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ESTTA410763 05/24/2011

Proceeding Party Correspondence Address

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD 91185180 Defendant NICARAGUA TOBACCO IMPORTS, INC. Jose Gutman Fleit Gibbons Gutman Bongini PL 551 NW 77th Street Boca Raton, FL 33487 UNITED STATES tmboca@fggbb.com Brief on Merits for Defendant Jose Gutman tmboca@fggbb.com /Jose Gutman/ 05/24/2011 Trial_Brief_of_Applicant_5-24-11.pdf ( 21 pages )(94217 bytes )

Submission Filer's Name Filer's e-mail Signature Date Attachments

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

__________________________________________/

TATUAJE CIGARS, INC. Opposer, v. NICARAGUA TOBACCO IMPORTS, INC., Applicant. __________________________________________/

Opposition No. 91/185,180 Appl. Ser. No.: 77/359,141

Mark: TATTOO

TRIAL BRIEF OF APPLICANT NICARAGUA TOBACCO IMPORTS INC.

Applicant Nicaragua Tobacco Imports, Inc., (“Applicant”), through its undersigned counsel, hereby submits its Trial Brief in support of its application for registration of its mark TATTOO and in defense of the Opposition by Opposer Tatuaje Cigars, Inc.

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TABLE OF CONTENTS

I. II. III. IV.

INTRODUCTION DESCRIPTION OF THE RECORD STATEMENT OF THE ISSUES ANALYSIS Stipulated Facts Summary of Analysis A. Proper Analysis for Doctrine of Equivalents B. Dissimilar Sight and Sound

4 8 9 9 9 10 10 17

C. Technical Analysis By Two Examining Attorneys Separately Resulted in Findings of No Confusing Similarity 19

V.

CONCLUSION

20

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TABLE OF AUTHORITIES

CASES In re Buckner Enterprises Corp., 6 U.S.P.Q.2d 1316 (T.T.A.B. 1987) Palm Bay Imports v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 1377, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005) In re Perez, 21 U.S.P.Q.2d 1075, 1076 (T.T.A.B. 1991) In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006)

PAGE(S)

6, 13, 16

11

6, 7, 16, 17

11

STATUTES 15 U.S.C. §1052(d) 5, 11, 20

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I. Introduction
Applicant is a well established producer and distributor of cigars that routinely develops and promotes new in-house brands of cigars for sale to the general public. Applicant had identified, without actual knowledge of Opposer’s mark TATUAJE, the mark TATTOO for cigar products. The Applicant filed its application and the Trademark Office examining attorney approved the mark TATTOO for registration. Once the Applicant’s mark was published for opposition, Opposer filed this Opposition of the application for the mark TATTOO. This was Applicant’s first actual knowledge of Opposer’s mark. The Applicant asserts that these two marks are not confusingly similar under the standards of trademark law. Any comparison of these two words, whether it be a detailed analysis as is performed in the course of this proceeding or a casual comparison from memory as is often performed in the course of a consumer's purchase, clearly reveals that TATUAJE and TATTOO have much different sight impressions and substantially different sound impressions. The fact that the commercial impression of these two different marks fail to create a likelihood of confusion is further evidenced by the judgment of not only one, but of two different trademark examining attorneys of the Trademark Office. One of these trademark examining attorneys explicitly considered, as revealed by the trademark application examination record, the relationship between TATUAJE and TATTOO given their translations from English to Spanish and vice versa.

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During this Opposition proceeding in the TTAB, Opposer filed a new application for registration of its mark TATUAJE in connection with smoking accessories and clothing. See Applicant’s Notice of Reliance, Exhibits E, F, G, H, and I. The Opposer specifically asserted in its application that ‘[t]he English translation of "TATUAJE" in the mark is "TATTOO".’ See Applicant’s Notice of Reliance, Exhibit E. A second Examining attorney at the Trademark Office conducted a search and found that “[t]he Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.” See Applicant’s Notice of Reliance, Exhibit G. The only issues remaining to be tried in this Opposition are 1) whether the mark TATTOO as applied for by Applicant is similar to the mark TATUAJE as registered by Opposer; and 2) if similar, whether confusion will be likely from registration of Applicant’s mark TATTOO. The Applicant asserts that these marks are clearly dissimilar except for the Opposer's assertion of similarity under the doctrine of foreign equivalents. The Applicant asserts that even under the precedent defining the doctrine of foreign equivalents, these two marks still fail to create a likelihood of confusion in the marketplace. Meaning and Connotation Not Exact Synonyms In view of the multiple translations of the word TATUAJE into English, and the plurality of meanings of the word TATUAJE (see Applicant’s Notice of Reliance, Exhibit N; see also Deposition of Opposer’s Expert Witness Diana V. Valori on November 4, 2010, Translator’s Report and Disclosure, pages 2-4, citing to multiple dictionary translations of “tatuaje” and plurality of dictionary meanings of the words

