Tatuaje Cigars, Inc.v.Nicaragua Tobacco Imports, Inc.

Trademark Trial and Appeal Board

Nov 22, 2011

No. 91185180 (T.T.A.B. Nov. 22, 2011)

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Mailed: November 22, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board

______

Tatuaje Cigars, Inc.

v.

Nicaragua Tobacco Imports, Inc.
_____

Opposition No. 91185180
to application Serial No. 77359141
filed on December 25, 2007
_____

Rod S. Berman, Jessica C. Bromall and Brennan C. Swain of
Jeffer Mangels Butler & Mitchell LLP for Tatuaje Cigars,
Inc.

Jose Gutman of Fleit Gibbons Gutman Bongini & Bianco PL for
Nicaragua Tobacco Imports, Inc.
______

Before Bucher, Kuhlke and Ritchie, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Nicaragua Tobacco Imports, Inc., seeks
registration of the standard character mark TATTOO for goods
identified in the application as “cigar and cigarette boxes;
cigar and cigarette boxes not of precious metal; cigar
bands; cigar boxes; cigar boxes not of precious metal; cigar
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91185180
2
cases; cigar cutters; cigar holders; cigar humidifiers;
cigar lighters; cigar tubes; cigars; tobacco, cigars and
cigarettes; cigarillos” in International Class 34. The
application was filed on December 25, 2007, based on an
allegation of a bona fide intent to use the mark in commerce
under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b).
Opposer, Tatuaje Cigars, Inc., opposed registration of
applicant’s mark on the ground that, as used in connection
with applicant’s goods, the mark so resembles opposer’s
previously used and registered mark TATUAJE in typed form,
in connection with “cigars,” as to be likely to cause
confusion, to cause mistake, or to deceive under Trademark
Act Section 2(d), 15 U.S.C. §1052(d).
By its answer, applicant denies the salient
allegations.
In prior orders, the Board granted partial summary
judgment in opposer’s favor establishing opposer’s standing
and priority, the similarity of the goods, the overlap in
the channels of trade and the classes of purchasers, and
entering judgment against applicant’s affirmative defense of
unclean hands. See Board Orders dated September 17, 2009
and August 30, 2010. In addition, in its brief, applicant
stipulated that the goods and channels of trade are similar
and that “Spanish is a commonly spoken and understood
language in the United States.” App. Br. p. 9.
Opposition No. 91185180
3
In view thereof, the only issues that remain for
decision are findings of fact as to the similarity of the
marks and a determination as to whether there is a
likelihood of confusion.
By operation of Trademark Rule 2.122, 37 C.F.R. §2.122,
the record in this case includes the pleadings and the file
of the involved application. In addition, opposer submitted
(1) notices of reliance (dated November 11, 2010 and
February 24, 2011) on opposer’s federal registration,
applicant’s discovery responses, and printed publications
(dictionary and reference work excerpts), and (2) the
testimony deposition of Diana V. Valori, opposer’s expert
witness.1 Applicant submitted a notice of reliance (dated
January 10, 2011) on official records (trademark application
file excerpts) and printed publications (dictionary
excerpts).
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section
2(d) 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 and 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). As

