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ESTTA405565 04/25/2011

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD 91185180 Plaintiff Tatuaje Cigars, Inc. Brennan C. Swain, Esq. Jeffer Mangels Butler & Mitchell LLP 1900 Avenue of the Stars, 7th Floor Los Angeles, CA 90067 UNITED STATES trademarkdocket@jmbm.com Brief on Merits for Plaintiff Jessica C. Bromall trademarkdocket@jmbm.com /jessica c. bromall/ 04/25/2011 Trial Brief.pdf ( 20 pages )(70730 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 Application Serial No.: 77/359,141 Mark: TATTOO Published for Opposition: Atty. Ref. No.: 68692-0003 May 20, 2008

Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451

TRIAL BRIEF OF OPPOSER TATUAJE CIGARS INC. Opposer Tatuaje Cigars, Inc. ("Opposer"), through its undersigned counsel, hereby submits its Trial Brief in support of its Opposition to applicant Nicaragua Tobacco Imports, Inc.'s ("Applicant") application for registration of TATTOO.

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TABLE OF CONTENTS I. II. III. IV. V.

Page

INTRODUCTION....................................................................................................................1 DESCRIPTION OF THE RECORD.......................................................................................2 PROCEDURAL HISTORY ....................................................................................................3 STATEMENT OF THE ISSUES............................................................................................4 SUMMARY OF EVIDENCE .................................................................................................4 A. B. Dictionary Evidence ....................................................................................................5 Expert Testimony and Report .....................................................................................7

VI.

ARGUMENT .........................................................................................................................10 A. B. Marks Are Similar in Connotation, Sound, and Appearance..................................10 There is a Likelihood of Confusion ..........................................................................14

VII.

CONCLUSION ......................................................................................................................15

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TABLE OF AUTHORITIES Page(s)

CASES Calvin Klein Industries, Inc. v. Calvins Pharmaceuticals, Inc., 8 U.S.P.Q.2d 1269 (T.T.A.B. 1988)..............................................................................................1 In re American Safety Razor Co., 2 U.S.P.Q.2d 1459 (T.T.A.B. 1987)............................................................................................ 13 In re Buckner Enterprises Corp., 6 U.S.P.Q. 2d 1316 (T.T.A.B. 1987) ..............................................................................11, 12, 13 In re Dakin’s Miniatures Inc., 59 U.S.P.Q. 2d 1593 (T.T.A.B. 1999) ........................................................................................ 14 In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 U.S.P.Q. 2d 1531 (Fed. Cir. 1997) .............................................................. 14 In re DuPont DeNemours & Co., 476 F.2d 1356, 177 U.S.P.Q. 563 (C.C.P.A. 1973) ...............................................................1, 14 In re Hub Distributing, Inc., 218 U.S.P.Q. 284 (T.T.A.B. 1983).............................................................................................. 13 In re Ithaca Industries, Inc., 230 U.S.P.Q. 702 (T.T.A.B. 1986).............................................................................................. 13 In re La Peregrina Ltd., 86 U.S.P.Q. 2d 1645 (T.T.A.B. 2008) ....................................................................................4, 10 In re La Peregrina Ltd., 86 U.S.P.Q. at 1647...................................................................................................................... 10 In re Lamson Oil Co., 6 U.S.P.Q.2d 1041 (T.T.A.B. 1987)............................................................................................ 13 In re Mack, 197 U.S.P.Q. 755 (T.T.A.B. 1977).............................................................................................. 13 In re Pan Tex Hotel Corp., 190 U.S.P.Q. 109 (T.T.A.B. 1976)........................................................................................10, 11 In re Perez, 21 U.S.P.Q.2d 1075 (T.T.A.B. 1991) ...................................................................................12, 13

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TABLE OF AUTHORITIES Page(s) In re Thomas, 79 U.S.P.Q.2d 1021 (T.T.A.B. 2006) ......................................................................................... 13 In re White Swan Ltd., 8 U.S.P.Q.2d 1534 (T.T.A.B. 1988)............................................................................................ 13 Palm Bay Import, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 U.S.P.Q. 2d at 1696................................................................................................................. 10 STATUTES 15 U.S.C. § 1052(d)..............................................................................................................................1

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I.

