TTABlog Test: Is BLACK BELT Confusable with KURO-OBI for Restaurant Services?

The USPTO refused to register the proposed mark BLACK BELT for, inter alia, "restaurant," finding confusion likely with the registered marks KURO-OBI and the Japanese characters for KURO-OBI for, inter alia, "restaurants." The second and third DuPont factors - similarity of the services and overlap of the channels of trade/classes of consumers - weighed heavily in favor of affirmance of the refusal. Applicant Samjen argued that the doctrine of foreign equivalents should not apply because "it is unlikely that a consumer would translate the mark due to the marketplace circumstances or the commercial setting in which the mark is used." How do you think this came out? In re Samjen of Tampa, Inc., Serial No. 90501155 (July 11, 2023) [not precedential] (Opinion by Judge Christen M. English).

The Board acknowledged that Samjen’s mark and the cited marks are distinct in appearance and sound. Examining Attorney Andrew Janson argued that, when the doctrine of foreign equivalents is applied, confusion is likely because the marks have the same meaning and commercial impression. The Board observed:

“The doctrine of foreign equivalents is not an absolute rule and should be viewed merely as a guideline,” applied “only when it is likely that the ordinary American purchaser would ‘stop and translate [the word] into its English equivalent.”’ Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). The "ordinary American purchaser" includes purchasers “knowledgeable in the foreign language,” here, Japanese.

Samjen did not dispute that Japanese is a common modern language. Nor did it dispute that BLACK BELT "is a direct translation of the Japanese word KURO-OBI (or the phonetic equivalents KUROOBI and KURO OBI) and the [Japanese] characters [] , of which the transliteration is KURO-OBI."

Samjen argued that this case is analogous to In re Tia Maria, Inc., 188 USPQ 524 (TTAB 1975), in which the Board reversed a refusal to register TIA MARIA for restaurant services based on a likelihood of confusion with the mark AUNT MARY’S registered to one entity for canned fruit and another entity for canned vegetables and canned fruit. The Board took into consideration the context in which consumers would encounter the respective marks: "it is unlikely to expect that a person encountering “AUNT MARY’S” canned fruits and vegetables in a supermarket or other establishment where goods of this type are customarily sold would translate “AUNT MARY’S” into “TIA MARIA”, and then go one step further and associate these food products with applicant’s restaurant." Likewise, a restaurant customer would not translate "TIA MARIA" into "AUNT MARY" and then associate the services with food products.

Here, in contrast to Tia Maria, Samjen's and registrant’s services are legally identical, and the Board "must presume that they will be encountered by some of the same purchasers in the same trade channels such that consumers are likely to view the in-part legally identical services as emanating from a common source, marketed under marks that are foreign language equivalents."

Moreover, consumers are likely to make the translation because registrant, on its menus, translates KURO OBI as BLACK BELT. Many of registrant's dishes are named after the various colors of martial arts belts. Registrant’s storefront depicts a black belt next to the mark KURO-OBI, and the store counter bears the words BLACK BELT underneath the design of a belt in black font or etching. These translations increase the likelihood that consumers will translate KURO OBI and the Japanese characters to BLACK BELT.

Even if Samjen's mark and the cited marks were used for non-Japanese restaurants, "it is likely that both marks would carry [the same] connotation because it suggests 'expert' or high quality restaurant services and food." The Board therefore found that the subject marks have the same meaning and create the same commercial impression

As to Samjen's argument that the differences between the marks in appearance and sound are sufficient to distinguish the marks, the Board disagreed: "Because BLACK BELT is a direct and unambiguous translation of the cited marks and the services are identical, in part, we find that the equivalency in meaning outweighs those differences.

And so, the Board affirmed the refusal to register.

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Text Copyright John L. Welch 2023.