Thursday, November 29, 2007

"PECORA NERA" and "BLACK SHEEP" Confusingly Similar for Clothing, Says TTAB

Applying the doctrine of foreign equivalents, the Board affirmed a Section 2(d) refusal to register the mark PECORA NERA for various clothing items. It found the mark likely to cause confusion with the registered mark BLACK SHEEP for some of the same clothing items. In re Ing. Loro Piana & C.S.p.A., Serial No. 79014582 (November 7, 2007) [not precedential].

Applicant included in its application a translation of the Italian words "pecora nera" as "black sheep." The Board ruled that the doctrine of foreign equivalents applies because Italian is "a common, major language in the world, and is spoken by many people in the United States," and the ordinary American purchaser who is knowledgeable in Italian would translate the mark to the English term "black sheep."

Applicant, however, contended that the term "black sheep" has a figurative meaning in English while the term "pecora nera" has no figurative meaning in Italian. The Board found two problems with that argument: first, there was no evidence that "pecora nera" lacks an idiomatic meaning in Italian; and second, English/Italian dictionary definitions (of which the Board took judicial notice) "shows that 'pecora nera' in Italian and 'black sheep' in English have the same literal and idiomatic meanings."

The Board concluded that "[w]hile the marks differ in sound and appearance, the identity in connotation (both literal and figurative) is sufficient to support a finding of likelihood of confusion, especially as used in connection with identical clothing items."

TTABlog comment: The Board cited In re Thomas, 79 USPQ2d 1021 (TTAB 2006) for the proposition that the "ordinary American purchaser" in this context is the ordinary American purchaser who is knowledgeable in the foreign language. Yet in the Palm Bay case, the CAFC said that the ordinary American purchaser would not translate the French word "veuve" into the English word "widow." As I asked in the TTABlog posting regarding In re Thomas (here), how are these two cases to be reconciled? French is surely a "common, major language in the world, and is spoken by many people in the United States." So if the "average American purchaser" who knows Italian would translate "pecora nera" into English, why wouldn't the average American purchaser who knows French translate "veuve" into widow? Or to put it another way, if not the latter, why the former?

Text Copyright John L. Welch 2007.


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