Al-Rabie Saudi Foods Co. Ltd.

Trademark Trial and Appeal Board

Jan 25, 2013

No. 77465502 (T.T.A.B. Jan. 25, 2013)

Mailed: January 25, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Al-Rabie Saudi Foods Co. Ltd.
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Serial No. 77465502
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Brent E. Routman and Scott M. Oslick of Merchant & Gould PC for Al-Rabie Saudi
Foods Co. Ltd.
Asmat Khan, Trademark Examining Attorney, Law Office 114 (K. Margaret Le,
Managing Attorney).
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Before Holtzman, Lykos, and Masiello, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:

On May 5, 2008, Al-Rabie Saudi Foods Co. Ltd (“applicant”) filed an
application pursuant to Section 1(b) to register the mark displayed below

This Opinion is Not a
Precedent of the TTAB
Serial No. 77465502
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for:
Meat, fish, poultry, and game; meat extracts, the preserved, dried and
cooked and vegetables and fruits; jams, jellies, eggs; edible oils and
fats; pickles; strawberry flavored milk, banana flavored milk, low fat
and regular milk in International Class 29;

Coffee, tea, cocoa, sugar, rice, tapioca, and sago extract from special
palm tree, prepared coffee and coffee based beverages in International
Class 30; and

Beer, ale and porter; mineral and aerated waters and other non-
alcoholic juice beverages, namely, grape, raspberry, peach, strawberry,
banana, mango, apple, orange, pineapple, apricot, mixed berry, guava
nectar, coconut, kiwi, lime, fruit cocktail, and pear juices in
International Class 32.

The application includes the following transliteration and translation statements:
“The non-Latin characters in the mark transliterate to ‘ALRABIE’ and this means
spring time in English;” “[t]he English translation of ‘AL-RABIE’ in the mark is
spring time.”
The description of the mark is as follows:
The mark consists of the colors white and green with the color white
appearing in the stylized depiction of a cow's head, in the non-Latin
characters and in the wording "AL-RABIE", the color green appears in
the rectangular background.

Invoking the doctrine of foreign equivalents, the Trademark Examining
Attorney refused registration of applicant’s mark under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark so
resembles the following registered marks, owned by two different entities, that
when used on or in connection with applicant’s identified goods, they are likely to
cause confusion or mistake or to deceive:
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Registration No. 0750940 for the mark SPRINGTIME owned by
Patterson Frozen Foods, Inc., for “frozen fresh fruits and vegetables” in
International Class 46,1

Registration No. 1243036 for the mark SPRINGTIME owned by
Southern Beverage Packers, Inc., for “Non-Carbonated Fruit Flavored
Soft Drinks” in International Class 32;2 and

Registration No. 1890088 for the mark SPRINGTIME also owned by
Southern Beverage Packers, Inc. for “bottled drinking water” in
International Class 32.3

The examining attorney in her appeal brief has withdrawn the refusal to
register as to the following goods: “meat, fish, poultry, and game; meat extracts;
jams, jellies, eggs; edible oils and fats; pickles; strawberry flavored milk, banana
flavored milk, lowfat and regular milk” in International Class 29, all of the items
listed in International Class 30, and “beer, ale and porter” in International Class
32. She now states that the refusal to register the mark under Section 2(d) of the
Trademark Act is limited to the following goods: “preserved, dried and cooked and
vegetables and fruits” in International Class 29 and “mineral and aerated waters
and other non-alcoholic juice beverages, namely, grape, raspberry, peach,
strawberry, banana, mango, apple, orange, pineapple, apricot, mixed berry, guava
nectar, coconut, kiwi, lime, fruit cocktail, and pear juices” in International Class 32.
For the reasons stated below, we affirm the refusal to register as to those remaining
goods.

