Migeca S.p.A.

Trademark Trial and Appeal Board

Aug 21, 2018

No. 87105947 (T.T.A.B. Aug. 21, 2018)

THIS ORDER IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 21, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Migeca S.p.A.

Serial No. 87105947
_____

Notice of Correction
_____

By the Board:
On May 15, 2018, the Board issued a decision affirming the Examining Attorney’s
refusal to register Applicant’s CA’ PUCCINO COFFEE HOUSE AND KITCHEN
mark on the ground that the mark, in its entirety, is merely descriptive of all the
goods and services identified in International Classes 30 and 43 of the involved ap-
plication under Section 2(e)(1) of the Trademark Act. The Examining Attorney’s re-
fusal, however, was limited to certain goods and services identified in International
Classes 30 and 43.
Accordingly, the Board’s decision issued on May 15, 2018 has been corrected to
properly reflect the Examining Attorney’s refusal. A corrected copy of the decision is
being issued concurrently with this order.

Mailed: May 15, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Migeca S.p.A.
_____

Serial No. 87105947
_____

Larry H. Tronco of Holland & Hart LLP,
for Migeca S.p.A.
Brittany Lee-Richardson, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
_____

Before Zervas, Gorowitz and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Migeca S.p.A. (“Applicant”) seeks registration on the Principal Register of the
stylized mark CA’ PUCCINO COFFEE HOUSE AND KITCHEN (“COFFEE HOUSE
AND KITCHEN” disclaimed), as displayed below,

for various clothing items in International Class 25, as well as the following goods
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 87105947
2
and services in International Classes 30 and 43:1
Coffee; tea; cocoa; artificial coffee; rice; snack foods, namely, chocolate-
based snack foods, wheat-based snack foods, grain-based snack foods
and cereal based snack foods in this class; muesli bars, cereal based
energy bars and breakfast bars in the nature of cereal bars, chocolate-
based meal replacement bars, high-protein cereal bars; tapioca and
sago; flour; bread, pastry and confectionery, namely, chips for baking;
edible sherbet and sorbet ices; sugar, honey, treacle; yeast, baking-
powder; salt; mustard; vinegar, sauces as condiments; spices; pasta;
biscuits; buns; sushi; tarts; prepared foods, namely, meat pies, pizzas,
pasta; prepared meals, namely, noodle-based prepared meals, meals
consisting primarily of pasta or rice; fruit sauces excluding cranberry
sauce and applesauce; convenience food and savory snacks, namely,
corn-based snack foods, ready-to-eat cereal, flour-based snacks in the
nature of flour-based chips and sesame-based snacks in the nature of
sesame sticks; crackers, dumplings, pancakes, pasta, rice dishes in the
nature of frozen, prepared and packaged meals consisting primarily of
rice; cereal dishes in the nature of breakfast cereals; pies and pastry
dishes, sandwiches and pizzas, spring roll and Korean-style dried
seaweed rolls containing cooked rice, steamed buns stuffed with minced
meat; salts, seasonings, food flavorings, other than essential oils;
condiments, namely, pepper sauce, prepared horseradish, tomato paste;
baked goods, namely, crumbles, cookies, cakes, pies; chocolate and
bakery desserts; sugars, natural sweeteners; and sweet fillings, namely,
fruit-based filling for cakes and pies, buttercream fillings for cakes,
chocolate-based fillings for cakes and pies; bee products in the nature of
honey; ice, ice creams, frozen yogurts and sorbets; processed grains;
starches, namely, starch for food, start syrup, corn starch and goods
made thereof, namely, starch noodles, starch vermicelli; baking
preparations, namely, baking powders, baking spices; and yeasts, in
International Class 30; and

Services for providing food and drink; restaurant services; food and
drink take-away services in the nature of restaurant carryout services;
provision of food and drink via a mobile truck; preparation of meals for
consumption off the premises in the nature of food preparation services;
café services; coffee supply services for offices; office coffee supply
services; contract food services; bar services; providing temporary

