The Board affirmed a Section 2(d) refusal to register the mark THE SAISON D’HERETIQUE, finding the mark likely to cause confusion with the registered mark HERETIC BREWING COMPANY [BREWING COMPANY disclaimed], both for beer. Applicant conceded that “Saison” is a type of ale, but noted that the word also means “season” in French. SAISON plays a crucial role in creating a double entendre, applicant asserted, and significantly reduces the likelihood of confusionit. The Board disagreed. In re C G Asset Management Pty Ltd, Serial No. 87033933 (December 15, 2017) [not precedential] (Opinion by Judge Anthony R. Masiello).
Because the involved goods are in part identical, the Board assumed that those goods travel in the same, normal channels of trade to the same classes of consumers.
The marks have obvious differences in appearance, sound, and meaning. Examining Attorney Paul Ferrer argued that the descriptive wording in each mark should be given less significance: BREWING COMPANY obviously names the type of entity that produces beer; SAISON is a generic term for a type of beer.
As to Applicant’s argument regarding the meaning of “season” in French and the alleged double entendre, “The season of a heretic,” applicant pointed out that THE SAISON D’ is the first part of its mark and asserted that “when the term THE SAISON D’ is given fair weight (as it should to understand a double entendre), confusion with the cited mark is significantly reduced.”
Considering the doctrine of foreign equivalents, the Board concluded that customers, even if they know French, “are unlikely to stop and translate and would take the mark ‘as it is.’ They would take the mark as the generic name of the goods followed by the distinctive term D’HERETIQUE.” The terms HERETIC and D’HERETIQUE are “sufficiently similar in appearance to be recognized as variants of one another; and despite their difference in endings, the two terms look alike due to their shared letters and could be pronounced substantially alike.”
Moreover, even if customers were to translate applicant’s mark, they could, in light of applicant’s argument that the D’ in D’HERITIQUE creates a possessive, perceive the mark to mean “Heretic’s saison-style beer.”
And so the Board affirmed the refusal to register vis-a-vis as to the beer-related products in the subject application. As to the other class 32 products (root beer, ginger ale, fruit juice), which the USPTO did not challenge, the application will proceed to publication.
In a concurring opinion, Judge Frances Wolfson opined that the consideration of the doctrine of foreign equivalents was improper because that doctrine applies only a “foreign mark,” and a mark that comprises a foreign word or words combined with English words is not a “foreign mark.”