Wednesday, March 27, 2019

TTABlog Test: Is ALACRAN Confusable with SCORPION for Mezcal?

The USPTO refused to register the mark ALACRAN for "alcoholic beverages except beers; distilled blue agave liquor," finding the mark likely to cause confusion with the registered marks SCORPION MEZCAL for "alcoholic beverages, namely, Mezcal" [MEZCAL disclaimed] and SCORPION & Design, shown immediately below, for "alcoholic beverages, namely, distilled spirits." The goods overlap, but are the marks confusable? The application states that the English translation of ALACRAN (from the Spanish) is SCORPION. In re Centruro, S.A. de C.V., Serial No. 77946053 (March 25, 2019)[not precedential] (Opinion by Judge George C. Pologeorgis).

The Board noted that applicant's original identification of goods included the word "tequila," but since that term is now a registered certification mark, applicant was required to delete it. Applicant substituted "distilled blue agave liquor" in its place.

Applicant Centruro's broadly worded identification of goods encompasses all of the goods in the cited registrations. In any event, third-party registrations showed that "tequila" and "mezcal" are related. Since the goods overlap, the Board must presume that those goods travel in the same channels of trade to the same classes of consumers.

Not surprisingly, the Board found the word SCORPION to be the dominant element in both cited marks. The key issue, of course, concerned that application of the doctrine of foreign equivalents.

The record clearly established that ALACRAN is the Spanish word for the English term "scorpion," and further that Spanish is the most widely spoken non-English language in this country. Examining Attorney Ronald McMorrow therefore asserted that the doctrine of foreign equivalents applies and the marks must be found identical in connotation.

Centruro argued that the differences in the sound and appearance of the marks makes confusion unlikely. The Board noted that these particular differences are not necessarily enough to eliminate the likelihood of confusion.

Centruro urged that the doctrine of foreign equivalents is not an absolute rule, but the Board found the rule applicable here.

The term, whether in English or Spanish, has no demonstrated meaning in the context of alcoholic beverages and will likely be understood as an arbitrary use of the word. Thus, the significance to the alcoholic beverage consumer of the terms ALACRAN and SCORPION will likely be the same.

The Board distinguished the Tia Maria decision, relied on by Centruro. That case involved restaurant services under the mark TIA MARIA versus AUNT MARY'S for canned fruit and vegetables. In determining the likelihood of confusion, the Board "clearly took into consideration the context in which consumers would encounter the respective marks . . . ." As the Board stated there:

[I]t is unlikely to expect that a person encountering “AUNT MARY’S” canned fruits and vegetables in a supermarket or other establishment where goods of this type are customarily sold would translate “AUNT MARY’S” into “TIA MARIA”, and then go one step further and associate these food products with applicant’s restaurant. Likewise, going the other route, it is difficult to perceive that a person who had purchased “AUNT MARY’S” canned fruits and vegetables on the shelves of a supermarket would, upon dining at the “TIA MARIA” restaurant in Mexican decor and surrounded by a menu of Mexican delicacies, translate “TIA MARIA” into “AUNT MARY” and then mistakenly assume that the “TIA MARIA” restaurant and “AUNT MARY’S” canned fruits and vegetables originate from or are sponsored by the same entity. In re Tia Maria, 188 USPQ 524, 526 (TTAB 1975)

Here, in contrast, consumers will encounter the marks on the same goods, alcoholic beverages, in the same channels of trade. Thus it is not "'difficult to perceive' that a consumer would stop and translate the two marks upon encountering them on alcoholic beverages."

The Board found that the similarity between the marks based on meaning and connotation outweighed the dissimilarities, and that confusion is likely. And so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: The Tia Maria case is often cited as an example of a case where a consumer would not stop and translate, but the facts there are worth noting.

Here's a trivia question for you: What song includes the lyrics "Gonna tell Aunt Mary 'bout Uncle John. He claim he has the misery but he's havin' a lot of fun . . . ," and who sang it? Answer here.

Text Copyright John L. Welch 2019.


At 7:45 AM, Anonymous Bob Klein said...

Trivia answer: Little Richard (second choice: Jerry Lee Lewis)

At 8:53 AM, Anonymous Anonymous said...

I'm surprised that this was not included in your catalog of WYHA cases?

At 9:12 AM, Blogger William J. Morris III said...

A classic!

At 12:53 PM, Anonymous Bert Krages said...

I typically discount that people associate foreign words with the English equivalents when it comes to marks, but having read El Alacrán de Fray Gómez in a Spanish class, I immediately thought SCORPION when I saw the mark. So I have another question. What song includes the lyrics "Mi tía María, guardaba bajo e’ la cama . . . ," and who sang it?


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