1 Application Serial No. 87105947, filed on July 15, 2016, pursuant to Section 44(e) of the
Trademark Act, 15 U.S.C. § 1126(e), based on European Union Registration No. 015657547,
which issued on December 8, 2016. The colors brown and black are claimed as a feature of
the mark.
Serial No. 87105947
3
accommodation; booking of temporary accommodation; cocktail lounge
services; hotel information in the nature of providing information and
advice on hotels and restaurants to tourists and business travelers;
providing hotel accommodation; resort hotels services; motel services;
agency services for booking hotel accommodation; holiday lodgings in
the nature of providing temporary lodging at holiday camps; arranging
and provision of temporary housing holiday accommodations; arranging
and providing meals for travelers in the nature of making reservations
and bookings for others for meals at hotels and restaurants; food
preparation services; arranging and providing hotel reservation services
in the nature of making reservations and bookings for others for
accommodations at hotels; reservation services for booking meals in the
nature of making reservations and bookings for restaurants and meals;
catering services for the provision of food and drink; and advice,
consultancy and information for the aforesaid, in International Class 43.

The Trademark Examining Attorney has partially refused registration of
Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),
on the ground that Applicant’s mark, as a whole, is merely descriptive of certain goods
and services identified in International Classes 30 and 43, as identified below:2
Class 30 Goods Subject to Refusal
Coffee; tea; cocoa; artificial coffee.
Class 43 Services Subject to Refusal
Services for providing food and drink; restaurant services; food and drink take-
away services in the nature of restaurant carryout services; provision of food and
drink via a mobile truck; provision of food and drink via food kiosks and carts;
preparation of meals for consumption off the premises in the nature of food
preparation services; café services; coffee supply services for offices; office coffee
supply services; contract food services; bar services; cocktail lounge services; hotel
information in the nature of providing information and advice on hotels and
restaurants to tourists and business travelers; arranging and providing meals for
travelers in the nature of making reservations and bookings for others for meals at
hotels and restaurants; food preparation services; reservation services for booking
meals in the nature of making reservations and bookings for restaurants and meals;

2 The International Class 25 goods are not the subject of the Trademark Examining
Attorney’s refusal.
Serial No. 87105947
4
catering services for the provision of food and drink; and advice, consultancy and
information for the aforesaid

When the refusal was made final, Applicant appealed and requested
reconsideration. The Board suspended the appeal and returned the application to the
Trademark Examining Attorney. After the Trademark Examining Attorney denied
the request for reconsideration, the appeal resumed. We affirm the refusal to
register.3
I. Preliminary Matter – Evidentiary Objection
Before proceeding to the merits of the refusal, we address the Trademark
Examining Attorney’s objection to Applicant’s reference to and attachment of two
third-party registrations to its appeal brief, i.e., Registration Nos. 3256571 and
4535275, that concern marks which include the term CA’ and have translations that
show CA’ translates to “House of….” These registrations were not made of record
during examination. Accordingly, the Trademark Examining Attorney’s objection is
sustained and no consideration will be given to these two registrations.4 Trademark

3 All TTABVUE citations refer to the docket and all Trademark Status and Document Re-
trieval (“TSDR”) citations refer to the electronic file database for Application Serial No.
87105947. All citations to the TSDR database are to the downloadable PDF version of the
documents.
4 We note that Applicant also attached excerpts from three websites to its appeal brief,
namely, (1) the search results from a Google translation search of the term “casa,” (2) a
definition of the term “CA’” retrieved from the website www.visit-venice-italy.com, and (3)
and historical information regarding the surname Puccino from a website purportedly called
House of Names. See Applicant’s Appeal Brief, pp. 5-7, 4 TTABVUE 6-8. These website
excerpts, however, were also submitted during the prosecution of Applicant’s application. See
February 22, 2017 Response to Office Action, TSDR pp. 18-20. That being said, neither
submission included the URLs or the dates upon which the excerpts were printed from the
internet. As a general matter, internet evidence is acceptable in an ex parte case when the
full web address (URL) for the page and the date on which the page was accessed and
downloaded are provided. TBMP § 1208.03 (June 2017). Although the URL and the date
Serial No. 87105947
5
Rule 2.142(d), 37 C.F.R. § 2.142(d); In re Posthuma, 45 USPQ2d 2011, 2012 n.2 (TTAB
1998) (third-party registration attached to appeal brief not considered).
II. Mere Descriptiveness
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods [or
services] of the applicant is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A
term is “merely descriptive” within the meaning of Section 2(e)(1) if it “immediately
conveys knowledge of a quality, feature, function, or characteristic of the goods or
services with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “On the other hand, if one must exercise
mature thought or follow a multi-stage reasoning process in order to determine what
product or service characteristics the term indicates, the term is suggestive rather
than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB
1978); see also In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal
Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).
A term need only describe a single feature or attribute of the goods or services to
be descriptive. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d
1807, 1812 (Fed. Cir. 2001). Moreover, a mark need not be merely descriptive of all

