Teddy S.p.A.

Trademark Trial and Appeal Board

Jun 17, 2003

No. 78074844 (T.T.A.B. Jun. 17, 2003)

Mailed: June 17, 2003
Paper No. 9
Ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Teddy S.p.A.
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Serial No. 78/074,844
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John P. Murtaugh of Pearne & Gordon LLP for Teddy S.p.A.
Dezmona J. Mizelle, Trademark Examining Attorney,1 Law
Office 110 (Chris Pedersen, Managing Attorney).
_______
Before Simms, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Teddy S.p.A., an Italian company, has appealed from
the final refusal of the Trademark Examining Attorney to
register RINASCIMENTO and design, as shown below,
for the following goods:
1 The present Examining Attorney wrote the appeal brief; a
different Examining Attorney examined the application.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78/074,844
2
Bags, handbags, purses, wallets,
suitcases, beauty cases sold empty,
document cases, umbrellas, handsacks,
namely clutch bags, and luggage (Class
18); and
Clothing, namely shirts, socks,
dresses, skirts and trousers; footwear,
headwear, jackets, overcoats,
raincoats, pullovers, jerkins, hats,
scarves, foulards (Class 25).2
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant's mark so resembles the mark RENAISSANCE,
previously registered for women's sweaters,3 that, if it
were used on applicant's identified goods, it would be
likely to cause confusion or mistake or to deceive.
Registration has also been refused because of applicant's
failure to provide an acceptable translation of its mark.4
The appeal has been fully briefed; applicant did not
request an oral hearing.
We turn first to the requirement for an acceptable
translation. Applicant has submitted the following
translation of its mark: The English translation of
2 Application Serial No. 78/074,844, filed July 25, 2001, and
asserting a bona fide intention to use the mark in commerce.
3 Registration No. 1,504,036, issued September 13, 1988; Section
8 affidavit accepted; Section 15 affidavit received.
4 The Examining Attorney states in her brief that the sole issue
on appeal is that of likelihood of confusion. However, it is
clear from her brief that the requirement for an acceptable
translation has not been withdrawn, and applicant has proceeded
with that understanding.
Ser No. 78/074,844
3
RINASCIMENTO is REBIRTH or REINCARNATION, relying on the
translation provided in a third-party registration, No.
2,271,764. The Examining Attorney has refused to accept
this translation, contending that the proper translation of
RINASCIMENTO is RENAISSANCE. In support of this position
the Examining Attorney has submitted an excerpt from an
Italian-English Dictionary in which "rinascimento" is
translated as "the Renaissance". It is also noted that
this same excerpt lists "rebirth, revival" as the
translation of "rinascita." In addition, the Examining
Attorney made of record an excerpt from AllWords.com in
which "Rinascimento" is given as the Italian translation of
"Renaissance," which is defined as "the revival of arts and
letters which formed the transition from the Middle Ages to
the modern world."
The evidence submitted by the Examining Attorney
clearly shows that the English translation of the Italian
word "Rinascimento" is "Renaissance." The only evidence
submitted by applicant to rebut this evidence is a
translation listed in a third-party registration. However,
in general, simply because an applicant has made a
statement in an application does not prove the truth of
that statement. Here, the fact that a third-party
applicant provided a translation in a different
Ser No. 78/074,844
4
application, and the Examining Attorney who examined that
application accepted the translation, does not prove that
"Rinascimento" means "rebirth" or "reincarnation."5
Accordingly, we affirm the Examining Attorney's requirement
for an acceptable translation.
This brings us to a consideration of the refusal on
the ground of likelihood of confusion. Our determination
of this issue is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors set forth in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The Examining Attorney bases her refusal on the
doctrine of foreign equivalents, under which foreign words
5 Although we recognize one of the definitions of the English
word "renaissance" is "a rebirth, revival", it is clear from the
record that the translation of the Italian word is "Renaissance"
and not "rebirth." Moreover, "Renaissance" is also defined in
English as "The humanistic revival of classical art, literature,
and learning that originated in Italy in the 14th century and
later spread through Europe" and "The period of this revival,
roughly from the 14th through the 16th century," see The American
Heritage Dictionary of the English Language, © 1970, and this
meaning is reinforced by the design element in applicant's mark,
which is an outline of the head of Venus from the Renaissance
artist Botticelli's famous painting The Birth of Venus.
Ser No. 78/074,844
5
from common languages are translated into English in order
to determine, inter alia, their confusing similarity to
English word marks. In re Ithaca Industries, Inc., 230
USPQ 702 (TTAB 1986).
It does not require any authority to conclude that
Italian is a common, major language in the world and is
spoken by many people in the United States. Id. Although
non-Italian speakers, or those having only a rudimentary
knowledge of the language, may not know the word
"Rinascimento," the word is not so obscure that Italian
speakers in the United States would not be familiar with
it. Therefore, applicant's arguments to the contrary, we
find that the doctrine of foreign equivalents applies, and
that, although applicant's mark differs from the cited mark
in appearance and pronunciation due to the fact that
applicant's mark is in Italian and the cited mark is in
English, they must be considered to be identical in
connotation.
