Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.

gov
ESTTA Tracking number: ESTTA405565
Filing date: 04/25/2011
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91185180
Party Plaintiff
Tatuaje Cigars, Inc.
Correspondence Brennan C. Swain, Esq.
Address Jeffer Mangels Butler & Mitchell LLP
1900 Avenue of the Stars, 7th Floor
Los Angeles, CA 90067
UNITED STATES
trademarkdocket@jmbm.com
Submission Brief on Merits for Plaintiff
Filer's Name Jessica C. Bromall
Filer's e-mail trademarkdocket@jmbm.com
Signature /jessica c. bromall/
Date 04/25/2011
Attachments Trial Brief.pdf ( 20 pages )(70730 bytes )
 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

TATUAJE CIGARS INC., Opposition No. 91/185,180

Opposer,
Application Serial No.: 77/359,141
v.
Mark: TATTOO
NICARAGUA TOBACCO IMPORTS, Published for Opposition: May 20, 2008
INC.,
Atty. Ref. No.: 68692-0003
Applicant.

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
Page

I. INTRODUCTION....................................................................................................................1

II. DESCRIPTION OF THE RECORD.......................................................................................2

III. PROCEDURAL HISTORY ....................................................................................................3

IV. STATEMENT OF THE ISSUES............................................................................................4

V. SUMMARY OF EVIDENCE .................................................................................................4

A. Dictionary Evidence ....................................................................................................5

B. Expert Testimony and Report .....................................................................................7

VI. ARGUMENT .........................................................................................................................10

A. Marks Are Similar in Connotation, Sound, and Appearance..................................10

B. 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

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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.

///

///

///

1
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) whether the parties' marks are similar with respect to sight, sound, and meaning;

and

(2) in light of the answer to the above questions, and in light of the Board's previous

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);

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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);

2
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,

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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

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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.

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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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