printed information were not provided by Applicant and since the Trademark Examining
Attorney neither requested the information nor raised any objection in connection thereto,
the failure to provide the information is excused. Accordingly, we will consider these website
excerpts submitted during the prosecution of Applicant’s application.
Serial No. 87105947
6
recited goods or services in an application. A descriptiveness refusal is proper, “if the
mark is descriptive of any of the goods [or services] for which registration is sought.”
In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re
Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).
Descriptiveness of a term must be evaluated “in relation to the particular goods
[or services] for which registration is sought, the context in which it is being used,
and the possible significance that the term would have to the average purchaser of
the goods [or services] because of the manner of its use or intended use.” In re
Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re Bayer AG,
82 USPQ2d at 1831). “The question is not whether someone presented with only the
mark could guess what the goods or services are. Rather, the question is whether
someone who knows what the goods and services will understand the mark to convey
information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695
F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech Inc.,
64 USPQ2d 1314, 1316-17 (TTAB 2002)).
Moreover, in general, a mere misspelling of a word and inconsequential
punctuation differences are not sufficient to render otherwise descriptive marks
registrable. See e.g., In re Wyandotte Chemicals Corp., 156 USPQ 100, 100 (TTAB
1967) (“[A] descriptive term is not made arbitrary by hyphenating or misspelling it.”);
see also In re Quik-Print Copy Shops, 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA
1980) (QUIK-PRINT held descriptive; “There is no legally significant difference here
between ‘quik’ and ‘quick”’); In re ING Direct Bancorp, 100 USPQ2d 1681, 1690
Serial No. 87105947
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(TTAB 2011) (PERSON2PERSON PAYMENT held generic); In re Carlson, 91
USPQ2d 1198, 1203 (TTAB 2009) (“URBANHOUZING in standard character form,
will be immediately and directly perceived by consumers as the equivalent of the
admittedly descriptive term URBAN HOUSING, rather than as including the
separate word ZING.”); In re Organik Tech. Inc., 41 USPQ2d 1690, 1694 (TTAB 1997)
(“ORGANIK, which is the phonetic equivalent of the term ‘organic,’ is deceptive”); and
Hi-Shear Corp. v. Nat’l Auto. Parts Ass’n, 152 USPQ 341, 343 (TTAB 1966) (HI-
TORQUE “is the phonetic equivalent of the words ‘HIGH TORQUE”’).
The policy underlying the general rule that misspelled words may be merely
descriptive is set forth in the Restatement of Unfair Competition as follows:
The misspelling or corruption of an otherwise descriptive word will not
ordinarily alter the descriptive character of the designation. In many
instances the contrivance will not overcome the ordinary meaning of the
term, and prospective purchasers will thus continue to understand the
designation in a purely descriptive sense. ... Recognition of exclusive
rights in variants and corruptions of descriptive words also imposes a
risk of liability on subsequent users of the original words. [Cross-
reference omitted.] Thus, unless the alteration is sufficient to avoid
encumbering use of the original word, the variation remains descriptive.