When the marks are considered in connection with
applicant's goods in Class 25, we find that this single
similarity in connotation is sufficient to support a
finding of likelihood of confusion. Applicant's Class 25
goods are legally identical in part to the women's sweaters
identified in the cited registration, and closely related
Ser No. 78/074,844
6
in part. Specifically, the "pullovers" identified in the
application must be deemed to be encompassed within the
registrant's identified women's sweaters, while items such
as skirts, trousers and shirts are complementary, because
they can be bought with a sweater as part of an outfit. It
is well-established that when marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). In view thereof, the fact that the marks
have the same connotation is sufficient for us to conclude
that confusion is likely, despite the differences in their
appearance and pronunciation. In re American Safety Razor
Co., 2 USPQ2d 1459 (TTAB 1987).
A different result obtains when we consider the issue
of likelihood of confusion with respect to the goods in
Class 18. The Examining Attorney has submitted no evidence
whatsoever to show that women's sweaters are related to any
of applicant's Class 18 goods. Although in her brief the
Examining Attorney states that all of applicant's
identified goods are "highly related to registrant's
'women's sweaters'" and that "the applicant has not argued
otherwise," brief, p. 5, in fact applicant specifically
Ser No. 78/074,844
7
stated, at p. 3 of its brief, that "at a minimum,
applicant's application should be allowed with respect to
the Class 18 goods, since there is no overlap with
registrant's Class 25 goods."6
It is certainly common knowledge that items such as
handbags and purses are fashion accessories, and are
frequently chosen to complement an outfit. However, we are
not aware of a fashion practice of matching handbags and
sweaters. Thus, we cannot say, on this record, that
handbags, purses, or any of applicant's other goods in
Class 18, and women's sweaters, are complementary items.
Nor is there any evidence, such as third-party
registrations, that would indicate that women's sweaters
and handbags and the like are sold by the same entity under
a single mark. We recognize that designers may use their
names/trademarks for a wide variety of fashion items, but
6 The dissent points out that this statement is the sum total of
applicant's argument as to why there is no likelihood of
confusion between its mark for its identified Class 18 goods, and
the cited registration. Whether or not the dissent is implying
that applicant has done a less than stellar job in defending its
position, the fact remains that the burden of proving likelihood
of confusion is on the U.S. Patent and Trademark Office, and as
has been noted, the Examining Attorney has failed to submit any
evidence whatsoever as to the relatedness of applicant's Class 18
goods and the registrant's identified goods, but has only made
the unsupported statement that the goods are "highly related."
Otherwise, she, too, has made no argument other than what has
been quoted above in support of her position that the goods are
related.
Ser No. 78/074,844
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in this case RENAISSANCE is not the name of a designer. As
a result, the most we can say, on this record, is that
applicant's handbags and purses are only tangentially
related to the registrant's women's sweaters, in that they
are all fashion items. In these circumstances, therefore,
we find that the differences in the appearance and the
pronunciation of the marks outweigh the fact that they are
identical in connotation. See In re L'Oreal S.A., 222 USPQ
925 (TTAB 1984), in which the Board found HAUTE MODE for
hair coloring cream shampoo not likely to cause confusion
with HI-FASHION SAMPLER for finger nail enamel, despite the
fact that "haute mode" means "high fashion." Accordingly
we find that the Office has not shown that applicant's
mark, if used on its enumerated Class 18 goods, is likely
to cause confusion with the cited mark.
Decision: The refusal of registration on the ground
of likelihood of confusion is affirmed with respect to the
application in Class 25, and reversed with respect to the
application in Class 18. The requirement for an acceptable
translation is affirmed as to both classes. In view
thereof, the application may not go forward to publication
in either class. Applicant is advised that, if it wishes
to submit the required translation, it must petition the
Ser No. 78/074,844
9
Director to reopen the application. See Trademark Rules
2.142(g) and 2.146(a)(2).
Simms, Administrative Trademark Judge, dissenting:
While I agree with the majority that there will be
likelihood of confusion when applicant’s mark RINASCIMENTO
and design is used for various items of clothing with
registrant’s mark RENAISSANCE for women’s sweaters, I
disagree with the majority’s conclusion that there will be
no likelihood of confusion with respect to applicant’s mark
for its Class 18 goods (bags, handbags, purses, wallets,
suitcases, beauty cases sold empty, document cases,
umbrellas, handsacks, namely clutch bags, and luggage) and
registrant’s mark.