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“tatuaje” and “tattoo”), it is evident that the meaning of the word “tatuaje” is broader than the English word “tattoo”, and the words “tatuaje” and “tattoo, nothwithstanding Opposer’s repeated assertions to the contrary, are not exact synonyms. The word “tatuaje” does not exactly translate into the English word “tattoo” in all cases. Opposer agrees that the case In re Buckner Enterprises Corp., 6 U.S.P.Q.2d 1316 (T.T.A.B. 1987) stands for the proposition that the doctrine of foreign equivalents can not be applied where the words are not “exact synonyms.” In that case, the word “paloma” was found to be broader than the English word “dove” because the translation of the word “paloma” encompasses the English words “pigeon” and “dove”. While Applicant believes that In re Buckner is the applicable law in the present case, Opposer argues the contrary and asserts that “although a word may have multiple meanings or multiple translations, it should still be considered a foreign equivalent if one of the translations or meaning is an exact equivalent of the applied for mark.” Opposer offers an alternative case in support of its arguments. Opposer cites to the case In re Perez, 21 U.S.P.Q.2d 1075, 1076 (T.T.A.B. 1991) for the Board’s finding that “GALLO” and “ROOSTER” were foreign equivalents although, in addition to “rooster” the “Spanish word ‘gallo’ is also translated into English to mean ‘dory; ‘float’; ‘wall-board’; and ‘false note.’” What Opposer failed to include in Opposer’s analysis of the case In re Perez is that the evidence in the record also showed that the mark "GALLO," despite having several meanings in Spanish, was found by the majority to be the foreign equivalent of the word "ROOSTER" due to the picture of a rooster on the packaging for the associated goods. Specifically, the Board majority observed that: Undercutting applicant's argument that the Spanish word "gallo" has meanings other than "rooster", and, thus, is not the

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foreign equivalent of registrant's mark, is the usage of applicant's mark[s] in the commercial marketplace, as evidenced by the specimens of record. The specimens depict applicant's marks with a prominent representation of a rooster. While the rooster design is not a feature of the marks sought to be registered and, of course, cannot be considered when comparing the marks, the design would certainly reinforce to consumers in the marketplace the "rooster" translation of "gallo" as opposed to the other English meanings of "gallo." In the present case, one of the multiple translations of the word “tatuaje” is a circle or mark that is left around the wound from a gun fired in very close proximity. With respect to the mark “tatuaje” being applied to cigar products, the usage of Opposer's mark in the commercial marketplace, as evidenced by the specimens of record, and 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. Therefore, even considering Opposer’s reliance on the case In re Perez, the translated meaning and connotation of the Spanish word “tatuaje” when analyzed in the context of the usage of Opposer's mark in the commercial marketplace on cigar products, would likely support a commercial impression of a gun powder burn on the skin. Opposer has failed to prove that the marks TATUAJE and TATTOO are identical in connotation. Moreover, the conclusion of an expert linguist, such as Opposer’s expert witness, is not the appropriate test for determining meaning of the translation of the word “tatuaje” and the English word “tattoo”. A plain ordinary consumer’s impression and meaning applied to these words is the correct test to apply.

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Such test is supported by the dictionary definitions of record, rather than by conclusions as to meaning offered by an expert witness. Sight and Sound of the Marks Are Not Similar And No Confusion is Likely Applicant’s mark TATTOO does not look or sound similar to Opposer’s mark TATUAJE. The number of letters and syllables are different between the two marks. In summary, Opposer has failed to show identical meaning and connotation of the two marks, and the sight and sound of the two marks are also different. The Board should dismiss Opposer’s opposition and allow registration of Applicant’s mark TATOO.