Restatement (Third) of Unfair Competition (June 2017 update), § 14, Comment a.
As noted in the Restatement, the spelling of a descriptive term may be so
extensively altered that the resulting mark would not be perceived as the equivalent
of the original descriptive word, but merely suggestive of it. However, even
extensively altered descriptive terms may be merely descriptive. See Andrew J.
McPartland, Inc. v. Montgomery Ward & Co., 164 F.2d 603, 76 USPQ 97, 99 (CCPA
Serial No. 87105947
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1947), cert. denied, 333 U.S. 875, 77 USPQ 676 (1948) (KWIXTART is the phonetic
spelling of “quick start” which “was intended to describe merely that appellant's
battery would start a motor or engine quickly.”).
In support of the refusal, the Trademark Examining Attorney maintains that the
CA’ PUCCINO portion of Applicant’s proposed mark is a misspelling and the phonetic
equivalent of the word “cappuccino,” a term that is defined as “an espresso coffee
mixed or topped with steam milk or cream.”5 As such, the Trademark Examining
Attorney argues that the designation CA’ PUCCINO is merely descriptive of
Applicant’s Class 30 goods and Class 43 services subject to the refusal because
consumers will immediately recognize that the designation conveys that Applicant’s
goods and services feature the coffee-type beverage known as cappuccino. 6
The Trademark Examining Attorney further contends that since “cappuccino” is
originally an Italian word that is commonly misspelled, U.S. consumers are even
more likely to understand the designation CA’ PUCCINO as merely indicating the
beverage cappuccino. In support of her contention, the Trademark Examining
Attorney submitted the following evidence:
• An article from Huffington Post discussing how the term
CAPPUCCINO is one of the 17 most commonly misspelled food words

5 November 2, 2016 Office Action, TSDR p. 12 (The American Heritage Dictionary of the
English Language – www.ahdictionary.com).
6 Because Applicant has disclaimed the wording “COFFEE HOUSE AND KITCHEN” and,
therefore, has conceded its descriptive nature when used in connection with the goods and
services at issue, the Trademark Examining Attorney’s arguments in support of her partial
refusal primarily focus on the descriptiveness of the term CA’ PUCCINO.
Serial No. 87105947
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and how the term is often spelled as CAPPUCINO and
CAPPUCINNO;7

• An article from Life Hack discussing how the term CAPPUCCINO is
one of the 16 most commonly misspelled food words, and
demonstrating that it is often misspelled as CAPUCCINO;8

• An article from Anish Athalye discussing how the term
CAPPUCCINO is commonly misspelled as CAPUCCINO and
CAPPUCINO;9

• A discussion board thread from Ilxor including the misspelling of the
term CAPPUCCINO misspelled;10 and

• A news blog post at www.romespottertravel.com/blog-news/its-
majest-the-capuccino.php in which the term “cappuccino” is
misspelled in its title as “capuccino,” i.e., “Its majesty: the
capuccino.11

To bolster this argument, the Trademark Examining Attorney also submitted
evidence from a blogger in Europe who, in reviewing Applicant’s restaurant, stated
“I hope someone with more passion for coffee can tell me if their cappuccinos are
worthy of the name,” referring to the name of Applicant’s restaurant.12 The
Trademark Examining Attorney contends that this evidence demonstrates that

7 March 24, 2017 Office Action, TSDR p. 27.
8 Id., TSDR pp. 43-44.
9 Id., TSDR pp. 52-53.
10 Id., TSDR p. 56.
11 Id., TSDR pp. 28-29.
12 Id., TSDR pp. 18-26.
Serial No. 87105947
10
someone from Europe, who has visited and dined at Applicant’s establishment, views
CA’ PUCCINO as referring to the cappuccino beverage.13
In traversing the refusal, Applicant offers a number of arguments for why the
term CA’ PUCCINO is not merely descriptive of the Class 30 goods and Class 43
services subject to the Examining Attorney’s refusal. First, Applicant argues that CA’
PUCCINO is not a novel misspelling of the term “cappuccino” because the term is a
completely different phrase with its own distinct meaning. Specifically, Applicant
contends that the abbreviation CA’ is a readily recognized abbreviation for the term
“casa,” and that this abbreviation is common slang used by Italians. Applicant further
maintains that “casa” is a common word meaning “house” in Italian, and that such
meaning is well-understood by American consumers. Additionally, Applicant
contends that the two words CA’ (with the apostrophe) and PUCCINO (with a single
“p’) will not be viewed interchangeably with “cappuccino” (a single term with a double
“p”) and, therefore, the primary significance of CA’ PUCCINO will not be considered
a descriptive reference to Applicant’s goods and services; rather, Applicant maintains
that when viewed in its entirety, the term CA’ PUCCINO would be understood by
American consumers to mean “House of Puccino.”14
Second, Applicant argues that, under the doctrine of foreign equivalents, Italian-

