A.F. Djurberg AB

Trademark Trial and Appeal Board

Nov 8, 2019

87677215 (T.T.A.B. Nov. 8, 2019)

Mailed: November 8, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
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In re A.F. Djurberg AB
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Serial No. 87677215
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A.F. Djurberg AB, pro se.

Fong Hsu, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
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Before Lykos, Adlin and Larkin, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant A.F. Djurberg AB seeks registration of the mark CRUCIBLE
COOKWARE (standard characters, COOKWARE disclaimed) for:
Household utensils, namely, trivets; pot lids; cooking
utensils, namely, mixing spoons, slotted turners, potato
mashers, solid spoons, slotted spoons, ladles, spagetti
servers, baking spatulas, bottle openers, graters, potato
peelers, garlic presses, whisks, basting brushes, ice cream
scoops, tong, scissors, pizza cutters, can openers,
measuring cups and spoons, basting brushes, kitchen
tongs, barbecue mitts, peelers; cooking utensils of metal or
silicone, namely, spatulas, mixing spoons; heat protective
gloves for kitchen use; potholders for kitchen use; hot
handle holders; handles being parts of cooking utensils;
gloves for household purposes; scrapers for household
This Opinion is Not a
Precedent of the TTAB
Serial No. 87677215
2
purposes; frying pans; Cast Iron Cleaners; cast iron skillets
and pans.; Kitchen mitts, in International Class 21.1

The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, on the ground that Applicant’s mark so resembles the mark LE CREUSET,
registered in standard characters2 and a variety of design forms3 for a wide range of
kitchen and cooking-related goods, that use of Applicant’s mark in connection with
Applicant’s goods is likely to cause confusion. The French company known as Le
Creuset owns each of the cited registrations. The cited standard character ‘113
Registration, like several of the others, includes this translation statement: “The
English translation of ‘LE CREUSET’ in the mark is ‘THE CRUCIBLE’.” After the
refusal became final, Applicant appealed and filed a request for reconsideration
which was denied. The appeal is fully briefed.4
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth

1 Application Serial No. 87677215, filed November 8, 2017 under Section 1(a) of the
Trademark Act, based on alleged first use dates of July 1, 2015.
2 Registration No. 5304113, issued October 10, 2017 under Sections 1 and 44(e) based on a
French registration (the “’113 Registration”).
3 Registration Nos. 566951, 993620, 4721891, 4456962 and 5052501.
4 Applicant’s Appeal and Reply Briefs do not comply with Trademark Rule 2.126(a)(1) because
they are single-spaced, or with Trademark Rule 2.126(b)(5) because the pages are not
numbered. Nevertheless, because it appears that the briefs would fall within the Rule’s page
limits if double-spaced, and in the absence of any objection by the Examining Attorney, we
have exercised our discretion to consider the briefs. See Univ. of Miami, 123 USPQ2d 1075,
1077 n.2 (TTAB 2017).
Serial No. 87677215
3
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each du Pont factor about
which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the goods
and differences in the marks.”).
We focus our analysis on the cited standard character mark LE CREUSET in the
’113 Registration, because if we find confusion likely between that cited mark and
Applicant’s mark, we need not consider the likelihood of confusion between
Applicant’s mark and the other cited marks (all of which include designs in addition
to the words LE CREUSET), while if we find no likelihood of confusion between
Applicant’s mark and LE CREUSET in standard characters, we would not find a
likelihood of confusion between Applicant’s mark and the other cited marks. In re
Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). The ‘113 Registration
identifies an exceedingly wide range of goods in International Classes 8, 9, 11, 20, 21,
24 and 25, including the following in International Class 21:
Household or kitchen utensils, namely, spatulas, mixing
spoons, turners, basting brushes, kitchen tongs, whisks,
pasta serving forks, honey dippers, ladles, potato mashers,
wire skimmers and mesh strainers and household or
kitchen containers; cups, not of precious metal; bowls, not
of precious metal; dishes, not of precious metal; plates, not
Serial No. 87677215
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of precious metal; pots; wine glasses; non-electric kettles;
fruit bowls, not of precious metal; portable coolers in the
shape of boxes; frying pans; cooking pots; salad bowls, not
of precious metal; corkscrews; woks; earthenware
saucepans; casseroles; stew-pans; grills being cooking
utensils; trivets ….

