Monday, April 14, 2008

"CINQUANTE-CINQ" and "55" Confusingly Similar for Wine, Says TTAB, Equivalently

There was no equivocation in the Board's application of the doctrine of foreign equivalents to find the mark shown immediately below likely to cause confusion with the registered mark CINQUANTE-CINQ, both for wine. Applicant unsuccessfully argued, based on its interpretation of the CAFC's decision in Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689 (Fed. Cir. 2005), that the average American purchaser would not "stop and translate" the French term into its English equivalent, the number "55." In re SAS Lataste, Serial No. 79015771 (March 28, 2008) [not precedential].

Examining Attorney Leigh A. Lowry maintained that the registered mark translates from French to English precisely as "Fifty-Five," and that the dominant portion of Applicant's mark is the numeral "55." Citing In re Thomas, 79 USPQ2d 1021 (TTAB 2006) [TTABlogged here], the Examining Attorney contended that the ordinary purchaser in the USA "who is knowledgeable in the foreign language" will translate the term "cinquante-cinq" into its English equivalent.

Applicant argued that it would be inappropriate to invoke the doctrine of foreign equivalents here, and in any case that the marks, when considered in their entireties, are not confusingly similar.

The Board observed once again that, when identical goods are involved, a lesser degree of similarity between the mark is required to establish a likelihood of confusion. The dictionary evidence, as well as the translation statement printed on the cited registration, established that the only translation of "cinquante-cinq" is the number "fifty-five."

Applicant agreed that, under the doctrine of foreign equivalents, foreign words from common languages are usually translated into English to determine likely confusion. However, "when it is unlikely that the average American consumer will translate the foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied." In support, Applicant cited In re Tia Maria Inc., 188 USPQ 524 (TTAB 1975), in which the Board found it unlikely that a purchaser would translate TIA MARIA into "Aunt Mary" when dining at the TIA MARIA restaurant "surrounded by Mexican decor and Mexican food."

The Board, however, found "nothing to indicate that the cited mark will not be translated." [TTABlog comment: what if the term CINQUANTE-CINQ appears on a bottle of French wine? Isn't that like the mark TIA MARIA being used for Mexican restaurant services?]

Applicant pointed to the CAFC's (confusing) discussion of the doctrine of foreign equivalents in Palm Bay, in which the appellate court seemed to say that the average American purchaser would not "stop and translate" the French word "veuve" into the English term "widow." The Board rejected that interpretation of Palm Bay, insisting, as it did in its recent precedential ruling in In re Spirits International N.V., 86 USPQ2d 1078 (TTAB 2008) [TTABlogged here], that the CAFC "did not address the definition of the 'ordinary American purchaser'" but merely identified "contradictory findings by the Board." In short, the Board found the ordinary American purchaser to be a person "knowledgeable in French."

Turning to a comparison of the marks, the Board quickly dismissed Applicant's argument that the PTO had improperly dissected the marks. The Board found, not surprisingly, that the number 55 dominates Applicant's mark. Although there are obvious differences between the marks, they have "quite similar connotations and commercial impressions." Weighing "all the types of similarities and dissimilarities" in the two marks, the Board found this factor to weigh in favor of the PTO's position.

Finally, the Board noted that Applicant is a French company, making it "even more likely" that consumers would assume a common source for the goods at issue. [TTABlog comment: this point seems rather dubious. Suppose the 55 mark is used by a non-French licensee for non-French wine?]

TTABlog further comment: Would a purchaser knowledgeable in French translate into English a French term on a French bottle of wine? I have my doubts. Of course, the cited registration is not limited to French wine, so that is not a proper question here.

I think the Board got this one right. But by the same token, I think its point about Applicant being a French company is wrong, just like it would be wrong to assume that the cited mark is used on French wine.

Text Copyright John L. Welch 2008.


Post a Comment

<< Home