INTRODUCTION Opposer owns the trademark TATUAJE, which is the subject of U.S. Reg. No.

2,836,665, issued on April 27, 2004. "Tatuaje" is a Spanish word that translates into English as "tattoo." Applicant applied to register the trademark TATTOO for use with cigars and related items. Opposer opposes Applicant's application pursuant to 15 U.S.C. § 1052(d) on the grounds that Applicant's use of the trademark TATTOO - which is the exact English language equivalent of Opposer's mark TATUAJE - for cigars and related items is likely to cause confusion with Opposer's TATUAJE mark. To prevail upon its Section 2(d) claim, Opposer must establish: (1) it has standing; (2) that it is the owner of valid trademark rights in TATUAJE; and (3) that, considering the Dupont factors (e.g. the similarity of the respective marks, the relatedness of the respective goods, and the marketing channels and consumers of the respective goods), Applicant's use of its proposed TATTOO mark is likely to cause confusion with Opposer's TATUAJE Mark. E.g., Calvin Klein Industries, Inc. v. Calvins Pharmaceuticals, Inc., 8 U.S.P.Q.2d 1269, 1270 (T.T.A.B. 1988); In re DuPont DeNemours & Co., 476 F.2d 1356, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). Opposer proved nearly all of these issues in its favor at the summary judgment stage. In response to Opposer's motions for summary judgment, the Board determined that: (1) Opposer has standing; (2) Opposer is the owner of the mark TATUAJE for cigars, which mark is the subject of valid and subsisting U.S. Reg. No. 2,836,665, issued on April 27, 2004; and (3) Opposer has priority. See Docket No. 12, September 17, 2009, pp. 2-3. The Board has also entered summary judgment in Opposer's favor on Applicant's sole affirmative defense of unclean hands. See Docket No. 18, August 30, 2010, p. 4.

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Regarding the likelihood of confusion analysis, the Board already determined on summary judgment that most of the relevant Dupont factors weigh in favor of a finding of likelihood of confusion. The Board determined that: (1) the parties' goods are similar, if not identical; (2) the parties' channels of trade are similar, if not identical; and (3) the classes of purchasers of the parties' goods bearing the marks at issue are similar, if not identical. See Docket No. 12, September 17, 2009, pp. 2-3. Thus, the only issues that remain are whether the parties' marks are similar and, in light thereof, whether confusion is likely to result from registration of Applicant's mark TATTOO. Here, there can be no question that the parties' marks are similar. Under the doctrine of foreign equivalents, the marks are identical in connotation because TATTOO and TATUAJE are exact synonyms. Additionally, the parties' marks are similar in appearance and sound. In light of the foregoing, the Board should sustain Opposer's Opposition and refuse registration of Applicant's Mark.

II.

DESCRIPTION OF THE RECORD The evidence of record consists of: (1) a certified copy of U.S. Registration No.

2,836,655; (2) Applicant's Responses to Opposer's First Request for Admissions, Opposer's First Request for Production of Documents and Things, and Opposer's First Set of Interrogatories, served on December 28, 2009; (3) excerpts of various print and online dictionaries showing the definition of the words "tatuaje" and "tattoo" and the Spanish-English translation of the same submitted by Opposer; (4) the testimonial deposition of Opposer's expert witness Diana V. Valori, taken on November 4, 2010, and the Exhibits thereto; (5) print outs from the Trademark Office's file for the application that matured into the '665 Reg.; (6) print outs from the Trademark Office's file for the opposed application; (7) print outs from the Trademark Office's file for 2
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Opposer's pending U.S. application Serial No. 77/823,272, for TATUAJE in Class 251; (8) excerpts of various print and online dictionaries showing the definition of the words "tatuaje" and "tattoo" and the Spanish-English translation of the same submitted by Applicant; (9) articles and excerpts of various print and online dictionaries discussing the manner in which dictionaries are arranged and organized.

III.

