Hy-Vee, Inc.

Trademark Trial and Appeal Board

Jan 26, 2018

No. 87120774 (T.T.A.B. Jan. 26, 2018)

Mailed: January 26, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hy-Vee, Inc.
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Serial No. 87120774
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Timothy J. Zarley of Zarley Law Firm PLC
for Hy-Vee, Inc.
Caryn Glasser, Trademark Examining Attorney, Law Office 105,
Jennifer L. Williston, Managing Attorney.
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Before Zervas, Wolfson and Adlin,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Hy-Vee, Inc. (“Applicant”) seeks registration on the Principal Register of the mark
PEACEFUL PIRANHA (in standard characters) for “Potato chips; processed nuts;
snack mix consisting primarily of processed nuts and also including seeds, dried fruit,
This Opinion is Not a
Precedent of the TTAB
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chocolate, raisins, popcorn, pretzels, crackers, granola and corn-based cereals and
chips” in International Class 29.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of
confusion with Registration No. 5024721 for the mark PIRAÑA for, inter alia:
Nut-based snacks, potato snacks, potato chips, packaged
potato chips, potato chips as snacks; potato sticks;
prepared nuts; roasted nuts, candied nuts, shelled nuts,
salted nuts, blanched nuts; canned nuts, processed nuts,
seasoned nuts; roasted peanuts, canned peanuts, processed
peanuts, coated peanuts; shelled walnuts, prepared
walnuts, seasoned walnuts; prepared hazelnuts; snack food
mixes consisting of dehydrated fruit; edible sunflower
seeds, prepared sunflower seeds, processed sunflower
seeds.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Likelihood of Confusion
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). In any likelihood of confusion analysis, two key, though not exclusive,

1 Application Serial No. 87120774 was filed on July 29, 2016, under Section 1(b) of the
Trademark Act, based upon Applicant’s allegation a bona fide intent to use the mark in
commerce.
2 Registered on the Principal Register on August 23, 2016. The registration includes the
following translation statement: “The English translation of the word ‘PIRAÑA’ in the mark
is ‘PIRANHA.’”
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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); In re Dixie Restaurants Inc., 105 F.3d 1405,
41 USPQ2d 1531 (Fed. Cir. 1997).
A. Similarities Between The Goods; Trade Channels
We first compare the similarities between Applicant’s goods and Registrant’s
goods, including their respective channels of trade and classes of purchasers. Our
determination regarding the similarity of the goods, channels of trade and classes of
purchasers is based on the goods as they are identified in the application and
registration, respectively. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston
Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 17893, 1787 (Fed. Cir. 1990); see
also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002).
In this case, the goods in Applicant’s application and the cited registration are
identical in part: each includes “potato chips” and “processed nuts.” In addition,
Applicant’s goods include a snack mix made primarily of nuts, seeds and dried fruit,
and the goods in the cited registration include “snack food mixes consisting of
dehydrated fruit; edible sunflower seeds, prepared sunflower seeds, processed
sunflower seeds.” These goods are legally identical.
Because the goods in the application and the cited registrations are identical in
part and otherwise legally identical, we must presume that the channels of trade and
classes of purchasers are the same. See Citigroup Inc. v. Capital City Bank Group,
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Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); 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); American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). See also 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).
Accordingly, the second and third du Pont factors regarding the goods, and the
trade channels and classes of purchasers to whom the goods are offered, favor a
finding of likelihood of confusion.
B. The Marks
We next consider the first du Pont factor, that is, whether Applicant’s PEACEFUL
PIRANHA mark and Registrant’s PIRAÑA mark are similar or dissimilar when
viewed in their entireties in terms of appearance, sound, connotation and overall
commercial impression. See Stone Lion, 110 USPQ2d at 1160 (quoting Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005)). In comparing the marks, we are mindful that
where, as here, the goods are in part identical, the degree of similarity between the
marks necessary to find likelihood of confusion need not be as great as where there
is a recognizable disparity between the goods. Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
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1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007);
Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325
(TTAB 2007).
The test under the first du Pont factor is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but rather whether the
marks are sufficiently similar in terms of their overall commercial impression that
confusion as to the source of the goods offered under the respective marks is likely to
result. The focus is on the recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks. See Mini Melts, Inc. v.
Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC,
118 USPQ2d 1084, 1089 (TTAB 2016); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975).
Applicant’s mark is PEACEFUL PIRANHA. The cited mark is PIRAÑA. Because
the marks share the term “piranha” (or “piraña”), they are similar in appearance and
somewhat similar in pronunciation. While “it is well-established that it is improper
to dissect a mark, and that marks must be viewed in their entireties,” Coach Services,
101 USPQ2d at 1721, “one feature of a mark may be more significant than another,
and it is not improper to give more weight to this dominant feature in determining
the commercial impression created by the mark.” Id. (citing Leading Jewelers Guild,
82 USPQ2d at 1905); see also In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985) (“[T]here is nothing improper in stating that, for rational reasons,
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more or less weight has been given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in their entireties.”).
We find that “piranha’ is the dominant portion of Applicant’s mark because it is
modified by the term “peaceful” in the same manner as an adjective modifies a noun.
See. e.g., Stone Lion, 110 USPQ2d at 1161 (affirming TTAB’s finding that the noun
LION was the dominant part of applicant’s mark STONE LION CAPITAL). Although
the shared term is not the first term of Applicant’s mark, consumers are likely to
focus on this dominant term. See Hewlett-Packard Co., 62 USPQ2d at 1004 (finding
applicant’s mark PACKARD TECHNOLOGIES similar to opposer’s HEWLETT
PACKARD marks); Ava Enters. v. Audio Boss USA, Inc., 77 USPQ2d 1783 (TTAB
2006) (finding AUDIO BSS USA and design similar in appearance to BOSS AUDIO
SYSTEMS (stylized)); In re Jewelmasters, Inc., 221 USPQ 90 (TTAB 1983)
(JEWELMASTERS for retail jewelry store services held likely to be confused with
MASTER JEWELER’S COLLECTION for jewelry).
For English language speakers who are unfamiliar with Spanish, the differences
between the terms PIRANHA and PIRAÑA are insignificant. Both terms start with
the same four letters and end with the same letter “A.” Although Applicant’s mark
contains a silent letter “H,” there is little difference in appearance between the “N”
and the “Ñ.” Without knowledge of the purpose of the tilde in a Spanish “n” (i.e., that
it changes the pronunciation of the letter “n” to the “ny” sound such as is used in the
English word canyon), a consumer of Applicant’s goods may perceive the tilde as
simply a design feature of the mark or consider Registrant’s mark as a misspelling of
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the English word “piranha.” Those consumers who do not speak or understand
Spanish are unlikely to pronounce the “ny” sound and will consider the
pronunciations of the terms to be the same. For these reasons, such consumers will
associate both the terms PIRANHA and PIRAÑA with the fish.3
For consumers having a knowledge of Spanish, the terms will be perceived as
equivalents, under the doctrine of foreign equivalents. Under this doctrine, “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, 73 USPQ2d at 1696; see also In re
Am. Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987) (holding BUENOS DIAS for soap,
and GOOD MORNING and design for latherless shaving cream, likely to cause
confusion); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983) (holding EL SOL for
clothing and footwear, and SUN and design for footwear, likely to cause confusion).
Because Spanish is a common modern language, the doctrine of foreign equivalents
applies to marks displayed in Spanish. In re Highlights for Children, Inc., 118
USPQ2d 1268, 1271 (TTAB 2016) (“Spanish is a modern language that is widely
spoken in the United States.”). The evidence shows that the relevant English
translation of PIRAÑA is PIRANHA. The cited registration itself states that “piraña”
translates to the English “piranha,” and two Spanish-English bilingual dictionaries,