A. The Goods, Channels of Trade and Classes of Consumers
Registrant’s “Household or kitchen utensils, namely, spatulas, mixing spoons,
turners, basting brushes, kitchen tongs, whisks” encompass Applicant’s “cooking
utensils, namely, mixing spoons, slotted turners … baking spatulas … whisks,
basting brushes … kitchen tongs.” Thus, these goods are either identical or legally
identical. Furthermore, the “trivets” in the involved application and cited registration
are also identical. Where, as here, the goods are in-part identical, we must presume
that the channels of trade and classes of purchasers for those goods are also the same.
See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even
though there was no evidence regarding channels of trade and classes of consumers,
the Board was entitled to rely on this legal presumption in determining likelihood of
confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA
1968) (where there are legally identical goods, the channels of trade and classes of
purchasers are considered to be the same); Am. Lebanese Syrian Associated Charities
Inc. v. Child Health Research Instit., 101 USPQ2d 1022, 1028 (TTAB 2011).
The identity (in part) of Applicant’s and Registrant’s goods and their overlapping
channels of trade and classes of consumers weigh heavily in favor of finding a
likelihood of confusion. In addition, where, as here, the goods are in-part identical,
the degree of similarity between the marks necessary to find a likelihood of confusion
Serial No. 87677215
5
declines. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342,
94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital, 93 USPQ2d at 1248.
B. The Marks
We must consider the marks “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). “Similarity in any one of these elements
may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC,
126 USPQ2d 1742, 1746 (TTAB 2018), aff’d 777 Fed.Appx. 516 (Fed. Cir. 2019)
(quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). Here, the marks
CRUCIBLE COOKWARE and LE CREUSET obviously look and sound different.
The Examining Attorney argues that the marks convey the same meaning,
however, based on the doctrine of foreign equivalents and evidence that CREUSET
means “crucible,” or “melting-pot.” February 22, 2018 Office Action TSDR 34
(printout from Google translate); August 19, 2018 Office Action TSDR 10 (translation
based on “wordreference.com”).
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 Import, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). The doctrine is applied
when it is likely that “the ordinary American purchaser
would ‘stop and translate [the term] into its English
equivalent.” Palm Bay, supra at 1696, quoting In re Pan
Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976) … The
“ordinary American purchaser” in this context refers to the
Serial No. 87677215
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ordinary American purchaser who is knowledgeable in the
foreign language.

In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006). See also Ricardo Media Inc. v.
Inventive Software, LLC, 2019 USPQ2d 311355 *6-7 (TTAB 2019).
In In re Thomas we applied the doctrine to the French term in question based on
evidence that more than 1.5 million people in the United States speak French, finding
that “French is a common foreign language spoken by an appreciable segment of the
population.” Id. We apply the doctrine in this case for essentially the same reason –
the Examining Attorney introduced evidence from the Cultural Services section of
the French Embassy in the United States (which in turn is based on U.S. Census
data), that more than 1.3 million people in the United States speak French at home.
August 19, 2018 Office Action TSDR 95-96 (printout from “frenchlanguagek12.org”).
We also find that ordinary American purchasers who speak French would “stop
and translate” LE CREUSET. The term translates into “the crucible,” or “the melting
pot.” We take judicial notice that “crucible” is defined as “a vessel of very refractory
material (such as porcelain) used for melting and calcining a substance that requires
a high degree of heat.”5 Thus, the cited mark has a single, clear, specific, literal and
direct meaning (which relates to the goods in question), and is spelled correctly in

5 See merriam-webster.com/dictionary/crucible. The Board may take judicial notice of
dictionary definitions, including online dictionaries that exist in printed format or have
regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014),
aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold TV Inc. v. Metronome
Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010).

