Monday, August 29, 2011

Test Your TTAB Judge-Ability: Are "LES COLLINES" and "HILLS VINEYARD" Confusingly Similar for Viticulture Services?

The French term "Les Collines" translates into English exactly as "The Hills." Applicant sought to register the mark LES COLLINES for "“vineyard and winery services, namely, the cultivation of grapes for others; [and] viticulture services, namely, grape growing and cultivation of grapes for others," but the PTO refused registration under Section 2(d) in view of the registered mark HILLS VINEYARD for, inter alia, "viticulture services, namely, grape growing and cultivation of grapes for others" [VINEYARD disclaimed]. Does the doctrine of foreign equivalents apply? And how would you rule? In re Les Collines, LLC, Serial No. 77871104 (August 19, 2011) [not precedential].

The Board observed that, as to sound and appearance, "there is nothing even remotely similar between the marks." But what about meaning and overall commercial impression?

Foreign Equivalents: The question of whether to apply the doctrine of foreign equivalents was "at the heart" of the appeal.

Although 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." Palm Bay Import, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1696, quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976).

Applicant argued that purchasers are not likely to translate LES COLLINES because of the manner in which the terms are encountered in the "unique marketplace environment of vineyards, wineries and viticulture," where foreign names abound and purchasers of the involved services are sophisticated. The Board appreciated the "potential merit" in Applicant's argument, but found that its evidence fell short.

[A] mere single declaration of applicant (not exactly an unbiased source) is not enough to persuade us that wineries and winemakers would not stop and translate applicant’s mark. *** [W]e think it is plausible that these purchasers are just as likely to stop and translate applicant’s mark, if not more likely. We say this given their degree of exposure to foreign terms in the wine industry.

Commercial Impression: The Board found that the marks "engender overall commercial impressions that are completely different. Moreover, "the differences between the marks in sound, appearance and overall commercial impression clearly outweigh the similarity in meaning when the doctrine of foreign equivalents is applied."

Other Factors: The Board found "hills" and "hill" to be suggestive in the wine industry and, therefore, weak formatives, a factor that buttressed Applicant's position.

[Applicant's witness] explained the importance of the “terroir” (comprising climate, soil type, topography and elevation) of a vineyard as it impacts the quality and characteristics of grapes grown for winemaking. According to Mr. McKibben, vineyards are often planted on hillsides due to advantages to such a location.

Website evidence showed that "hills" is often used in connection with wineries: "Given the importance of hills in growing grapes for wine, it comes as no surprise that wineries have a fondness for using the terms 'hill' or 'hills' as a component of their names and/or trademarks, or as a component of their names for particular vineyards."

Moreover, the purchasers of the services are "highly sophisticated, " and the purchasing process "typically involves a complicated and informed decision, certainly not made on impulse."

Weighing the relevant duPont factors, the Board ruled that confusion is unlikely, and it reversed the refusal to register.

Text Copyright John L. Welch 2011.


At 2:05 PM, Anonymous Anonymous said...

Interestingly, the Board did not address applicant's emphatic argument that in Palm Bay, both the Board and the Federal Circuit found that ordinary purchasers of sparkling wine would not stop and translate "Veuve Cliquot". So why would winemakers and winery owners stop and translate "Les Collines" when used as a vineyard name? Too bad the Board didn't even address this argument. Doing so would have shed light on when people will and will not stop and translate, at least in the wine industry.

At 5:01 PM, Blogger John L. Welch said...

I agree with you. In any case, even if you did not apply the doctrine of equivalents and did did not translate, Applicant would have won. So was the doctrine of equivalents really at the heart of the decision?

At 10:42 AM, Anonymous Orrin A. Falby said...

@John. I think the EA made the doctrine of foreign equivalents the basis for his refusal. Too often the doctrine is not properly applied and is given ALL of the weight in the analysis, so Applicants are left defending against the doctrine to the hilt. The fact is whenever you have a foreign language term involved, the application of the doctrine is appropriate. However, like you said, how much weight should it be given in the analysis and is it outweighed by the other factors. Afterall, the doctrine should only be applied to the meaning element in the first du Pont factor.


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