Castle Co-Packers, LLC

Trademark Trial and Appeal Board

Apr 19, 2013

No. 85268226 (T.T.A.B. Apr. 19, 2013)

Mailed:
April 19, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Castle Co-Packers, LLC
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Serial No. 85268226
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Paul D. Bangor, Jr. of Thorp Reed & Armstrong, LP for
Castle Co-Packers, LLC

Dierdre G. Robertson, Trademark Examining Attorney, Law
Office 111 (Robert L. Lorenzo, Managing Attorney).
_______

Before Seeherman, Cataldo and Gorowitz, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Castle Co-Packers, LLC has appealed from the final
refusal of the trademark examining attorney to register
CASTLE BEVERAGES in standard characters, with BEVERAGES
disclaimed, for “bottled water; seltzer water; soda water;
soft drinks, namely, sodas.”1 Registration has been refused
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 85268226, filed March 16, 2011, based
on Section 1(b) of the Trademark Act (intent-to-use).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 85268226
2
§ 1052(d), on the ground of likelihood of confusion.
Specifically, the examining attorney asserts that
applicant’s mark so resembles the mark CASTELLO, in
standard characters, registered for “mineral and sparkling
waters,”2 that, if used on applicant’s goods, it is likely
to cause confusion or mistake or to deceive. The cited
registration includes the statement: The English
translation of the word “CASTELLO” in the mark is “castle.”
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003).
Turning first to the factor of the similarity of the
goods, applicant’s identified bottled water, seltzer water
and soda water must be considered to be legally identical
to or to encompass the mineral water and sparkling water
identified in the cited registration. As such, the goods
must also be deemed to travel in the same channels of trade
and be sold to the same classes of purchasers. In re Smith
and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). Further,

2 Registration No. 3757170, issued March 9, 2010.
Ser No. 85268226
3
because of the nature of the goods, they will be purchased
by the public at large, who cannot be presumed to have any
degree of sophistication. Moreover, these goods are
relatively inexpensive and likely to be purchased casually
and on impulse, thereby increasing the risk of confusion.
In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006). These du
Pont factors of the similarity of the goods, channels of
trade and conditions of purchase favor a finding of
likelihood of confusion.
This brings us to the factor of the similarity of the
marks, which is the crux of this issue. We approach this
analysis noting that, when marks would appear on virtually
identical goods or services, as they do here, the degree of
similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). As the examining attorney points out,
the marks are similar in appearance, in that CASTLE, the
first word of applicant’s mark, and CASTELLO, the entirety
of the cited mark, both begin with the letters CAST and are
followed by the letters LE/ELL. Applicant’s mark also
includes the word BEVERAGES, but because it is the generic
term for the goods, it has no source-identifying
significance, and therefore is not sufficient to
Ser No. 85268226
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distinguish the marks. Although we acknowledge that there
are specific differences in the endings of the marks, such
differences are not likely to be noticed when a customer
impulsively purchases a bottle of water. Rather, a
consumer who is familiar with the registrant’s CASTELLO
bottled water, and wants to quickly obtain a bottle of
water, is likely to just “grab” a CASTLE BEVERAGES bottle
from a refrigerated display without noting the differences
in the mark.
As for the meaning of the marks, the examining
attorney contends that, under the doctrine of foreign
equivalents, the meanings are the same. The examining
attorney has submitted translations from various sources
showing that CASTELLO is the Italian word for CASTLE.3
“Under the doctrine of foreign equivalents, foreign
words from common languages are translated into English to
determine genericness, descriptiveness, as well as
similarity of connotation in order to ascertain confusing
similarity with English word marks.” Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d
1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). The doctrine

3 Concise Oxford Paravia Italian Dictionary © 2009;
WordReference English-Italiano Dictionary © 2012,
www.wordreference.com; www.freetranslation.com;
http://translate.google.com.

