Fonovisa, Inc.

Trademark Trial and Appeal Board

Jul 8, 1998

No. 74241020 (T.T.A.B. Jul. 8, 1998)

Oral Hearing: Paper No. 15
September 30, 1997 GDH/MD
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 8,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Fonovisa, Inc.
________
Serial No. 74/241,020
_______
Jane Shay Wald and Richard L. Gausewitz of Oppenheimer Poms Smith
for Fonovisa, Inc.
Baldev S. Sarai, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Hanak, Quinn and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Fonovisa, Inc. has filed an application to register the
mark "MELODY" and design, as reproduced below,
Ser. No. 74/241,020
2
for "cassette tapes, compact discs and phonograph records bearing
musical sound recordings in the Spanish language" in
International Class 9.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark ";+4?-3a," which is registered in the manner shown below
for "phonograph records, audio cassettes and compact discs[,] all
for musical reproductions,"2 as to be likely to cause confusion,
mistake or deception.3

1 Ser. No. 74/241,020, filed on January 28, 1992, which alleges dates
of first use of 1975. The application also seeks to register the mark
for "posters" in International Class 16.
2 Reg. No. 1,687,635, issued on May 19, 1992, which sets forth dates of
first use of November 30, 1965; combined affidavit §§8 and 15. The
registration states that: "The English translation of the foreign
word in the mark is 'melody'."
Ser. No. 74/241,020
3
Applicant has appealed. Briefs have been filed and an
oral hearing was held.4 We reverse the refusal to register.
Turning first to consideration of the respective goods,
we note that, as correctly pointed out by the Examining Attorney,
registrant’s goods encompass and are otherwise closely related to
applicant’s goods since, in the absence of any limitations or
restrictions in the identification, the former covers all types
of phonograph records, compact discs and cassette tapes,
including those which, like applicant’s goods, are recorded in
Spanish. See, e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Registrant’s goods, therefore, would not only be sold in the same
channels of trade as those in which applicant’s Spanish language
recordings are marketed, such as record stores and the recorded
music departments of mass merchandisers and audio products

3 As indicated in the final refusal, the "refusal pertains only to [the
goods in International] Class 9."
4 Counsel for applicant, at the oral hearing, raised for the first time
the issue of whether the Examining Attorney lacked "subject matter
jurisdiction" over the application, for the purpose of issuing the
Office action which led to the final refusal, since a letter of
protest from the registrant was received after applicant’s mark had
been published for opposition. While we note, in particular that
applicant’s mark was actually published for opposition twice (first on
July 7, 1992 and again, after the lost file was reconstructed, on
December 26, 1995), registrant’s letter of protest was filed within 30
days of the initial publication of applicant’s mark, and thus was
considered timely (see TMEP §1116.03), even though it was not formally
granted—-and subject matter jurisdiction was restored to the Examining
Attorney by the Assistant Commissioner for Trademarks-—on February 8,
1996 (see TMEP §1116.02). Thereafter, on March 20, 1996, the
Examining Attorney issued the Office action imposing the Section 2(d)
refusal, which after receipt and consideration of applicant's timely
response thereto, was made final in an Office action issued on
September 19, 1996. The intervening second publication of applicant's
mark (on December 26, 1995) appears, therefore, to have been erroneous
and, in any event, was surplusage. Accordingly, applicant's objection
on the basis of an asserted lack of subject matter jurisdiction by the
Examining Attorney is not well taken.
Ser. No. 74/241,020
4
retailers, but some of registrant’s goods would even be found in
the same bins or on the same racks as applicant’s goods.
Consequently, if the respective products were to be sold under
the same or substantially similar marks, confusion as to their
source or sponsorship would be likely to occur.
Considering, then, the marks at issue, the Examining
Attorney contends that "the doctrine of ’foreign equivalents’ is
applicable and compels a finding of likelihood of confusion."
According to the Examining Attorney:
Under this doctrine, foreign words from
modern languages are translated into English
to, inter alia, ascertain confusing
similarity with English word marks. The test
is whether, to those American buyers familiar
with the foreign language, the word would
denote its English equivalent. The rationale
behind the rule is that a foreign word
familiar to an appreciable segment of
American purchasers may be confusingly
similar to its English equivalent, or vice
versa. 3 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, Sections
23:36 - 23:39 (4th ed. 1997). See also In re
Ithaca Industries, Inc., 230 USPQ 702 (TTAB
1986); In re American Safety Razor Co., 2
USPQ2d 1459 (TTAB 1987); and In re Perez, 21
USPQ[2d] 1075 (TTAB 1991). ....
In the present case, the Examining Attorney asserts
that the respective marks are similar in sound, meaning and
commercial impression. In particular, while stating that "[I]t
is conceded that the marks are very different in appearance given
that one is in English while the other is a Russian word shown in
the Cyrillic alphabet," the Examining Attorney maintains that
"the difference in appearance is outweighed by the similarities
between the marks as to meaning, pronunciation and commercial
Ser. No. 74/241,020
5
impression." As to the meanings of the respective marks, the
Examining Attorney notes that, not only does the cited
registration contain the statement that the foreign word which
forms the mark ";+4?-3a" translates into English as "melody,"
but the dictionary definitions from both The Oxford Russian-
English Dictionary (2d ed. 1984) at 341 and the Hippocrene
Standard Dictionary Russian-English English-Russian (1993) at 84
and 112 show that the registrant’s mark ";+4?-3a" means
"melody" or "tune" in English.5 Thus, the Examining Attorney
argues, the respective "marks have the same meaning with respect
to their literal portions and can be considered to be
synonymous."
With respect to the pronunciation of the registrant’s
";+4?-3a" mark, the Examining Attorney also observes that the
Hippocrene Standard Dictionary Russian-English English-Russian
(1993) at 84 indicates that "the cited mark’s transliteration is
’melodiia’" and that such dictionary at 112 "demonstrates that
the English word ’melody’ translates exactly to the registrant’s
Russian word mark." The Examining Attorney, in light thereof,