PROCEDURAL HISTORY Opposer initiated the instant proceeding on July 11, 2008. After conducting some

discovery, Opposer file a motion for summary judgment on the issues of: (1) ownership; (2) priority; and (3) likelihood of confusion. The Board granted Opposer's motion in part, finding in Opposer's favor on this issues of standing, ownership, priority, similarly of goods, channels of trade, and classes of purchasers. Opposer then filed a second motion for summary judgment on Applicant's affirmative defense of unclean hands. Applicant alleged that Opposer was guilty of unclean hands due to certain elements on its product packaging other than the asserted TATUAJE mark and also by filing an application for registration of TATUAJE for goods in class 25. The Board rejected all of Applicant's arguments in entered summary judgment in Opposer's favor on Applicant's affirmative defense of unclean hands. /// /// ///

The foregoing application is not relevant to this proceeding. The application has not been cited or relied on by Opposer and it is not challenged by Applicant in this or any other proceeding. Applicant has previously argued that this application is evidence of Opposer's "bad faith" or "unclean hands." However, the Board already rejected the foregoing arguments and entered summary judgment in Opposer's favor on Applicant's unclean hands defense.

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IV.

STATEMENT OF THE ISSUES In light of the foregoing findings of the Board, the only issues that remain to be decided

by the Board are: (1) whether TATUAJE and TATTOO are foreign equivalents, such that marks are

identical in meaning or connotation; (2) and (2) in light of the answer to the above questions, and in light of the Board's previous whether the parties' marks are similar with respect to sight, sound, and meaning;

determination that the parties' goods are identical, that the parties' channels of trade are identical, and that the consumers of the parties' goods are identical, whether registration of Applicant's mark TATTOO likely to cause confusion as to source, affiliation, or sponsorship with Opposer and
its mark TATUAJE?

V.

SUMMARY OF EVIDENCE The doctrine of foreign equivalents provides that "foreign words from common, modern

languages are translated into English to determine similarity of connotation with English words in a likelihood of confusion analysis." In re La Peregrina Ltd., 86 U.S.P.Q. 2d 1645, 1647 (T.T.A.B. 2008). Both "tattoo" and "tatuaje" are common words in their respective languages and both mean and refer to drawings or engravings on or under the skin. "Tattoo" translates to Spanish as "tatuaje" and "tatuaje" translates to English as "tattoo." Applicant, however, has argued that the common Spanish word "tatuaje" - the only word in Spanish that exists to refer to drawing or marks on the skin - is obscure, that "tattoo" does not translate into Spanish as "tatuaje", and that,

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based on a single dictionary entry, that "tatuaje" is more widely understood to mean "gun powder burn." There is no support for this in the record. The evidence of record, summarized below, establishes without a doubt that TATUAJE and TATTOO are foreign equivalents. All dictionary definitions in evidence - even those submitted by Applicant - agree that "tattoo" translates as "tatuaje" and vice versa. All dictionary definitions in evidence - even those submitted by Applicant - agree that "tattoo" and "tatuaje" mean and refer to drawings or engravings on or under the skin. Furthermore, although a common sense review of the dictionary definitions should be sufficient to obtain the conclusion that "tatuaje" means "tattoo" and that both words refer to drawings or engravings on or under the skin, Opposer has also obtained and made of record expert testimony that establishes that "tattoo" and "tatuaje" are exact synonyms and foreign equivalents and that both words refer to drawings or engravings on or under the skin.

A.