1 Applicant’s request to strike reference to certain evidence is
denied inasmuch as these items were properly made of record under
opposer’s rebuttal notice of reliance.
Opposition No. 91185180
4
noted above, the factors pertaining to the relatedness of
the goods, and the overlap in the channels of trade and
consumers weigh in favor of opposer. Based on the arguments
and evidence presented, the only du Pont factor in dispute
concerns the similarities or dissimilarities between the
marks.
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). 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
their entireties that confusion as to the source of the
services offered under the respective marks is likely to
result. Finally, we are cognizant of the principle that the
more closely related the goods are, the less similarity in
the marks is required to support a conclusion of likelihood
of confusion. Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992).
Opposer’s position is that the marks are similar under
the doctrine of foreign equivalents because opposer’s mark
TATUAJE is a Spanish word that translates directly to TATTOO
Opposition No. 91185180
5
in English. Opposer’s registration for the mark TATUAJE
includes the following translation statement, “The foreign
wording in the mark translates into English as ‘TATTOO.’”2
In addition, opposer points to other similarities in sound
and appearance. Specifically, opposer argues that the first
syllables of each mark is “TAT” and the first two syllables
of the marks are pronounced similarly and the only
difference in sound are the two extra syllables at the end
of opposer’s mark.
By contrast, applicant argues that the doctrine of
equivalents does not apply here because there is no evidence
to support a finding that consumers would stop and translate
opposer’s mark and the words are not exact equivalents in
that tatuaje and tattoo have other meanings. Further,
applicant contends that the marks are dissimilar in
appearance and sound, pointing to the difference in the
number of letters and syllables, and the difference in
pronunciation.
“Under the doctrine of foreign equivalents, foreign
words from common languages are translated into English to
determine...similarity of connotation in order to ascertain
confusing similarity with English word marks.” Palm Bay, 73
USPQ2d at 1696.

2 Registration No. 2836665 issued on April 27, 2004. Opp. NOR
Exh. A.

Opposition No. 91185180
6
The doctrine of foreign equivalents is applied when it
is likely that “the ordinary American purchaser would ‘stop
and translate [the term] into its English equivalent.’”
Palm Bay, Id., quoting, In re Pan Tex Hotel Corp., 190 USPQ
109, 110 (TTAB 1976). See also In re Thomas, 79 USPQ2d 1021
(TTAB 2006). “The ‘ordinary American purchaser’ in this
context refers to the ordinary American purchaser who is
knowledgeable in the foreign language.” In re Thomas, 79
USPQ2d at 1024.
Here, the “ordinary American purchaser” refers to the
ordinary American purchaser who is knowledgeable in Spanish.
As noted above, it is stipulated that Spanish is a commonly
understood language in the United States.
The record includes several dictionary entries where
the English word TATTOO translates into the Spanish word
TATUAJE. See, e.g., NOR Exh. D, Bilingual Richmond
Dictionary; and Exh. E Webster’s New World Pocket Spanish
Dictionary.
Applicant points to one Spanish dictionary excerpt that
provides an alternate meaning of TATUAJE3 as “a circle or
mark that is left around the wound from a gun fired in very
close proximity.” App. Br. p. 14. Applicant also points to

3 Applicant did not submit a translation for this document,
however, opposer has not objected to this evidence and opposer’s
witness provides testimony and translation as to this dictionary
reference.