5 Although such definitions are attached to the Examining Attorney’s
brief and were not previously made of record, the Examining Attorney
in his brief has "requested that the Board take judicial notice of the
dictionary definitions appended". Applicant’s objection thereto,
raised in its reply brief and again at the oral hearing, is utterly
without merit inasmuch as it is well settled that the Board may
properly take judicial notice of dictionary definitions. See, e.g.,
Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97
USPQ 330, 332 (CCPA 1953) and University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 74/241,020
6
insists that, not only is it the case that "[t]he marks are
clearly phonetically similar," but that:
Use of term "MELODY" or its Russian
equivalent in connection with musical sound
recordings creates the same commercial
impression, i.e., they both suggest music,
which is likely to be impressed upon the
minds of the many consumers of musical
recordings who speak and read modern Russian.
In view thereof, the Examining Attorney concludes that:
Given the fact that the registrant’s
mark is in non-Latin script, it is not likely
to be accepted as it is but rather [will be]
translated by potential purchasers of musical
sound recordings. In making the translation,
readers and speakers of Russian are bound to
note its similarity to the applicant’s mark
and wrongly assume that some connection
exists between the two labels. Even if the
foreign mark is not translated by purchasers,
the potential consumer cannot avoid the
phonetic similarity between the marks
"melody" versus "melodiia".
With respect to the design portion of
the applicant’s mark, it has often been
remarked that the literal portions of marks
are to be accorded greater weight in making
likelihood of confusion determinations
because purchasers use only the literal
elements of marks in calling for the branded
goods or services. This axiom is no less
true in the instant case where the design
element resembles a musical note which refers
back to or suggests the literal term "MELODY"
and thereby serves to emphasize it. In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB
1987); Amoco Oil Co. v. Americo, Inc., 192
USPQ 729 (TTAB 1976).
Applicant, on the other hand, contends that even if the
doctrine of foreign equivalents is deemed to be applicable,
confusion of an appreciable number of persons interested in
purchasing musical sound recordings is unlikely. Specifically,
applicant urges that:
Ser. No. 74/241,020
7
[I]f there were ever to be any
confusion, it would be relative to a person
having all of the following characteristics:
(a) is present in the United
States,
(b) reads and understands Russian
Cyrillic writing,
(c) wants to purchase a tape, disc
or phonograph record bearing a
musical sound recording in the
Spanish language, and
(d) ignores the prominent design
portion of Applicant’s mark.
It is submitted that it is not a matter
of how many persons in the United States read
the Cyrillic alphabet and understand what the
words mean. Nor is it a matter of how many
persons in the United States want to buy
Spanish-language musical sound recordings.
It is, instead, a matter of the likelihood of
there being a significant number of persons
who can and want to do both, and (also) who
disregard the design portion of Applicant’s
mark. It is submitted that there is no
likelihood of there being any such
significant number of persons, and
consequently that there is no likelihood of
confusion.
Applicant further contends, however, that because
registrant’s ";+4?-3a" mark is "written in the Russian Cyrillic
alphabet," the doctrine of foreign equivalents should not be
applicable, notwithstanding that such mark is "translatable into
the word portion of the composite [MELODY and design] mark."
According to applicant:
Reference is made to McCarthy on
Trademarks and Unfair Competition, J. Thomas
McCarthy, Fourth Edition, Volume 3, at §
23:36 (starting at page 23-83):
The Doctrine of Foreign Equivalents
should not be transformed into a
Ser. No. 74/241,020
8
mechanical and rigid doctrine. The
purchaser of the goods does not, of
course, see the English
"equivalent" compared to the
English language word mark alleged
to be confusingly similar. He sees
only a foreign word mark compared
to an English word mark. When it
is unlikely that the American buyer
will translate the foreign mark and
will take it as it is, then use of
the foreign equivalent gives a
skewed view of the marketplace.
Here, it is submitted to be ... unlikely
that an American buyer will translate the
Russian Cyrillic word. It is much more
unlikely that an American buyer who wants to
buy compact discs, etc., "bearing musical
sound recordings in the Spanish language"
will translate the Russian Cyrillic word. It
is unlikely that any such purchaser will
disregard the design portion of Applicant’s
composite mark.
As to the applicability of the doctrine of foreign
equivalents, we note that while such doctrine has been applied
most commonly, as here, in cases in which the literal elements of
the marks involved are a foreign term and its English
equivalent,6 the Board has expressed a reluctance to apply the
doctrine where the respective marks consist of terms from
different foreign languages.7 A justification for this latter
point of view is that the universe of potential customers in the
United States who are sufficiently fluent in three languages, and

