TTAB Test: Is MONARCH ROASTING Confusable With LA MONARCA BAKERY & CAFE?
The USPTO refused registration of the mark MONARCH ROASTING for "coffee sold in cartridges for use in single serve brewing machines" [ROASTING disclaimed], finding it likely to cause confusion with LA MONARCA BAKERY & CAFE for "restaurant and cafe service" [BAKERY & CAFE disclaimed]. Third-party registrations convinced the Board that the goods and services are related (six registrants sell coffee pods and restaurant services, each under a single mark). But what about the marks? How do you thing this came out? In re Trilliant Food and Nutrition, LLC, Serial No. 86947151 (December 13, 2016) [not precedential].
The examining attorney also submitted evidence that coffee pods are offered for sale in restaurants and cafes. Therefore, it all boiled (percolated?) down to the marks.
The involved mark have obvious difference in appearance and sound. As to meaning, the examining attorney contended that the dominant portions of the marks are MONARCH and MONARCA, and that these terms should be considered equivalent under the doctrine of foreign equivalents. The evidence established that MONARCA is Spanish for "monarch," that "LA" is a Spanish definite article meaning "the," and that there were 39 million Spanish-speaking residents of the United States.
The Board noted that the doctrine of foreign equivalents should be applied when an American consumer is likely to stop and translate the mark. However, that rule is not absolute, and should be taken as a guideline. The CAFC and the Board have recognized that in some contexts, even those familiar with the foreign language will not stop and translate: e.g., VEUVE CLIQUOT, CORDON BLEU, and TIA MARIA.
The cited mark LA MONARCA BAKERY & CAFE combines Spanish and English words. Clearly, this mark is directed to an English-language audience, and is not "an attempt to translate a mark for the purpose of reaching the English-language market." Customers are likely to appreciate that fact, and those that speak Spanish are unlikely to believe that LA MONARCA is intended as a translation of an English-language mark.
The Board concluded that customers will take the Spanish wording "as is," rather than translating it for the purpose of associating it with another mark. Therefore it is not appropriate to apply the doctrine of equivalents. Nonetheless, the Board did take into account that the two words MONARCH and MONARCA have similar meanings.
Viewing the marks in their entireties, the Board did not agree with the examining attorney. He went too far in discounting the significance of the descriptive and generic wording in the marks. "Even descriptive and generic terms have some impact on the overall commercial impression created by the marks."
Overall, the Board found that there were sufficient differences between the marks in appearance, sound, meaning, and commercial impression to render confusion unlikely.
And so the Board reversed the refusal to register.
Read comments and post your comment here.
TTABlog comment:This same reasoning should have applied in yesterday's "BLACK" label case.
Text Copyright John L. Welch 2016.
posted by John L. Welch @ 12/22/2016
4 comments
4 Comments:
Very interesting how things change over time; thinking back to http://ttabvue.uspto.gov/ttabvue/ttabvue-76330764-EXA-12.pdf
6 third party registrations is not nearly enough to satisfy the "something more" standard. This is becoming a joke.
Something needs to be done about proving "relatedness." In my opinion it proves nothing at all.
Someone in our office did a very unscientific study and found this can be done for just about any goods at all given the large volume of trademarks out there.
It is much harder to prove the point the other way around, but even when you do it is dismissed out of hand by the Board and examiners.
After taking a look at the record, it's important to note that the third-party registrations were not included until the issuance of the denial of the request for reconsideration. The evidence that preceded the denial consists of at least 7 examples of real world uses of the parties' goods under the same mark.
Post a Comment
<< Home