Declining to apply the doctrine of foreign equivalents to a given name, the Board dismissed an opposition to registration of the mark RICHARD MAGAZINE for online services in the fields of fashion, beauty, and lifestyle, concluding that opposer had failed to prove a likelihood of confusion with its mark RICARDO for services in the culinary field. Although the involved services are related, the first du Pont factor, the dissimilarities between the marks, was dispositive. Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355 (TTAB 2019) [precedential] (Opinion by Judge Michael B. Adlin).

The evidence established that both “lifestyle” and culinary content are offered by some media, and that was sufficient to persuade the Board that the parties’ services are related, though not closely related. Therefore, this factor weighed only slightly in opposer’s favor. Similarly, the limited overlap in channels of trade and classes of consumers provided slight support for a finding of likely confusion. The key issue, then was the similarity or dissimilarity of the marks.

The Board found the marks to be “somewhat similar” in  appearance. Although RICHARD and RICARDO differ by only two letters, the word MAGAZINE cannot be ignored. Moreover, Opposer’s mark appears to be a foreign language name while RICHARD is a common English language name. Considering the marks in their entireties, the Board found them more dissimilar than similar.

There was no doubt that the marks sound different. “As for RICARDO, ‘it does not follow that any and all suggested pronunciations of a trademark must be deemed to be ‘correct’ or viable, even those
which are inherently implausible and inconsistent with common phonetic usage and practice.’ In re Who? Vision Sys. Inc., 57 USPQ2d 1211, 1218 (TTAB 2000).” Many American consumers would perceive RICARDO as a Spanish name while RICHARD is a common English name. “It would be “‘inherently implausible’ for RICARDO to be pronounced similarly to RICHARD.” They are different male names, and dictionary definitions indicated that they are pronounced differently.

The principal disagreement between the parties concerned whether the doctrine of foreign equivalents applied here. The Board observed that the doctrine “should generally not apply to first names such as RICHARD and RICARDO that are widely recognizable to American consumers, unless there is evidence that consumers would ‘translate’ the names.” The Board found no such evidence.

The chief point of dispute concerned whether ordinary American purchasers would “stop and translate” Opposer’s mark RICARDO. Palm Bay Import[s], Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005), quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976).

The Board noted that “Richard” and “Ricardo” are each recognized personal names. There was no evidence that owners of personal name trademarks use translations of their personal names, or that consumers translate them. Indeed, “[i[nconsistent use of a personal name trademark, including by using it in more than one language, such that its spelling or pronunciation changes, could risk, and perhaps make inevitable, consumer confusion as to the true source of a product or service.”

[G]enerally consumers would be unlikely to “stop and translate” personal name marks, because doing so would point to not only a different person or people (whether real or fictional), but also to a different source, and to the mark losing any “instant recognizability.”

Finally, the Board noted, Applicant’s content appears to be only in English, with no indication that its services are related to the Spanish language. Thus there was no reason to think that consumers would translate RICHARD to RICARDO.

In sum, the record evidence did not support a finding that consumers would be likely to translate Ricardo to Richard, or vice versa. Instead, they would “take each name as it is, in its own language, as identifying the person named, whether real or fictional, known or anonymous.”

The Board concluded that the marks, when considered in their entireties, are dissimilar.

They identify different people, with RICARDO identifying Ricardo Larrivée to those familiar with Opposer, or someone named RICARDO to those unfamiliar with Opposer, and RICHARD MAGAZINE identifying Mr. Wojtach, or someone named RICHARD to those unfamiliar with Applicant. The term MAGAZINE is another difference affecting how the marks look and sound, while RICARDO appears to identify a specific, perhaps well-known person (most likely, given Opposer’s identified goods and services, a chef or restaurateur). Absent evidence to the contrary, we find that consumers would be unlikely to “stop and translate” RICARDO into RICHARD (or RICHARD into RICARDO), as doing so would point them to a different source. This factor weighs heavily against finding a likelihood of confusion.

The Board concluded that, although there is “some relationship between the involved services, channels of trade and classes of consumers,” . . . the dissimilarity between the marks outweighs these factors.

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TTABlog comment: If Little Richard sang “Tutti Frutti” in Spanish, would he be called “”Ricardito?” Would you translate “tutti frutti” into Spanish or take it as it is?

Text Copyright John L. Welch 2019.