United States: Biltmore's Mark Gets Lost In Traduzione (Translation)

Last Updated: January 6 2015
Article by Scott J. Slavick

"Not this mark," says TTAB in decision on commercial impression of Century for wine

Give the judges at the Trademark Trial and Appeal Board a little wine — and look what happens!

In In re The Biltmore Company, The Biltmore Co sought to register the mark Century for wine. The application was rejected — with the TTAB ruling that the mark was likely to cause confusion with the mark Secolo, already used as a brand name for wine by California vintner Sebastiani. In Italian, secolo means century.

Already reaching for a glass? It gets better. As is standard in likelihood of confusion refusals before the TTAB, the Board began its analysis by stating the obvious: that the parties' goods, trade channels and classes of purchasers should be considered be considered identical. But if that was all the Board had done, I would not have even brought this case to your attention.

No, this was just starting to get interessante. The Board turned to comparing the parties' marks, seeking to determine whether they were similar or dissimilar when compared in their entireties in terms of appearance, sound, connotation and commercial impression. Similarity in any one of these elements could mean death for Biltmore's application.

In its opinion, the Board explained that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather "whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties." Thus, the focus is on the anticipated perception of the average purchaser, who it can be thought normally retains a general rather than a specific impression of trademarks.

What's interesting from a practitioner standpoint is the Board's discussion of the doctrine of foreign equivalents, under which foreign words from common languages are translated into English to determine the similarity of connotation, to ascertain whether there is confusing similarity with English word-marks. This doctrine is applicable when it is assumed to be likely that an ordinary American purchaser — in this context, an American purchaser knowledgeable in the foreign language — would translate the foreign term into its English equivalent.

The Board took judicial notice of this doctrine. And the applicant did not contest the fact that an appreciable number of purchasers in the U.S. speak or understand Italian. There was also no dispute that the cited mark Secolo is an Italian word that translates into English as century.

Generally applying the doctrine of foreign equivalents is only part of the determination of whether the marks being compared are confusingly similar. In fact, such similarity as there is in connotation between the foreign word-mark and the English word-mark must be weighed against their dissimilarity in appearance, sound and all other factors before reaching a conclusion on likelihood of confusion as to source.

Considering such other factors relevant to the case at hand, the Board found that the marks Secolo and Century are dissimilar in appearance but somewhat similar in pronunciation. The first letter in century is pronounced as an "s" would be, and each term is made up of three syllables. Moreover, both terms are arbitrary as applied to wine, and thus Secolo is conceptually strong as a trademark. A strong mark not only entitles the registered mark to a broad scope of protection, but significantly increases the likelihood that the marks, when used in connection with the identical goods, would cause confusion.

Biltmore was not about to just give up, making a novel argument in its favor. It argued that the owner of the Secolo mark, during prosecution of its own earlier application for its word-mark, had taken the position that purchasers would not stop and translate Secolo into century. The owner of Secolo had adopted this position in response to a refusal of its mark based on a prior registration for the mark Century of Port for port wine.

Based on the owner's previous position, Biltmore argued that the Board should agree and find that purchasers would take the mark at face value and not apply the doctrine of foreign equivalents.

Had that drink yet? Because the Board disagreed.

It held that the owner of Secolo's prior position is not an admission, but may be considered as illuminative of shade and tone in the total picture. Instead, in the present case, the owner of the Secolo registration's prior statements cannot be treated as indicating its position with respect to Biltmore's mark and the goods at issue in this appeal because the Biltmore mark differs from the third-party's mark cited in the underlying application in the prior case, which included the additional terms "of port."

A pretty heady bouquet, eh? Secolo translates as century; but it does not directly translate to century of port. Moreover, as is often the preferred strategy of the Board when it wants to ignore potentially relevant prior precedent, it argued that each case must stand on its own record and that in any event the Board is not bound by the actions of prior examining attorneys.

Next, Biltmore argued that wine drinkers are accustomed to viewing wine labels containing foreign terms, and will therefore not translate Secolo. Apart from Biltmore's statements, however, the Board found no evidentiary support for this position. Even assuming some wine labels bear designations in languages other than English, the Board held that such an assumption does not compel a conclusion that prospective purchasers will not translate any such terms, including Secolo, into English.

Accordingly, given the equivalency of Secolo on the one hand and Century on the other, combined with the arbitrary nature of the marks and the legal identity between the goods, the TTAB rejected the Biltmore Company's application. So, while the latter had raised two novel arguments, it was still left high and dry without a trademark registration for its mark. Somehow I doubt they'll be raising a glass to that!

Originally published by InsideCounsel.

This article is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Gilson & Lione lawyer.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Scott J. Slavick
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.