Thursday, June 20, 2013

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 In re Tropicana Las Vegas, Inc., Serial No. 85450247 (June 4, 2013) [not precedential].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 no 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.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.


At 7:25 AM, Blogger Mark Graham said...

This is why I love Trademark Law and practice before the TTAB. Although seemingly more and more unpredictable, one has to credit just how really GOOD the Board is in trying to make a case like this one come out right by selectively deemphasizing what should be the centrally relevant analytical tool, like the so-called "Doctrine of Foreign Equivalents." It was not convenient in this case--a hinderance, really--and just one of the factors to consider. Of course, who can ever say how much weight will be placed on any particular factor? That's what makes it intellectually intriguing, and fun to watch!
But I was glad to see some observations about the true scope of a mark registered (or to be registered) in "standard character" font.
M Graham, Esq.

At 8:40 AM, Anonymous Anonymous said...

i swear they just flip a coin when making these decisions

At 9:20 AM, Anonymous Keith Danish said...

Am I the only one who sees "Nazi" imagery in the KISS Logo?

At 1:21 PM, Anonymous Anonymous said...

Probably a rare correct result that properly "applies" the doctrine of foreign equivalents. The one quibble i have is w/ the idea that, if BACIO were presented in the same font/stylization as the cited mark, I think three would be potential for confusion b/c the stylization/font of KISS is iconic and immediately recognizable among a significant segment of the population.

However, where the Board and USPTO consistently miss the boat is that this is merely a theoretical possibility, and the standard is "likeliood" of confusion. The likelihood standard should take into account how likely it is that the applicant would use the iconic font/stylization. It's highly unlikely if not preposterous to consider. The Board effectively reached that result here, but I don't agree w/ how they got there.

Keith, no, the Nazi imagery is purposeful - although Gene Simmons of Kiss is Jewish, and I believe one or more of his parents is a Holocaust survivor.

At 2:41 PM, Blogger John L. Welch said...

The CAFC's City Bank decision of a year or two ago requires the Board to consider a standard character mark in any font of style. The Board cannot limit that analysis to "reasonable" designs.

At 3:16 PM, Anonymous Anonymous said...

I do not see how this opinion reconciles with the Citibank decision of a year ago (or so). That is why I agree with all of the comments and especially the anonymous one that the Board must "flip a coin when making these decisions."

At 10:20 AM, Anonymous Anonymous said...

I agree, the SS in Kiss looks disturbingly like the Nazi SS. If you want to have a laugh do back an listen to Terry Gross' interview of Gene Simmons on Fresh Air.


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