13 Trademark Examining Attorney’s Brief, p. 13, 10 TTABVUE 13. We find this argument to
be speculative in nature. Moreover, a foreign person’s perception of a mark used in a foreign
country is not probative of the perceptions of consumers in the United States of that same
mark used in U.S. commerce in determining whether or not the mark is descriptive of the
goods and services upon which it used. Accordingly, we have given no consideration to this
argument or the evidence submitted in support thereof in our determination of this appeal.
14 Applicant’s Appeal Brief, p. 2, 4 TTABVUE 3.
Serial No. 87105947
11
speaking Americans will immediately recognize that the two word CA’ PUCCINO
designation is not the same as the single term “cappuccino,” in either spelling or
commercial impression. Instead, Applicant contends that relevant consumers would
stop and translate the designation to mean “House of Puccino.”15
Third, Applicant contends that, even assuming that the term CA’ PUCCINO will
be viewed by U.S. consumers as a novel spelling of the word “cappuccino,” the
designation is still entitled to registration because it constitutes a double entendre
given that its English translation is “House of Puccino.”16
Finally, Applicant argues there is no evidence of record indicating that the phrase
CA’ PUCCINO is known to or viewed by American consumers as a novel misspelling
of “cappuccino.” Applicant further contends that the term CA’ PUCCINO does not
appear in any dictionary and that the record does not demonstrate that the term is
commonly used by others to describe coffee drinks.17
In support of its arguments, Applicant submitted the following relevant evidence:
• A Google translation of the term “casa” meaning “home”;18

• A dictionary definition obtained from the website
www.visit.venice.italy.com defining the term CA’ as “the
abbreviation of Casa, the home.”; 19 and

• An excerpt from an unidentified website regarding the history of the

15 Id. at p. 3, 4 TTABVUE 4.
16 Id. at pp. 3-4, 4 TTABVUE 4-5.
17 Id. at p. 4, 4 TTABVUE 5.
18 July 15, 2016 Response to Office Action, TSDR p. 18.
19 Id., TSDR p. 19.
Serial No. 87105947
12
surname Puccino.20

We are not persuaded by Applicant’s arguments and evidence and agree with the
Trademark Examining Attorney that the evidence of record establishes that
Applicant’s mark, as a whole, is merely descriptive of the Class 30 goods and Class
43 services subject to the refusal. As noted above, in our analysis of the proposed term
CA’ PUCCINO we must consider “the context in which it is being used, and the
possible significance that the term would have to the average purchaser of the goods
[or services] because of the manner of its use or intended use.” Chamber of Commerce
of the U.S., 102 USPQ2d at 1219.
We find that the designation CA’ PUCCINO will be viewed by relevant consumers
as the misspelling of the term “cappuccino,” particularly in light of the record
evidence that demonstrates that the word “cappuccino” is commonly misspelled.
Moreover, the designation CA’ PUCCINO is the phonetic equivalent of the word
“cappuccino,” which the record shows means “espresso coffee mixed or topped with
steam milk or cream.” U.S. consumers therefore are likely to perceive the designation
CA’ PUCCINO as being the equivalent of “cappuccino” since it is used in connection
with cappuccino/coffee-type beverages and coffee and dining establishments, as well
as goods and services related thereto. In the context of coffee beverages and food and
drink services, consumers are likely to view the term as describing coffee beverages,
specifically cappuccino.21

