Ricardo Media Inc.v.Inventive Software, LLC

Trademark Trial and Appeal Board

Aug 21, 2019

91235063 (T.T.A.B. Aug. 21, 2019)

Mailed: August 21, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
————
Ricardo Media Inc.
v.
Inventive Software, LLC
___
Opposition No. 91235063
___
Aimee M. Allen and Julie B. Seyler of Abelman, Frayne & Schwab
for Ricardo Media Inc.

Robert Ross for Inventive Software, LLC.
______
Before Taylor, Adlin and Larkin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Inventive Software, LLC seeks registration of RICHARD MAGAZINE,
in standard characters (MAGAZINE disclaimed), for:
providing a website featuring an online marketplace for
exchanging goods and services with other users; providing
a website used to place on-line commercial orders in the
field of fashion; providing a website used to place on-line
commercial orders in the field of beauty, in International
Class 35; and

entertainment services, namely, providing a web site
featuring photographic, audio, video and prose
presentations featuring fashion; entertainment services,
namely, providing a web site featuring photographic,
audio, video and prose presentations featuring beauty;
entertainment services, namely, providing a web site
This Opinion is a
Precedent of the TTAB
Opposition No. 91235063
2
featuring photographic, audio, video and prose
presentations featuring lifestyle, in International Class
41.1

In its notice of opposition, Opposer Ricardo Media Inc. alleges that use of Applicant’s
mark is likely to cause confusion as to the source of Applicant’s services. Opposer
specifically relies its registrations for the mark RICARDO in standard characters,
one for “forks, knives and spoons” in International Class 8,2 and the other for:
publications, namely, magazines and books in the culinary
field, in International Class 16;

kitchen utensils and accessories, namely, household
containers for food, cooking pots, saucepans, corkscrews,
kettles, cake molds, dishes, carafes, potpourri dishes, glass
beverageware, cooking strainers, cheese graters, knife
blocks, salt shakers, pepper shakers, butter dishes and
lunch boxes, in International Class 21;

oven mitts, in International Class 24;

aprons, in International Class 25; and

production of television programs in the culinary field, in
International Class 41.3

1 Application Serial No. 87186504, originally filed September 28, 2016 under Section 1(a) of
the Trademark Act, 15 U.S.C. § 1051(a), based on alleged first use dates of August 9, 2016
for both classes of services; Applicant later amended the filing basis for the Class 35 services
to an alleged intent to use the mark in commerce under Section 1(b) of the Act, 15 U.S.C.
§ 1051(b).
2 Registration No. 4906588, issued March 1, 2016 under Section 44(e) of the Act, 15
U.S.C. § 1126(e), based on Canadian Registration No. TMA909416.
3 Registration No. 4915877, issued March 15, 2016 under Section 44(e) based on the same
Canadian registration.
Opposition No. 91235063
3
1 TTABVUE 5 (Notice of Opposition ¶¶ 3, 4, 14).4 In its answer, Applicant denies the
salient allegations in the notice of opposition.
I. The Record and Evidentiary Objections
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s involved application. In addition, Opposer
introduced:
First Notice of Reliance (“Opp. NOR 1”) on third-party
registrations, Internet printouts and printed publications.
5 TTABVUE.

Second Notice of Reliance (“Opp. NOR 2”) on Internet
printouts and printed publications. 6 TTABVUE.

Third Notice of Reliance (“Opp. NOR 3”) on Internet
printouts. 7 TTABVUE.

Fourth Notice of Reliance (“Opp. NOR 4”) on its pleaded
registrations. 8 TTABVUE.

Fifth Notice of Reliance (“Opp. NOR 5”) on its unpleaded
application Serial No. 87850635, purportedly to establish
that the parties’ services are related. 9 TTABVUE.5

Sixth Notice of Reliance (“Opp. NOR 6”) on Applicant’s
responses to Opposer’s Interrogatories. 10 TTABVUE.

4 Citations to the record reference TTABVUE, the Board’s online docketing system. The
number preceding “TTABVUE” corresponds to the docket entry number(s), and any
number(s) following “TTABVUE” refer(s) to the page number(s) of the docket entry where the
cited materials appear.
5 Because this application was not pleaded, we have not considered the “status and title copy”
of the application which Opposer introduced at trial as a basis for the opposition. Fujifilm
SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234, 1235-36 (TTAB 2014); Wet Seal, Inc.
v. FD Mgmt., Inc., 82 USPQ2d 1629, 1634 (TTAB 2007). Moreover, while an unpleaded
registration may be considered, like third-party registrations, for whatever probative value
it may have under the du Pont factors, Fujifilm, 111 USPQ2d at 1236, applications are of
limited probative value. Weider Pubs. LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1360
(TTAB 2014) (evidence only that applications were filed). Even if considered, this application
would not establish that the parties’ services are related.
Opposition No. 91235063
4

Seventh Notice of Reliance (“Opp. NOR 7”) on online
dictionary definitions. 11 TTABVUE.

