Tuesday, June 04, 2013

Test Your TTAB Judge-Ability: Are STELLA ROSSA PIZZA BAR and RED STAR TAVERN Confusable?

Lettuce Entertain You [HaHa! - ed.] applied to register the mark STELLA ROSSA PIZZA BAR for restaurant and bar services, but was refused registration under Section 2(d) in view of the registered mark RED STAR TAVERN & Design, shown below, for restaurant and tavern services [TAVERN disclaimed]. Of course, it all came down to the marks, since the Italian phrase "stella rossa" means "red star" in English . How would you rule? In re Lettuce Entertain You Enterprises, Inc., Serial No. 85291663 (May 17, 2013) [not precedential].

The Board first insisted that PIZZA BAR be disclaimed in Applicant's mark, rejecting the contention that the mark, as a whole, is unitary.

As to the comparison of the marks at issue, because Applicant's mark is in standard character form, the Board must assume that it could be used in any manner, including in the same form of display as that of the cited mark. See Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258–59 (Fed. Cir. 2011). Nonetheless, the two marks do not sound or look alike.

But what about meaning? The Examining Attorney asserted that STELLA ROSSA means RED STAR in Italian. Applicant argued that the doctrine of foreign equivalents should not be applied here because the Examining Attorney failed to show that Italian is "a language familiar to an appreciable segment of American consumers," relying on In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 2009)). But the Board concluded that Spirits does not apply here because it dealt with an issue of geographical deceptiveness under Section 2(e)(3). For purposes of materiality under that Section, an "appreciable segment of American consumers" must be deceived. There is no such requirement in the Section 2(d) context. Instead, under Section 2(d), the doctrine of foreign equivalents applies to "words from common, modern languages."

Nonetheless, the doctrine should be applied only "when it is likely that the ordinary American purchaser would 'stop and translate [the word] into its English equivalent.'" Palm Bay, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)).

Although STELLA ROSA literally translates as RED STAR, the Board must consider Applicant’s mark as a whole, "and the fact that applicant’s mark comprises both Italian and English words makes it less likely that the STELLA ROSSA part of applicant’s mark will be translated by consumers — even those consumers who speak Italian. That is especially true here because STELLA ROSSA gives the impression of a woman’s name used in English, rather than an arbitrary Italian phrase."

[T]he doctrine of foreign equivalents is not conclusive. It is just one way of understanding the meaning of a mark, which is in turn only one of the considerations used in determining the similarity of the marks as a whole. "[S]uch similarity as there is in connotation must be weighed against the dissimilarity in appearance, sound, and all other factors, before reaching a conclusion on likelihood of confusion as to source."

The Board ruled that, despite the overlap in services, customers, and channels of trade, the marks at issue are too dissimilar to support the PTO's finding of likelihood of confusion. And so it reversed the refusal.

Read comments and post your comments here.

TTABlog note: I think the Board got this one right. I remain puzzled, however, by the whole "stop and translate" concept, but that's a topic for another day.

Text Copyright John L. Welch 2013.


At 10:06 AM, Anonymous Joe Dreitler said...

I think that they got it right as well. Like you, I also think that the way they got there is what is troubling in trying to predict these cases. The two terms just don't look or sound anything alike and no one is going to think they are connected with one another. You can wind up with "paralysis by analysis" trying to figure out some other way to reach that conclusion.


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