Opposition No. 91185180
7
alternate meanings of the word TATTOO as “a rapid rhythmic
rapping” and “a call sounded shortly before taps.” Def. NOR
Exh. J.
Opposer’s expert witness testifies that “tatuaje” is a
common Spanish word that means “engraving under the skin”
and that she was not aware of any other meanings, as a
native Spanish speaker and professional translator, until
consulting a dictionary in preparation of her report. Test.
pp. 15-17. Further, she also testifies that she was not
familiar with the other dictionary listed meanings for the
English word “tattoo.” Based on the expert’s testimony we
find applicant’s alternate meanings for “tatuaje” and
“tattoo” to be obscure, and they do not impact the
equivalency between TATUAJE and TATTOO.
In sum, we find that the doctrine of foreign
equivalents applies, and that TATTOO is the equivalent of
TATUAJE.
Applicant’s reliance on In re Buckner Enterprises
Corp., 6 USPQ2d 1316 (TTAB 1987) does not persuade us of a
different result. In Buckner, the Board found that PALOMA
and DOVE were not exact synonyms because the “Spanish word
‘paloma’ has a broader meaning than the English word ‘dove’
in that ‘paloma’ also includes ‘pigeon’ [and] [i]n English,
the words ‘dove’ and ‘pigeon’ are understood to mean two
different, although related birds.” Id. at 1317. The Board
Opposition No. 91185180
8
then analyzed and weighed the similarities and
dissimilarities in those marks finding them “quite
dissimilar in terms of sight (appearance) and
sound(pronunciation), and (2) are not exact synonyms.” Id.
Here, we determine that the other meanings of the words
are too obscure and do not “broaden” their respective
meanings such that they cannot be considered equivalents.
In addition, the record does not establish that “the common
experience of smokers being burned by lit cigars, would tend
to create an impression in the mind of consumers of the
translated meaning of ‘tatuaje’ as being a gun powder burn
on the skin.” App. Br. p. 7. We find it more likely that
Spanish-speaking cigar smokers, like any other person, would
immediately perceive the meaning of “tattoo” when presented
with a cigar under the mark TATUAJE.
While the marks have some differences in sound and
appearance, the identity in connation is sufficient to
support a finding of likelihood of confusion, especially as
used in connection with identical goods, cigars. The fact
that the marks have the same connotation, resulting in a
similar overall commercial impression, is sufficient for us
to conclude that confusion is likely, despite the
differences in their appearance and sound. In re American
Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987).
Opposition No. 91185180
9
Further, we find that the mark would be translated by
those who are familiar with the Spanish language. Whether
the relevant purchasers “‘will stop and translate the word’
necessarily depends on the particular facts and
circumstances of the case.” In re La Peregrina Ltd., 86
USPQ2d 1645, 1648 (TTAB 2008). There is no compelling
evidence in the record to establish that the mark would not
be translated because of marketplace circumstances or the
commercial setting in which the mark is used. See In re
Thomas, 79 USPQ2d at 1025-26, citing, In re Tia Maria, Inc.
188 USPQ 524 (TTAB 1984); and Pan Tex, 190 USPQ 190. Here,
the marks are equivalent and the goods are identical.
We acknowledge that this doctrine is not absolute and
“where the only similarity between the marks is in
connotation, a much closer approximation is necessary...to
justify a refusal to register on that basis alone.” In re
Sarkli, 721 F.2d 353, 220 USPQ 111, 113 (Fed. Cir. 1983)
(REPECHAGE not confusingly similar to SECOND CHANCE). See
also Buckner, 6 USPQ2d at 1317 (PALOMA, meaning both “dove”
and “pigeon,” not confusingly similar to DOVE). However, in
this case, but for remote alternative meanings for tatuaje
and tattoo, the only translation of TATUAJE is TATTOO. In
addition, the marks share similarities in sound and
appearance inasmuch as both begin with TAT and can be
pronounced similarly.
Opposition No. 91185180
10
We are not persuaded by applicant’s argument that “in
the common Spanish pronunciation of ‘tatuaje,’ the second
syllable of TATUALE ends in an ‘ah’ sound while the second
syllable of ‘tattoo’ clearly ends in an ‘oo’ sound.” App.
Br. 18. It is settled that there is no correct
pronunciation of a trademark because it is impossible to
predict how the public will pronounce a particular mark.
Kabushiki Kaisha Hattori Tokeiten v. Acuotto, 228 USPQ 461
(TTAB 1985). Thus, even if the second syllables are
pronounced differently, for our purposes they may also both
be pronounced as “oo.”
Finally, the fact that two separate examining attorneys
passed applicant’s and opposer’s subsequent marks on for
publication is of little to no probative value. At a
minimum, the records in the ex parte examinations would be
quite different from the record in this inter partes
proceeding. Moreover, previous decisions by examining
attorneys are without evidentiary value and are not binding
on the agency or the Board. In re Davey Prods. Pty, 92
USPQ2d 1198, 1206 (TTAB 2009).
Taking into consideration the foreign equivalency of
the marks, their similarities in sound, appearance,
connotation, and overall commercial impression, we find the
marks to be similar and this factor weighs in favor of a
finding of likelihood of confusion.
Opposition No. 91185180
11
In view of the above, opposer has proven its claim of
likelihood of confusion under Section 2(d) of the Trademark
Act between applicant’s standard character mark TATTOO and
opposer’s mark TATUAJE.
Decision: The opposition is sustained.