TTABlog Test: Is DANKE Confusable with MERCI for Chocolates?

August Stork KG opposed an application to register the mark DANKE in the stylized form shown here, for "chocolate; chocolate bars," claiming likelihood of confusion with its registered mark MERCI for "chocolate and chocolates." Applying the doctrine of foreign equivalents, the Board found that both marks mean "thank you" in English. How do you think this opposition came out? August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA, Opposition No. 91277224 (November 14, 2025) [not precedential] (Opinion by Judge Wendy B. Cohen).

Applicant Florend (a Brazilian company) argued that the doctrine of foreign equivalents should not apply, but it failed to meet its burden to prove that it is unlikely that U.S. consumers will stop and translate the two terms. See Vetements, 137 F.4th at 1331. "Based on the evidence of record, an appreciable number of U.S. purchasers are capable of translating MERCI and DANKE, and in the context of the marks’ use with chocolate, a purchaser with ordinary sensibilities would translate the wording." But that was not the end of the story.

[Florend's mark] is pronounced DAHN-kuh' whereas MERCI is pronounced 'mehr-SEE'. The marks look and sound nothing alike. To state the obvious, [Florend's mark] and MERCI do not share any letter strings and although they are both two-syllable terms, overall they are quite dissimilar in appearance and sound.

The Board recognized that the marks have the identical meaning of "thank you" and share the connotation of gratitude. "But ... the message of 'thanks' is widely used in the industry and pervasively associated with chocolate. Further, when it comes to commercial impression, because the marks are derived from different foreign languages and have distinct appearances and pronunciations, we find the marks are somewhat dissimilar overall in commercial impression, despite sharing an identical meaning."

We are not convinced by Opposer’s argument that these differences are outweighed by the marks’ “exact same connotation and meaning,” particularly because the shared meaning is a common message related to chocolate. Rather, we find the differences in sound and appearance and the differences in commercial impression outweigh the marks’ identical meaning and weigh strongly against a finding of likelihood of confusion.

The Board next turned to the issue of the strength of Stork's mark. Stork proved use of its mark since 1965, sales in various national retail stores, and revenues of more than $100 million in the 2017-2022 time period. It advertised in a number of online magazines and on many television shows. However, its evidence of sales and marketing efforts were provided without context. The Board concluded that this evidence supported a finding that the mark has some commercial strength in the marketplace, but was not a famous mark for purposes of Section 2(d).

Florend offered only one third-party registration for a mark containing the word MERCI, but under the 13th DuPont factor the Board considered the results of a Google® images search intended to show that ‘Thank you’ is commonly associated with goods made of chocolate. The Board rejected Stork's claim that saying “thank you” with chocolate is a unique theme, instead finding that "thank you" is conceptually weak when used in relation to chocolate "because consumers are conditioned to seeing this phrase used as an expression of gratitude."

In sum, while MERCI is not conceptually weak under the sixth DuPont factor, the common use of “thank you” in connection with chocolate supports that the meaning of the mark MERCI is conceptually weak under the thirteenth DuPont factor.

Balancing the relevant DuPont factors, the Board concluded that "the substantial differences in sound, appearance and commercial impression of [Florend's mark] and MERCI under the first factor coupled with the conceptual weakness of “thank you” — the shared meaning of the terms and the only similarity between the marks — for chocolates under the thirteenth factor are dispositive and outweigh the other factors."

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TTABlogger comment: Do you think this opinion should have been deemed precedential?

Text Copyright John L. Welch 2025.