CAMPANARIO for Alcoholic Beverages Except Beer Confusable with BELL TOWER for Beer, Says TTAB

Applying the "three core principles" of the doctrine of foreign equivalents, as recently laid out by the CAFC in the VETEMENTS case [TTABlogged here], the Board found that the Spanish term CAMPANARIO means BELL TOWER in English and it therefore upheld a refusal to register CAMPANARIO for "aguardiente; schnapps; alcoholic beverages, except beer; brandy; schnapps; alcoholic cocktails" in view of the registered mark BELL TOWER for beer. In re Compañía Pisquera de Chile S.A, Serial No. 98448743 (September 10, 2025) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

According to the CAFC, there are "'three core principles' relevant to whether the ordinary American purchaser would stop and translate the mark into English, the 'threshold limitation on the application of the doctrine of foreign equivalents:'"

1. Because "words from modern languages are generally translated into English," the party opposing translation has the burden to show that it is unlikely;

2. The capability of the U.S. population to translate the word does not require "an absolute majority" but "an appreciable number of Americans;" [what's the threshhold number? -ed.-].

3. Whether in context the mark would ordinarily be translated by a purchaser (from the U.S. population as a whole) with ordinary sensibilities because "sometimes even a native speaker would not perform a literal translation because it would be irrelevant in the context of the specific goods, services, or market." [Think TIA MARIA for a Mexican restaurant - ed.].

The Board unsurprisingly found that Spanish is spoken or understood by an appreciable number of U.S. consumers who also speak or understand English. "This weighs heavily in favor of applying the doctrine of foreign equivalents."

The Board was not persuaded by Applicant’s argument that the ordinary American consumer would not stop to translate the mark. "The context that makes translation unlikely has been found where the foreign term does not have a direct or literal translation but is 'an idiom which is not equivalent to its direct translation.'" Here, the evidence showed that "bell tower" is a direct translation of applicant's mark.

Applicant contended that "in the alcoholic beverage space" Spanish terms are not translated, but, as Examining Attorney Brian J. Collis pointed out, applicant supplied no evidence to support this contention, and "there is no way of knowing whether consumers who speak Spanish fail to also translate these marks."

In sum, based on the evidence that an appreciable number of average U.S. consumers speak Spanish, the uncontradicted evidence that CAMPANARIO is the direct and literal translation of the English term BELL TOWER, and Applicant’s failure to indicate any contextual circumstances which would make translation unlikely, we find the doctrine of foreign equivalents is applicable here, and the average U.S. consumer knowledgeable in English and Spanish will perceive the marks CAMPANARIO and BELL TOWER as identical in connotation and commercial impression.

The Board concluded that the similarity of the marks CAMPANARIO and BELL TOWER weighed in favor of a likelihood of confusion.

As to the relatedness of the goods, the Examining Attorney provided Internet evidence of fourteen third parties that offer both beer, and "alcoholic beverages except beer," under the same mark and on the same website. He also made of record "extensive evidence of overlapping trade channels for beer and alcoholic beverages except beer," including more than a dozen third-party combination brewery/distilleries that sell both beer and "alcoholic beverages except beer" under the same mark.

The Board concluded that confusion is likely, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Are you aware of any beverage company that sells a product, say beer, under both an English word mark and a Spanish word mark that is the translation of the English word mark?

Text Copyright John L. Welch 2025.