20 Id., TSDR p.
21 We note that Applicant does not dispute that the term “cappuccino” is descriptive of the
goods and services at issue. See Applicant’s Appeal Brief, p. 4, 4 TTABVUE 5.
Serial No. 87105947
13
Applicant's argument that the term CA’ PUCCINO cannot be interchanged with
the term “cappuccino” because of the visual differences between the terms is not
persuasive. The only differences between the words is a space between the terms CA’
and PUCCINO, an apostrophe and one less “P.” These minor variances do not create
a significant difference in the appearance of the words. Consumers in the United
States will still likely view the designation as CA’ PUCCINO as “cappuccino” and not
focus on or recall the minor differences. In addition, as noted above, the words are
phonetic equivalents. The evidence of record demonstrates that “cappuccino” is
pronounced like “\ˌka-pə-ˈchē-(ˌ)nō, kä-pü-\,” with a pause after the “ka” sound,
just like the designation CA’ PUCCINO.22 Because of the visual and aural similarities
between the designation CA’ PUCCINO and the term “cappuccino,” consumers are
likely to perceive the designation CA’ PUCCINO as referring to the coffee beverage.
With respect to Applicant’s double entendre argument, we note that a “double
entendre” is an expression that has a double connotation or significance as applied to
the goods and services. Trademark Manual of Examining Procedure (“TMEP”)
§ 1213.05(c). We further note that a mark that comprises a “double entendre” will not
be refused registration as merely descriptive if one of its meanings is not merely
descriptive in relation to the goods and services. Id. However, the multiple meanings
that make an expression a “double entendre” must be well-recognized by the public
and readily apparent from the mark itself. See In re Calphalon Corp., 122 USPQ2d
1153, 1163-64 (TTAB 2017) (quoting TMEP §1213.05(c)) (finding SHARPIN not a

22 March 24, 2017 Office Action, TSDR, p. 9.
Serial No. 87105947
14
double entendre in relation to cutlery knife blocks with built-in sharpeners and
affirming descriptiveness refusal); In re The Place, Inc., 76 USPQ2d 1467, 1470-71
(TTAB 2005) (finding THE GREATEST BAR not a double entendre in relation to
restaurant and bar services and affirming descriptiveness refusal). Here, Applicant
merely claims that the designation CA’ PUCCINO means “House of Puccino” but fails
to demonstrate how such designation has any meaning in connection with Applicant’s
coffee product and coffee house retail establishment so that it would constitute a
double entendre. Accordingly, Applicant’s double entendre argument is unavailing.
We next turn to Applicant’s doctrine of foreign equivalent argument. As noted
above, Applicant argues that the designation CA’ PUCCINO consists of two words in
Italian and that American consumers will stop and translate the designation to mean
“House of Puccino.” In light of this translation, Applicant maintains that the
designation CA’ PUCCINO is not merely descriptive of the Class 30 goods or Class 43
services subject to the refusal.
It is well settled that the foreign equivalent of a merely descriptive U.S. English
term is also merely descriptive. “[A] word taken from a well-known foreign modern
language, which is, itself, descriptive of a product, will be so considered when it is
attempted to be registered as a trademark in the United States for the same product.”
In re N. Paper Mills, 64 F.2d 998, 17 USPQ 492, 493 (CCPA 1933). Under the doctrine
of foreign equivalents, marks with foreign terms from common, modern languages
are translated into English to determine descriptiveness. Palm Bay Imps. Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
Serial No. 87105947
15
1696 (Fed. Cir. 2005) (citing In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113 (Fed.
Cir. 1983); In re Am. Safety Razor Co., 2 USPQ2d 1459, 1460 (TTAB 1987)).
The doctrine should be applied only when it is likely that the ordinary American
purchaser would “stop and translate [the word] into its English equivalent.” In re Pan
Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976). The “ordinary American
purchaser” is not limited to those purchasers who speak only English. “[R]ather, the
term 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, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009).23 Further,
the Board has previously held that Italian is a common modern language, finding
that “it does not require authority to conclude that Italian is a common, major
language in the world and is spoken by many people in the United States.” In re
Ithaca Indus., 230 USPQ 702, 704-705 (TTAB 1986).
Keeping the foregoing in mind, we find that the doctrine of foreign equivalents is
inapplicable in this situation. Although Italian in origin, the term “cappuccino” is now
recognized immediately by U.S. consumers as an English word.24
Even if certain bilingual consumers do not recognize that CA’ PUCCINO is a
misspelling of an English word, and were to stop and attempt to translate the term,