Testimonial Declaration of Brigitte Coutu, its President,
and the exhibits thereto (“Coutu Dec.”). 12 TTABVUE.

First Rebuttal Notice of Reliance (“Opp. Reb. NOR 1”) on
Internet printouts and a printed publication. 15
TTABVUE.

Second Rebuttal Notice of Reliance (“Opp. Reb. NOR 2”) on
Internet printouts. 16 TTABVUE.

Applicant introduced a Notice of Reliance (“App. NOR”) on Internet printouts. 13
TTABVUE.
Applicant makes a number of “objections” to Opposer’s evidence. 18 TTABVUE
13-18. The objections are all overruled.
Applicant’s argument that “[t]hird-party registrations and articles have no
probative value as to whether the average American purchaser would be confused,”
18 TTABVUE 14, is contrary to Board precedent. In fact, “[t]hird-party registrations
which cover a number of differing goods and/or services, and which are based on use
in commerce, although not evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them, may nevertheless have
some probative value to the extent that they may serve to suggest that such goods or
services are of a type which may emanate from a single source.” See In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998); see also Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence
Opposition No. 91235063
5
that “a single company sells the goods and services of both parties, if presented, is
relevant to a relatedness analysis”).
As for articles, whether from the Internet or printed publications, Applicant is
correct that because they are not accompanied by testimony, they may not be
considered for the truth of the matters asserted therein. Nevertheless, they are
admissible for what they show on their face. Safer Inc. v. OMS Inv. Inc., 94 USPQ2d
1031, 1037 n.14 and 1040 (TTAB 2010). Moreover, sometimes what Internet printouts
and printed publications show on their face is relevant to trademark cases, including
likelihood of confusion cases. Harry Winston, Inc. and Harry Winston S.A. v. Bruce
Winston Corp., 111 USPQ2d 1419, 1428 (TTAB 2014) (“… such materials are
frequently competent to show, on their face, matters of relevance to trademark claims
(such as public perceptions), regardless of whether the statements are true or false.
Accordingly, they will not be excluded outright, but considered for what they show on
their face.”). See also In re Ayoub Inc., 118 USPQ2d 1392, 1399 n.62 (TTAB 2016);
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USQ2d 1458, 1467 n.30
(TTAB 2014).
Applicant’s hearsay objection to the Spanish-English dictionaries is contrary to
both Board and Federal Circuit precedent. We may and routinely do rely on
dictionary definitions, including from online dictionaries. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Definitions
available from an online resource that are readily available and as such capable of
being verified are useful to determine consumer perception … The online dictionaries
Opposition No. 91235063
6
and translations as well as the print dictionary evidence that Bayer submitted and
the print dictionary cited by the Board provide substantial evidence that ASPIRINA
means ‘aspirin’ and that both terms describe the same class of analgesic goods.”).
The Coutu Declaration is admissible because the Trademark Rules were amended,
effective January 14, 2017, to provide for testimony by declaration, even in the
absence of a stipulation. Trademark Rule 2.123(a)(1); 81 Fed. Reg. 69,950 (Oct. 7,
2016) and 81 Fed. Reg. 89,382 (Dec. 12, 2016). Opposer’s submission of the
declaration under a notice of reliance was unnecessary, and not the preferred
approach, but harmless. See WeaponX Performance Prods. Ltd. v. Weapon X
Motorsports, Inc., 126 USPQ2d 1034, 1037 (TTAB 2018) (submission of testimony
declarations with a notice of reliance was of “no consequence” where the declarations
were nonetheless served and the witnesses identified in pretrial disclosures). The
declaration is not hearsay, as it contains Ms. Coutu’s trial testimony (the equivalent
of live testimony “in court”).6
Opposer’s rebuttal notices of reliance are admissible and not improper rebuttal.
They rebut Applicant’s evidence showing that Applicant’s services “are substantially
different from Opposer’s offerings.” 13 TTABVUE 4. Moreover, it is settled that
evidence of third-party use of the same mark for an applicant’s identified goods and