II. Description of the Record
The evidence of record consists of every item listed in the Description of the Record, in Opposer’s Trial Brief, except item “(9) articles and excerpts of various print and online dictionaries discussing the manner in which dictionaries are arranged and organized.” The substance of this last item (9) does not appear in the Exhibits attached to the Deposition of Diana V. Valori, taken on November 4, 2010 or in the Opposer’s Notice of Reliance, signed by attorney Jessica C. Bromall on November 11, 2010. Applicant respectfully demands that Opposer show how this last item (9) was introduced into the official record, or any reference to the substance of such item (9) should be stricken from Opposer’s Trial Brief.

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III. Statement of the Issues
(1) Whether TATUAJE and TATTOO have the same meaning and

connotation to consumers of cigar products, and whether the doctrine of foreign equivalents can be applied to conclude that the two word marks are identical in meaning and connotation. (2) Whether TATUAJE and TATTOO are similar in sight, sound, meaning,

and commercial impression, to cause confusion to the relevant consumers of cigar products. (3) Whether the registration of Applicant’s mark TATTOO would likely

cause confusion in the marketplace with respect to Opposer’s mark TATUAJE.

IV. Analysis
Stipulated Facts First of all, Applicant agrees that Spanish is a commonly spoken and understood language in the United States. Applicant agrees that the goods and services specified in the Federal Registration No. 2,836,665 for the mark TATUAJE are similar to the subject trademark application for the mark TATTOO. The Applicant further agrees that the channels of trade commonly used for the goods specified in the Federal Registration for the TATUAJE mark are similar to the channels of trade commonly used for the goods specified in the subject trademark application for TATTOO.

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Summary of Analysis The Applicant, however, asserts that the meanings and connotations of TATTOO and TATUAJE are sufficiently different, given the multiple translations of TATUAJE into English (and also the multiple translations of TATTOO and the multiple meanings of TATTOO), to avoid causing confusion to an observer in the marketplace. Even assuming a sufficient similarity of connotation between TATTOO and TATUAJE, a consumer would not stop and think to translate TATUAJE into TATTOO, or vice versa, when encountering the marks TATUAJE and TATTOO as they would appear in their channels of commerce before the consumer made a purchase decision. Lastly, Applicant asserts that the “Sight and Sound” of TATTOO and TATUAJE are sufficiently different, even when considered in conjunction with any similarity in their connotation, to be likely to avoid causing confusion to consumers of cigar products in the relevant marketplace. A. Proper Analysis for the Doctrine of Foreign Equivalents Opposer asserts that the TATTOO mark is confusingly similar to the TATUAJE mark primarily based upon the two words being exact synonyms - both meaning drawings engraved on or under the skin, as recognized under the Doctrine of Foreign Equivalents. See Opposer’s Trial Brief, page 10, second paragraph. Opposer asserts that “it is likely that a significant portion of American consumers would stop and translate Opposer’s Mark into its English equivalent” and that “[t]he translated meaning of TATUAJE is not obscure.” See Opposer’s Trial Brief, page 11, first and second paragraphs.

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Applicant asserts that Opposer’s arguments misstate the analysis to be performed under the Doctrine of Foreign Equivalents and also misstate certain facts concerning the translation of TATUAJE and TATTOO. To begin, the Applicant agrees with Opposer’s assertion that Spanish is a commonly understood language in the United States. However, the Applicant disagrees with Opposer’s assertions regarding the uncontestable facts underlying the analysis required under the Doctrine of Foreign Equivalents. The Doctrine of Foreign Equivalents is used to evaluate the similarity of connotation between foreign word and English word marks. Palm Bay Imports v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 1377, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005). “When it is unlikely that an American buyer will translate the foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied.” Id. Words from modern languages are generally translated to English under the doctrine of foreign equivalents, but the doctrine “is not an absolute rule and should be viewed merely as a guideline.” Id. Even when determining similarity of connotation under the Doctrine of Foreign Equivalents, a complete inquiry into the likelihood of confusion between a foreign word mark and an English word mark requires one to “consider the marks in their entireties in terms of sound, appearance, meaning, and commercial impression.” In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).

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1. Consumers would not stop and translate TATUAJE upon seeing the TATUAJE mark
Opposer seems to assert that simply because Spanish is a commonly understood and spoken language in the United States, a significant portion of American consumers would stop and translate Opposer’s Mark into its English equivalent. Opposer’s Trial Brief, page 11, first paragraph. The Applicant asserts that this is not the proper test to apply under the Doctrine of Foreign Equivalents. The Applicant further asserts that a proper analysis using test required under the Doctrine of Foreign Equivalents requires resolution of disputed underlying facts, which Opposer has failed to prove.

