Wednesday, April 20, 2011

Finding TOVARICH Confusingly Similar to TVARSCKI for Vodka, TTAB Grants 2(d) Petition for Cancellation

Respondent failed to prove laches, lost the priority battle, and saw its registration for the mark TOVARITCH for vodka kick the ice bucket. The Board granted this Section 2(d) petition for cancellation in view of likely confusion with the registered mark TVARSCKI for vodka and gin. Luxco, Inc. v. Tovaritch & Spirits International SARL, Cancellation No. 92047201 (March 24, 2011) [not precedential].

Testimony stricken; Respondent dialed a wrong number when it took the testimony of its trial witness by telephone, with the witness in Switzerland and the court reporter in Ossining, New York, at the office of Respondent's attorney. The Board sustained Petitioner Luxco's objection, ruling that, when FRCP 28(b)(1)(C) says that "a deposition may be taken in a foreign country: on notice, before a person authorized to administer oaths," that means that the witness must be in the presence of the official recording the testimony.

Priority: As a sanction during discovery, Respondent was unable to contest priority, provided that Petitioner put in a prima facie case. Luxco did so by submitting its own registration, which pre-dated Respondent's filing date.

Laches: Respondent was required to show undue delay and resulting prejudice. The challenged registration issued on January 9, 2007. This proceeding was commenced two months later, on March 9, 2007. There was no evidence that Petitioner was aware of Respondent's use in the United States or its application to register prior to January 9, 2007. Therefore, Respondent failed to show undue delay.

Likelihood of Confusion: Because the goods overlap, the Board presumed that the parties' vodka travels in the same channels of trade to the same classes of consumers.

Since the goods are identical, a lesser degree of similarity is necessary to support a finding of likelihood of confusion. The Board observed that TVARSCKI is "an arbitrary or even fanciful mark," with no dictionary definition or translation. "[N]or is it apparently a surname."

Comparing the two marks, we find that both are arbitrary marks beginning with an unusual “TVAR” or “TOVAR.” Both have a Russian “look and feel.” As to the sound, it is well-settled that there is no correct pronunciation of a trademark. In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984). Accordingly, we find it plausible that consumers will pronounce these marks similarly. Certainly, the beginnings of the marks appear to be quite similar.

The Board concluded that the dissimilarities in sight and sound are outweighed by the similarities in commercial impression.

Balancing all the factors, and resolving doubt in favor of the prior registrant, the Board granted the petition for cancellation.

TTABlog comment: I continue to maintain that sometimes there is a correct pronunciation of a trademark. Examples: BLACK CAT for fireworks, APPLE for computers, TTABLOG ... oh, forget that one. Anyway, I don't see how TOVARICH and TVARSCKI can be pronounced similarly.

Text Copyright John L. Welch 2011.


At 8:20 AM, Anonymous Anonymous said...

"I don't see how TOVARICH and TVARSKI can be pronounced similarly."

You don't have a Russian, Polish, Czech, Ukrainian, Belarusian, Silesian,Slovak, Slovene, Serbo-Croatian, Bulgarian or Macedonian last name.

If you did, you would know that most people take a look at your name, make a stab at pronouncing the first few letters, and consider that correct enough.

At 4:39 PM, Anonymous Anonymous said...

I have a typical Russian last name, and people generally pronounce it just fine, except for telemarketers. The word TOVARICH is actually quite known, meaning "comrad" in Russian. I am bilingual and I fail to see how the two marks look or can be pronounced similarly in either language. I don't know the parties and I did not know about this case till now.


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