- with readers working within the Technology industries
Do you think that the following marks in German and French, both for chocolate and both meaning "thank you," are likely to be confused?
A Brazilian
company (Applicant) filed a U.S. intent to use application to
register the German word mark DANKE (in slight stylization) for
chocolate.
A German company named August Storck KG (Opposer) challenged that application before the Trademark Trial and Appeal Board (TTAB) claiming a likelihood of confusion with its U.S. registration of the French mark MERCI (in plain typed lettering) and also its other registrations and common law uses, for chocolate.
The TTAB focused on the typed version of Opposer's mark because it was the closest to the Applicant's mark.
Doctrine of Foreign Equivalents
The TTAB found it appropriate to apply the doctrine of foreign equivalents in which foreign words used as a mark are translated into English and then tested for likelihood of confusion. Although this generally involves marks in English and a foreign language, here it involved marks in French and German.
The TTAB held that French and German are commonly known modern languages, and that the ordinary U.S. purchaser would stop and translate both words as "thank you," an everyday expression appearing in U.S. English dictionaries.
However, despite their shared identical meaning, the TTAB found the marks to be highly dissimilar in appearance and sound. This pointed both ways as to whether there was a likelihood of confusion.
Lack of Restrictions
The goods were identical, the registration and application had no restrictions as to trade channels or consumers, and there were no restrictions as to the price of the goods. The TTAB found these factors to favor a likelihood of confusion.
Commercial Strength
Did Opposer's mark have commercial strength or fame which would further bolster its position? This factor may be measured by consumer surveys or declarations, the volume of sales and advertising expenditures, the length of time of use, widespread critical assessments, notice by independent sources, the general reputation of the goods or services, and social media presence.
In this case, Opposer presented evidence of the use of its mark prominently on product packaging, engraved on its chocolate bars, featured in its advertising including television, and featured in its online publications, social media, and in-store displays. There was a lack of market share evidence to put this information in context, but the TTAB nevertheless found this evidence to suggest a moderate level of commercial success and brand recognition, which Applicant did not challenge.
Conceptual Strength
Applicant introduced evidence of third-party marketplace use of similar marks to challenge the conceptual strength of Opposer's mark, even though that mark had been registered without a claim of acquired distinctiveness, so it was presumed to be inherently distinctive as applied to the goods. The TTAB was unpersuaded by the single third-party registration it found relevant.
However, the TTAB was impressed by Applicant's evidence of a Google® images search showing 27 product images of "Thank You" chocolates with pictures of the products, retailer identifications and, in some instances, statements that the goods were in stock. This demonstrated that consumers were conditioned to seeing the phrase "thank you" as an expression of gratitude when used in relation to chocolate. As a result, the TTAB found Opposer's mark to be conceptually weak. This weakness was underscored by statements in Opposer's own product marketing promoting chocolate to say "thank you."
Decision
On balance, the TTAB concluded that the widespread use of "thank you" in association with chocolate made that term weak in trademark significance, and that the differences in sound and appearance of the respective marks outweighed their identical meaning.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