Dictionary Evidence

Every single dictionary entry in evidence - regardless of whether it was introduced by Opposer or Applicant - shows that "tatuaje" means "tattoo" in English, that "tattoo" means "tatuaje" in Spanish, and that both "tattoo" and "tatuaje" refer to a drawing or engraving on or under the skin. (1) the first translation of "tattoo" listed in the Larousse Mini Diccionario is "tatuaje" (See Opposer's Notice of Reliance, Docket No. 19 ("Opposer's NR", Exh. C); (2) the only translation of "tatuaje" listed in the Larousse Mini Diccionario is "tattoo" (Id.); (3) the first translation of "tattoo" listed in the Richmond Bilingual Dictionary is "tatuaje" (See Opposer's NR, Exh. D); 5
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(4) the only translations of "tatuaje" listed in the Richmond Bilingual Dictionary are "tattoo" and "tattooing" (same root but different parts of speech) (Id.); (5) the only translations of "tattoo" listed in the Webster's New World Pocket Spanish Dictionary are "tatuaje" and "tatuar" (same root but different parts of speech) (See Opposer's NR, Exh. E); (6) the only translation of "tatuaje" listed in the Webster's New World Pocket Spanish Dictionary is "tattoo" (Id.); (7) the only translations of "tatuaje" listed in the on-line Spanish-English Collins dictionary are "tattoo" and "tattooing" (same root but different parts of speech) (See Opposer's NR, Exh. F) (8) the only translations of "tatuaje" listed on the Spanish to English dictionary on the website www.tomisimo.org are "tattoo" and "tattooing" (same root but different parts of speech) (See Opposer's NR, Exh. G) (9) the only translation of "tatuaje" listed on the Spanish to English dictionary on the website www.freedict.com is "tattoo" (See Opposer's NR, Exh. H); (10) the Merriam-Webster online dictionary has four entries for "tattoo." Of these, two refer to a drawing or engraving on or under the skin2 (See Opposer's NR, Exhs. I and J; Applicant's Notice of Reliance, Docket No. 20 ("Applicant's NR"), Exhs. J through L);

In evaluating dictionary entries, it is important to bear in mind that each dictionary is different, both in substance and organizational approach. Some dictionaries are "descriptive", i.e. they describe how language is actually used, while some dictionaries are "prescriptive", i.e. they attempt to establishes standards for meaning and usage of language. See Docket No. 24, Exh. N, p. 39. Additionally, it is a common misconception that dictionaries list definitions in order of frequency or commonality of usage. However, more commonly, dictionary definitions are listed in historical order and the oldest definition is listed first. See Docket No. 24, Exh. N, p. 40; Exh. O. For example, Merriam-Webster's online dictionary (which lists the common meaning for tattoo drawing on the skin third and fourth), lists meanings in historical order, with the oldest meaning first. (Docket No. 24, Exh. P, p. 2). The same is true of the Merriam-Webster's Collegiate Dictionary (11th Edition), which shows the same definitions as its online counterpart. (Docket No. 24, Exh. R, p. 10a.)

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(11) the Cambridge online dictionary has at least two entries for "tattoo" both of which refer to a drawing or engraving on or under the skin (See Opposer's NR, Exhs. K and L); (12) the online dictionary at diccionarios.com has two entries for "tatuaje", both of which refer to a drawing or engraving on or under the skin (See Opposer's NR, Exh. M); (13) the first translation of "tattoo" listed on the online English-Spanish dictionary at www.wordreference.com is "tatuaje" (See Applicant's NR, Exh. M); (14) the online Real Academia Espanola Diccionario de La Lengua Espanola has two entries for "tatuaje" the first of which refers to a drawing or engraving on or under the skin (See Applicant's NR, Exh. N); (15) the 1992 edition of Real Academia Espanola Diccionario de La Lengua Espanola has two entries for "tatuaje" the first of which refers to a drawing or engraving on or under the skin (See Opposer's Rebuttal Notice of Reliance, Docket No. 24 ("Rebuttal NR"), Exh. Q); (16) the Merriam-Webster's Collegiate Dictionary (11th Edition) has four entries for "tattoo." Of these, two refer to a drawing or engraving on or under the skin (See Rebuttal NR, Exhs. R); and (17) the Cambridge Collegiate Dictionary has one entry for "tattoo" and it refers to a drawing or engraving on or under the skin (See Rebuttal NR, Exhs. S).

B.

Expert Testimony and Report

In addition to the foregoing dictionary evidence, Opposer engaged a professional translator, Ms. Diana V. Valori to provide a report and testimony regarding the appropriate translations of "tattoo" and "tatuaje." Ms. Valori's has worked as a Spanish / English translator for nearly 25 years, translating a wide variety of materials, including, inter alia, books, literary