2. Translation of TATUAJE and the meanings of TATTOO
The Opposer asserts that “voluminous dictionary definitions and expert testimony eliminate any doubt that ‘tatuaje’ means ‘tattoo’ and vice versa.” Also, Opposer asserts“there can be no question that TATUAJE and TATTOO are exact equivalents.” See Opposer’s Trial Brief, page 11, third full paragraph. In contrast to the Opposer’s assertion, the Applicant points out that “tatuaje” has multiple meanings in Spanish each with its associated separate translations and that “tattoo” also has multiple meanings in English, which each translate into different Spanish words or phrases. See Applicant’s Notice of Reliance, Exhibits J to N; see also Deposition of Opposer’s Expert Witness Diana V. Valori on November 4, 2010, Translator’s Report and Disclosure, pages 2-4, citing to multiple dictionary translations of “tatuaje” and plurality of dictionary meanings of the words “tatuaje” and “tattoo”.

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a. TATUAJE has several meanings in Spanish and translations into English
The Opposer asserts that “TATUAJE is an exact translation of the English word tattoo.” Opposer’s Trial Brief, page 12, last paragraph. Opposer however supplies several dictionary translations for “tatuaje.” In contrast to Opposer’s assertion, the Spanish word “tatuaje” has at least two meanings, “1. the action and effect of tattooing,” and “2. circle or mark that is left around the wound from a gun fired in very close proximity.” See Applicant’s Notice of Reliance, Exhibit N; see also Deposition of Opposer’s Expert Witness Diana V. Valori on November 4, 2010, Translator’s Report and Disclosure, pages 2-4, citing to multiple dictionary translations of “tatuaje” and plurality of dictionary meanings of the word “tatuaje”. Therefore, “tatuaje” refers to either a “tattoo” or to a “gun powder burn.” These two meanings show that the Spanish word “tatuaje” has a broader meaning than the English word “tattoo.” In English, “the action and effect of tattooing” and a “gun powder burn” are two very different things. The Applicant asserts that comparing “tattoo” to “gun powder burn” yields quite dissimilar connotations, resulting in “tatuaje” and “tattoo” not being “synonyms, much less exact synonyms.” In re Buckner Enterprises Corp., 6 USPQ2d 1316, 1317 (TTAB 1987). In Buckner, the Board evaluated the similarity of meaning between the marks PALOMA and DOVE. The meaning of PALOMA was found to include “dove” and “pigeon.” In comparing “pigeon” to the mark DOVE, the terms were found to be not exact synonyms. In comparing these two marks, it was held that “the Board must apply an equally stringent

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test in judging similarity of meaning between a foreign word (paloma) and an English word (dove) as it would between two English words (e.g. pigeon and dove).” Id. Furthermore, one of the multiple translations of the word “tatuaje” is a circle or mark that is left around the wound from a gun fired in very close proximity. With respect to the mark “tatuaje” being applied to cigar products, the usage of Opposer's mark in the commercial marketplace, as evidenced by the specimens of record, and 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. Therefore, the translated meaning and connotation of the Spanish word “tatuaje” when analyzed in the context of the usage of Opposer's mark in the commercial marketplace on cigar products, would likely support a commercial impression and meaning of a gun powder burn on the skin. Opposer has failed to prove that the marks TATUAJE and TATTOO are identical in connotation. Additionally, the conclusion of an expert linguist, such as Opposer’s expert witness, is not the appropriate test for determining meaning of the translation of the word “tatuaje” and the English word “tattoo”. A plain ordinary consumer’s impression and meaning applied to these words is the correct test to apply. Such test is supported by the dictionary definitions of record, rather than by conclusions as to meaning offered by an expert witness. The Applicant further asserts that the multiple meanings of the Spanish word “tattoo” reduce the strength of the “similarity of connotation” between the TATUAJE mark and the TATTOO mark. The Applicant asserts that the strength of the “similarity of connotation” between these marks and the overall analysis of the likelihood of

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confusion between these marks therefore at least involves disputed facts, which the Opposer has failed to prove conclusively, concerning the translation that a consumer would use when viewing the TATUAJE mark, if in fact such a translation is even made.