6 Even before the amended Rules went into effect, when testimony could only be provided via
testimonial deposition absent a stipulation to the contrary, the testimony was not taken “in
court,” or before the Board. TBMP § 702.03 (“… in lieu of live testimony, proceedings before
the Board are conducted in writing, and the Board’s actions in a particular case are based on
the written record therein. The Board does not preside at the taking of testimony. Rather, all
testimony is taken out of the presence of the Board, by affidavit or declaration, or on oral
examination….”). Under the amended Rules, trial testimony is still not “in court” or taken
“live” before the Board.
Opposition No. 91235063
7
services (or similar goods or services) on the one hand, and an opposer’s (or
registrant’s) identified goods and services (or similar goods and services) on the other,
may establish a relationship between those goods and services. In re Detroit Athletic
Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018); see also In re C.H.
Hanson Co., 116 USPQ2d 1351, 1355-56 (TTAB 2015); In re Davia, 110 USPQ2d
1810, 1815-17 (TTAB 2014); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203
(TTAB 2009).
Suffice it to say, “we simply accord the evidence whatever probative value it
deserves, if any at all … Ultimately, the Board is capable of weighing the relevance
and strength or weakness of the objected-to testimony and evidence in this specific
case, including any inherent limitations, and this precludes the need to strike the
testimony and evidence.” Hunt Control Sys. Inc. v. Koninkijke Philips Elecs. N.V., 98
USPQ2d 1558, 1564 (TTAB 2011). See also Grote Indus., Inc. v. Truck-Lite Co., 126
USPQ2d 1197, 1200 (TTAB 2018) (“We also remind the parties that our proceedings
are tried before judges not likely to be easily confused or prejudiced. Objections to
trial testimony on bases more relevant to jury trials are particularly unnecessary in
this forum.”) (citing U.S. Playing Card Co. v. Harbro LLC, 81 USPQ2d 1537, 1540
(TTAB 2006)); RxD Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801, 1804
(TTAB 2018); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1478 (TTAB
2017) (quoting Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477,
1479 (TTAB 2017)).
Opposition No. 91235063
8
II. The Parties
Opposer is a “culinary culture and lifestyle company” which “produces television
shows and publishes a magazine and companion website covering food, recipes and
other culinary and lifestyle topics.” 12 TTABVUE 4 (Coutu Dec. ¶ 2). Ms. Coutu and
her husband Ricardo Larrivée, “a world renowned celebrity chef based in Quebec,
Canada,” created Opposer, and in 2002 developed their RICARDO television cooking
show and magazine. Id. (Coutu Dec. ¶ 3).
Opposer’s use of RICARDO originated in and apparently focuses on Canada, but
Opposer claims that the brand now has “global reach.” Id. at 4-7 (Coutu Dec. ¶¶ 4,
14-15). While Opposer introduced precious little, if any, evidence of its use of
RICARDO in the United States, Opposer’s RICARDO magazine is “published through
the digital app Texture,” and 11,715 United States Texture subscribers “have
identified Ricardo Magazine as their favorite.” Id. at 5 (Coutu Dec. ¶ 5). Although
“[c]ontent from the magazine is also published online at www.ricardocuisine.com,”
id., Opposer did not introduce evidence that United States consumers are exposed to
this content. See In re Brouwerij Bosteels, 96 USPQ2d 1414, 1424 (TTAB 2010)
(“Insofar as applicant’s website is concerned, although the alleged mark is displayed
thereon, there is no information with respect to the number of visitors to the website.
In the absence thereof, we are unable to determine whether a significant number of
people in the United States have even viewed the alleged mark at the website.”)
In addition to the forks, knives, spoons, cooking utensils, oven mitts, aprons and
other goods and services listed in its registrations, Opposer also sells “home goods for
dining and the kitchen” on its website, and “[t]he United States is the second largest
Opposition No. 91235063
9
market for the online boutique, right after Canada.” 12 TTABVUE 6 (Coutu Dec. ¶
11). Opposer’s sales “to the United States” since 2017 “exceed $10,000,” id., but
Opposer has not provided any information about what specifically was sold to United
States consumers or indicated whether those additional products or services even
bear the RICARDO mark. In any event, at least a few of the products offered via
Opposer’s “online boutique” bear the RICARDO mark:

Id. at 19, 34 (Coutu Dec. Ex. C). Opposer “produces nearly all of its content in both
English and French.” Id. at 6 (Coutu Dec. ¶ 14).
The RICARDO brand focuses “on the importance of cooking and eating together
with family and friends.” Id. at 5 (Coutu Dec. ¶ 9). Nevertheless, according to Ms.
Coutu, “the RICARDO magazine and online site also covers other lifestyle topics such
as travel, wine, healthy eating, and gift ideas.” Id. at 6 (Coutu Dec. ¶ 10).
While Applicant did not introduce any testimony, its interrogatory responses,
which Opposer made of record, indicate that Applicant selected its mark “because it
Opposition No. 91235063
10
is the name of Richard Wojtach, the owner and founder of [Applicant’s] Magazine.”
10 TTABVUE 15 (Applicant’s Response to Opposer’s Interrogatory No. 3(B)).
Applicant introduced Internet printouts showing that it operates a website/magazine
at “richardmagazine.com.” 13 TTABVUE 5-121.7 Applicant introduced a number of
articles from the website, concerning the following topics: a New York City museum;
a brand of tote bags made from recycled materials; an interview with a fashion
illustrator; nail polish; a new bridal collection by Randy Fenoli of the television show
“Say Yes to the Dress;” a bridal runway show at Bridal Fashion Week; a new makeup
line by Karl Lagerfeld and ModelCo; a collaboration between Puma and MAC
Cosmetics resulting in Puma Suede sneakers in three of the most popular MAC
lipstick shades; the PromGirl Superstore; Dior’s Fall 2018 Collection Lookbook; a
collaboration between Missoni and Funboy to create a “designer pool float;” the
Mango Dragonfruit Starbucks Refresher, and its suitability for Instagramming; Ouai
pet shampoo; the latest Gucci Home décor and furniture offerings; expansion of the
Too Faced Born This Way foundation line; Paris Hilton’s skincare line ProD.N.A.; the
relaunch of the Awake Skincare brand by Tarte Cosmetics and KOSÉ; Virgil Abloh’s
Off-White Resort 2019 Collection; the Selena Gomez Coach Fall 2018 campaign; and
the Prada Fall/Winter 2018 Collection campaign. Applicant also introduced several
pages from its website displaying skincare, jewelry, eyewear and wall art products,
and their prices. Id. at 114-117.

