Applying Doctrine of Foreign Equivalents, TTAB Finds TATTOO and TATUAJE Confusingly Similar for Cigars
After several interlocutory rulings, the only issues left to decide in this Section 2(d) opposition were the similarity of the marks and the final determination of likelihood of confusion. The Board found the mark TATTOO for cigars and related goods likely to cause confusion with the registered mark TATUAJE for cigars. Applying the doctrine of foreign equivalents, it concluded that Opposer's mark would be translated to "tattoo" by American purchasers familiar with Spanish. Tatuaje Cigars, Inc. v. Nicaragua Tobacco Imports, Inc., Opposition No. 91185180 (November 22, 20101) [not precedential].
Opposer contended that "tatuaje" is a Spanish word the translates directly to TATTOO in English. Applicant Nicaragua argued that the doctrine of foreign equivalents does not apply because there was no evidence that consumers would "stop and translate" TATUAJE, and further that the words "tattoo" and "tatuaje" each have other meanings. According to one Spanish dictionary, "tatuaje" means "a circle or mark that is left around the wound from a gun fired in very close proximity." The word "tattoo" may also mean "a rapid rhythmic rapping" and "a call sounded shortly before taps."
The Board observed that the doctrine of foreign equivalents is applied when it is likely that the ordinary American purchaser would "stop and translate" the mark into its English equivalent. For this purpose, the purchaser is one who is knowledgeable in Spanish. [Query: If the purchaser knows Spanish, why would he or she bother to translate the word into English? Wouldn't he or she just understand the word as it is? -ed.]
Opposer's expert witness testified that "tatuaje" is a common Spanish word meaning an "engraving under the skin," and that she was not aware of other meanings of that word or of the English word "tattoo." Based on her testimony, the Board concluded that Applicant's alternative meanings were too obscure to have any impact on the equivalency issue. In particular, the Board snuffed out Applicant's imaginative argument regarding the alternative meaning of "tatuaje:"
[T]he record does not establish that "the common experience of smokers being burned by lit cigars, would tend to create an impression in the mind of consumers of the translated meaning of 'tatuaje' as being a gun powder burn on the skin." *** We find it more likely that Spanish-speaking cigar smokers, like any other person, would immediately perceive the meaning of “tattoo” when presented with a cigar under the mark TATUAJE.
And so the Board concluded that TATUAJE and TATTOO are equivalent in meaning. This identity in connotation was sufficient for the Board to conclude that confusion is likely, despite the differences in appearance and sound between the two marks.
The Board also found that the mark TATUAJE would be translated by those familiar with Spanish, because there was "no compelling evidence that the mark would not be translated because of marketplace circumstances or the commercial setting in which the mark is used." [Query: Isn't the fact that the goods are cigars a "circumstance" that would suggest that the word would not be translated, given the popularity of Cuban cigars? -ed.].
Finally, Nicaragua made a hopeless argument about the pronunciation of the Spanish word "tatuaje," but as usual the Board pointed out that there is no correct pronunciation of a trademark. [Query: What about APPLE for computers? BLACK CAT for firecrackers? TTABlog for ..... ah, forget it.]
And so the Board sustained the opposition.
TTABlog comment: I think the "stop and translate" concept makes little sense. My test would be this: first, is the language in question in common use in the USA?; second, if so, would a person familiar with that language recognize the foreign language mark as having the same meaning as the English language mark at issue? No "translation into English" would be involved. What do you think? The problem is that my test would not jibe with decisions like Tia Maria.
For a critique of the doctrine of foreign equivalents, see the article by Serge Krimnus, entitled , "The Doctrine of Foreign Equivalents at Death's Door," North Carolina Journal of Law & Technology, Vol. 12, Issue 1: Fall 2010.
Text Copyright John L. Welch 2011.