TTAB Test: Is 100 PERCENT WINE Confusable with CENTO PER CENTO for Wine?
The USPTO refused registration of the mark 100 PERCENT WINE, finding it likely to cause confusion with the registered mark CENTO PER CENTO, both for wine. The English translation of the Italian term is '100 percent.' Applicant argued that 99.7% of Americans who are old enough to purchase wine do not speak Italian, and therefore the average American purchaser would not stop and translate the mark into English. How do you think this came out? In re Big Heart Wine, LLC, Serial No. 86376188 (January 20, 2017) [not precedential].
The Board found no need to determine whether Italian is familiar to an appreciable segment of American consumers. The doctrine of equivalents applies to "words from common, modern languages." The doctrine has been applied to Italian terms in a number of Board rulings. In any case, applicant's own evidence showed that Italian is a common, modern language. As of 2007, nearly 800,000 Americans spoke Italian.
Applicant next argued that consumers will translate a familiar foreign word only when the word is descriptive of the goods. However, it cited no authority for that proposition, and the Board found none.
The Board observed that applying the doctrine of equivalents to discern the meaning of the foreign term is only part of the Du Pont analysis. The Board must also consider the similarity or dissimilarity of the marks in appearance, sound, and all other Du Pont factors.
Here, the Board found applicant's mark 100 PERCENT WINE to be similar in appearance and sound to CENTO PER CENTO, since PERCENT sounds like PER CENTO. CENTO PER CENTO is conceptually strong as a trademark. Of course, the goods are identical and the Board must presume that they travel through the same channels of trade to the same classes of consumers.
Finally, applicant argued that the goods would be purchased by sophisticated consumers, but the identifications of goods were not limited to fine wines offered at high prices to consumers with specialized knowledge and discerning palates.
And so the Board affirmed the refusal to register.
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TTABlog comment: Was the Board 100 percent correct?
Text Copyright John L. Welch 2017.