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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA410763
Filing date: 05/24/2011
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91185180
Party DefendantNICARAGUA TOBACCO IMPORTS, INC.
CorrespondenceAddress
Jose GutmanFleit Gibbons Gutman Bongini PL551 NW 77th StreetBoca Raton, FL 33487UNITED [email protected]
Submission Brief on Merits for Defendant
Filer's Name Jose Gutman
Filer's e-mail [email protected]
Signature /Jose Gutman/
Date 05/24/2011Attachments Trial_Brief_of_Applicant_5-24-11.pdf ( 21 pages )(94217 bytes )
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
__________________________________________/
TATUAJE CIGARS, INC. Opposition No. 91/185,180
Opposer, Appl. Ser. No.: 77/359,141
v.
NICARAGUA TOBACCO IMPORTS, INC., Mark: TATTOO
Applicant.__________________________________________/
TRIAL BRIEF OF APPLICANT NICARAGUA TOBACCO IMPORTS INC.
Applicant Nicaragua Tobacco Imports, Inc., (Applicant), through its
undersigned counsel, hereby submits its Trial Brief in support of its application for
registration of its mark TATTOO and in defense of the Opposition by Opposer Tatuaje
Cigars, Inc.
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TABLE OF CONTENTS
I. INTRODUCTION 4
II. DESCRIPTION OF THE RECORD 8
III. STATEMENT OF THE ISSUES 9
IV. ANALYSIS 9
Stipulated Facts 9
Summary of Analysis 10
A. Proper Analysis for Doctrine of Equivalents 10
B. Dissimilar Sight and Sound 17
C. Technical Analysis By Two Examining Attorneys Separately
Resulted in Findings of No Confusing Similarity 19
V. CONCLUSION 20
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TABLE OF AUTHORITIES
CASES PAGE(S)
In re Buckner Enterprises Corp.,
6 U.S.P.Q.2d 1316 (T.T.A.B. 1987) 6, 13, 16Palm Bay Imports v. Veuve Clicquot Ponsardin,
396 F.3d 1369, 1377, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005) 11
In re Perez,
21 U.S.P.Q.2d 1075, 1076 (T.T.A.B. 1991) 6, 7, 16, 17
In re Thomas,
79 USPQ2d 1021, 1025 (TTAB 2006) 11
STATUTES
15 U.S.C. 1052(d) 5, 11, 20
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I. Introduction
Applicant is a well established producer and distributor of cigars that routinely
develops and promotes new in-house brands of cigars for sale to the general public.
Applicant had identified, without actual knowledge of Opposers mark TATUAJE, the
mark TATTOO for cigar products. The Applicant filed its application and the Trademark
Office examining attorney approved the mark TATTOO for registration. Once the
Applicants mark was published for opposition, Opposer filed this Opposition of the
application for the mark TATTOO. This was Applicants first actual knowledge of
Opposers mark.
The Applicant asserts that these two marks are not confusingly similar under the
standards of trademark law. Any comparison of these two words, whether it be a detailed
analysis as is performed in the course of this proceeding or a casual comparison from
memory as is often performed in the course of a consumer's purchase, clearly reveals that
TATUAJE and TATTOO have much different sight impressions and substantially
different sound impressions. The fact that the commercial impression of these two
different marks fail to create a likelihood of confusion is further evidenced by the
judgment of not only one, but of two different trademark examining attorneys of the
Trademark Office. One of these trademark examining attorneys explicitly considered, as
revealed by the trademark application examination record, the relationship between
TATUAJE and TATTOO given their translations from English to Spanish and vice versa.
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During this Opposition proceeding in the TTAB, Opposer filed a new application
for registration of its mark TATUAJE in connection with smoking accessories and
clothing. See Applicants Notice of Reliance, Exhibits E, F, G, H, and I. The Opposer
specifically asserted in its application that [t]he English translation of "TATUAJE" in
the mark is "TATTOO". See Applicants Notice of Reliance, Exhibit E. A second
Examining attorney at the Trademark Office conducted a search and found that [t]he
Office records have been searched and there are no similar registered or pending marks
that would bar registration under Trademark Act Section 2(d), 15 U.S.C. 1052(d).
TMEP 704.02. See Applicants Notice of Reliance, Exhibit G.
The only issues remaining to be tried in this Opposition are 1) whether the mark
TATTOO as applied for by Applicant is similar to the mark TATUAJE as registered by
Opposer; and 2) if similar, whether confusion will be likely from registration of
Applicants mark TATTOO. The Applicant asserts that these marks are clearly
dissimilar except for the Opposer's assertion of similarity under the doctrine of foreign
equivalents. The Applicant asserts that even under the precedent defining the doctrine of
foreign equivalents, these two marks still fail to create a likelihood of confusion in the
marketplace.
