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.

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Scott J. Slavick
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