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publications, legal documents, and research materials. (Deposition Transcript of Diana V. Valori ("Valori Transcript"), 8:7-14:9.)3 In her report, Ms. Valori stated: (1) "[T]he English translation of the word "TATUAJE" is: tattoo; tattooing (marks or designs on the skin)." (Valori Transcript, Exh. 2, p. 1, ¶ 1.) (2) "[T]he primary and common meaning of the Spanish word "TATUAJE" is TATTOO; that is drawings engraved under the skin." (Valori Transcript, Exh. 2, p. 1, ¶ 2.) (3) "A bilingual person would understand "TATUAJE" to mean "TATTOO", unless it is framed in a different context which clearly indicates the word is used to convey alternative meanings . . . ." (Valori Transcript, Exh. 2, p. 1, ¶ 3.) (4) Although the dictionary lists additional alternative definitions, "Translator believes that the most common meaning of the word ["TATTOO"], as determined by usages, is the definition appearing in Wikipedia: A tattoo is a marking made by inserting ink into the layers of skin to change the pigment for decorative or other reasons. (Valori Transcript, Exh. 2, p. 3, ¶ 6.) (5) Although two definitions appear in the dictionary, "Translator believes the most commonly accepted meaning of the English word tattoo in lay person is a marking made by inserting ink into the layers of skin . . . ." (Valori Transcript, Exh. 2, p. 4). Ms. Valori's testimony is to the same effect. In short, Ms. Valori testified that "tatuaje" and "tattoo" are "exact synonyms" that "tatuaje" and "tattoo" are equivalent. (Valori Transcript, 20:6-13.) Specifically, Ms. Valori testified that "tatuaje" is a "very common" Spanish word whose primary and common meaning is an "engraving under the skin" and that "tattoo" is the
3

Ms. Valori's qualifications are set forth in her Resume and CV and she testified regarding her qualifications and

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equivalent or synonym of the Spanish word "tatuaje." (Valori Transcript, 15:16-16:7, 17:14-17.) Ms. Valori also testified that "tattoo" is a common English word whose primary and common meaning is "a drawing engraved under the skin" and that "tatuaje" is the equivalent or synonym of "tatuaje." (Valori Transcript, 18:3-18:14, 19:23-20:1.) During the course of preparing her report, Ms. Valori discovered alternate definitions of both "tatuaje" and "tattoo." (Valori Transcript, 17:18-21, 18:18-19:5.) Prior to preparing her report she was not familiar with any definitions for either "tatuaje" or "tattoo" other than drawings on or under the skin. (Valori Transcript, 16:8-17:13, 18:18-19:22.) In the nearly 25, years she has been a translator and in her entire life as a Spanish and English speaker, she has not used "tatuaje" or "tattoo" to refer to anything other than a drawing or engraving on the skin. (Valori Transcript, 16:8-17:13, 18:18-19:22.) In the nearly 25, years she has been a translator and in her entire life as a Spanish and English speaker, she has not seen anyone else use "tatuaje" or "tattoo" to refer to anything other than a drawing or engraving on the skin. (Valori Transcript, 16:8-17:13, 18:18-19:22.) Moreover, Ms. Valori testified that there is no Spanish word other than "tatuaje" that is used to describe a drawing on or under the skin. (Valori Transcript, 17:18-21.) Similarly, she testified, there is no English word other than "tattoo" that is used to describe a drawing on or under the skin. (Valori Transcript, 20:2-5.) In short, "tatuaje" and "tattoo" are "exact synonyms", "tatuaje" and "tattoo" are equivalent, each word is common in its respective language, and the primary and common meaning of each word is drawings engraved on or under the skin.

experience during her deposition. (Valori Transcript, 8:7-14:9, Exh. 2.)

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VI.

ARGUMENT A. Marks Are Similar in Connotation, Sound, and Appearance 1. Marks are Identical in Connotation - Doctrine of Foreign Equivalents

The doctrine of foreign equivalents provides that "foreign words from common, modern languages are translated into English to determine similarity of connotation with English words in a likelihood of confusion analysis." In re La Peregrina Ltd., 86 U.S.P.Q. at 1647. Here, the evidence of record (summarized above) overwhelmingly establishes that Opposer's mark TATUAJE and Applicant's mark TATTOO are exact synonyms - both meaning drawings engraved on or under the skin. Thus, under the doctrine of foreign equivalents, Opposer's mark TATUAJE and Applicant's mark TATTOO are identical in connotation.

a.