Serial No. 87677215
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French, which weighs in favor of applying the doctrine. In re Fiore, 75 USPQ2d 1564,
1569 (TTAB 2005).
Furthermore, this case is similar to those, like In re Thomas, in which we found
that relevant consumers would “stop and translate” the foreign term. In re Thomas,
79 USPQ2d at 1025 (finding that consumers would stop and translate not only
because “MARCHE NOIR is the exact translation of ‘black market,’” but also because
of the “inherent nature” of the mark); In re La Peregrina Ltd., 86 USPQ2d 1645, 1648
(TTAB 2008) (doctrine applied because “la peregrina” and “the pilgrim” are
“equivalent in meaning,” and “the translated meaning of LA PEREGRINA is not
obscure”); In re Perez, 21 USPQ2d 1075, 1076 (TTAB 1991) (“there is no support for
the argument that the other English meanings of ‘gallo’ would be ascribed to the
marks by purchasers. Moreover, in the dictionary listing for ‘rooster’, only one
Spanish word is given, namely ‘gallo.’”); In re Ithaca Industries, Inc., 230 USPQ
702,704 (TTAB 1986). This case is unlike those in which it was found that consumers
would not “stop and translate.” Cf. In re Spirits Int’l. N.V., 563 F.3d 1347, 90 UPQ2d
1489, 1492 (Fed. Cir. 2009) (“The ordinary American consumer would not translate
VEUVE CLICQUOT because its literal translation would be irrelevant to even those
ordinary American consumers who speak French.”) (citing Palm Bay, 73 USPQ2d at
1689); In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111 (Fed. Cir. 1983) (finding that
consumers would not “stop and translate” repêchage into “second chance” because
they “are not equivalent French-English terms”); Ricardo Media, 2019 USPQ2d
311355 * 9 (finding consumers would not translate a personal name to its English
Serial No. 87677215
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equivalent); In re Weiss Watch Co., Inc., 123 USPQ2d 1200, 1205 (TTAB 2017)
(consumers would not “stop and translate” because the term in question “is not
spelled in the standard German dictionary form,” and is merely an “approximation”
of the English term).
While we have not ignored the term COOKWARE in Applicant’s mark, it is
generic or at best highly descriptive of Applicant’s and Registrant’s cooking/kitchen
goods, and thus does not impact the connotation of Applicant’s mark. It is entitled to
significantly less weight in our analysis. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court
has noted that the ‘descriptive component of a mark may be given little weight in
reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); see also In re Dixie Rests., Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (DELTA, not the
disclaimed term CAFÉ, is the dominant portion of the mark THE DELTA CAFÉ).
Indeed, the term only highlights the meaning conveyed by Applicant’s mark. In short,
the marks convey the same meaning.
While we recognize that the marks’ “equivalency in connotation does not, in and
of itself, determine the question of likelihood of confusion,” and that connotation is
“but a single factor in the overall evaluation of likelihood of confusion,” In re Ithaca
Indus., Inc., 230 USPQ 702,704 (TTAB 1986), we nevertheless find that here, as in
many doctrine of foreign equivalent cases, the similarity in connotation results in the
marks being more similar than dissimilar in their entireties. Id. (finding LUPO, for
Serial No. 87677215
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men’s and boy’s underwear likely to be confused with WOLF for sportswear, in large
part because LUPO means “wolf” in Italian). This is because here the goods, channels
of trade and classes of customers are all identical, reducing the degree of similarity
between the marks necessary to find a likelihood of confusion. In re Viterra, 101
USPQ2d at 1908; In re Mighty Leaf, 94 USPQ2d at 1260. As a result of the identical
goods and overlapping channels of trade and consumers, the marks’ similarity in
meaning is enough to outweigh the differences in how the marks look and sound. In
re La Peregrina, 86 USPQ2d at 1649-50 (“LA PEREGRINA and PILGRIM [both for
jewelry] are foreign equivalents and, thus, the marks are identical in meaning. This
factor outweighs the differences in appearance and pronunciation.”); In re Thomas,
79 USPQ2d at 1021 (MARCHE NOIR for jewelry likely to be confused with BLACK
MARKET MINERALS for retail jewelry store services, despite marks being
“decidedly different in sound and appearance,” in large part because “marche noir”
means “black market” in French); In re Perez, 21 USPQ2d at 1075 (finding EL GALLO
for fresh vegetables, namely tomatoes and peppers likely to be confused with
ROOSTER for fresh fruit, in large part because “gallo” means “rooster” in Spanish);
In re Am. Safety Razor, 2 USPQ2d at 1460 (“While the marks are concededly
distinguishable in their appearance and pronunciation, it is our view that the
equivalency in meaning or connotation is sufficient, in this case, to find likelihood of
confusion.”); In re Hub Distrib., 218 USPQ at 284; Rosenblum v. George Wilsher &
Co., 161 USPQ at 492 (RED BULL for Scotch whiskey likely to be confused with
Serial No. 87677215
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TORO ROJO for rum, in large part because “toro rojo” means “red bull” in Spanish).
This factor also weighs in favor of finding a likelihood of confusion.
