Thursday, January 06, 2005

TTAB Finds Confusion Unlikely Between "SPANGLE" and "PAILLETTES"

Applicant Derma Sciences, Inc. completed a successful end run around the doctrine of foreign equivalents, convincing the Board to reverse a Section 2(d) refusal of the mark SPANGLE for various bath and cosmetic products. The Board found the mark not likely to cause confusion with the registered mark PAILLETTES for toilet soaps, perfumes, and similar products. In re Derma Sciences, Inc., Serial No. 78127417 (December 22, 2004) [not citable].
The Examining Attorney contended that, since the subject goods are legally identical and the registration indicates that PAILLETTES is translated as "gold dust, spangle," a likelihood of confusion existed in view of the doctrine of foreign equivalents.

Derma Sciences argued that the doctrine is not an absolute rule and that the marks SPANGLE and PAILLETTES are not exact equivalents. It pointed to various dictionary entries translating PAILLETTES as, for example, a "scrap of gold one finds in sands," a "small sliver of a shiny material used to decorate fabrics, certain clothing," and as sequins, spangles, speck, and flake. Derma Sciences contended that “where the foreign word is capable of several translations, there can be no similarity in connotation." Moreover, consumers are not likely to translate PAILLETTES into English in view of the word’s suggestion of “the allure of the French lifestyle.” And even if the mark PAILLETTES were translated into an English word, it is so different in sound and appearance from SPANGLE that confusion is unlikely.

The Board agreed with Derma Sciences, observing that "any similarity in connotation must be weighed against dissimilarity in appearance and pronunciation as well as other factors before reaching a conclusion on the question of likelihood of confusion." Noting that SPANGLE and PAILLETTES are not exact foreign equivalents, that the word "paillette" appears in English language dictionaries and thus need not always be translated by a consumer, and that the words are "totally different in sound and appearance," the Board reversed the refusal.

In this writer’s view, the appearance of the word “paillettes” in English language dictionaries tipped the scale in favor of Derma Sciences. One might note that the Board cited Webster’s Third New International Dictionary of the English Language (Unabridged), 1993, which perhaps has more of an "international" bent than other English dictionaries. However, the link immediately above to the The American Heritage Dictionary of the English Language: Fourth Edition, 2000, and the "paillettes" website link further support the Board’s position.


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