23 Our consideration of the doctrine of foreign equivalents, therefore, is based on the implicit
presumption that the primary language of an ordinary American purchaser is English. See
In re Spirits Int’l, N.V., 90 USPQ2d at 1491 (“In Palm Bay, we noted that the doctrine of
foreign equivalents applies only in those situations where the ordinary American consumer
would stop and translate the mark into English. …”).
24 November 2, 2016 Office Action, TSDR p. 12 (The American Heritage Dictionary of the
English Language – www.ahdictionary.com).
Serial No. 87105947
16
Applicant’s contention that the designation CA’ PUCCINO directly and literally
translates to “House of Puccino” does not correspond with Applicant’s evidence.
Applicant explains and submits translation evidence to support the contention that
CA’, an alleged Italian slang term, is the abbreviation for the term “casa,” which in
turn translates to the English word “house.” Therefore, the prefix CA’ does not
directly translate to “house.” This is problematic because the doctrine of foreign
equivalents is properly applied to cases where the evidence shows that the relevant
English translation is literal and direct, and no contradictory evidence of shades of
meaning or other relevant meanings exists. See In re Sarkli, 220 USPQ at 112-13
(holding REPECHAGE for various skin-care products, and SECOND CHANCE for
face creams and other toiletries, not likely to cause confusion, where the evidence
failed to show that the terms were direct foreign equivalents); TMEP
§ 1207.01(b)(vi)(B) (Oct. 2017). Here, the translation provided by Applicant, i.e.,
“House of Puccino,” is not a direct and literal translation of CA’ PUCCINO. Applicant
is effectively requiring U.S. consumers to study the designation CA’ PUCCINO to
determine that the mark is not “cappuccino,” and instead pause and translate the
term, including translating the Italian slang term CA’ to the word “casa,” and then
translating “casa” to the English term “house.” It is unlikely that consumers of
Applicant’s goods and services will engage in these mental gymnastics. Also,
Applicant contends that the term “casa” is “well-understood by Americans;” however,
Applicant fails to submit any evidence to support such contention. Therefore, it
cannot be said that such term is well-understood by U.S. consumers, nor can it be
Serial No. 87105947
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said that U.S. consumers will know that CA’ is the slang term for “casa.” Accordingly,
we find that the doctrine of foreign equivalents is not applicable under these
circumstances.
Finally, Applicant’s argument that due to the lack of any evidence of record (1)
demonstrating that third parties use the term CA’ PUCCINO in a descriptive manner
in relation to coffee drinks or (2) showing that the term appears in any dictionary,
the designation CA’ PUCCINO is therefore not descriptive of the relevant goods and
services is unpersuasive. First, the fact that there is no dictionary evidence of the
designation CA’ PUCCINO further supports rather than detracts from our finding
that CA’ PUCCINO is a misspelling of the word “cappuccino.” Second, the lack of
third-party use evidence of the term CA’ PUCCINO used descriptively in relation to
coffee products is irrelevant to our analysis. The issue is not whether third parties
use the designation descriptively but whether consumers would view the designation
CA’ PUCCINO as a misspelling of the descriptive term “cappuccino.” Moreover,
Applicant’s contention that that there is no evidence of record to substantiate that
American consumers would view the designation CA’ PUCCINO as a misspelling of
the word “cappuccino” is unfounded. The Trademark Examining Attorney submitted
several articles demonstrating that the term “cappuccino” is a commonly misspelled
word and, therefore, U.S. consumers are likely to understand the designation CA’
PUCCINO to be a mere misspelling of the word “cappuccino.”25

