TTABlog Test: Is QUARRY VINEYARD Confusable with PEDRERA for Wine?

The USPTO refused to register the proposed mark QUARRY VINEYARD for "wine" [VINEYARD disclaimed], finding confusion likely with the registered mark PEDRERA, also for wine. The cited registration states that the English translation of the Spanish word "pedrera" is "quarry." Applicant FN Cellars argued that the wine industry often uses foreign words as marks for wine, and so an ordinary American consumers would not "stop and translate" the Spanish word. How do you think this came out? In re FN Cellars, LLC, Serial No. 88902267 (June 25, 2021) [not precedential] (Opinion by Judge David K. Heasley).

The Board observed that, because the involved goods are identical, it must presume that the goods travel in the same trade channels to the same classes of consumers. These factors weighed heavily in favor of affirmance of the refusal. Moreover, because the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. [Does that make sense? - ed.]. 

Examining Attorney Cierra McGill applied the doctrine of foreign equivalents in support of the refusal. That doctrine is applied when "it is likely that the ordinary American purchaser would "stop and translate" the word into its English equivalent. The "ordinary American purchaser" includes "those proficient in a non-English language who would ordinarily be expected to translate the words into English." The purpose of the doctrine is to "protect the perceptions of ordinary American consumers who are multilingual."

The Board has repeatedly and unsurprisingly found that Spanish is a common, modern language in this country, and the Board has "routinely" applied the doctrine of foreign equivalents to Spanish words. The examining attorney submitted dictionary evidence establishing that the Spanish "pedrera" and the English "quarry" are literal and direct equivalents. 

FN Cellars maintained that, because American purchasers are accustomed to purchasing wine under foreign brand names, it is improbable that they would stop and translate a rare foreign word like "pedrera" into "quarry." 

The Board disagreed. It recognized that in some cases relevant consumers would not stop and translate words from common, modern languages (e.g., TIA MARIA for canned fruits and vegetables; the well-established French term CORDON BLEU). 

There is no evidence that PEDRERA is so commonly used among English speakers, like CORDON BLEU, that translation becomes unnecessary. *** There are no personal names, like TIA MARIA and AUNT MARY, to differentiate the marks. *** And there is no exception for alcoholic beverages.

The translation is literal and direct, and there was no evidence that "pedrera" is rare or uncommon. 

FN Cellars pointed to the differences in appearance and sound, but the Board ruled that "the equivalency in meaning outweighs the differences in how the marks look and sound." Both marks suggest wines from grapes grown in a rocky terroir.

The Board therefore found confusion likely and it affirmed the refusal to register.

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TTABlogger comment: How did you do? Looking at the bottles of wine, do you think there would be confusion in the real world?

BTW: If the purchaser is proficient in Spanish, why would that purchaser have to stop and translate the word into English in order to understand its meaning?

Text Copyright John L. Welch 2021.