7 Opposer concedes that Applicant operates the website. 17 TTABVUE 6-7, 17-18.
Opposition No. 91235063
11
III. Standing
Opposer’s pleaded registrations, electronic copies of which showing their current
status and title were made of record with Opposer’s notice of opposition and Opp.
NOR 4, establish its standing. 1 TTABVUE 7-11; 8 TTABVUE 4-16. See Empresa
Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed.
Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000).
IV. Priority
Because Applicant has not counterclaimed to cancel either of Opposer’s pleaded
registrations, priority is not at issue with respect to the mark and goods and services
identified therein. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974).
V. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. Du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944,
1945 (Fed. Cir. 2004) (referring to these as “two key considerations”); Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
(“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of
Opposition No. 91235063
12
differences in the essential characteristics of the goods and differences in the
marks.”). Opposer bears the burden of establishing that there is a likelihood of
confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848. We
consider the likelihood of confusion factors about which there is evidence. Du Pont,
177 USPQ at 567-68. See also Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127
USPQ2d 1797, 1800 (Fed. Cir. 2018) (“Not all of the Du Pont factors are relevant to
every case, and only factors of significance to the particular mark need be
considered.”(quoting In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257,
1259 (Fed. Cir. 2010)).
A. Similarity of the Marks
We must consider the marks “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). The test 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 so that
confusion as to the source of the goods and services offered under the respective
marks is likely to result. San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975);
see also In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014)
Opposition No. 91235063
13
(“marks must be considered in light of the fallibility of memory”) (citation, internal
quotation marks, and ellipsis omitted). Because the parties’ goods and services relate
to fashion, beauty, lifestyle and cooking, the “average purchaser” is an ordinary
consumer.
Here, the marks have similarities and differences. We find that when the marks
are considered in their entireties, the differences significantly outweigh the
similarities.
1. Appearance
The marks have a somewhat similar appearance to the extent that the terms
RICHARD in Applicant’s mark and RICARDO in Opposer’s differ by only two letters.
Moreover, the term RICHARD in Applicant’s mark is entitled to greater weight than
the second term MAGAZINE, both because RICHARD comes first and because
MAGAZINE is merely descriptive or generic, and has been disclaimed. In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (“The identity
of the marks’ initial two words is particularly significant because consumers typically
notice those words first.”); Cunningham, 55 USPQ2d at 1846 (“Regarding descriptive
terms, this court has noted that the ‘descriptive component of a mark may be given
little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)).
Despite this similarity, we find that the marks look different. Applicant’s mark
consists of two terms while Opposer’s consists of just one, and while MAGAZINE is
entitled to less weight in our analysis, we may not ignore it, even though it is
disclaimed. Shen Mfg. v. Ritz Hotel, Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1355 (Fed.
Opposition No. 91235063
14
Cir. 2004) (“The disclaimed elements of a mark, however, are relevant to the
assessment of similarity … This is so because confusion is evaluated from the
perspective of the purchasing public, which is not aware that certain words or phrases
have been disclaimed.”); Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 144 USPQ
433 (CCPA 1965). Moreover, Applicant’s mark appears to be a foreign language name,
while RICHARD is a common English language name. When we consider the
appearance of the marks in their entireties, the combination of the different names
and the additional word in Applicant’s mark makes them more dissimilar than
similar in appearance.
2. Sound
There is no doubt that the marks sound different. In fact, RICHARD is a very
common two-syllable name in the United States which has a consistent
pronunciation. As for RICARDO, “it does not follow that any and all suggested
pronunciations of a trademark must be deemed to be ‘correct’ or viable, even those
which are inherently implausible and inconsistent with common phonetic usage and
practice.” In re Who? Vision Sys. Inc., 57 USPQ2d 1211, 1218 (TTAB 2000). Rather,
even though RICHARD and RICARDO have the same number of letters and share
many of them, RICHARD features a soft “i,” while the “i” in RICARDO would likely
be pronounced as a long “e,” by at least some Spanish speakers; the “ch” sound in
RICHARD is much different than the hard “c” sound in RICARDO; and the “o” in
RICARDO is absent from RICHARD. Moreover, for the reasons discussed below, the
“c” rather than “ch” in RICARDO, and the “o” at the end of the name would likely
signal to many American consumers that RICARDO is a name that originated in
Opposition No. 91235063
15
Spanish, while RICHARD is known to be a common English language name. It would
be “inherently implausible” for RICARDO to be pronounced similarly to RICHARD.
In fact, RICHARD and RICARDO are different male given names, 11 TTABVUE 5,
7, and dictionary definitions of which we take judicial notice reveal that they have
different pronunciations.8
3. Connotation (and whether the doctrine of foreign equivalents
applies)
The parties argue mainly about the marks’ connotations, and specifically about
whether the doctrine of foreign equivalents applies to this case. When it applies, the
doctrine of foreign equivalents treats differently-spelled words as having the same
meaning where the foreign word, when translated into English, means the same as
the English word. But, as we explain below, the doctrine of foreign equivalents should
generally not apply to first names such as RICHARD and RICARDO that are widely-
recognizable to American consumers, unless there is evidence that consumers would
“translate” the names. Here, there is no such evidence.
Opposer has established, and Applicant does not dispute, that RICARDO is a
name in the Spanish language which is the Spanish equivalent of the first name
RICHARD in English. The dictionary entries provided appear to also at least strongly

