## Facts

- Borinquen Biscuit Corp. manufactured and sold a round, yellowish, semi-sweet *galleta* in Puerto Rico under the federally registered mark “RICA,” used in the market since the 1960s through Borinquen and its predecessor.
- “Rica” is a Spanish word that may be translated as “rich,” but Borinquen was the only company using “rica” in connection with *galletas* in Puerto Rico before the dispute.
- Borinquen’s product was sold in predominantly red-and-white packaging featuring a circular “Galletas RICA Sunland” logo and images of the *galletas*.
- In 2003, M.V. Trading Corp. began importing and selling a competing round, yellowish, salty *galleta* labeled “Nestlé Ricas,” with packaging also predominantly red-and-white and featuring “Ricas” prominently along with Nestlé branding.
- Both products were sold to the same general consumers through Puerto Rico supermarkets and convenience stores, often in close proximity on shelves.
- Borinquen demanded that M.V. stop using “Ricas”; M.V. refused.
- Borinquen sought injunctive relief for trademark and trade dress infringement; at the preliminary-injunction hearing it did not offer evidence of actual consumer confusion.

## Issues

1. Whether the “RICA” mark for *galletas* was sufficiently distinctive and protectable for infringement purposes.
2. Whether M.V.’s use of “Ricas,” together with similar packaging for closely related goods sold through the same channels, created a likelihood of consumer confusion.
3. Whether the district court properly granted a preliminary injunction based on likelihood of success, irreparable harm, balance of hardships, and the public interest.

## Decision

- The First Circuit affirmed the preliminary injunction.
- The court held the district court did not abuse its discretion in concluding that Borinquen’s “RICA” mark was protectable in the relevant market.
- The court upheld the finding of likely confusion based on similarity of the marks, similarity of the products, and overlap in channels of trade and customers, despite the absence of proof of actual confusion.
- The court accepted the district court’s determinations that likely confusion supported irreparable harm, that hardships favored Borinquen, and that the injunction served the public interest in avoiding consumer confusion.

## Legal Principles

- A registered mark used for decades with largely exclusive marketplace use may be treated as moderately strong and protectable in its product category even if the term has a common foreign-language meaning.
- Likelihood of confusion may be found from overall similarity in sight, sound, and commercial impression, evaluated together with proximity of the goods and overlap in channels of trade and consumers.
- Proof of actual confusion is not required to show likely confusion, particularly at the preliminary-injunction stage.
- In trademark cases, a strong showing of likely confusion can support a finding of irreparable harm because injury to goodwill and loss of control over a mark are difficult to quantify.
- A preliminary injunction may be tailored to prohibit use of an infringing mark without barring the defendant from selling the product under a different, non-confusing designation, and preventing consumer confusion serves the public interest.

## Conclusion

The First Circuit upheld preliminary injunctive relief barring M.V. from using “Ricas” for *galletas* in Puerto Rico because Borinquen showed a protectable interest in “RICA” and a strong likelihood that similar marks and packaging for closely related products sold in the same outlets would confuse consumers.


Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112 (1st Cir. 2006)