Meaning and Connotation Not Exact Synonyms
In view of the multiple translations of the word TATUAJE into English, and the
plurality of meanings of the word TATUAJE (see Applicants Notice of Reliance,
Exhibit N; see also Deposition of Opposers Expert Witness Diana V. Valori on
November 4, 2010, Translators Report and Disclosure, pages 2-4, citing to multiple
dictionary translations of tatuaje and plurality of dictionary meanings of the words
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tatuaje and tattoo), it is evident that the meaning of the word tatuaje is broader than
the English word tattoo, and the words tatuaje and tattoo, nothwithstanding
Opposers repeated assertions to the contrary, are not exact synonyms. The word
tatuaje does not exactly translate into the English word tattoo in all cases.
Opposer agrees that the caseIn re Buckner Enterprises Corp., 6 U.S.P.Q.2d 1316
(T.T.A.B. 1987) stands for the proposition that the doctrine of foreign equivalents can
not be applied where the words are not exact synonyms. In that case, the word
paloma was found to be broader than the English word dove because the translation
of the word paloma encompasses the English words pigeon and dove. While
Applicant believes thatIn re Buckneris the applicable law in the present case, Opposer
argues the contrary and asserts that 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. Opposer offers
an alternative case in support of its arguments. Opposer cites to the caseIn re Perez, 21
U.S.P.Q.2d 1075, 1076 (T.T.A.B. 1991) for the Boards finding that GALLO and
ROOSTER were foreign equivalents although, in addition to rooster the Spanish
word gallo is also translated into English to mean dory; float; wall-board; and false
note. What Opposer failed to include in Opposers analysis of the caseIn re Perez is
that the evidence in the record also showed that the mark "GALLO," despite having
several meanings in Spanish, was found by the majority to be the foreign equivalent of
the word "ROOSTER" due to the picture of a rooster on the packaging for the associated
goods. Specifically, the Board majority observed that: Undercutting applicant's argument
that the Spanish word "gallo" has meanings other than "rooster", and, thus, is not the
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foreign equivalent of registrant's mark, is the usage of applicant's mark[s] in the
commercial marketplace, as evidenced by the specimens of record. The specimens depict
applicant's marks with a prominent representation of a rooster. While the rooster design is
not a feature of the marks sought to be registered and, of course, cannot be considered
when comparing the marks, the design would certainly reinforce to consumers in the
marketplace the "rooster" translation of "gallo" as opposed to the other English meanings
of "gallo."
In the present case, one of the multiple translations of the word tatuaje is a
circle or mark that is left around the wound from a gun fired in very close proximity.
With respect to the mark tatuaje being applied to cigar products, the usage of Opposer's
mark in the commercial marketplace, as evidenced by the specimens of record, and the
common experience of smokers being burned by lit cigars, would tend to create an
impression in the mind of consumers of the translated meaning of tatuaje as being a
gun powder burn on the skin. Therefore, even considering Opposers reliance on the case
In re Perez, the translated meaning and connotation of the Spanish word tatuaje when
analyzed in the context of the usage of Opposer's mark in the commercial marketplace on
cigar products, would likely support a commercial impression of a gun powder burn on
the skin. Opposer has failed to prove that the marks TATUAJE and TATTOO are
identical in connotation. Moreover, the conclusion of an expert linguist, such as
Opposers expert witness, is not the appropriate test for determining meaning of the
translation of the word tatuaje and the English word tattoo. A plain ordinary
consumers impression and meaning applied to these words is the correct test to apply.
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Such test is supported by the dictionary definitions of record, rather than by conclusions
as to meaning offered by an expert witness.
Sight and Sound of the Marks Are Not Similar And No Confusion is Likely
Applicants mark TATTOO does not look or sound similar to Opposers mark
TATUAJE. The number of letters and syllables are different between the two marks.
In summary, Opposer has failed to show identical meaning and connotation of the
two marks, and the sight and sound of the two marks are also different. The Board
should dismiss Opposers opposition and allow registration of Applicants mark TATOO.
II. Description of the Record
The evidence of record consists of every item listed in the Description of the
Record, in Opposers Trial Brief, except item (9) articles and excerpts of various print
and online dictionaries discussing the manner in which dictionaries are arranged and
organized. The substance of this last item (9) does not appear in the Exhibits attached to
the Deposition of Diana V. Valori, taken on November 4, 2010 or in the Opposers
Notice of Reliance, signed by attorney Jessica C. Bromall on November 11, 2010.
