Thursday, September 30, 2010

Test Your TTAB Judge-Ability: Are These Two "CEMENTO & Design" Marks Confusingly Similar for Clothing?

Applicant Mario Dimiccoli sought to register the mark shown on the left, for various clothing items. The mark was refused registration under Section 2(d) in view of the registered mark shown on the right, for overlapping clothing items. Dimiccoli appealed. Would you affirm or reverse? In re Dimiccoli, Serial No. 79059011 (September 24, 2010) [not precedential].

The Board first considered the question of "whether the doctrine of foreign equivalents is applicable."

In this case, it is inappropriate and unnecessary to invoke the doctrine of foreign equivalents. Both marks consist of wording in English and Italian. However, the foreign wording in each mark is unlikely to be translated.

Moreover, even if the foreign wording is translated, "the identical portions of the two marks is CEMENTO, which means 'cement' in Italian and looks very much like the English word 'cement.' *** As a result, our analysis of the similarity or dissimilarity between the marks is analogous regardless of whether the marks are likely to be translated."

The Board found that the marks in their entireties were "notably dissimilar in appearance and sound." As to overall commercial impression, "the term CEMENTO in each mark may convey the notion that the clothing items in question are durable and strongly made. However, if the CEMENTO ARMATO portion of applicant’s mark is perceived as a name, this connotation is unlikely to occur to viewers of applicant’s mark. Thus, the possible suggestion of durability present in registrant’s mark and perhaps present in applicant’s mark is not sufficient to overcome the differences in their appearance, sound and, to some viewers, their connotation."

And so the Board found no likelihood of confusion, and it reversed the refusal.

TTABlog commento: I see no concrete reason why the word CEMENTO wouldn't stick in the mind of the consumer and thus cause confusion. What about the oft-cited rule that marks are not to be compared side-by-side? Of course, when you put the marks next to each other the differences are apparent. But what if you saw one mark today and the other a week from today? I think the CEMENTO part would catch your eye.

Text Copyright John L. Welch.


At 11:55 AM, Blogger Unknown said...

I disagree with the Board's ruling here, given the nature of the goods. In the fashion arena, there are myriad marks containing the same term, in various forms, all from the same clothing house. Exs: ARMANI, ARMANI EXCHANGE, and GEORGIO ARMANI, all from the same company, and BOSS and HUGO BOSS from the same company. Arguably, the prominent word portions of CEMENTO & Design and CEMENTO ARMATO JEANS & Design could reasonably be perceived as originating from the same company. Too close for comfort, unless it can be established that "cemento" somehow is merely descriptive of the goods here.

At 3:12 PM, Anonymous Anonymous said...

I made a guess, then read the decision.

I guessed wrong.

CEMENTO is the clear primary portion. The associated designs are more ornamentation than a mark.


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