TTAB Reverses 2(d) Refusal of BACIO: Not Confusable with KISS for Restaurant Services
The Board reversed a Section 2(d) refusal to register the mark BACIO for hotel, bar, and restaurant services, finding it not likely to cause confusion with the mark KISS & Design, shown below, for restaurant and coffee house services. Although the application stated that the English translation of the Italian word "bacio" is "kiss," the Board found dispositive the differences in sound, appearance, and overall commercial impression. In re Tropicana Las Vegas, Inc., Serial No. 85450247 (June 4, 2013) [not precedential].
Applicant argued that its restaurant is "an Italian trattoria in [a] Las Vegas hotel featuring white linens and fresh flowers," whereas the cited mark "signifies the iconic rock band Kiss and is used in connection with Kiss-themed coffeehouses and/or casual restaurants decorated with neon lights and Kiss memorabilia." The Board, however, pointed out for the umpteenth time that it cannot consider such distinctions because they are not reflected in the subject application or cited registration. Therefore, the involved services are considered in part identical, and this duPont factor favored a finding of likely confusion.
As to the marks, they have no visual similarity to each other. The Board noted that Applicant's standard character mark might be used in any font, size, style or color, but "even if applicant’s mark were displayed in a style of lettering highly similar to that of registrant’s mark, the two marks would still not be visually similar." With regard to sound, the Board saw no similarity between the marks, "regardless of whether applicant’s mark is pronounced as an Italian word or in any likely alternative pronunciation."
Applicant argued that "bacio" has other meanings in other languages, such as Portuguese, Croatian, Serbian, Spanish and Latin. But even if true, that does not make the Italian significance irrelevant: those who understand the Italian meaning of BACIO are not immune from confusion by the fact that others may translate BACIO differently.
Applicant also contended that the doctrine of foreign equivalents should not be applied because the PTO failed to show that an appreciable number of consumers would "stop and translate" the mark. The Board noted that it has frequently applied the doctrine to Italian terms with little or no discussion regarding how many Americans speak the language. And even if, as Applicant asserted, only 0.384% percent of the U.S. population speaks Italian at home, that would still amount to more than one million people. The Board therefore saw not reason to ignore the English meaning of BACIO.
The Board, however, perceived a "meaningful distinction" in the overall commercial impressions of the two marks, even though both "bacio"and "kiss" suggest "a loving or affectionate gesture." It observed, however, that the cited mark
contains suggestions that run contrary to the impression of a loving or affectionate gesture. The stylized lettering is jagged, aggressive, and perhaps threatening. The stylized letters SS suggest lightning bolts and the style of the mark creates an impression that, when combined with the standard meaning of "kiss," is incongruous. Such incongruity is absent from applicant’s mark. Accordingly, we find the overall commercial impressions created by the two marks to be quite different.
The Board concluded that the dissimilarities in sound, appearance, and overall commercial impression outweighed the similarity in meaning, and so it reversed the refusal.
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Text Copyright John L. Welch 2013.