The Doctrine of Foreign Equivalents Applies

The doctrine of foreign equivalents applies where "it is likely that the ordinary American purchaser would ‘stop and translate [the term] into its English equivalent." Id. (quoting Palm Bay Import, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 U.S.P.Q. 2d at 1696 and In re Pan Tex Hotel Corp., 190 U.S.P.Q. 109, 110 (T.T.A.B. 1976) (internal quotation marks omitted)). The Board "presume[s] that a word in one of the common, modern languages of the world will be spoken or understood by an appreciable number of U.S. consumers for the goods at issue." E.g., In re La Peregrina Ltd., 86 U.S.P.Q. 2d at 1648 (affirming refusal to register foreign equivalent of registered mark). Here, "there is no question that Spanish is a common, modern language." Indeed, "it is clear that, by any standard, the Spanish language is spoken or understood by an appreciable number of U.S. consumers who also speak or understand English." Id.

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As a result of the foregoing, it is likely that a significant portion of American consumers would stop and translate Opposer's mark into its English equivalent. There may be situations involving obscure words or in which "marketplace circumstances or the commercial setting in which the mark is used" render it unlikely that purchasers will translate a term and will instead accept the foreign equivalent as it is. E.g. In re Pan Tex Hotel Corp., 190 U.S.P.Q. at 110 (not likely to translate because of the manner in which the mark was used). No such circumstances are present in this case. Neither "tatuaje" or "tattoo" are obscure words. To the contrary, both words are common in their respective languages. (Valori Transcript, 15:16-16:7, 18:3-18:14; see also Opposer's NR, Exhs. C through M; Applicant's NR, Exhs. J through M; Rebuttal NR, Exhs. Q-S.) Nor is there any evidence that a purchaser would not translate the marks due to the marketplace circumstances or the commercial setting in which the marks are used.

b.

TATUAJE and TATTOO are Exact Equivalents

The record is replete with evidence that TATUAJE and TATTOO are foreign equivalents. Voluminous dictionary definitions and expert testimony eliminate any doubt that "tatuaje" means "tattoo" and vice versa. In light of the above-described overwhelming evidence, there can be no question that TATUAJE and TATTOO are exact equivalents. Nonetheless, Applicant, relying on In re Buckner Enterprises Corp., 6 U.S.P.Q. 2d 1316 (T.T.A.B. 1987), previously argued that the words are not exact equivalents because both "tattoo" and "tatuaje" have multiple meanings in their respective languages. In re Buckner, however, does not stand for that proposition. Rather, In re Buckner stands for the proposition that the doctrine of foreign equivalents cannot be applied where the words at issue are not "exact synonyms." Id. at 1316. There, 11
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dictionary evidence established that the Spanish word "paloma" translated to English as "pigeon, dove." See id. at 1316. To be clear, "pigeon" and "dove" were not listed as alternative translations; rather, the dictionary translation was "pigeon, dove." The issue before the Board was not whether "paloma" had alternative translations into English other than "pigeon, dove" - it does - but whether the specific English word at issue - "dove" - was an exact synonym of "paloma" given its translation "pigeon, dove." See id. The Board found that the words were not exact synonyms because the meaning of the Spanish word "paloma" is broader than the English word dove, as it encompasses and refers to both pigeons and doves. See id. It does not follow, however, that words cannot be foreign equivalents because one or both have multiple meanings or translations. To the contrary, 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. E.g., In re Perez, 21 U.S.P.Q.2d 1075, 1076 (T.T.A.B. 1991). In In re Perez the board found that "gallo" and "rooster" were foreign equivalents and exact synonyms although, in addition to "rooster" the "Spanish word 'gallo' is also translated into English to mean 'dory'; 'float'; 'wall-board'; and 'false note.' " Id. at 1077 (Hanak, member, dissenting); id. at 1076 ("[T]here is no question that the term 'gallo' is a Spanish word meaning 'rooster', such translation being the first one listed in the dictionary entry."). Here, as in In re Perez, the evidence or record clearly establishes that TATUAJE is an exact translation of the English word "tattoo." Moreover, the alternative translations and/or meanings of "tattoo" and "tatuaje" are so uncommon and obscure that Opposer's expert - who has worked as a translator for nearly 25 years and has translated all manner of materials, including legal documents, medical documents, and literature - was unfamiliar with any definition for

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either word other than that of a drawing or engraving on or under the skin. (Valori Transcript, 16:8-17:13, 18:18-19:22.) This is not a situation, such as was present in In re Buckner, where the Spanish word at issue has a broader meaning than the English translation. Instead, although TATUAJE and TATTOO may have multiple dictionary definitions, the primary and common meanings of the words are identical. Accordingly, the marks TATUAJE and TATTOO are identical in connotation.