3 A “piranha” is a type of fish, “any of various usually small South American characin fishes
(genera Serrasalmus and Pygocentrus) that have very sharp teeth, often appear in schools,
and include some that may attack and inflict dangerous wounds upon humans and large
animals.” At https://www.merriam-webster.com, attached to Applicant’s Brief, 4
TTABVUE 8.
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of which we take judicial notice, also translate the Spanish “piraña” to the English
“piranha.”4 Thus, those purchasers who are familiar with, or fluent in, Spanish will
readily translate PIRAÑA to PIRANHA, and associate both terms with the fish.
With respect to their connotations and overall commercial impressions, Applicant
argues that the two words in its mark “are counter-intuitive and pose a juxtaposition
that requires thought and imagination on behalf of the consumer. Thus, there is an
incongruity in the Appellant’s PEACEFUL PIRANHA mark which creates an entirely
different connotation to the consumer with no comparable connotation or association
by the PIRANA mark.”5 We agree that piranhas may be considered vicious and that
a “peaceful piranha” does not jibe with that perception, although given the popular
understanding of what characterizes a piranha, even a “peaceful piranha” may be
seen to have an incipient propensity to be vicious. However, we do not agree that the
juxtaposition of the two words creates a trademark that is so counterintuitive in its
word-play on “piranha” that confusion with the cited mark PIRAÑA would be
obviated. The presence of the additional term PEACEFUL in Applicant’s mark is not
likely to distinguish the marks since it would merely indicate an atypical piranha,
possibly for use with a subset of snack foods offered under the PIRAÑA mark.

4 See Collins Spanish Dictionary, 703 (9th ed. 2009); Larousse Español-Inglés/English-
Spanish Dictionary, 536 (5th ed. 1994). The Board may take judicial notice of dictionary
definitions that appear in print format. See Univ. of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983); In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 n.1 (TTAB 2009).
5 Appeal Brief, 4 TTABVUE 6.
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For the above reasons, we find that the first du Pont factor favors a finding of
likelihood of confusion.
II. Summary
Prospective consumers familiar with Registrant’s PIRAÑA snack food would be
likely, when confronted with Applicant’s PEACEFUL PIRANHA snack food, to
believe that the goods are manufactured by the same company. Applicant’s mark and
Registrant’s mark are similar in appearance and somewhat similar in pronunciation.
They are similar in connotation, because each evokes in meaning that specific fish of
the genera Serrasalmus or Pygocentrus. While Applicant’s mark may convey an
atypical piranha, Registrant’s PIRAÑA mark does not ascribe any particular
attribute to the fish, and thus the term “peaceful” would not prevent consumers from
mistakenly believing that Applicant’s PEACEFUL PIRANHA goods and Registrant’s
PIRAÑA goods emanate from the same source.
III. Decision:
The refusal to register Applicant’s mark under Trademark Act Section 2(d) is
affirmed.