25 See March 24, 2017 Office Action, TSDR, pp. 27, 43-44, 52-53 and 56.
Serial No. 87105947
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III. Conclusion
Based on the record, we find that the term CA’ PUCCINO in Applicant’s proposed
mark is a misspelling and the phonetic equivalent of the word “cappuccino.”
Moreover, there is nothing in the phrase CA’ PUCCINO that sufficiently
differentiates it from the word “cappuccino” so as to change the descriptive nature of
the term. Simply put, the designation CA ’PUCCINO appears and sounds very
similar to the word “cappuccino.” As such, when the designation is used in connection
with the remaining descriptive wording in the mark, COFFEE HOUSE AND
KITCHEN, the combination thereof is likely to create an impression in the minds of
purchasers of coffee beverages, specifically cappuccinos, that the wording CA’
PUCCINO describes a feature of the subject goods and services, namely, a coffee-type
beverage, or a dining establishment that serves coffee-type beverages or goods and
services related to such dining establishments. Moreover, we find that consumers
would not stop and translate the designation to mean “House of Puccino,” as argued
by Applicant, for the reasons discussed above. Accordingly, we conclude that
Applicant’s proposed mark, as a whole, is merely descriptive of the Class 30 goods
and Class 43 services subject to the Examining Attorney’s refusal under Section
2(e)(1) of the Trademark Act.
Decision: The refusal to register Applicant’s mark for the Class 30 goods and
Class 43 services subject to the refusal is affirmed. Application Serial No. 87105947
will proceed to registration solely in connection with the goods and services in Classes
30 and 43, as identified below, as well as all the goods identified in Class 25.

Serial No. 87105947
19
Class 30 Goods
rice; snack foods, namely, chocolate-based snack foods, wheat-based
snack foods, grain-based snack foods and cereal based snack foods in
this class; muesli bars, cereal based energy bars and breakfast bars in
the nature of cereal bars, chocolate-based meal replacement bars, high-
protein cereal bars; tapioca and sago; flour; bread, pastry and
confectionery, namely, chips for baking; edible sherbet and sorbet ices;
sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar,
sauces as condiments; spices; pasta; biscuits; buns; sushi; tarts;
prepared foods, namely, meat pies, pizzas, pasta; prepared meals,
namely, noodle-based prepared meals, meals consisting primarily of
pasta or rice; fruit sauces excluding cranberry sauce and applesauce;
convenience food and savory snacks, namely, corn-based snack foods,
ready-to-eat cereal, flour-based snacks in the nature of flour-based chips
and sesame-based snacks in the nature of sesame sticks; crackers,
dumplings, pancakes, pasta, rice dishes in the nature of frozen, prepared
and packaged meals consisting primarily of rice; cereal dishes in the
nature of breakfast cereals; pies and pastry dishes, sandwiches and
pizzas, spring roll and Korean-style dried seaweed rolls containing
cooked rice, steamed buns stuffed with minced meat; salts, seasonings,
food flavorings, other than essential oils; condiments, namely, pepper
sauce, prepared horseradish, tomato paste; baked goods, namely,
crumbles, cookies, cakes, pies; chocolate and bakery desserts; sugars,
natural sweeteners; and sweet fillings, namely, fruit-based filling for
cakes and pies, buttercream fillings for cakes, chocolate-based fillings
for cakes and pies; bee products in the nature of honey; ice, ice creams,
frozen yogurts and sorbets; processed grains; starches, namely, starch
for food, start syrup, corn starch and goods made thereof, namely, starch
noodles, starch vermicelli; baking preparations, namely, baking
powders, baking spices; and yeasts.

Class 43 Services

providing temporary accommodation; booking of temporary
accommodation; providing hotel accommodation; resort hotels services;
motels services; agency services for booking hotel accommodation;
holiday lodgings in the nature of providing temporary lodging at holiday
camps; arranging and provision of temporary housing holiday
accommodations; arranging and providing hotel reservation services in
the nature of making reservations and bookings for others for
accommodations at hotels; and advice, consultancy and information for
the aforesaid.