6 See, e.g., cases cited in 3 J. McCarthy, McCarthy on Trademarks &
Unfair Competition (4th ed. 1998) §23:39.
7 See Safeway Stores Inc. v. Bel Canto Fancy Foods Ltd., 5 USPQ2d 1980,
1982 (TTAB 1987), stating that "this Board does not think it proper to
take the French expression 'bel air' and the Italian expression 'bel
aria' and then convert both into English and compare the English
translations to determine whether there is similarity as to
connotation, especially in this case."
Ser. No. 74/241,020
9
thus would be able to translate two different foreign language
terms or expressions into their corresponding English
equivalents, is undoubtedly very small. This case, while it
involves a mark with an English term and a mark appearing in the
Russian Cyrillic alphabet, nevertheless involves basically the
same general principle given the additional fact that applicant’s
goods are musical sound recordings in the Spanish language.
Clearly, in the United States, the prospect of an appreciable
number of prospective purchasers of applicant’s and registrant’s
Spanish language musical sound recordings who, in addition to
knowing Spanish, are familiar with the Russian language and are
also fluent in English, so as to be able both to translate
registrant’s ";+4?-3a" mark from Russian into English and
understand Spanish musical recordings, seems extremely remote.8
As our principal reviewing court has cautioned, in
general, with respect to determinations of likelihood of
confusion:
We are not concerned with mere theoretical
confusion, deception or mistake or with de
minimis situations but with the
practicalities of the commercial world, with
which the trademark laws deal.
Electronic Design & Sales Inc. v. Electronic Data Systems Corp.,
954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), citing Witco
Chemical Co. v. Whitfield Chemical Co., Inc., 418 F.2d 1403, 164
USPQ 43, 44-45 (CCPA 1969), aff’g, 153 USPQ 412 (TTAB 1967).

8 While, of course, those who understand both English and Russian but
not Spanish could nonetheless wish to listen to Spanish songs or other
sound recordings in the Spanish language, the number of such persons
would likewise be exceedingly small.
Ser. No. 74/241,020
10
Moreover, as the Board observed in In re Tia Maria, Inc., 188
USPQ 524, 525-26 (TTAB 1975):
[T]here are foreign expressions that even
those familiar with the language will not
translate, accepting the term as it is, and
situations arise in the marketplace which
make it feasible or even unlikely that
purchasers will translate the brand names or
labels appearing on canned foods and other
like products.
Keeping the foregoing in mind, we think that with
respect to registrant’s ";+4?-3a" mark, a substantial portion
of the American purchasing public would regard such term, in
light of the Cyrillic lettering in which it is shown, as simply
an abstract design or designation (recognizable possibly by some
as of Russian origin) and would not, especially in the absence of
an accompanying prominent depiction of a stylized musical note,
as in applicant’s "MELODY" and design mark, be inclined to
translate such term into its English equivalent of "MELODY"
and/or be able to vocalize the term as "melodiia" upon
encountering the term on Spanish language or other recordings of
music. In addition (and we believe such a situation to be
remote), even if those customers or prospective purchasers of
Spanish music and other musical sound recordings, who are also
conversant with both English as well as Spanish, were to regard
or recognize registrant’s ";+4?-3a" mark, despite a lack of
knowledge or understanding of Russian, as a cognate for the
English word "MELODY" in applicant’s mark, we nevertheless find
that the identity in connotation of the respective marks is

Ser. No. 74/241,020
11
outweighed by their striking differences in appearance and a
concomitant inability to pronounce registrant’s mark. As our
principal reviewing court point out in In re Sarkli, Ltd., 721
F.2d 353, 220 USPQ 111, 113 (Fed. Cir. 1983):
[S]uch similarity as there is in connotation
must be weighed against the dissimilarity in
appearance, sound, and all other factors,
before reaching a conclusion on likelihood of
confusion as to source.
Consequently, even among those few who might regard registrant’s
";+4?-3a" mark as having the meaning of the English word
"MELODY," when the respective marks are considered in their
entireties, the glaring visual differences therein, due to the
Cyrillic lettering in registrant’s mark and the large stylized
musical note prominently displayed as part of applicant’s mark,
are sufficient, given the inability to pronounce registrant’s
mark, to render the marks distinguishable and thereby avoid a
likelihood of confusion.
Decision: The refusal under Section 2(d) is reversed.
E. W. Hanak
T. J. Quinn
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board