C. Alleged Fame of the Cited Mark
Typically, in ex parte proceedings such as this, the fame of a cited mark is a
nonissue. Indeed, “the owner of the cited registration is not a party to this ex parte
appeal, and the Examining Attorney is under no obligation to demonstrate the fame
of a cited mark.” In re Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016).
See also In re Majestic Distilling Co., 65 USPQ2d at 1205 (“Although we have
previously held that the fame of a registered mark is relevant to likelihood of
confusion, DuPont, 476 F.2d at 1361, 177 USPQ at 567 (factor five), we decline to
establish the converse rule that likelihood of confusion is precluded by a registered
mark’s not being famous.”); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1086 (TTAB
2016) (“in an ex parte appeal the ‘fame of the mark’ factor is normally treated as
neutral because the record generally includes no evidence as to fame.”); In re Davey
Prods. Pty Ltd. 92 USPQ2d 1198, 1204 (TTAB 2009) (“[I]t is settled that the absence
of such evidence is not particularly significant in the context of an ex parte
proceeding.”); In re Big Pig Inc., 81 USPQ2d 1436, 1439 (TTAB 2006) (“It is not
necessary that a registered mark be famous to be entitled to protection against a
confusingly similar mark.”).
Here, however, the Examining Attorney has asserted that the cited mark is
famous, based on media reports indicating that, for example, LE CREUSET is a
“world renowned brand” and “one of the most coveted kitchenware brands in the
world.” August 19, 2018 Office Action TSDR 4, 11-48. In its Appeal Brief, Applicant
Serial No. 87677215
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agrees, stating, for example, that “the applicant share [sic] the same view as the
examiner that Le Creuset is a ‘world renowned cookware brand,’” and “[t]he more
famous a trademark is the less is the likelihood of confusion, which is probably why
it has since 2015, not been a single known case of confusion.” 7 TTABVUE 6-7.
Assuming the Examining Attorney and Applicant are correct that LE CREUSET
is a famous mark, that can only weigh in favor of finding a likelihood of confusion.
Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 675, 223 USPQ
1281, 1284 (Fed. Cir. 1984) (fame “can never be of little consequence”). See also Recot,
Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000) (“When a
famous mark is at issue, a competitor must pause to consider carefully whether the
fame of the mark, accorded its full weight, casts a ‘long shadow which competitors
must avoid.”) (quoting Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350,
22 USPQ2d 1453, 1457 (Fed. Cir. 1992)). As the Federal Circuit stated in Kenner
Parker: “If investors forfeit legal protection by increasing a mark’s fame, the law
would then countenance a disincentive for investments in trademarks.” Kenner
Parker Toys, 22 USPQ2d at 1457. That is why we have specifically rejected the exact
argument Applicant makes in this case, and have held that fame can only weigh in
favor of, not against, a likelihood of confusion. L’Oreal S.A. v. Marcon, 102 USPQ2d
1434, 1438 (TTAB 2012).
To the extent this factor is relevant, it also weighs in favor of finding a likelihood
of confusion.
Serial No. 87677215
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D. Consumer Sophistication
Applicant argues that consumers of kitchen and cooking-related goods are
sophisticated and careful, specifically referring to “the often extremely high cost of
many kitchen utensils,” and claims this would lessen the likelihood of confusion. 7
TTABVUE 4. The argument is unavailing, as it is unsupported by any evidence.
In any event, Applicant’s identification of goods includes no limitations as to price,
or type of consumers, for its spoons, bottle openers, whisks, scissors, can openers,
kitchen mitts, or other goods, just as Registrant’s identification includes no price or
other limitations on its spatulas, corkscrews, pasta turning forks and other goods. We
must base our decision on the “least sophisticated potential purchasers” for the goods
as identified, many of which are simple kitchen or cooking tools. See e.g. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163
(Fed. Cir. 2014) (quoting Gen. Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100 USPQ2d
1584, 1600 (TTAB 2011), judgment set aside on other grounds, 2014 WL 343267
(TTAB 2014)). Ordinary consumers at all income levels purchase these ubiquitous
items, which as identified are not limited to any particular consumers or price points.
This factor is neutral.
E. Lack of Actual Confusion
The lack of evidence of actual confusion carries little weight in an ex parte case
such as this. Majestic Distilling, 65 USPQ2d at 1205. In fact, “it is unnecessary to
show actual confusion in establishing likelihood of confusion.” Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). This
factor is also neutral.
Serial No. 87677215
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II. Conclusion
The goods, channels of trade and classes of consumers are identical, which reduces
the degree of similarity between the marks needed to show a likelihood of confusion.
As a result, the marks’ identical connotation is likely to result in consumer confusion,
notwithstanding the marks’ differences in appearance and sound.
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.