1 Registered on June 11, 1963; renewed.

2 Registered on June 21, 1983; renewed.

3 Registered April 18, 1995; renewed.

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We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”).
See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors and the other relevant du
Pont factors are discussed below.
I. Goods and Channels of Trade
First, we consider the goods and channels of trade. The goods and/or services
of the parties need not be identical or directly competitive to find a likelihood of
confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186
USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, it is sufficient to
show that because of the conditions surrounding their marketing, or because they
are otherwise related in some manner, the goods and/or services would be
encountered by the same consumers under circumstances such that offering the
goods and/or services under similar marks would lead to the mistaken belief that
they come from, or are in some way associated with, the same source. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289,
1290 (Fed. Cir. 1984).
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With regard to Registration No. 1890088, owned by Southern Beverage
Packers, Inc., the goods identified as “bottled drinking water” are sufficiently broad
to encompass applicant’s “mineral and aerated waters,” and therefore are legally
identical. Moreover, even if the goods are not identical, the examining attorney has
submitted evidence to show that the goods are related. See Registration No.
3617489 (“Non-alcoholic beverages, namely, bottled water, mineral water, and
spring water”); Registration No. 3442295 (“Bottled water, spring water, mineral
water, carbonated water...").
As to Registration No. 1243036 also owned by Southern Beverage Packers,
Inc., for the goods identified therein as “non-carbonated fruit flavored soft drinks,”
applicant’s “mineral and aerated waters and other non-alcoholic juice beverages,
namely, grape, raspberry, peach, strawberry, banana, mango, apple, orange,
pineapple, apricot, mixed berry, guava nectar, coconut, kiwi, lime, fruit cocktail, and
pear juices” are related as evidenced by the third-party registrations and website
excerpt made of record by the examining attorney. See Registration No. 3501874
(“Fruit beverages; Fruit drinks; Fruit flavored soft drinks; Fruit-flavored beverages;
Fruit-flavored drinks; … Non-alcoholic fruit juice beverages; Soft drinks”); website
excerpt from Coca Cola “Product List” (June 27, 2010 Office Action).
Lastly, with regard to Registration No. 0750940 owned by Patterson Frozen
Foods, Inc., to show that registrant’s “frozen fresh fruits and vegetables” are related
to applicant’s “preserved, dried and cooked and vegetables and fruits,” the
examining attorney submitted into the record two third-party registrations
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identifying both applicant’s and registrant’s types of goods. See Registrations Nos.
3259047 and 3080522. Copies of use-based, third-party registrations may serve to
suggest that the goods are of a type which may emanate from a single source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). The
examining attorney also submitted Internet evidence from Encore Fruit Marketing
Inc.’s website showing the sale of both frozen and processed fruits and vegetables.
This evidence taken together is sufficient to show that the goods are related.
Because the goods are the same and/or closely related and the involved
application and registrations are unrestricted as to trade channels, we must
presume that applicant’s and registrants’ goods travel in the same ordinary trade
and distribution channels and will be marketed to the same potential consumers.
Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983).
In other words, there is nothing that prevents applicant from offering for sale its
identified goods (once they are in use) through the same channels of trade and to
the same consumers who purchase registrants’ goods, and vice-versa. Accordingly,
we find that these du Pont factors also weigh in favor of finding a likelihood of
consumer confusion.
II. Comparison of the Marks – Doctrine of Foreign Equivalents
Next, we shall consider the du Pont likelihood of confusion factor regarding
the similarity or dissimilarity of the marks in their entireties as to appearance,
sound, connotation and commercial impression and whether it was proper for the
examining attorney to invoke the doctrine of foreign equivalents. At the outset we
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note that in instances where the goods or services are legally identical, as with
Registration No. 1890088, the degree of similarity between the marks necessary to
support a determination that confusion is likely declines. In re Mighty Leaf Tea,
601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Group
Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010).
Applicant contends that the doctrine of foreign equivalents should not be
applied in this case because the “ordinary American purchaser is unlikely to be
familiar with Arabic,” and therefore is unlikely to know that the English translation
of “al-rabie” is “spring time.” Applicant’s Brief, p. 8. In addition, applicant argues
that because the Arabic letters in applicant’s mark do not look or sound like the
English word “springtime” in registrants’ marks, the marks are too dissimilar for
application of the doctrine of foreign equivalents.
Applicant’s arguments are misplaced. The doctrine of foreign equivalents is
applied when the term is from a common modern language and it is likely that “the
ordinary American purchaser would ‘stop and translate [the term] into its English
equivalent.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005) (“Palm Bay”), quoting
In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976). See also In re Thomas,
79 USPQ2d 1021 (TTAB 2006). The term “ordinary American purchaser” includes
all American purchasers, including those proficient in a non-English language who
would ordinarily be expected to translate words into English. In re Spirits Int’l
N.V., 563 F.3d 1347, 190 USPQ2d 1489, 1492 (Fed. Cir. 2009). See also In re
Serial No. 77465502
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Thomas, 79 USPQ2d at 1024. Thus, the proper inquiry is not whether the “ordinary
American purchaser” is familiar with Arabic; rather, the correct inquiry is whether
the ordinary American consumer familiar with Arabic would “stop and translate”
“al-rabie” to the English equivalent of “spring time.” In addition, the doctrine has
been applied in instances where the foreign wording does not look or sound like the