Applicant respectfully demands that Opposer show how this last item (9) was introduced
into the official record, or any reference to the substance of such item (9) should be
stricken from Opposers Trial Brief.
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III. Statement of the Issues
(1) Whether TATUAJE and TATTOO have the same meaning and
connotation to consumers of cigar products, and whether the doctrine of foreign
equivalents can be applied to conclude that the two word marks are identical in meaning
and connotation.
(2) Whether TATUAJE and TATTOO are similar in sight, sound, meaning,
and commercial impression, to cause confusion to the relevant consumers of cigar
products.
(3) Whether the registration of Applicants mark TATTOO would likely
cause confusion in the marketplace with respect to Opposers mark TATUAJE.
IV. Analysis
Stipulated Facts
First of all, Applicant agrees that Spanish is a commonly spoken and understood
language in the United States. Applicant agrees that the goods and services specified in
the Federal Registration No. 2,836,665 for the mark TATUAJE are similar to the subject
trademark application for the mark TATTOO. The Applicant further agrees that the
channels of trade commonly used for the goods specified in the Federal Registration for
the TATUAJE mark are similar to the channels of trade commonly used for the goods
specified in the subject trademark application for TATTOO.
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Summary of Analysis
The Applicant, however, asserts that the meanings and connotations of TATTOO
and TATUAJE are sufficiently different, given the multiple translations of TATUAJE
into English (and also the multiple translations of TATTOO and the multiple meanings of
TATTOO), to avoid causing confusion to an observer in the marketplace. Even assuming
a sufficient similarity of connotation between TATTOO and TATUAJE, a consumer
would not stop and think to translate TATUAJE into TATTOO, or vice versa, when
encountering the marks TATUAJE and TATTOO as they would appear in their channels
of commerce before the consumer made a purchase decision. Lastly, Applicant asserts
that the Sight and Sound of TATTOO and TATUAJE are sufficiently different, even
when considered in conjunction with any similarity in their connotation, to be likely to
avoid causing confusion to consumers of cigar products in the relevant marketplace.
A. Proper Analysis for the Doctrine of Foreign Equivalents
Opposer asserts that the TATTOO mark is confusingly similar to the TATUAJE
mark primarily based upon the two words being exact synonyms - both meaning
drawings engraved on or under the skin, as recognized under the Doctrine of Foreign
Equivalents. See Opposers Trial Brief, page 10, second paragraph. Opposer asserts that
it is likely that a significant portion of American consumers would stop and translate
Opposers Mark into its English equivalent and that [t]he translated meaning of
TATUAJE is not obscure. See Opposers Trial Brief, page 11, first and second
paragraphs.
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Applicant asserts that Opposers arguments misstate the analysis to be performed
under the Doctrine of Foreign Equivalents and also misstate certain facts concerning the
translation of TATUAJE and TATTOO.
To begin, the Applicant agrees with Opposers assertion that Spanish is a
commonly understood language in the United States. However, the Applicant disagrees
with Opposers assertions regarding the uncontestable facts underlying the analysis
required under the Doctrine of Foreign Equivalents.
The Doctrine of Foreign Equivalents is used to evaluate the similarity of
connotation between foreign word and English word marks. Palm Bay Imports v. Veuve
Clicquot Ponsardin, 396 F.3d 1369, 1377, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005). When
it is unlikely that an American buyer will translate the foreign mark and will take it as it
is, then the doctrine of foreign equivalents will not be applied. Id. Words from modern
languages are generally translated to English under the doctrine of foreign equivalents,
but the doctrine is not an absolute rule and should be viewed merely as a guideline. Id.
Even when determining similarity of connotation under the Doctrine of Foreign
Equivalents, a complete inquiry into the likelihood of confusion between a foreign word
mark and an English word mark requires one to consider the marks in their entireties in
terms of sound, appearance, meaning, and commercial impression. In re Thomas, 79
USPQ2d 1021, 1025 (TTAB 2006).
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1. Consumers would not stop and translate TATUAJE upon
seeing the TATUAJE mark
Opposer seems to assert that simply because Spanish is a commonly understood
and spoken language in the United States, a significant portion of American consumers
would stop and translate Opposers Mark into its English equivalent. Opposers Trial
Brief, page 11, first paragraph. The Applicant asserts that this is not the proper test to
apply under the Doctrine of Foreign Equivalents. The Applicant further asserts that a
proper analysis using test required under the Doctrine of Foreign Equivalents requires
resolution of disputed underlying facts, which Opposer has failed to prove.
