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 the internet to market, so that’s not a significant overlap.” This is the first decision 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 court denied a preliminary injunction.  

Olé has registrations for OLÉ for what the court describes as “authentic Mexican-inspired foods,” which it sells in various grocery stores, including in Southern California. SK Market adopted the Olé City Market mark for its grocery stores in Southern California. They sell items such as fruits, 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 in February 2023 and filed a notice of opposition after June 2023. It also sued for state and federal trademark infringement/false advertising.

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

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

Relatedness of goods: related, but not closely so. Olé’s marks were directly related to specific Mexican foods, while SK’s were for a grocery store selling a wide variety of goods and products. “[T]he Court finds persuasive the distinction between Plaintiff’s sale to customers of certain types of packaged Mexican food on the one hand and Defendant’s operation of a chain 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 plan to do so. Weighed against confusion.

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

Strength of plaintiff’s mark: Neutral. Though the mark was arbitrary 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 especially strong in relation to grocery stores.

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

Intent: Uncontroverted evidence showed that SK didn’t learn of the Olé marks until after they filed the ITUs. Although Olé’s registrations provided constructive knowledge, that didn’t persuade the court of any bad intent.

Actual confusion: no evidence.

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

Unsurprisingly, then, the requested PI was denied.