English language equivalent but the English translation is a literal and exact
translation of the foreign wording. See e.g., In re Thomas, 79 USPQ2d at 1021
(holding MARCHE NOIR for jewelry likely to be confused with the cited mark
BLACK MARKET MINERALS for retail jewelry and mineral store services where
evidence showed that MARCHE NOIR is the exact French equivalent of the English
idiom “Black Market,” and the addition of MINERALS did not serve to distinguish
the marks); In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (holding
applicant’s mark LUPO for men’s and boys’ underwear likely to be confused with
the cited registration for WOLF and design for various clothing items, where LUPO
is the Italian equivalent of the English word “wolf”). Cf. Nestle's Milk Products, Inc.
v. Baker Importing Company, Inc., 182 F.2d 193, 86 USPQ 80, 82 (CCPA 1950)
(“Foreign language words, not adopted into the English language, which are
descriptive of a product, are so considered in registration proceedings despite the
fact that the words may be meaningless to the public generally.”). In this case,
there’s no dispute in the record regarding the transliteration and translation of the
literal elements of applicant’s mark. The examining attorney, in applying the
doctrine of foreign equivalents, relies on the statements provided by applicant. We
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therefore find that the literal elements of applicant’s mark are identical in meaning
and connotation to each of the registered marks. Furthermore, in light of this
undisputed evidence, we must assume that the ordinary U.S. consumer familiar
with Arabic would “stop and translate” the literal elements in applicant’s mark to
“springtime,” particularly as used in connection with these identical and/or closely
related goods.
As to the additional design elements in applicant’s mark, namely the stylized
depiction of the cow’s head and green and white color features, we find that they fail
to mitigate the identical meaning and connotation of the respective literal portions
of the involved marks. Applicant is reminded of the often-recited principle that
when a mark consists of a literal portion and a design portion, the literal portion is
more likely to be impressed upon a purchaser’s memory and to be used in calling for
the goods and/or services; therefore, the literal portion is normally accorded greater
weight in determining whether marks are confusingly similar. In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also CBS Inc. v.
Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir. 1983); In re Kysela
Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011). While acknowledging the
distinctions noted by applicant in its brief, we find that applicant overemphasizes
the effect of the addition of the design elements in applicant’s marks. It is more
likely that prospective consumers will overlook these distinctions and instead
confuse the marks as identifying goods from the same source, given that the
Serial No. 77465502
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translation of the literal element in applicant’s mark is identical to the sole literal
element of registrants’ marks.
In sum, upon consideration of applicant’s mark in its entirety, we find that it
was proper for the examining attorney to apply the doctrine of foreign equivalents.
Therefore, we find that the similarities outweigh the differences of the marks as to
their connotation and commercial impression, and this du Pont factor weighs in
favor of finding a likelihood of consumer confusion.
III. Scope of Protection
We next consider the strength of registrants’ marks and the number and
nature of similar marks in use. Applicant argues that because registrants’ marks
are weak, they are entitled to a limited scope of protection. In support of this
argument, applicant has made of record nine third-party registrations comprised
solely of the word SPRINGTIME or composite marks incorporating that term.
We are not persuaded by this evidence. First, we note that three of the third-
party registrations relied upon by applicant are the registrations which were cited
by the examining attorney in supported of her Section 2(d) refusal; three others are
for goods and services which are no longer relevant to the refusal to register in light
of the examining attorney’s partial withdrawal in her brief. See Registration Nos.
3319574 for the mark SPRINGTIME COFFEE and 3345119 for the mark
SPRINGTIME COFFEE COMPANY, both for “coffee supply services for offices,
namely, supplying ground coffee;” Registration No. 3612332 for the mark
SPRINGTIME CHAMPAGNE POMMERY for “sparkling wines; champagne wines.”
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As such, they are of no probative value. Of the remaining three registrations, they
are for goods and services which are not closely related to those goods at issue here.
Registration No. 2198674 for the mark THE TASTE OF SPRINGTIME for “cheese;”
Registration No. 1104283 for the mark SPRINGTIME for “water distillers for
domestic use;” and Registration No. 1175540 for the mark RISTORANTE
PRIMAVERA and design (translated as "Springtime Restaurant") for “restaurant
services.” Thus, on this record, we do not find registrants’ marks to be weak for the
identified goods.
To the extent that there are any other relevant du Pont factors, we treat
them as neutral.
After considering all of the evidence of record and argument pertaining to the
du Pont likelihood of confusion factors, we conclude that there is a likelihood of
confusion between applicant’s mark and the registered marks when used in
connection with their identified goods. To the extent there is any doubt, we resolve
it, as we must, in registrants’ favor. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988).
DECISION: The refusal to register is affirmed as to the following goods:
“preserved, dried and cooked and vegetables and fruits” in International Class 29
and “mineral and aerated waters and other non-alcoholic juice beverages, namely,
grape, raspberry, peach, strawberry, banana, mango, apple, orange, pineapple,
apricot, mixed berry, guava nectar, coconut, kiwi, lime, fruit cocktail, and pear
juices” in International Class 32.
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The application will move forward to publication for the following goods:
“meat, fish, poultry, and game; meat extracts; jams, jellies, eggs; edible oils and fats;
pickles; strawberry flavored milk, banana flavored milk, lowfat and regular milk” in
International Class 29, “coffee, tea, cocoa, sugar, rice, tapioca, and sago extract from
special palm tree, prepared coffee and coffee based beverages in International Class
30; and in International Class 30, and “beer, ale and porter” in International Class
32.