2. Translation of TATUAJE and the meanings of TATTOO
The Opposer asserts that voluminous dictionary definitions and expert testimony
eliminate any doubt that tatuaje means tattoo and vice versa. Also, Opposer
assertsthere can be no question that TATUAJE and TATTOO are exact equivalents.
See Opposers Trial Brief, page 11, third full paragraph. In contrast to the Opposers
assertion, the Applicant points out that tatuaje has multiple meanings in Spanish each
with its associated separate translations and that tattoo also has multiple meanings in
English, which each translate into different Spanish words or phrases. See Applicants
Notice of Reliance, Exhibits J to N; see also Deposition of Opposers Expert Witness
Diana V. Valori on November 4, 2010, Translators Report and Disclosure, pages 2-4,
citing to multiple dictionary translations of tatuaje and plurality of dictionary meanings
of the words tatuaje and tattoo.
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a. TATUAJE has several meanings in Spanish and
translations into English
The Opposer asserts that TATUAJE is an exact translation of the English word
tattoo. Opposers Trial Brief, page 12, last paragraph. Opposer however supplies
several dictionary translations for tatuaje.
In contrast to Opposers assertion, the Spanish word tatuaje has at least two
meanings, 1. the action and effect of tattooing, and 2. circle or mark that is left around
the wound from a gun fired in very close proximity. See Applicants Notice of
Reliance, Exhibit N; see also Deposition of Opposers Expert Witness Diana V. Valori on
November 4, 2010, Translators Report and Disclosure, pages 2-4, citing to multiple
dictionary translations of tatuaje and plurality of dictionary meanings of the word
tatuaje. Therefore, tatuaje refers to either a tattoo or to a gun powder burn.
These two meanings show that the Spanish word tatuaje has a broader meaning
than the English word tattoo. In English, the action and effect of tattooing and a
gun powder burn are two very different things. The Applicant asserts that comparing
tattoo to gun powder burn yields quite dissimilar connotations, resulting in tatuaje
and tattoo not being synonyms, much less exact synonyms. In re Buckner
Enterprises Corp., 6 USPQ2d 1316, 1317 (TTAB 1987). InBuckner, the Board
evaluated the similarity of meaning between the marks PALOMA and DOVE. The
meaning of PALOMA was found to include dove and pigeon. In comparing
pigeon to the mark DOVE, the terms were found to be not exact synonyms. In
comparing these two marks, it was held that the Board must apply an equally stringent
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test in judging similarity of meaning between a foreign word (paloma) and an English
word (dove) as it would between two English words (e.g. pigeon and dove). Id.
Furthermore, one of the multiple translations of the word tatuaje is a circle or
mark that is left around the wound from a gun fired in very close proximity. With respect
to the mark tatuaje being applied to cigar products, the usage of Opposer's mark in the
commercial marketplace, as evidenced by the specimens of record, and the common
experience of smokers being burned by lit cigars, would tend to create an impression in
the mind of consumers of the translated meaning of tatuaje as being a gun powder burn
on the skin. Therefore, the translated meaning and connotation of the Spanish word
tatuaje when analyzed in the context of the usage of Opposer's mark in the commercial
marketplace on cigar products, would likely support a commercial impression and
meaning of a gun powder burn on the skin. Opposer has failed to prove that the marks
TATUAJE and TATTOO are identical in connotation.
Additionally, the conclusion of an expert linguist, such as Opposers expert
witness, is not the appropriate test for determining meaning of the translation of the word
tatuaje and the English word tattoo. A plain ordinary consumers impression and
meaning applied to these words is the correct test to apply. Such test is supported by the
dictionary definitions of record, rather than by conclusions as to meaning offered by an
expert witness.