8 See https://www.dictionary.com/browse/richard (based on Random House Unabridged
Dictionary (2019) and https://www.dictionary.com/browse/ricardo (based on Random House
Unabridged.) The Board may take judicial notice of dictionary definitions, including online
dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests.
LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed.
Cir. 2016); Threshold TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB
2010).
Opposition No. 91235063
16
suggest that RICHARD is the English equivalent of the Spanish name RICARDO. 11
TTABVUE 5, 7.
Under the doctrine of foreign equivalents, foreign words
from common languages are translated into English to
determine similarity of connotation with English word
marks. See Palm Bay Import[s], Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). The doctrine is applied
when it is likely that “the ordinary American purchaser
would ‘stop and translate [the term] into its English
equivalent.” Palm Bay, supra at 1696, quoting In re Pan
Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976.).

In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006). See also In re Aquamar, Inc., 115
USPQ2d 1122 (TTAB 2015).
We have consistently found that Spanish is a “common language” in the United
States, and we have routinely applied the doctrine of foreign equivalents to Spanish-
language marks. In re Aquamar, 115 USPQ2d at 1127; In re La Peregrina Ltd., 86
USPQ2d 1645, 1648 (TTAB 2008) (“there is no question that Spanish is a common,
modern language”); In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re Am. Safety Razor
Co., 2 USPQ2d 1459 (TTAB 1987); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB
1983); Rosenblum v. George Willsher & Co., 161 USPQ 492 (TTAB 1969). Here, as in
Aquamar, we also take judicial notice of the August 2013 United States Census
Bureau’s “Language Use in the United States: 2011” report, which indicates that
Opposition No. 91235063
17
after English, Spanish is the most commonly spoken language in the United States,
and that over 12% of the United States population speaks Spanish.9
The parties’ doctrine of foreign equivalents dispute centers around whether
ordinary American purchasers would “stop and translate” Opposer’s mark. We agree
with Applicant that they would not.
As the dictionary definitions make clear, “Richard” and “Ricardo” are each
recognized personal names. They will thus be perceived as identifying particular
individuals, whether known or unknown, real or fictional. Even if we assume that
some people may go by the English version of their names in some contexts and by
the Spanish (or other language) version of their names in other contexts, we find it
unlikely that users of personal name trademarks would do so, or that consumers
would “stop and translate” a common personal name used as mark, such as
RICARDO. Opposer’s use of RICARDO (as opposed to, for example, RICHARD) has
been consistent. There is no evidence that Mr. Larrivée goes by any French (or
English) translation of his name “Ricardo” in his business or personal dealings, even
though Mr. Larrivée is bilingual, lives in a bilingual province in Canada and conducts
business in both English and French. There is also no evidence that owners of any
personal name trademarks use translations of their personal names, or that
consumers translate personal name trademarks.