Ser No. 85268226
5
is applied “when it is likely that the ordinary American
would ‘stop and translate [the word] into its English
equivalent.’” Id., quoting In re Pan Tex Hotel Corp., 190
USPQ 109, 110 (TTAB 1976).
Although applicant argues that consumers will not stop
and translate CASTELLO into CASTLE, it has given us little
evidence to support that claim. We view CASTELLO to be of
a different nature from the mark TIA MARIA for a Mexican
restaurant (would not be translated by consumers as AUNT
MARY’S, and therefore is not confusing with AUNT MARY’S for
canned vegetables), In re Tia Maria, Inc., 188 USPA 524
(TTAB 1975); LA POSADA (consumers would not stop and
translate as “the inn”), In re Pan Tex Hotel Corp., supra;
or CORDON BLEU (not the equivalent of BLUE RIBBON because
even French speakers would not translate the mark), Cont’l
Nut Co. v. Cordon Bleu, 494 F,2d 1397, 181 USPQ 647 (CCPA
1974). Rather, we view CASTELLO as more similar to MARCHE
NOIR, which was found to be the foreign equivalent of BLACK
MARKET, such that MARCHE NOIR for jewelry was found likely
to cause confusion with BLACK MARKET for jewelry. In re
Thomas, supra. See also, In re Isabella Fiore LLC, 75
USPQ2d 1564, 1569 (TTAB 2005). Although the Fiore case
involved the question of whether FIORE was primarily merely
a surname, the Board considered the meaning of the mark
Ser No. 85268226
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under the doctrine of foreign equivalents. The Board
found:
“Fiore” is an Italian word that is listed as the
only translation of the common English word
“flower.” It is the type of term that potential
customers would stop and translate.

Similarly, we find that customers would stop and translate
CASTELLO.
Applicant appears to take the position that only a
small percentage of people in the United States speak
Italian and would understand the meaning of CASTELLO, and
therefore it would be a limited number of people who are
likely to be confused. We are not persuaded by this
argument. As the Board said in In re Ithaca Industries,
Inc., 230 USPQ 702, 703 (TTAB 1986), “it does not require
any authority to conclude that Italian is a common, major
language in the world and is spoken by many people in the
United States.” “We presume that a word in one of the
common, modern languages of the world will be spoken or
understood by an appreciable number of U.S. consumers for
the goods at issue.”4 In re La Peregrina Ltd., 86 USPQ2d
1645, 1648 (TTAB 2008). Cf. In re Isabella Fiore LLC, 75
USPQ2d at 1569 (“Italian, as a major, modern language, is

4 The goods at issue in the La Peregrina case were jewelry, but
the principle is equally applicable to mineral and sparkling
water.
Ser No. 85268226
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not an obscure language such as Old English.”). We also
think that applicant’s limiting the affected consumers to
those who live in homes where Italian is spoken, as shown
by the 2010 census, does not adequately reflect the number
of people in the United States who speak or understand the
Italian language, even if that is not the language spoken
in their homes. Further, we do not view as pertinent the
“percentage” argument made by applicant, i.e., based on the
number of people living in Italian-speaking households,
compared with the total number of people living in the
United States, “0.38 percent of the population would be
able to translate the Castello mark.” Brief, p. 6, n. 1.
Applicant bases its argument regarding the limited number
of people who are likely to be confused on statements made
by the Court in In re Spirits International N.V., 563 F.3d
1347, 90 USPQ2d 1489 (Fed. Cir. 2009), but those statements
addressed the issue of materiality with respect to a
geographic deceptiveness refusal, not the issue of
likelihood of confusion. Therefore, we adhere to the case
law that has previously rejected the percentage argument of
applicant. See, In re Thomas, 79 USPQ2d at 1024,
addressing the applicant’s argument, based on the U.S.
census, that since only 0.6% of the population speaks
French, it was unlikely that the average American buyer
Ser No. 85268226
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would translate the French language mark. The Board stated
in Thomas that “the ‘ordinary American purchaser’ in this
context refers to the ordinary American purchaser who is
knowledgeable in the foreign language,” and that the
applicant’s interpretation of it would write the doctrine
of foreign equivalents out of existence. Id.
Applicant has also argued that CASTELLO would not be
perceived as meaning CASTLE because it has meanings as a
surname and a geographic place name. Applicant claims that
CASTELLO is “a relatively common surname”; that there are
“many famous individuals named Castello”; and that there
are “many famous locations named Castello.” Brief, p. 3.
However, when we examine the support for applicant’s
claims, we find that the evidence is lacking. With respect
to CASTELLO being a relatively common surname, applicant
relies on the fact that this name appears 878 times in a
LexisNexis surname public records database. These numbers
do not persuade us that CASTELLO is a common surname; on
the contrary, the Board has previously found that HACKLER,
with 1295 listings in the Phonedisc database, is a rare
surname. In re United Distillers plc, 56 USPQ2d 1220 (TTAB
2000).
As for the claim that there are many famous
individuals with this name, the evidence submitted by
Ser No. 85268226
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applicant5 lists three “famous” people with this surname,
and it appears that for the first person, the more
recognized spelling is Castellio:
Sebastian Castellio (also spelled Castello, 1515-
1563), French theologian
Giovanni Battista Castello (c. 1500-c. 1579),
Italian painter
Dario Castello (c. 1590-c. 1630), Italian
composer.