The Applicant further asserts that the multiple meanings of the Spanish word
tattoo reduce the strength of the similarity of connotation between the TATUAJE
mark and the TATTOO mark. The Applicant asserts that the strength of the similarity
of connotation between these marks and the overall analysis of the likelihood of
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confusion between these marks therefore at least involves disputed facts, which the
Opposer has failed to prove conclusively, concerning the translation that a consumer
would use when viewing the TATUAJE mark, if in fact such a translation is even made.
b. TATTOO has Several Meanings and Translations
into Spanish
In evaluating the similarity of connotation between TATTOO and TATUAJE, it is
also relevant to consider the several meanings that the word tattoo has in the English
language. One dictionary identifies the following definitions of tattoo: 1: a rapid
rhythmic rapping. 2 a: a call sounded shortly before taps as notice to go to quarters. b:
outdoor military exercise given by troops as evening entertainment. VERB transitive
verb: to beat or rap rhythmically on: drum on. intransitive verb: to give a series of
rhythmic taps. See Applicants Notice of Reliance, Exhibits J, K, L, and M. . In
addition, the definitions include to mark or color (the skin) with tattoos. See
Applicants Notice of Reliance, Exhibit L.
c. Multiple Translations Leave Unresolved Issues
Regarding The Similarity Of Connotation
The Applicant asserts that these multiple meanings for tattoo similarly show that
the meaning of tattoo in English is broader than the meaning of the Spanish word
tatuaje. For reasons similar to those enumerated above with regards to the multiple
meanings of the word tatuaje, the Applicant asserts that the comparison between
TATUAJE and TATTOO show that these terms do not have synonymous meanings.
Clearly, tattoo and tatuaje are not identical synonyms to a consumer of cigar
products when encountering these terms as trademarks.
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Opposer agrees that the caseIn re Buckner Enterprises Corp., 6 U.S.P.Q.2d 1316
(T.T.A.B. 1987) stands for the proposition that the doctrine of foreign equivalents can
not be applied where the words are not exact synonyms. See Opposers Trial Brief,
page 11, last full sentence. In that case, the word paloma was found to be broader than
the English word dove because the translation of the word paloma encompasses the
English words pigeon and dove. While Applicant believes thatIn re Buckneris the
applicable law in the present case, Opposer argues the contrary and asserts that 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. Opposer offers an alternative case in support of its arguments.
Opposer cites to the caseIn re Perez, 21 U.S.P.Q.2d 1075, 1076 (T.T.A.B. 1991) for the
Boards finding that GALLO and ROOSTER were foreign equivalents although, in
addition to rooster the Spanish word gallo is also translated into English to mean
dory; float; wall-board; and false note. What Opposer failed to include in
Opposers analysis of the caseIn re Perez is that the evidence in the record also showed
that the mark "GALLO," despite having several meanings in Spanish, was found by the
majority to be the foreign equivalent of the word "ROOSTER" due to the picture of a
rooster on the packaging for the associated goods. Specifically, the Board majority
observed that: Undercutting applicant's argument that the Spanish word "gallo" has
meanings other than "rooster", and, thus, is not the foreign equivalent of registrant's
mark, is the usage of applicant's mark[s] in the commercial marketplace, as evidenced by
the specimens of record. The specimens depict applicant's marks with a prominent
representation of a rooster. While the rooster design is not a feature of the marks sought
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to be registered and, of course, cannot be considered when comparing the marks, the
design would certainly reinforce to consumers in the marketplace the "rooster" translation
of "gallo" as opposed to the other English meanings of "gallo."
In the present case, one of the multiple translations of the word tatuaje is a circle
or mark that is left around the wound from a gun fired in very close proximity. With
respect to the mark tatuaje being applied to cigar products, the usage of Opposer's mark
in the commercial marketplace, as evidenced by the specimens of record, and the
common experience of smokers being burned by lit cigars, would tend to create an
impression in the mind of consumers of the translated meaning of tatuaje as being a
gun powder burn on the skin. Therefore, even considering Opposers reliance on the case
In re Perez, the translated meaning and connotation of the Spanish word tatuaje when
analyzed in the context of the usage of Opposer's mark in the commercial marketplace on
cigar products, would likely support a commercial impression of a gun powder burn on
the skin. Opposer has failed to prove that the marks TATUAJE and TATTOO are
identical in connotation. Moreover, the conclusion of an expert linguist, such as
Opposers expert witness, is not the appropriate test for determining meaning of the
translation of the word tatuaje and the English word tattoo. A plain ordinary
consumers impression and meaning applied to these words is the correct test to apply.
Such test is supported by the dictionary definitions of record, rather than by conclusions
as to meaning offered by an expert witness.
B. Dissimilar Sight and Sound
The confusing similarity analysis further requires an analysis of the similarity
of the sight and sound of the mark, even when comparing similarity of connotation
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under the Doctrine of Foreign Equivalents. The Applicant asserts that the sight and
sound of TATUAJE and TATTOO are quite different and that no likelihood of confusion
would exist based on the sight and sound of these marks alone. TATUAJE has seven (7)
letters while TATTOO has six (6) letters clearly forming two syllables.