9 http://www.census.gov/library/publications/2013/acs-22.html. The Board may take judicial
notice of census data. Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080, 1098 n.114 (TTAB
2014), aff’d, 112 F.Supp. 3d 439, 115 USPQ2d 1524 (E.D. Va. 2015), vacated on other grounds
and remanded, Pro Football, Inc. v. Blackhorse, 709 F. App’x 183 (per curiam) (4th Cir. 2018)
(mem.).
Opposition No. 91235063
18
In finding that consumers would not typically “stop and translate” personal name
trademarks, we have kept in mind that the very purpose of trademarks is to “identify
and distinguish” goods or services from those of others, and to “indicate the source”
of the goods or services. 15 U.S.C. § 1127. Inconsistent use of a personal name
trademark, including by using it in more than one language, such that its spelling or
pronunciation changes, could risk, and perhaps make inevitable, consumer confusion
as to the true source of a product or service. Cf. 1 MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 7:38.50 (5th ed. 2019) (“Only uniform and consistent
appearance will allow uses of the mark to continue to imprint the image of the mark
in the public mind as an easily and quickly recognized symbol. This is the primary
reason why many companies impress upon employees, advertisers and retailers the
importance of showing their marks only in a uniform format and style as reflected in
a trademark usage manual. Uniformity of usage means easy and instant
recognizability.”).
While we often find that consumers would “stop and translate” marks consisting
of words other than names, doing so would not necessarily result in an inconsistent
or non-uniform mark, because words convey particular meanings, regardless of
language. By contrast, personal names often convey more than one “meaning,”
because typically, as in this case, more than one person shares the personal name.
We therefore find that generally consumers would be unlikely to “stop and translate”
personal name marks, because doing so would point to not only a different person or
people (whether real or fictional), but also to a different source, and to the mark losing
Opposition No. 91235063
19
any “instant recognizability.” In this specific case, the record does not support a
finding that consumers would be likely to translate RICARDO to RICHARD, or
RICHARD to RICARDO, but would instead take each name as it is, in its own
language, as identifying the person named, whether real or fictional, known or
anonymous.10 We agree – at least under the circumstances presented here, which
involve a Spanish first name that is widely-recognizable to American consumers –
with the observation of the district court in Habeeba’s Dance of the Arts, Ltd. v.
Knoblauch, 430 F.Supp.2d 709, 80 USPQ2d 1311, 1316 (S.D. Ohio 2006): “If, as a
factual matter, Plaintiff’s business name is based on the first name of the founder,
then there exists the legal issue of whether the doctrine of foreign equivalents would
even apply.”
One final point. As for Applicant, its content is apparently all in English, and there
is no indication that Applicant’s services have any relationship whatsoever to the
Spanish language. There is no reason to think that American consumers, even
Spanish speakers, would translate RICHARD to RICARDO. Cf. In re Aquamar, 115
USPQ2d at 1127 and Am. Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987) (in both of
which translation of the marks was found likely because the record revealed the
marks were directed to Spanish speakers, using Spanish language terms). While a
connection between the language of the mark at issue and the goods and services is
not required under the doctrine of foreign equivalents, the lack of any such connection

10 Consumers who know that Opposer offers content in French and English, or who are aware
that its trade name is “Ricardo Media Inc.” may be especially unlikely to stop and translate
from Spanish to English.
Opposition No. 91235063
20
here is helpful in making the determination as to whether consumers would stop and
translate a mark.
Looking at the issue of similarity of meaning more holistically, from the
standpoint of overall commercial impression, Applicant’s mark RICHARD
MAGAZINE as a whole expressly identifies a particular magazine. Opposer’s mark
by itself conveys nothing about the goods or services offered thereunder. Rather, the
use of a personal name as the entirety of a trademark sometimes conveys some type
of celebrity (e.g., CHER, OPRAH, etc.) with commercial endeavors, as Opposer’s
evidence makes clear, and in the culinary field in question, it might identify a well-
known chef (e.g., EMERIL). Opposer’s proposition that consumers would translate
these types of personal name marks is not supported by any evidence. Because by
their nature such marks point to one particular person, and highlight his or her
identity, translating these types of marks, with the result typically being a different
name (e.g. RICHARD to RICARDO or vice versa), would be inconsistent with the
signals these types of marks send.
To summarize our determination on the potential application of the doctrine of
foreign equivalents, we find that in this case – involving, as it does, two first names
that will be recognizable as such to ordinary American consumers − “it is unlikely
that an American buyer will translate the foreign mark,” but instead “will take it as
it is.” Palm Bay, 73 USPQ2d at 1696. Our observation in In re Tia Maria, Inc., 188
USPQ 524 (TTAB 1975) seems to apply here:
But, equally significant are the differences between the
marks “TIA MARIA” and “AUNT MARY’S”. It is recognized
Opposition No. 91235063
21
that “AUNT MARY” is the English equivalent of “TIA
MARIA”, and that there are decisions which hold that no
distinction for trademark purposes can be drawn between
a foreign word and its English equivalent. But,
nevertheless there 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 unfeasible or even unlikely that purchasers will
translate the brand names or labels appearing on canned
foods and other like products. cf. Le Cordon Bleu, S.A.R.L.
v. Continental Nut Company, 177 USPQ 734 (TT&A Bd.,
1973), affirmed 181 USPQ 646 (CCPA, 1974). That is,
insofar as this reasoning applies to the instant case, it is
unlikely to expect that a person encountering “AUNT
MARY’S” canned fruits and vegetables in a supermarket or
other establishment where goods of this type are
customarily sold would translate “AUNT MARY’S” into
“TIA MARIA”, and then go one step further and associate
these food products with applicant’s restaurant. Likewise,
going the other route, it is difficult to perceive that a person
who had purchased “AUNT MARY’S” canned fruits and
vegetables on the shelves of a supermarket would, upon
dining at the “TIA MARIA” restaurant in Mexican decor
and surrounded by a menu of Mexican delicacies, translate
“TIA MARIA” into “AUNT MARY” and then mistakenly
assume that the “TIA MARIA” restaurant and “AUNT
MARY’S” canned fruits and vegetables originate from or
are sponsored by the same entity. This stretches a person’s
credulity much too far.

