mexican food; it just doesn’t do so or planto do so. Weighed against confusion.

Marketing channels: neutral. “While the trade channels usedby the parties include websites and print ads, those are the obvious channelsthat anyone in business today would use.” Marketing “target[ing] the Hispaniccommunity” by having Spanish language advertising was not significant “becauseanyone marketing anything in Southern California would find Spanish languageadvertising appropriate.”

Strength of plaintiff’s mark: Neutral. Though the mark wasarbitrary and used since 1988, “Olé is a common word in Spanish meaning“hooray,” and Plaintiff’s Olé word mark exists within a crowded field,including among others registrations for use with 1) nachos, tacos, tortillas,enchiladas, chalupas, tamales, coffee, and tea; 2) restaurant services; and 3)frozen Mexican entrees and prepared foods.” So the mark wasn’t especiallystrong in relation to grocery stores.

Degree of purchaser care: Disputed—inexpensive, but maybethe cultural significance of Mexican food increases care; plaintiff didn’t meetits burden at this stage.

Intent: Uncontroverted evidence showed that SK didn’t learnof the Olé marks until after they filed the ITUs. Although Olé’s registrationsprovided constructive knowledge, that didn’t persuade the court of any badintent.

Actual confusion: no evidence.

Likely expansion: SK didn’t intend to expand intohouse-branded Mexican foods. (The court didn’t explicitly address whether Oléintended to open grocery stores, but that seems inherently less likely.)

Unsurprisingly, then, the requested PI was denied.