The USPTO refused to register the mark PEACEFUL PIRANHA for potato chips, processed nuts, and other snack items, finding the mark confusingly similar to the registered mark PIRAÑA for potato chips, nut-based snacks, etc. Applicant argued that there is an incongruity in its mark that creates an entirely different connotation to the consumer as compared to the cited mark. How do you think this came out? In re Hy-Vee, Inc., Serial No. 87120774 (February 6, 2018) [not precedential] (Opinion by Judge Frances Wolfson).

Because the goods in the application and the cited registrations are identical in part, the Board must presume that they travel in the same channels of trade to the same classes of consumers.

As to the marks, the Board found the word “piranha” to be the dominant portion of Applicant’s mark “because it is modified by the term ‘peaceful’ in the same manner as an adjective modifies a noun.” Even though “peaceful” is the first word in applicant’s mark, consumers are likely to focus on the word “piranha.”

Moreover, “for English language speakers who are unfamiliar with Spanish, the differences between the terms PIRANHA and PIRAÑA are insignificant.”

Without knowledge of the purpose of the tilde in a Spanish “n” (i.e., that it changes the pronunciation of the letter “n” to the “ny” sound such as is used in the English word canyon), a consumer of Applicant’s goods may perceive the tilde as simply a design feature of the mark or consider Registrant’s mark as a misspelling of the English word “piranha.” Those consumers who do not speak or understand Spanish are unlikely to pronounce the “ny” sound and will consider the pronunciations of the terms to be the same. For these reasons, such consumers will associate both the terms PIRANHA and PIRAÑA with the fish.

For consumers having a knowledge of Spanish, the terms will be perceived as equivalents, under the doctrine of foreign equivalents.

As to the incongruity in applicant’s mark, the Board that piranhas may be considered vicious and that a peaceful piranha “does not jibe with that perception, although given the popular understanding of what characterizes a piranha, even a ‘peaceful piranha’ may be seen to have an incipient propensity to be vicious.” The Board did not agree, however, that applicant’s mark “is so counterintuitive in its word-play on ‘piranha’ that confusion with the cited mark PIRAÑA would be obviated.” In short, the presence of the additional term PEACEFUL in applicant’s mark “is not likely to distinguish the marks since it would merely indicate an atypical piranha, possibly for use with a subset of snack foods offered under the PIRAÑA mark.”

And so the Board affirmed the refusal.