First, on page 7 of its opinion, the majority has
correctly quoted the total of all of applicant’s argument
in this entire case with respect to the differences of the
goods of applicant and registrant. That is to say, in all
of the papers applicant has filed in this case, applicant
has presented only one sentence of argument about the
goods. See applicant’s brief, 3 ("at a minimum,
applicant's application should be allowed with respect to
Ser No. 78/074,844
10
the Class 18 goods, since there is no overlap with
registrant's Class 25 goods").
Of course, when comparing the goods of an applicant
with those of a registrant, it is not necessary that the
respective goods be identical or even competitive in order
to support a finding of likelihood of confusion. Rather,
it is sufficient that the goods are related in some manner,
or that the circumstances surrounding their marketing are
such that they would be likely to be encountered by the
same persons in situations that would give rise, because of
the marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
source, or that there is an association or connection
between the sources of the respective goods. See, for
example, In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Opus One
Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001); In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991); and McDonald's Corp. v.
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989).
For example, as the Court of Appeals for the Federal
Circuit stated in Recot, Inc. v. M.C. Becton, 214 F.3d
1332, 54 USPQ2d 1895, 1898 (Fed. Cir. 2000):
[E]ven if the goods in question are
different from, and thus not related
to, one another in kind, the same goods
Ser No. 78/074,844
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can be related in the mind of the
consuming public as to the origin of
the goods. It is this sense of
relatedness that matters in the
likelihood of confusion analysis.
See also, Bose Corporation v. QSC Audio Products, Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1309-1310 (Fed. Cir.
2002)(“Hence the products as described in the pertinent
registrations are not the same. But they are related as
required by DuPont.”); and Hewlett-Packard Company v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002)(“even if the goods and services in
question are not identical, the consuming public may
perceive them as related enough to cause confusion about
the source or origin of the goods and services”).
Moreover, in order to affirm a refusal, it is only
necessary that we find likelihood of confusion with respect
to at least one item in the Class 18 identification of
goods. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981)("[L]ikelihood of confusion must be found if the
public, being familiar with [opposer's] use of MONOPOLY for
board games and seeing the mark on any item that comes
within the description of goods set forth by appellant in
its application..." Emphasis in original). Accordingly,
for the likelihood-of-confusion analysis, one may consider
Ser No. 78/074,844
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only such Class 18 goods as handbags, clutch bags, purses,
wallets and umbrellas.
While the majority has stated that there is no
evidence that a purchaser may try to match a sweater with
various fashion accessories such as handbags and purses,
this is only one factor which may contribute to the
likelihood of confusion. Indeed, the majority has
acknowledged that designers may use their names or marks
for a variety of fashion items. To the extent that
purchasers are aware of the use of fashion designers’ names
and marks used in connection with both clothing and
accessories, purchasers may be conditioned to expect that
clothing and accessories such as handbags and purses
bearing the same mark may come from the same source.
In this regard, I agree with the Examining Attorney
that women’s sweaters and such goods as handbags, purses
and wallets are closely related. These goods would be sold
in some of the same channels of trade--clothing stores,
department stores, boutique stores, mass merchandisers,
etc.--to the general public. Also, women’s sweaters and
handbags and purses may be found at relatively inexpensive
prices.
I also note that there is no evidence in the file of
any “weakness” of registrant’s mark RENAISSANCE. For
Ser No. 78/074,844
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example, there are no copies of any third-party
registrations of similar marks for related goods.
With respect to the word RINASCIMENTO, applicant has
argued, reply brief, 2, that this is “an unusual and
obscure word.” I cannot agree with this statement.
Moreover, as the Examining Attorney contends, RENAISSANCE
is the direct English translation and exact synonym of
applicant’s mark RINASCIMENTO. This is not a case,
therefore, where the word which comprises a mark has a
number of different meanings. See, for example, In re
Sarkli Ltd., 721 F.2d 353,220 USPQ 111 (Fed. Cir. 1983);
see also In re Perez, 21 USPQ2d 1075 (TTAB 1991) and In re
Buckner Enterprises Corporation, 6 USPQ2d 1316 (TTAB 1987).
Of course, one of the reasons behind the doctrine of
foreign equivalents is that the owner of a mark should be
able to use and protect a translation of its mark that it
may use or might want to use abroad or even in certain
markets in this country.
In brief, a purchaser aware of registrant’s
RENAISSANCE women’s sweaters who then encounters the exact
foreign equivalent mark RINASCIMENTO (and design) used on
related fashion accessories such as handbags, purses and
wallets is likely to believe that all of these goods come
Ser No. 78/074,844
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from the same source, or are produced under sponsorship or
license of the same trademark owner.
Finally, if there were any doubt about likelihood of
confusion in this case, we should, in accordance with
precedent, resolve such doubt in favor of the registrant
and against applicant. In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1691 (Fed. Cir. 1993); In re Hyper Shoppes
(Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988);
and In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289 (Fed. Cir. 1984).
I would affirm the refusal under Section 2(d) as to
both classes of the application.