Wednesday, March 23, 2022

TTABlog Test: Are "LE CHOCOLAT DES ILES" and "ISLAND CHOCOLATES" Confusable for Chocolate Candy?

The USPTO refused registration of the proposed mark LE CHOCOLAT DES ILES & Design (shown below), for various chocolate products [CHOCOLAT disclaimed], including chocolate candy and chocolate-covered nuts, finding confusion likely with the registered mark ISLAND CHOCOLATES for "chocolate candies, chocolate covered nuts" [CHOCOLATE disclaimed]. The goods overlap, but what about the marks? Are they confusable? In re Iatichand R. Goojha, Serial No. 88479529 (March 21 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Applicant Goojha translated the literal portion of the proposed mark as "“the choclate (sic) of the islands," but contended that the mark is dissimilar in appearance, sound, connotation and commercial impression from the cited mark." Goojha also insisted that the words in each mark are "spelled differently, pronounced differently" and have "different meanings." He asserted that the color gold in the mark "reflect(s) the upscale and fancy foreign product offered."

Goojha maintained that the doctrine of foreign equivalents is not an absolute rule, and the ordinary American consumer could not translate his mark: "the French translation would not be applied or understood by the average American consumer" given that there are only "1,300,000 French speakers as opposed to 231,122,908 English only speakers [that] reside in the United States."

Examining Attorney Evonne M. Neptune's evidence showed that French brands are commonly sold in the United States, and some 1.25M individuals speak French in this country. The Board found that French qualifies as a common, modern language spoken by "an appreciable segment of the population.” It took judicial notice that "île" is French for "island" and "chocolat" is French for "chocolate," and there are no other meanings for these terms.

Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine similarity of connotation with English word marks. See Palm Bay Imps., 73 USPQ2d at 1696. As Applicant has pointed out, the doctrine of foreign equivalents is a “guideline and not an absolute rule.” Id. The doctrine is applied when it is likely that “the ordinary American purchaser would ‘stop and translate [the term] into its English equivalent.’” Id., quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976).

For purposes of the doctrine of foreign equivalents, the "ordinary American purchaser" refers to "the ordinary American purchaser who is knowledgeable in English as well as the pertinent foreign language.” In re La Peregrina Ltd., 86 USPQ2d 1645, 1647-48 (TTAB 2008).

The English translation of “Les Chocolat des Iles” is “Chocolate of the Islands,” which is confirmed by Applicant’s translation statement, “The Choclate (sic) of the Islands.” The evidence clearly shows that this is the only meaning of the phrase, without question, and that is how the phrase would be recognized and understood by the French-speaking American public.

The Board found the doctrine of foreign equivalents to be applicable here: Applicant’s mark is the foreign equivalent and synonymous with ISLAND CHOCOLATES. Moreover, the Board noted, even if the doctrine of foreign equivalents did not apply, "a significant number of American purchasers who are not familiar with the French language upon encountering the term 'Les Chocolat des Iles' would guess its translation is 'Chocolate of Isles,' if not 'Chocolate Islands.'"

Turning to the marks, although they differ in appearance and sound, the design element in applicant's mark reinforces the word "island." The Board found that "the equivalency in meaning of ISLAND CHOCOLATES and LE CHOCOLAT DES ILES outweighs any differences in how the marks look and sound."

The Board noted that the cited registration contains a geographic restriction statement (to Hawaii and Guam), but the Board must presume that applicant is marketing his services in registrant’s trading area because Applicant is seeking an unrestricted registration.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.


At 12:24 PM, Anonymous Dave Shenk said...

As one of the 1.25 million French speakers, I feel applying the doctrine of foreign equivalents here was misguided. The commercial impression of the marks is just too different. Vive la différence!

At 5:18 PM, Anonymous Anne Gilson LaLonde said...

This outcome is unsurprising given the Board's strict precedent on the doctrine of foreign equivalents - it's arguably overly strict. They've refused registration under 2(d) to marks that mean the same but look even more different, like GUEPARDO and CHEETAH or THANH LONG and GREEN DRAGON TAVERN & MUSEUM. Also, the addition of the island in the design makes the similarity even closer. The Board (frustratingly) finds virtually all languages "common" in this context, except only Esperanto, Hawaiian, Irish, and Tamil, so French isn't even arguable.


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