TTAB re-examines confusion criteria for word marks in Spanish

In Brown Shoe Co v Robbins (Opposition 91176273, May 13 2009), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has held that an application to register the Spanish word 'palomita' as a trademark for “shirts, pants, shoes and hats” was barred by two prior registrations for the Spanish word 'paloma' for use in connection with clothing and footwear. 

Under Section 2(d) of the Lanham Act, a trademark owner may oppose the registration of a mark if, as applied to the applicant’s goods or services, the mark so resembles the opponent’s previously used or registered mark that confusion, mistake or deception is likely. As is typical in TTAB decisions in which the parties’ claims are unrestricted as to customers and channels of distribution, among other things, the TTAB rested its Section 2(d) likelihood of confusion analysis primarily on two factors – the similarity of the marks and the goods covered by the marks.

In one sentence, the TTAB summarily concluded that the parties’ respective goods were similar: the applicant’s goods were either identical to or encompassed those cited in the opponent’s registrations (ie, shirts, pants, shoes and headwear). Turning to the similarity between the trademarks PALOMA and PALOMITA, the TTAB found that the marks were similar “in sound and appearance, differing only in the ending” of the applicant’s mark. The TTAB upheld its longstanding principle that the first portion of a mark is more likely to make an impression on potential purchasers. 

In finding similarity based on “pronunciation, meaning and commercial impression”, the TTAB rejected both parties’ arguments that the “doctrine of foreign equivalents” applied because the case did not involve “non-English words from two different languages”. Instead, the TTAB reasoned that “where both marks are Spanish words, we must consider the connotation of the marks to both non-Spanish-speaking consumers and Spanish-speaking consumers”. Record evidence indicated that 'paloma' means 'dove' in English, while 'palomita' is the diminutive of the word 'paloma' in Spanish, meaning 'little dove'. Although the applicant contended that PALOMITA had additional meanings in Spanish, namely 'checkmark' and 'popcorn', this argument was contradicted by the applicant’s admission that “a purchaser in the United States” unfamiliar with the possible differences in meaning “will view the marks as having the same meaning”. The TTAB reasoned that even though Spanish-speaking consumers may understand the multiple meanings of PALOMITA, “there is nothing inherent in the goods that would lead a consumer to the ‘checkmark’ or ‘popcorn’ meanings over the ‘little dove’ connotation”. Thus, the similarities in appearance and commercial impression trumped any differences in meaning. 

This outcome may well have been different if the applicant had sought to register PALOMITA in a stylized, “checkmark design”, or if a consumer survey had been conducted to see whether and to what degree Spanish and non-Spanish speakers pronounced or interpreted both marks similarly. In any case, the decision is a warning to trademark practitioners to be mindful of any prior, similar marks in the same language ending in any minor variation or suffix. 

The opponent also challenged the application on the grounds that the applicant had fraudulently misused the ® registration symbol. In discovery responses, the applicant admitted to using the registration symbol next to the PALOMA mark, but believed that use was proper because the mark was registered in Mexico. In finding in the applicant’s favour, the TTAB relied on one of its own rules providing that “[w]hen a foreign applicant’s use of the symbol on the specimens is based on a registration in a foreign country, the use is appropriate”. The TTAB also reiterated its long-standing practice that the US Patent and Trademark Office accepts “explanations that demonstrate that such use was inadvertent or without any intent to deceive or mislead.” The opinion is therefore further evidence that proving fraudulent misuse of the ® registration symbol remains difficult, unless there is a bad-faith intent or fraud. 

Jonathan D Goins and Theodore H Davis Jr, Kilpatrick Stockton LLP, Atlanta