Similarity of the Goods/Channels of Trade/Consumers: Examining Attorney Odessa Bibbins contended that the goods are related because they are complementary. Compass Automotive alleged that the goods are not related because they are not often used together. The Board rejected Applicant’s argument, observing that “[w]hile a particular wheel and tire bead seating equipment may not be used ‘often’ together, tire bead seating equipment and wheels are used together each time any tire is seated and sealed against the rim of any wheel.” Furthermore, the Board noted that the goods are sold in the same channels of trade and offered to the same consumers, as evidenced by examples from retailer websites. And so, these du Pontfactors supported a finding of likelihood of confusion.
Sophistication of Purchasers: Compass Automotive made a strong claim that consumers would take great care when making purchases of both the Applicant’s and Registrant’s goods. Neither vehicle wheels nor tire bead seating equipment would likely be impulse purchases. Notwithstanding, the Board noted that this alone “is not sufficient evidence of record upon which to make a determination that this factor would outweigh the other du Pont factors[,]” and even “sophisticated buyers are not immune from confusion.” Therefore, the Board found this factor to be neutral.
Similarity of the Marks: The Board observed that the marks are clearly different in appearance and sound. However, considering the doctrine of foreign equivalents, the Board found that CHEETAH is an exact translation of the Spanish word GUEPARDO. Applicant asserted that the doctrine of foreign equivalents should not apply because “[a]lmost 88% of the U.S. population does not speak Spanish at home” and thus “[a] substantial number of ordinary American purchasers would not ‘stop and translate’ the foreign term into its English equivalent.” The Board rejected this argument, finding that Spanish is a common modern language and that the marks are exact equivalents. “[T]he doctrine of foreign equivalents applies where the ‘ordinary American purchaser . . . who is knowledgeable in the foreign language’ would stop and translate the mark.” See In re Thomas, 79 USPQ2d 1021, 1024 [emphasis added]. Here, “[t]here is also nothing in the ‘marketplace circumstances or the commercial setting in which the mark is used’ to indicate that purchasers would be unlikely to translate the mark.”
Moreover, Applicant’s use of a cheetah in its design form mark “reinforce[s] the connotation and commercial impression engendered by the word portion of the mark.”
Conclusion: Balancing the relevant du Pont factors and relying heavily on the doctrine of foreign equivalents, the Board found for a likelihood of confusion and affirmed the Section 2(d) refusal.
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TTABlog comment: It seems that the best, and perhaps only, way to avoid application of the doctrine of foreign equivalents is to show that the foreign term does not translate exactly and only into the English term at issue.
BTW, is there a presumption that consumers will stop and translate unless the applicant submits evidence that proves they won’t?
Text Copyright Kira-Khan McCarthy and John L. Welch 2019.