TTABlog Test: Is STEED COMPANY Confusable with CORCEL for Clothing?

The USPTO refused to register the mark STEED COMPANY for "Men’s clothing, namely, t-shirts and sweatshirts, outerwear, namely hats" [STEED disclaimed], finding confusion likely with the registered mark CORCEL for "Bottoms as clothing; Footwear; Headwear; Jackets; Tops as clothing." The English translation of CORCEL (Portuguese) is "steed." Applicant argued that "steed" is a weak term for clothing, based on three third-party registrations, and that the doctrine of equivalents is just a guideline that doesn't apply here. How do you think this came out? In re Steed Company LLC, Serial No. 98002385 (March 20, 2025) [not precedential] (Opinion by Judge Robert Lavache).

The Board found the involved goods to be overlapping, and so the second DuPont factor weighed "strongly" in favor of affirmance. [Why strongly? - ed.]. As to the legally identical goods, the Board "must presume that the relevant trade channels and classes of purchasers are the same."

As to the conceptual strength of the cited mark CORCEL, applicant pointed to three registrations for marks containing the word STEED for clothing: FIRESTEED, FOURSTEEDS, and YLSTEED. The Board found these marks too few in number and too different in their commercial impression to prove "that the term STEED has a normally understood and well-recognized descriptive or suggestive meaning in connection with clothing." Applicant also cited dozens of registrations for marks containing the word HORSE, but the Board, while noting that a steed is a horse, pointed out that the terms at issue are STEED and CORCEL, not HORSE.

As to the commercial strength of the CORCEL mark, applicant did not submit any evidence of third-party marketplace usage of either CORCEL or STEED. The third-party registration evidence did not establish "that the relevant consuming public has been exposed to widespread use of similar marks in connection with clothing."

As to the marks, Examining Attorney Henry Urban argued that, when the doctrine of foreign equivalents is applied, "the overall commercial impression of the applied-for mark created by its dominant feature [STEED] is similar to . . . the registered mark [CORCEL]." The Board agreed with the applicant that "while words from modern languages are generally translated into English, the doctrine of foreign equivalents has evolved into a guideline, not an absolute rule, and is applied only when it is likely that 'the ordinary American purchaser would 'stop and translate' [the term] into its English equivalent.'"

1973 Ford Corcel

Applicant argued that the doctrine should not apply, but did not explain why. The Board noted the evidence indicating that “Portuguese is the eleventh most commonly spoken non-English language in the USA," and so concluded that the involved marks "are likely to be encountered by American purchasers who are proficient in Portuguese and would actually translate CORCEL into its English equivalent, STEED."

There was no evidence that CORCEL is the type of foreign term that consumers will simply accept on its face without translating it, Cf. Tia Maria, 1975 TTAB LEXIS 130, at *4, nor evidence "that STEED, whether in English or Portuguese, has any demonstrated meaning or significance in the context of clothing."

The Board ruled that the similarity between the marks in terms of their equivalent meaning and connotation outweighed the differences in sound and appearance. And so, the Board affirmed the refusal to register.

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Text Copyright John L. Welch 2025.