The pronunciation of TATUAJE uses three (3) syllables to create ta-ta-je, as is
the common pronunciation by Spanish speakers. The Applicant points out that in the
common Spanish pronunciation of tatuaje, the second syllable of TATUAJE ends in an
ah sound while the second syllable of tattoo clearly ends in an oo sound.
The Applicant admits that the sound of a mark is not generally limited to the
common pronunciation of a word. However, the Applicant asserts that under the
Doctrine of Foreign Equivalents, the consumer is recognizing a foreign word and
translating it to its English equivalent. The Applicant asserts that in recognizing this
translation, a speaker of the foreign language is very likely to place in his or her mind the
common pronunciation of a foreign word to be translated than would the case when
comparing marks based on English or coined terms.
The Opposer apparently uses a pronunciation of TATUAJE that has four syllables,
dividing the word into TA-TU and A-JE. The Opposer has not shown in the record
any objective basis for this division of the word TATUAJE into these four syllables. The
Applicant asserts that a pronunciation of TATUAJE with four syllables as opposed to the
obvious 2 syllables of TATTOO further reduces the similarity of the sound of these
marks.
With regards to similarity of sight, the Applicant asserts that TATUAJE and
TATTOO are quite different in sight as is readily noticed by observation. The Opposer
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only asserts that the first syllables of the two words, which only contain three (3) letters,
are similar in sight. Opposers Trial Brief, page 13, last paragraph. The remaining four
(4) letters of TATUAJE, over half of the Opposers mark, therefore differ from the
remaining three (3) letters of TATTOO.
C. Technical Analysis By Two Examining Attorneys Separately Resulted In
Findings of No Confusing Similarity
The Applicant asserts that these two marks are not confusingly similar under the
standards of trademark law. Any comparison of these two words, whether it be a detailed
analysis as is performed in the course of this proceeding or a casual comparison from
memory as is often performed in the course of a consumer's purchase, clearly reveals that
TATUAJE and TATTOO have much different sight impressions and substantially
different sound impressions. The fact that the commercial impression of these two
different marks fail to create a likelihood of confusion is further evidenced by the
judgment of not only one, but of two different trademark examining attorneys of the
Trademark Office. One of these trademark examining attorneys explicitly considered, as
revealed by the trademark application Serial No. 77/823,272 examination record, the
relationship between TATUAJE and TATTOO given their translations from English to
Spanish and vice versa.
During this Opposition proceeding in the TTAB, Opposer filed a new application
for registration of its mark TATUAJE in connection with smoking accessories and
clothing. See Applicants Notice of Reliance, Exhibits E, F, G, H, and I. The Opposer
specifically asserted in its application that [t]he English translation of "TATUAJE" in
the mark is "TATTOO". See Applicants Notice of Reliance, Exhibit E. A second
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Examining attorney at the Trademark Office conducted a search and found that [t]he
Office records have been searched and there are no similar registered or pending marks
that would bar registration under Trademark Act Section 2(d), 15 U.S.C. 1052(d).
TMEP 704.02. See Applicants Notice of Reliance, Exhibit G.
While these two separate findings by two examining attorneys of the Trademark
Office are not binding on the Board, they provide additional evidence that there is no
confusing similarity between the two marks.
V. Conclusion
Based on the above, the Applicant respectfully requests that the Opposition be
dismissed and that the Applicants application for its mark Tattoo be allowed to register
in the Principal Register.
Date: May 24, 2011 /Jose Gutman/
Jose Gutman
Fleit, Gibbons, Gutman,Bongini, & Bianco, PL551 N.W. 77th Street
Boca Raton, FL, 33487
Phone: (561) 989-9811Fax: (561) 989-9812
e-mail: [email protected]
Attorney for Applicant
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CERTIFICATE OF SERVICE
I hereby certify that a true and complete copy of the foregoing TRIAL BRIEF OF
APPLICANT, has been served on Brennan C. Swain by mailing said copy on May 24, 2011,
via First Class Priority Mail, postage prepaid to:
Jeffer Mangels Butler & Marmaro LLPAttn: Brennan C. Swain
1900 Avenue of the Stars, 7th Floor
Los Angeles, CA 90067
Date: May 24, 2011 /Jose Gutman/
Jose Gutman
Fleit, Gibbons, Gutman,
Bongini, & Bianco, PL551 N.W. 77th Street
Boca Raton, FL, 33487
Phone: (561) 989-9811Fax: (561) 989-9812
e-mail: [email protected]
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