Thursday, June 14, 2018

TTAB Test: Is GAVIOTA for Faucets Confusable With SEAGULL for Water Purification Units?

The USPTO refused registration of the mark GAVIOTA, in standard character form, for “Luxury bathroom faucets; Water control valves for bathroom faucets; Plumbing fittings, namely, spouts for bathroom fixtures; Tub Spouts; Shower Heads; Handles for shower faucets; Plumbing fittings, namely, [and] shower control valves,” on the ground of likely confusion with the registered mark SEAGULL for "water purification units and parts thereof." The Examining Attorney maintained that "gaviota" is Spanish for "seagull." Applicant argued that the goods are unrelated and that consumers would understand its mark as referring to the southern California beach town of Gaviota and to the famous Gaviota State Park. How do you think this appeal came out? In re California Faucets, Inc., Serial No. 87029512 (June 11, 2018) [not precedential] (Opinion by Judge Thomas Shaw). [Corrected opinion issued June 20, 2018].

The Goods: Examining Attorney Louis Kolodner introduced third-party registrations and website pages to show that the involved goods are offered under the same mark. Additional evidence showed that water purification units (including Registrant's) include faucets and shower heads. Applicant pointed to the limitation of its goods to bathroom fixtures, but the Board was unmoved: registrant's goods are not limited to "producing water in a kitchen," as applicant asserted. The Board therefore found the goods to be related.

There were no limitations in the application or registration as to price of the goods, channels of trade, or classes of consumers. Both applicant's and registrant's goods are sold online and at similar price points, suggesting that the channels of trade and classes of purchasers are similar.

The Marks: Applicant's mark GAVIOTA means "seagull" in English. The record showed that Spanish is the most common foreign language spoken in the United States. Therefore the doctrine of foreign equivalents applied.

Applicant contended that the doctrine does not apply because GAVIOTA has another meaning: "the word 'GAVIOTA' predominantly refers to the southern California beach town of Gaviota, California, and the famous Gaviota State Park, as well as other tourist attractions in the Gaviota area." However, the evidence did not demonstrate that the Gaviota region or the town is well known outside of Southern California. Moreover, the record indicated that "Gaviota State Park takes its name from the Spanish word for seagull, given to the area by soldiers of the Portola Expedition who supposedly killed a seagull while camping here in 1769."

Applicant’s evidence does not establish that the alternate geographic meaning would be understood by the relevant purchasing public. Rather, given the large number of Spanish speakers in the United States and the fact that consumers who know of the Gaviota region also might know that it derives its name from the Spanish word for “seagull,” we find it likely that these Spanish speakers would “stop and translate” GAVIOTA into its English equivalent, SEAGULL.

The Board acknowledged that the application of the doctrine of foreign equivalents is only part of the analysis, since the similarity 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." Noting that "seagull" is a direct translation of "gaviota," and that SEAGULL is arbitrary for the involved goods and thus a conceptually strong mark, the Board concluded that these factors outweighed the dissimilarities in appearance and sound.

Consumer sophistication: As stated above, there were no limitations in the involved application and cited registration as to classes of purchasers, and so the Board must consider all normal classes of consumers. The involved goods are sold online and therefore purchasers may include consumers who are not design or construction professionals. The Board must make its decision in light of the "least sophisticated potential purchasers, which may be ordinary consumers exercising only an ordinary degree of care." Moreover, even careful or sophisticated consumers are not immune to source confusion when similar marks are used for related goods.

Conclusion: The Board found confusion likely, and so it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: The Board also affirmed the requirement that applicant submit an English translation of its mark, which applicant failed to do. See Rule 2.32(a)(9).

Text Copyright John L. Welch 2018.


At 10:54 AM, Anonymous Anonymous said...

So, if I want to register NACHOS or TACOS as a mark for faucets and other plumbing supplies, am I required to submit a translation of the mark to English?

At 7:32 PM, Anonymous Anonymous said...

I lived right near Gaviota for over 30 years. I never knew or even thought it was a Spanish word.

There are an awful lot of seagulls by the dump there though.

At 2:53 PM, Blogger John Crittenden said...

John, I was amused by this decision, because in my last two final exams for my trademark law class at UCLA Law School, one of my questions had a hypo involving an examiner's refusal under 2(d) to register GAVIOTA for eyeglasses because of a registration for SEAGULL for sunglasses! Guess I have to come up with a new fact pattern!


Post a Comment

<< Home