2.

Marks Are Similar in Sight and Sound

As discussed above, the marks TATUAJE and TATTOO are identical in connotation. This alone is sufficient to deem the marks similar. In re White Swan Ltd., 8 U.S.P.Q.2d 1534, 1536 (T.T.A.B. 1988); In re Lamson Oil Co., 6 U.S.P.Q.2d 1041, 1043 (T.T.A.B. 1987); In re Mack, 197 U.S.P.Q. 755 (T.T.A.B. 1977); TMEP §1207.01(b). In fact, often in foreign equivalents cases, marks are held to be similar although they neither look or sound similar. See In re Perez, 21 U.S.P.Q.2d at 1076 ("gallo" and "rooster" confusingly similar); In re Thomas, 79 U.S.P.Q.2d 1021 (T.T.A.B. 2006) (MARCHE NOIR likely to be confused with BLACK MARKET MINERALS); In re American Safety Razor Co., 2 U.S.P.Q.2d 1459 (T.T.A.B. 1987) (BUENOS DIAS likely to be confused with GOOD MORNING); In re Ithaca Industries, Inc., 230 U.S.P.Q. 702 (T.T.A.B. 1986) (LUPO likely to be confused with WOLF); In re Hub Distributing, Inc., 218 U.S.P.Q. 284 (T.T.A.B. 1983) (EL SOL likely to be confused with SUN). Here, confusion is even more likely, as in addition to the fact that the marks are identical in connotation, they are similar in sight and sound as well. The first syllables of each mark "tat" - are identical in both sight and sound. The second syllables of each mark, are identical in sound. In other words, when pronounced, Applicant's mark is identical in sound to the first two 13
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syllables of Opposer's mark. In fact, the only difference in the manner in which the two words are pronounced, is the addition of the two extra syllables - "a-je" - at the end of Opposer's mark.

B.

There is a Likelihood of Confusion

In determining whether consumer confusion is likely to result from the registration and use of a proposed mark, the Board should consider a number of factors including, inter alia, the similarity of the respective marks, the relatedness of the respective goods, and the marketing channels and consumers of the respective goods. In re DuPont DeNemours & Co., 476 F.2d at 1361, 177 U.S.P.Q. at 567. Any one of the factors listed maybe dominant in any given case, depending upon the evidence of record. In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 U.S.P.Q. 2d 1531, 1533 (Fed. Cir. 1997). In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods, and similarity of trade channels of the goods. In re Dakin’s Miniatures Inc., 59 U.S.P.Q. 2d 1593 (T.T.A.B. 1999); TMEP §§1207.01 et seq. Here the Board has already determined that: (1) the parties' goods are similar, if not identical; (2) the parties' channels of trade are similar, if not identical; and (3) the classes of purchasers of the parties' goods bearing the marks at issue are similar, if not identical. See Docket No. 12, September 17, 2009, pp. 2-3. The parties' marks are also similar with respect to sight, sound, and meaning. The evidence of record establishes that the marks are foreign equivalents and therefore are identical in meaning. A comparison of the marks with respect to sight and sound shows that the parties' marks are similar with respect to sight and sound as well. Accordingly, it is clear that registration of Applicant's proposed mark TATTOO is likely to cause confusion with Opposer's registered mark TATUAJE. 14
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VII.

CONCLUSION For the foregoing reasons and in view of the evidence of record, the Board should sustain

Opposer's opposition and refuse registration of Applicant's mark.

Dated: April 25, 2011

/S/ JESSICA C. BROMALL Rod S. Berman Jessica C. Bromall Brennan C. Swain JEFFER, MANGELS, BUTLER & MARMARO LLP 1900 Avenue of the Stars, Seventh Floor Los Angeles, CA 90067 (310) 203-8080 E-mail: trademarkdocket@jmbm.com Attorneys for Opposer Tatuaje Cigars, Inc.

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