TTABLog Test: Is "SUNSET SUSHI & Design" Confusable with "BANSHOO SUSHI BAR & Design" for Restaurant Services?

By my reckoning, the Board has affirmed about 85% of the Section 2(d) refusals it has reviewed on appeal this year. (That's a bit lower than usual.) Here, is the latest decision. The USPTO refused to register the mark SUNSET SUSHI & Design on the ground of likelihood of confusion with the registered mark BANSHOO SUSHI BAR & Design, for overlapping restaurant services. According to the cited registration, the English translation of "BANSHOO" is "SUNSET." How do you think this appeal came out? In re DBMG, LLC, Serial No. 90185762 (August 3, 2023) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Examining Attorney argued that the doctrine of foreign equivalent applies because BANSHOO translates as “sunset” from Japanese, and the average purchaser would stop and translate. Applicant DBMG contended that the doctrine should not be applied because there is no literal and direct translation of BANSHOO. DBMG relied on additional translation entries for BANSHOO from Japanese-words.org, on GOOGLE translate showing “nichibotsu” as the Japanese transliteration for “sunset”; on the English translation for “banshoo” on Google translate; and on the declaration of Andy Matsuda, a native Japanese speaker, who stated that the modern term for “sunset” is “nichibotsu,” not “banshoo.”

The Board observed that the doctrine of foreign equivalents generally has been applied when the wording in one mark is entirely in English and the wording in the other mark(s) is entirely in a foreign language. Here, the literal portion of the cited registration is a combination of a Japanese transliteration BANSHOO and the English words SUSHI BAR.

When terms in a mark are a combination of multiple or different languages, “[c]ourt[s] and the Board frequently have found that consumers would not ‘stop and translate’ marks comprised of [such] terms … often finding that the marks combine the different languages for suggestive purposes to create a certain commercial impression.” In re Taverna Izakaya LLC, 2021 USPQ2d 1134, at *10 (TTAB 2021) (finding the doctrine of foreign equivalents did not apply to the mark TAVERNA COSTERA — which combined the English word “Taverna” (found in the English dictionary) with the Spanish word “Costera”).

The Board therefore concluded that the doctrine of foreign equivalents does not apply in this case. "Consumers will not stop and translate the portion of Registrant’s mark that contains a Japanese transliteration, but will take the literal portion of Registrant’s mark BANSHOO SUSHI BAR in its entirety as it is."

The Board then turned to a comparison of the marks. It found the dominant literal term in DBMG’s mark to be SUNSET, since SUSHI is disclaimed, and the dominant literal term in registrant’s mark to be BANSHOO, since SUSHI BAR is disclaimed.

The dominant literal portions of Applicant’s and Registrant’s marks are dissimilar in sound, appearance, connotation and commercial impression. BANSHOO, when not translated, appears coined, giving Asian flair to Registrant’s mark, while SUNSET in Applicant’s mark is arbitrary in connection with restaurant and bar services.

The Board therefore found that the literal portions of the two marks differ in sound, appearance, connotation, and commercial impression.

As to the design elements in the marks, DBMG’s design gives the impression of an island sunset, which reinforces the term SUNSET in its mark. In registrant’s mark, the colors are claimed as a feature [so what? Applicant's mark could use the same color scheme - ed.], and the black and blue rectangular design element acts as a mere carrier for the wording BANSHOO SUSHI BAR. The incomplete orange circle could be viewed as a representation of the sun, either rising or setting (which could be seen as a reference to Japan which is known as the land of the rising sun), and to the cuisine of the restaurant, which is a sushi bar serving Japanese sushi.

The Board concluded that he additional design elements in the marks add to the different connotation and commercial impressions of the marks. Considering the marks in their entireties, the Board found them dissimilar

Deeming the first DuPont factor to be dispositive, the Board reversed the refusal to register.

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TTABlogger comment: Hmmm. Don't the design elements both suggest a sunset? Anyway, I agree with the decision.

Text Copyright John L. Welch 2023.