Id. at 525-26. The principle that there are “foreign expressions that even those
familiar with the language will not translate, accepting the term as it is,” id., applies
with equal if not greater force to personal names.
4. Summary: the marks are dissimilar
In sum, the marks are dissimilar when assessed in their entireties. They identify
different people, with RICARDO identifying Ricardo Larrivée to those familiar with
Opposer, or someone named RICARDO to those unfamiliar with Opposer, and
RICHARD MAGAZINE identifying Mr. Wojtach, or someone named RICHARD to
Opposition No. 91235063
22
those unfamiliar with Applicant. The term MAGAZINE is another difference
affecting how the marks look and sound, while RICARDO appears to identify a
specific, perhaps well-known person (most likely, given Opposer’s identified goods
and services, a chef or restaurateur). Absent evidence to the contrary, we find that
consumers would be unlikely to “stop and translate” RICARDO into RICHARD (or
RICHARD into RICARDO), as doing so would point them to a different source. This
factor weighs heavily against finding a likelihood of confusion.
B. The Goods and Services and Their Channels of Trade and Classes of
Consumers
In comparing the goods and services, we focus on Opposer’s magazines, books and
television programs, which are much closer to Applicant’s services (which include a
“web site featuring photographic, audio, video and prose presentations”) than
Opposer’s kitchen and cooking supplies.11 Opposer’s magazines, books and television
programs have an inherent relationship to Applicant’s services in a general sense,
but Opposer’s goods and services are specifically different than Applicant’s.
That is, as the articles and other evidence from Applicant’s website make clear,
there is little practical difference between Opposer’s books and magazines provided
in “hard” format, and Applicant’s website which features “photographic” and “prose”
content, because photographic and prose content is often featured in books and
magazines. Similarly, there is little practical difference between Opposer’s television

11 To the extent Opposer relies on alleged common law rights in RICARDO for online
marketplace services, these rights are unpleaded, and the issue was not tried by implied
consent. In any event, Opposer has not established prior United States use for these services.
Therefore, we have not considered them, and we address only those goods and services in
Opposer’s pleaded registrations.
Opposition No. 91235063
23
programs and Applicant’s website featuring “audio” and “video” content, because
television programs typically feature audio and video content. Moreover, the
distinctions between “print” and “television programs” on the one hand and web
content on the other continue to blur, such that consumers may not assume that
content on paper or on television comes from a different source than content provided
online.
Nevertheless, even though print, television and web content may share certain
characteristics generally, they are not necessarily “related” in the trademark sense,
especially in this case, where the subjects of the parties’ content are specifically
different. Indeed, Opposer’s books, magazines and television programs are
specifically limited to the “culinary field,” while Applicant’s website content is
specifically limited to “fashion,” “beauty” and “lifestyle.” Thus, while the parties
deliver their content in related ways, their content appears to be materially
different.12
Opposer points out, however, that a “bizfluent.com” article indicates that
“Lifestyle magazines often include articles and editorials in the areas of fashion,
travel, food, trends, and general pop culture.” 6 TTABVUE 6. In addition, Opposer
introduced evidence from MARTHA STEWART LIVING magazine, which includes

12 Opposer’s argument that it is a “lifestyle” brand, and that its goods and services are thus
related to Applicant’s “lifestyle”-related content, is unsupported. In fact, Opposer has not
established prior use of its mark in the United States for “lifestyle” content, goods or services.
Its registrations are limited to “culinary” goods and services.
Opposition No. 91235063
24
articles about “beauty” and “lifestyle” on the one hand and “culinary” topics on the
other:

5 TTABVUE 64; see also id. at 58-61 (printouts from “marthastewart.com” showing
use in connection with lifestyle and culinary topics) and 16 TTABVUE 63-79
(printouts from “marthastewart.com”).13 Opposer also introduced the following
additional examples:
CONDÉ NAST TRAVELER magazine includes articles
about travel destinations, as well as personal grooming
while travelling and food and beverages offered in various
destinations. 5 TTABVUE 11-26; 6 TTABVUE 10.

13 We do not find the evidence from ELLE DÉCOR magazine probative, as articles about
decor do not fall within the “culinary field.” 15 TTABVUE 2-67. Similarly, the FOOD & WINE
magazine excerpts are all related to the “culinary field,” but evidence that the mark is used
in connection with “lifestyle” topics is absent. Id. at 105-108.
Opposition No. 91235063
25

GOOP, which a New York Times Magazine article dubbed
“the most controversial brand in the wellness industry,”
and bills itself as “a modern lifestyle brand,” is used in
connection with furniture, clothing and personal care
products, and its website includes articles such as “The
Plant-Based Ketogenic Diet” and “The 4 Best Vegetable
Sides for a BBQ.” 15 TTABVUE 109-131; 16 TTABVUE 32-
47.