We think it questionable that many consumers of mineral and
sparkling water would be aware of these individuals, such
that they would view CASTELLO as referencing one or more of
them. Cf. In re Isabella Fiore, supra at 1567
(“applicant’s argument (Brief at 10) that the term ‘Fiore’
has historical significance because it ‘is associated with
a number of historical people, events, and customs,
including the Italian mystic and philosopher Joachim of
Fiore and the classic Italian folk dance, ‘Ballo del Fiore’
(‘Dance of the Flower’)’ is not persuasive.”); In re
Champion International Corp., 229 USPQ 550 (TTAB 1985)
(although McKinley was the name of a President, the Board
found that the primary significance of MCKINLEY was not of
the historical character).

5 Webster’s Online Dictionary with Multilingual Thesaurus
Translation, www.websters-online-dictionary.org. Submitted as
part of July 3, 2012 request for reconsideration, p. 2. These
same three names also appear in the Wikipedia entry, at p. 11 of
the request for reconsideration.
Ser No. 85268226
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Applicant’s claim that there are “many famous
locations named Castello” is based on the following listing
in the Wikipedia entry for Castello:
Castello, Venice is the largest of the six
sestieri of Venice
Castello, the old town center of Giudicato of
Cagliari in Sardinia
Castello, Hong Kong, a private housing estate in
Hong Kong
A locality in the town of Monteggio in
Switzerland.

Again, based on this evidence alone, we cannot conclude
that these are famous or well-known geographic places, or
that any of these place name meanings would come to mind
when consumers see the trademark CASTELLO on bottled water.
We note, in this connection, that these place names are not
even the names of towns or cities, but areas within a town
or a city.
Thus, we reject applicant’s claim that consumers would
view CASTELLO as having any meaning other than the Italian
word castle. As the examining attorney has pointed out,
applicant’s own submissions reinforce this recognition.
The Wikipedia entry for “castello” states, in the first
line, that “Castello is the Italian word for castle,”6 while
the entry from Webster’s Online Dictionary7 lists as its

6 Submitted with July 3, 2012 request for reconsideration,
p. 11.
7 Webster’s Online Dictionary, identified in footnote 5.
Request for reconsideration filed July 3, 2012, p. 2.
Ser No. 85268226
11
first page, “Common Expressions: Castello,” with the first
two listings showing that CASTELLO has the meaning of
castle, e.g.:
Castello Sforzesco (English: Sforza Castle) is a
former castle in Milan….

Castello Ursino is a once impregnable 13th century
castle in Catania, Sicily.

The Webster’s Online Dictionary entry further reinforces
the meaning of CASTELLO as “castle” by including multiple
pictures of castles.
Because applicant’s mark CASTLE BEVERAGES and the
cited mark CASTELLO are similar in appearance and
pronunciation, are identical in meaning, and overall are
similar in commercial impression, we find that this du Pont
factor of the similarity of the marks favors a finding of
likelihood of confusion.
Although not specifically discussed by the examining
attorney or applicant, we note that there is no evidence of
third-party use or registration of CASTLE or CASTELLO marks
that would show that the cited mark has a suggestive
meaning, or would otherwise affect the scope of protection
to be accorded this registration. Therefore, we treat
CASTELLO as a strong mark.
After considering all of the du Pont factors on which
there has been argument or evidence, we find that
Ser No. 85268226
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applicant’s mark CASTLE BEVERAGES for its identified goods
is likely to cause confusion with the cited registration.
The factors of the identity of the goods and channels of
trade, and the impulse nature of the purchases, strongly
favor such a finding. The similarities in appearance and
pronunciation of the marks, even without the identity of
meaning, support such a finding as well. Thus, even
without relying on the doctrine of foreign equivalents, and
in view of the principle that doubt must be resolved in
favor of the registrant, it would be appropriate to affirm
the refusal of registration. When we include the identity
of meaning resulting from the doctrine of foreign
equivalents, we have no doubt that confusion is likely to
result from applicant’s use of the mark CASTLE BEVERAGES
for “bottled water; seltzer water; soda water; soft drinks,
namely, sodas.”
Decision: The refusal of registration is affirmed.