The Board affirmed a bifusal of the mark BOCCA DOLCE for “chocolate confections,” upholding the USPTO’s requirement of a disclaimer of DOLCE and finding a likelihood of confusion with the registered mark BOCCA for “caramels in the nature of candy, chocolates.” Applicant argued that the mark is unitary and therefore a disclaimer is not required, and that BOCCA is a weak formative in light of third -party uses and registrations. The Board was unmoved.  In re Nino Salvaggio Fruit & Vegetable Market, Inc., Serial No. 88138756 (August 18, 2020) [not precedential] (Opinion by Judge Jonathan Hudis).

Disclaimer Requirement: Examining Attorney J. Ian Dible, relying on dictionary translations and third-party disclaimers, maintained that the word DOLCE must be disclaimed because it means “sweet” in English and thus is merely descriptive of a characteristic or feature of applicant’s goods. The Board agreed.

Applicant contended that BOCCA DOLCE means “sweet mouth” and in that phrase the word “sweet” does not describe its products. It also pointed to several registrations in which DOLCE was not disclaimed.

The Board observed that the words BOCCA and DOLCE are not physically connected by a design feature. There was no evidence or persuasive argument that the term BOCCA DOLCE has a distinct meaning of its own independent of the meaning of its constituent parts. Nor was the Board persuaded by the fact that applicant owned a now-expired registration for the same mark for the same goods, the Board noting once again that each case must be decided on its own merits.

Likelihood of confusion: Because the goods in the cited registration encompass those of the application the Board found them to be legally identical, and it therefore presumed that they travel in the same channels of trade to the same classes of consumers.

In an effort to show the weakness of the word BOCCA, Applicant pointed to 13 third-party uses of marks containing the words “bocca,” “boca,” or “mouth,” but six of them involved unrelated goods. The remaining seven was not a sufficient number to require the Board to accord these uses probative weight under Jack Wolfskin and Juice Generation, and there was no evidence of the impact of these marks in the marketplace.

Likewise, as to the 25 third-party registrations containing the terms bocca, boca, or mouth, only eight involved goods similar to those of the cited registration, and those were for marks that contain additional textual matter distinguishing them from the BOCCA mark. Again, this evidence fell well short of the volume of evidence found convincing on its face in Jack Wolfskin and Juice Generation.

The Board fond BOCCA to be the dominant element in applicant’s mark, both because it is the first term in the mark and because of the descriptiveness of DOLCE. Applicant argued that, because Italian is a dying language in the United States, the vast majority of Americans will not even recognize “dolce” as meaning “sweet,” and therefore DOLCE is a much stronger differentiator that “sweet.” The Board pointed out, however, that Italian is the eighth most spoken language in the United States, spoken by more than 708,000 people, and it is a common, major language. [The Board also noted the incongruity of applicant’s reliance on the English translation of BOCCA as “mouth.”].

Comparing the marks in their entireties, the Board found them to be similar in sound, appearance, connotation, and commercial impression. It therefore concluded that confusion is likely, and it affirmed the Section 2(d) refusal.

The Board allowed applicant thirty-days within which to file a disclaimer, if it intends to appeal the affirmance of the Section 2(d) refusal.

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Text Copyright John L. Welch 2020.