VOGUE magazine includes articles entitled “Can We Eat
Meat Ethically? Ask Butcher-Memoirist Carmas Davis,”
“Cindy Sherman’s New Pool Float Will Add Wonderful
Weirdness to Any Summer Party,” “Where Nanushka’s
Designer Finds the Best Ceramics and Home Décor in
Budapest” and “An Oprah-Endorsed Interior Designer
Explains Why Repainting a Room is Easier Than You
Think.” 15 TTABVUE 94, 95, 98, 101.

The RACHEL RAY SHOW website includes recipes on the
one hand and articles about makeovers, summer parties
and “household hacks” on the other. 16 TTABVUE 89-129.

GIADA DE LAURENTIIS’s website offers for sale the
“Giada’s Italy” cookbook, and includes a “Makeup
Checklist,” and articles entitled “The Most Thoughtful
Gifts for Everyone on Your List,” “Get Giada’s Metallic
Chrome Nails at Home,” “Spring Clean Your Beauty
Routine” and “Giada’s Italian Family Beauty Secrets.” Id.
at 137-153.

Opposer also introduced a third-party registration showing that MARTHA
STEWART.COM is registered for cooking-related information and retail services on
the one hand and homemaking, home care, decorating, gardening and entertaining
information and retail services on the other (Reg. No. 2353116). 5 TTABVUE 44-45;
see also 5 TTABVUE 34. As discussed in Section I, third-party registrations have
some probative value on the issue of relatedness. See, e.g., In re Mucky Duck Mustard,
6 USPQ2d at 1470 n.6.
Opposition No. 91235063
26
Thus, the record establishes that some media sources offer both culinary content
and “lifestyle” content, and is sufficient to persuade us that there is a relationship
between Applicant’s “lifestyle”-focused website and Opposer’s culinary goods and
services.14 But we find that the evidence does not establish that the parties’ goods
and services, as set forth in the application and registration, are closely related.15 In
short, Opposer has established that there is a relationship between the goods and
services, but the relationship has not been shown to be a strong one, and this factor
therefore weighs only slightly in favor of finding a likelihood of confusion.16
Similarly, the evidence establishes that the channels of trade and classes of
consumers for “fashion,” “beauty” and “lifestyle” programming, content and services
overlap to some degree with the channels of trade for and consumers of “culinary
field” programming, content and services. At the same time, however, the parties’
identifications of services contain specific limitations to particular and different

14 The article in Applicant’s magazine about “Instagramming” Starbucks’s Mango
Dragonfruit Refreshers is about a third-party’s beverage, and focuses on the beverage’s
appearance and on social media. It is not an article related to the “culinary field.” The
question we are faced with here is whether consumers “would consider the goods to emanate
from the same source.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1723 (Fed. Cir. 2012); 7-Eleven, Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007).
15 Nor does the evidence convince us, as to Opposer’s alleged common law use (which, as noted
earlier, we are not considering), that RICARDO is a “lifestyle” brand known to U.S.
consumers.
16 Applicant’s focus on the international classes in which the parties’ goods and services reside
is misplaced. The classes are irrelevant. Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d
1771, 1774 (Fed. Cir. 1993) (stating that classification is for the convenience of the Office and
“wholly irrelevant to the issue of registrability under section 1052(d), which makes no
reference to classification”).
Opposition No. 91235063
27
fields, and Opposer’s evidence of overlapping channels of trade in these fields is
limited to a handful of Internet printouts and printed publications submitted without
supporting testimony or other explanation.17 This factor also weighs in favor of
finding a likelihood of confusion, but only slightly.
VI. Conclusion
Here, the parties’ marks are different in their entireties. While there is some
relationship between the parties’ services, channels of trade and classes of consumers,
we find that the dissimilarity between the marks outweighs these factors. Cf. Kellogg
Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991)
(“We know of no reason why, in a particular case, a single duPont factor may not be
dispositive.”).
Decision: The opposition is dismissed.

17 The mere fact that some consumers of Opposer’s services might at some point also purchase
Applicant’s, or vice versa, is not a basis upon which to find that the goods and services,
channels of trade or classes of consumers are related. All consumers buy shoes and toilet
paper, but that does not mean they are related goods. See generally Coach Servs., 101
USPQ2d at 1723; Sports Auth. Mich. Inc. v. PC Auth. Inc., 63 USPQ2d 1782, 1794 (TTAB
2002) (“We think it a fit subject for judicial notice that purchasers of computer hardware and
software also would be purchasers of, at least, footwear and apparel, and perhaps sporting
goods and equipment. There is nothing in the record, however, to suggest that merely because
the same consumer may purchase these items, such consumer would consider the goods as
likely to emanate from the same source or have the same sponsorship.”).