Thursday, October 16, 2014

LA BOMBA and LA BAMBA Confusable for Cigars, Says TTAB

The Board affirmed a refusal to register the mark LA BOMBA, finding it likely to cause confusion with the registered mark LA BAMBA (Stylized), both for cigars. The Board took judicial notice of certain information from the Encyclopedia Britannica regarding "LA BAMBA" as the title of a Ritchie Valens song, but refused to do so with regarding to applicant's proffered entries from Wikipedia and from the Internet Movie Database (IMDb). In re Espinosa Cigars, LLC Serial No. 85772938 (October 3, 2014) [not precedential].

In its appeal brief, applicant asked the Board to take judicial notice of three references to the song "La Bamba," a traditional Mexican wedding song re-worked by Richie Valens into his "best remembered recording." As mentioned, the Board agreed to take judicial notice with regard to the Encyclopedia Brittanica entry. However, applicant did not establish that the IMDb is a standard reference worth or otherwise considered authoritative. As to the Wikipedia entry, that would have been acceptable had applicant offered it into the record at a time when the other party had an opportunity to rebut the evidence.

Ritchie Valens

Because the goods are identical, the Board presumed that they travel in the same, normal channels of trade to the same classes of consumers. Applicant argued that the relevant purchasers are "the most discriminating consumers" but offered no evidence to support that assertion. The Board observed that cigars "are not so expensive that we can assume consumers would necessarily exercise a higher level of care in purchasing."

The Board found the marks to be "extremely similar in sound and appearance." The stylization of the cited mark was of little significance, since the Board must assume that the applied-for mark could be depicted in the same stylization. As to pronunciation, there is no correct pronunciation of trademarks that are not easily recognizable English works. The two marks at issue would be verbalized in a similar manner.

Applicant maintained that the marks are distinguishable because of their different meanings. As translated from the Spanish. LA BOMBA means "the bomb." The Encyclopedia entry, as mentioned above, showed that LA BAMBA was a traditional Mexican wedding song that was popularized by Ritchie Valens decades ago. The Board was not impressed:

Although Spanish is commonly spoken language in the United States, this does not mean that cigar purchasers, or even a substantial composite of the consuming public, will understand the difference and distinguish the two marks based on their translated meanings. We keep in mind that the spellings of the two marks do not differ greatly and it is thus possible that a purchaser, who is unfamiliar with their Spanish meanings or who inadvertently does not notice the "O/A" letter difference, may mistakenly believe that Applicant’s mark is a reference to the Mexican folk song (or rock-and-roll song). Again, we must consider the possibility of word of mouth referrals such that, given the faint, if any, aural difference in the marks pronunciations, there may be confusion even if the connotations of the actual marks are different.

And so the Board affirmed the refusal.

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TTABlog comment: Rock on!

Text Copyright John L. Welch 2014.


At 10:16 AM, Anonymous Anonymous said...

Another proor decision from the TTAB. When two words have completely different meanings, they have completely different commercial impressions.

The Board should not be able to construct a likelihood of confusion decision on the fact that one letter difference between words with different meanings. See Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 U.S.P.Q. 641 (C.C.A.P. 1982) (BOSTON SEA PARTY was found not to be confusingly similar to BOSTON TEA PARTY).

At 12:39 PM, Anonymous Anonymous said...

They sound exactly the same.
For once, the Board got it right.
One letter can make a difference, but not a chance here.

At 1:16 AM, Anonymous Anonymous said...

Perhaps the applicant should refile for LA BOMBA ESSENTIALS...


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