Monday, November 24, 2014

TTAB Test: Are CENTURY and SECOLO Confusable for Wine?

The USPTO refused registration of the mark CENTURY for wine, finding it likely to cause confusion with the registered mark SECOLO for table wine. There was no dispute that the English translation of "secolo" is "century," but applicant argued that wine consumers are accustomed to seeing foreign words on wine labels and therefore would not translate "secolo" into "century." How do you think this came out? In re The Biltmore Company, Serial No. 85561663 (November 21, 2014) [not precedential].

Attention please: Is there a doctor of equivalents in the house? "Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine ... similarity of connotation in order to ascertain confusing similarity with English word marks." Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). The doctrine applies when it is likely that an ordinary American purchaser would "stop and translate" the foreign term into its English equivalent. Id. “The ‘ordinary American purchaser’ in this context refers to the ordinary American purchaser who is knowledgeable in the foreign language.” In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006).

There was no dispute that an appreciable number of U.S. consumers speak or understand Italian, or that the Italian word "secolo" is translated into English as "century." In addition to similarity in connotation, however, the Board must consider the appearance, sound, and overall commercial impression of the two marks in determining likelihood of confusion.

The Board found the marks dissimilar in appearance but somewhat similar in sound. "The first letter “c” in “century” is pronounced as an “s” would be, and each term is made up of three syllables." Furthermore, both words are arbitrary as applied to wine; thus SECOLO is conceptually strong as a trademark. The facts that applicant's goods (wine) encompass those of the cited registration (table wine), and that the goods are sold to the same customers through the same channels of trade, increase the likelihood of confusion.

Applicant pointed out that registrant, during prosecution of the application to register SECOLO, contended that purchasers would not “stop and translate” SECOLO into “century.” Registrant took that position when responding to a refusal to register based on the registered mark CENTURY OF PORT for port wine. The Board pointed out, however, that registrant's prior assertion is not an admission, although it may be considered as "illuminative of shade and tone in the total picture." See Interstate Brands Corporation v. Celestial Seasonings, Inc., 198 USPQ 151 (CCPA 1978). Each case must be decided on its own record, and registrant’s prior statements cannot be treated as indicating its position with respect to applicant’s mark and the goods at issue here.

Finally, as to applicant's assertion that wine drinkers will not translate foreign terms on wine labels, the Board found no evidentiary support. However, "[e]ven assuming some wine labels bear designations in languages other than English does not compel a conclusion that prospective purchasers will not translate any such terms, including SECOLO, into English."

And so the Board affirmed the refusal.

Read comments and post your comment here

TTABlog query: When the English translation of the foreign word is not an exact equivalent to the English language mark, likelihood of confusion may be lacking. See for example this case involving the Japanese word KOKORO and the English word HEART. For a real contretemps over a translation, see the GO GIRLS case (here).

Text Copyright John L. Welch 2014.


At 11:11 AM, Anonymous Anonymous said...

These doctrine of foreign equivalents cases have strayed so far from the original purpose of the doctrine, which was to prevent people from filing foreign language GENERIC or DESCRIPTIVE (without secondary meaning) marks in other languages, NOT for likelihood of confusion. These decisions are so bad. No one would actually confuse Century Wine and Secolo wine because arbitrary or fanciful marks in different language would seem by nature to have different connotation meanings and commercial impressions.

I really HATE the doctrine of foreign equivalents. It's the WORST thing to come out of trademark law - just, so nonsensical.



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