b. TATTOO has Several Meanings and Translations into Spanish
In evaluating the similarity of connotation between TATTOO and TATUAJE, it is also relevant to consider the several meanings that the word “tattoo” has in the English language. One dictionary identifies the following definitions of “tattoo:” “1: a rapid rhythmic rapping. 2 a: a call sounded shortly before taps as notice to go to quarters. b: outdoor military exercise given by troops as evening entertainment.” VERB “transitive verb: to beat or rap rhythmically on: drum on. intransitive verb: to give a series of rhythmic taps”. See Applicant’s Notice of Reliance, Exhibits J, K, L, and M. . In addition, the definitions include “to mark or color (the skin) with tattoos”. See Applicant’s Notice of Reliance, Exhibit L.

c. Multiple Translations Leave Unresolved Issues Regarding The Similarity Of Connotation
The Applicant asserts that these multiple meanings for “tattoo” similarly show that the meaning of “tattoo” in English is broader than the meaning of the Spanish word “tatuaje.” For reasons similar to those enumerated above with regards to the multiple meanings of the word “tatuaje,” the Applicant asserts that the comparison between TATUAJE and TATTOO show that these terms do not have synonymous meanings. Clearly, “tattoo” and “tatuaje” are not identical synonyms to a consumer of cigar products when encountering these terms as trademarks.
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Opposer agrees that the case In re Buckner Enterprises Corp., 6 U.S.P.Q.2d 1316 (T.T.A.B. 1987) stands for the proposition that the doctrine of foreign equivalents can not be applied where the words are not “exact synonyms.” See Opposer’s Trial Brief, page 11, last full sentence. In that case, the word “paloma” was found to be broader than the English word “dove” because the translation of the word “paloma” encompasses the English words “pigeon” and “dove”. While Applicant believes that In re Buckner is the applicable law in the present case, Opposer argues the contrary and asserts that “although a word may have multiple meanings or multiple translations, it should still be considered a foreign equivalent if one of the translations or meaning is an exact equivalent of the applied for mark.” Opposer offers an alternative case in support of its arguments. Opposer cites to the case In re Perez, 21 U.S.P.Q.2d 1075, 1076 (T.T.A.B. 1991) for the Board’s finding that “GALLO” and “ROOSTER” were foreign equivalents although, in addition to “rooster” the “Spanish word ‘gallo’ is also translated into English to mean ‘dory; ‘float’; ‘wall-board’; and ‘false note.’” What Opposer failed to include in Opposer’s analysis of the case In re Perez is that the evidence in the record also showed that the mark "GALLO," despite having several meanings in Spanish, was found by the majority to be the foreign equivalent of the word "ROOSTER" due to the picture of a rooster on the packaging for the associated goods. Specifically, the Board majority observed that: Undercutting applicant's argument that the Spanish word "gallo" has meanings other than "rooster", and, thus, is not the foreign equivalent of registrant's mark, is the usage of applicant's mark[s] in the commercial marketplace, as evidenced by the specimens of record. The specimens depict applicant's marks with a prominent representation of a rooster. While the rooster design is not a feature of the marks sought

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to be registered and, of course, cannot be considered when comparing the marks, the design would certainly reinforce to consumers in the marketplace the "rooster" translation of "gallo" as opposed to the other English meanings of "gallo." In the present case, one of the multiple translations of the word “tatuaje” is a circle or mark that is left around the wound from a gun fired in very close proximity. With respect to the mark “tatuaje” being applied to cigar products, the usage of Opposer's mark in the commercial marketplace, as evidenced by the specimens of record, and 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. Therefore, even considering Opposer’s reliance on the case In re Perez, the translated meaning and connotation of the Spanish word “tatuaje” when analyzed in the context of the usage of Opposer's mark in the commercial marketplace on cigar products, would likely support a commercial impression of a gun powder burn on the skin. Opposer has failed to prove that the marks TATUAJE and TATTOO are identical in connotation. Moreover, the conclusion of an expert linguist, such as Opposer’s expert witness, is not the appropriate test for determining meaning of the translation of the word “tatuaje” and the English word “tattoo”. A plain ordinary consumer’s impression and meaning applied to these words is the correct test to apply. Such test is supported by the dictionary definitions of record, rather than by conclusions as to meaning offered by an expert witness. B. Dissimilar Sight and Sound The “confusing similarity” analysis further requires an analysis of the similarity of the “sight and sound” of the mark, even when comparing similarity of connotation
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under the Doctrine of Foreign Equivalents. The Applicant asserts that the sight and sound of TATUAJE and TATTOO are quite different and that no likelihood of confusion would exist based on the sight and sound of these marks alone. TATUAJE has seven (7) letters while TATTOO has six (6) letters clearly forming two syllables. The pronunciation of TATUAJE uses three (3) syllables to create “ta-tüa-je,” as is the common pronunciation by Spanish speakers. The Applicant points out that in the common Spanish pronunciation of “tatuaje,” the second syllable of TATUAJE ends in an “ah” sound while the second syllable of “tattoo” clearly ends in an ‘oo” sound. The Applicant admits that the sound of a mark is not generally limited to the common pronunciation of a word. However, the Applicant asserts that under the Doctrine of Foreign Equivalents, the consumer is recognizing a foreign word and translating it to its English equivalent. The Applicant asserts that in recognizing this translation, a speaker of the foreign language is very likely to place in his or her mind the common pronunciation of a foreign word to be translated than would the case when comparing marks based on English or coined terms. The Opposer apparently uses a pronunciation of TATUAJE that has four syllables, dividing the word into “TA-TU” and “A-JE.” The Opposer has not shown in the record any objective basis for this division of the word TATUAJE into these four syllables. The Applicant asserts that a pronunciation of TATUAJE with four syllables as opposed to the obvious 2 syllables of TATTOO further reduces the similarity of the sound of these marks. With regards to similarity of sight, the Applicant asserts that TATUAJE and TATTOO are quite different in sight as is readily noticed by observation. The Opposer

