Tuesday, December 06, 2011

Applying Doctrine of Foreign Equivalents, TTAB Finds TATTOO and TATUAJE Confusingly Similar for Cigars

After several interlocutory rulings, the only issues left to decide in this Section 2(d) opposition were the similarity of the marks and the final determination of likelihood of confusion. The Board found the mark TATTOO for cigars and related goods likely to cause confusion with the registered mark TATUAJE for cigars. Applying the doctrine of foreign equivalents, it concluded that Opposer's mark would be translated to "tattoo" by American purchasers familiar with Spanish. Tatuaje Cigars, Inc. v. Nicaragua Tobacco Imports, Inc., Opposition No. 91185180 (November 22, 20101) [not precedential].

Opposer contended that "tatuaje" is a Spanish word the translates directly to TATTOO in English. Applicant Nicaragua argued that the doctrine of foreign equivalents does not apply because there was no evidence that consumers would "stop and translate" TATUAJE, and further that the words "tattoo" and "tatuaje" each have other meanings. According to one Spanish dictionary, "tatuaje" means "a circle or mark that is left around the wound from a gun fired in very close proximity." The word "tattoo" may also mean "a rapid rhythmic rapping" and "a call sounded shortly before taps."

The Board observed that the doctrine of foreign equivalents is applied when it is likely that the ordinary American purchaser would "stop and translate" the mark into its English equivalent. For this purpose, the purchaser is one who is knowledgeable in Spanish. [Query: If the purchaser knows Spanish, why would he or she bother to translate the word into English? Wouldn't he or she just understand the word as it is? -ed.]

Opposer's expert witness testified that "tatuaje" is a common Spanish word meaning an "engraving under the skin," and that she was not aware of other meanings of that word or of the English word "tattoo." Based on her testimony, the Board concluded that Applicant's alternative meanings were too obscure to have any impact on the equivalency issue. In particular, the Board snuffed out Applicant's imaginative argument regarding the alternative meaning of "tatuaje:"

[T]he record does not establish that "the common experience of smokers being burned by lit cigars, would tend to create an impression in the mind of consumers of the translated meaning of 'tatuaje' as being a gun powder burn on the skin." *** We find it more likely that Spanish-speaking cigar smokers, like any other person, would immediately perceive the meaning of “tattoo” when presented with a cigar under the mark TATUAJE.

And so the Board concluded that TATUAJE and TATTOO are equivalent in meaning. This identity in connotation was sufficient for the Board to conclude that confusion is likely, despite the differences in appearance and sound between the two marks.

The Board also found that the mark TATUAJE would be translated by those familiar with Spanish, because there was "no compelling evidence that the mark would not be translated because of marketplace circumstances or the commercial setting in which the mark is used." [Query: Isn't the fact that the goods are cigars a "circumstance" that would suggest that the word would not be translated, given the popularity of Cuban cigars? -ed.].

Finally, Nicaragua made a hopeless argument about the pronunciation of the Spanish word "tatuaje," but as usual the Board pointed out that there is no correct pronunciation of a trademark. [Query: What about APPLE for computers? BLACK CAT for firecrackers? TTABlog for ..... ah, forget it.]

And so the Board sustained the opposition.

TTABlog comment: I think the "stop and translate" concept makes little sense. My test would be this: first, is the language in question in common use in the USA?; second, if so, would a person familiar with that language recognize the foreign language mark as having the same meaning as the English language mark at issue? No "translation into English" would be involved. What do you think? The problem is that my test would not jibe with decisions like Tia Maria.

For a critique of the doctrine of foreign equivalents, see the article by Serge Krimnus, entitled , "The Doctrine of Foreign Equivalents at Death's Door," North Carolina Journal of Law & Technology, Vol. 12, Issue 1: Fall 2010.

Text Copyright John L. Welch 2011.


At 8:27 AM, Blogger Frank said...

The problem I have with the Doctrine of Foreign Equivalents is that it takes the possibility of confusion in a minuscule minority of the population and elevates it to a likelihood of confusion. Why? The doctrine is misguided and when judges try to rationalize it, they just end up making fools of themselves.

At 10:18 AM, Anonymous Anonymous said...

Even words everyone (let alone a miniscule minority) immediately associates with their English translations do not, by that mere fact, mean that confusion is likely with their translations. Would you confuse Bonjour jeans with Good Day jeans or Hello jeans? Would you confuse Amigo watches with Friend watches? Gracias pens with Thank You pens? Shalom vitamins with Hello, Good Bye or Peace vitamins?

At 11:20 AM, Anonymous Tom Casagrande said...

I question whether this is a proper case to apply the doctrine of foreign equivalents. In the typical case, the defendant’s mark is the foreign language equivalent of the cited English-language mark. In such cases, it makes sense to determine whether English-speaking Americans, confronted with a defendant’s foreign language mark, would "stop and translate" the mark into English and at that point likely be confused with the plaintiff’s older, English-language mark. Here, however, the opposite situation is presented. If the doctrine of foreign equivalents were to apply here, the question would be whether English-speaking Americans would "stop and translate" a mark appearing in this country's native tongue into some foreign language. Common sense indicates that Americans, confronted with an English language mark, would be extraordinarily unlikely to do so. Consequently, I would assert that the doctrine of foreign equivalents has no application in this case. Although I haven’t researched this exhaustively, I am unaware of any Federal Circuit or TTAB decision that has expressly held the doctrine applicable where the defendant’s mark is English and the plaintiff’s foreign.

At 1:16 PM, Anonymous Orrin A. Falby said...

Frank, I disagree. The application of the doctrine of foreign equivalents is but one factor in the analysis and goes to one of the most important prongs in determing the commercial impression created by a merk -- its meaning. In this case the spanish language (probably more common than English in American society today) word for tatoo is similar its appearance, and "possibly" pronunciation, if you could make a case that pronunciation should be factored in. I think the Board got this one right!!

John, I agree that your test makes a lot of sense and think its how the "stop and translate" concept is actually applied. I think that it does jibe with "Tia Maria" in that it deals with the qestion of commercial impression, instead of connotation. Arguably meaning and commercial impression have been used interchangeably throughout the case law, so your point might be too much of a literal interpretation of the "stop and translate concept. Let me know if you feel diffrently.

At 1:56 PM, Blogger Bob Cumbow said...

I agree with Frank. Recognition of equivalent meanings doesn't equate to confusion, or even its likelihood. The test ought to be: Would a person who recognizes the equivalence be likely to assume that products so branded emanated from the same source? Would a reasonable consumer think a BLUE RIBBON product came from the same source as a similar CORDON BLEU product?

At 8:34 PM, Blogger Pamela Chestek said...

When reading the title, before learning that TATUAJE was "tattoo" in Spanish, I thought it was a simple sound alike case, "tattoo" and a misspelled "tattooage" (which is how I said it in my head and I know it doesn't actually mean anything). But in both cases, in English, it invoked "tattoo" for me, which, for cigars, is arbitrary. Or to say it less wordily, I thought they just sounded alike and had similarity of connotation, even without knowing that the translation was the same.


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