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only asserts that the first syllables of the two words, which only contain three (3) letters, are similar in sight. Opposers Trial Brief, page 13, last paragraph. The remaining four (4) letters of TATUAJE, over half of the Opposer’s mark, therefore differ from the remaining three (3) letters of TATTOO. C. Technical Analysis By Two Examining Attorneys Separately Resulted In Findings of No Confusing Similarity The Applicant asserts that these two marks are not confusingly similar under the standards of trademark law. Any comparison of these two words, whether it be a detailed analysis as is performed in the course of this proceeding or a casual comparison from memory as is often performed in the course of a consumer's purchase, clearly reveals that TATUAJE and TATTOO have much different sight impressions and substantially different sound impressions. The fact that the commercial impression of these two different marks fail to create a likelihood of confusion is further evidenced by the judgment of not only one, but of two different trademark examining attorneys of the Trademark Office. One of these trademark examining attorneys explicitly considered, as revealed by the trademark application Serial No. 77/823,272 examination record, the relationship between TATUAJE and TATTOO given their translations from English to Spanish and vice versa. During this Opposition proceeding in the TTAB, Opposer filed a new application for registration of its mark TATUAJE in connection with smoking accessories and clothing. See Applicant’s Notice of Reliance, Exhibits E, F, G, H, and I. The Opposer specifically asserted in its application that ‘[t]he English translation of "TATUAJE" in the mark is "TATTOO".’ See Applicant’s Notice of Reliance, Exhibit E. A second
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Examining attorney at the Trademark Office conducted a search and found that “[t]he Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.” See Applicant’s Notice of Reliance, Exhibit G. While these two separate findings by two examining attorneys of the Trademark Office are not binding on the Board, they provide additional evidence that there is no confusing similarity between the two marks.

V. Conclusion
Based on the above, the Applicant respectfully requests that the Opposition be dismissed and that the Applicant’s application for its mark Tattoo be allowed to register in the Principal Register.

Date: May 24, 2011

/Jose Gutman/ Jose Gutman Fleit, Gibbons, Gutman, Bongini, & Bianco, PL 551 N.W. 77th Street Boca Raton, FL, 33487 Phone: (561) 989-9811 Fax: (561) 989-9812 e-mail: tmboca@fggbb.com Attorney for Applicant

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CERTIFICATE OF SERVICE

I hereby certify that a true and complete copy of the foregoing TRIAL BRIEF OF APPLICANT, has been served on Brennan C. Swain by mailing said copy on May 24, 2011, via First Class Priority Mail, postage prepaid to:

Jeffer Mangels Butler & Marmaro LLP Attn: Brennan C. Swain 1900 Avenue of the Stars, 7th Floor Los Angeles, CA 90067

Date: May 24, 2011

/Jose Gutman/ Jose Gutman Fleit, Gibbons, Gutman, Bongini, & Bianco, PL 551 N.W. 77th Street Boca Raton, FL, 33487 Phone: (561) 989-9811 Fax: (561) 989-9812 e-mail: tmboca@fggbb.com

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