The USPTO refused to register the mark EL PATRÓN for “perfumes and colognes,” finding a likelihood of confusion with the registered mark BOSS for “perfumery for personal use, namely, perfumes, eau de parfum.” Applicant Talyoni argued that it is unlikely that consumers would “stop and translate” its mark because the mark does not convey “anything informational associated with fragrances.” How do you think this came out? In re Talyoni, LLC, Serial No. 87695323 (May 28, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).

Translation Requirement: Examining Attorney Jennifer D. Richardson issued a refusal based on Talyoni’s failure to provide an acceptable translation of the mark. See Rule. 2.32(a)(9). Only a translation that is the “clear and exact equivalent” will be accepted for printing on a certificate of registration. See TMEP Section 809.03.

Talyoni provided the following language: “The English translation of EL PATRÓN in the mark depends upon the context in which it is used: ‘THE OWNER’ when referring to a business; ‘LANDLORD’ when referring to a farming estate; ‘PATTERN’ when used as a measurement unit; and ‘MASTER, CAPTAIN, GOVERNOR, EMPLOYER, MODEL, BOSS’ in certain contexts.”

The Board agreed with the Examining Attorney: “The above translation submitted by Applicant … seeks to impose contextual limitations and conditions upon the various definitions suggested, and thus is unnecessarily verbose and vague.” Moreover, the proposed wording is inconsistent with most dictionary definitions, Talyoni’s own prior registration (in which it translated EL PATRÓN as “THE BOSS”) and website advertisements, and third-party registrations, which suggest that the mark means “the boss,” “the owner,” “the employer” and “the landlord.”

The Board therefore affirmed this refusal.

Likelihood of Confusion: Since the involved goods are in part identical, the Board must presume that these goods travel in the same channels of trade to the same classes of consumers. Of course, when marks appear on identical goods, a lesser degree of similarity is necessary to support a finding of likely confusion.

The Examining Attorney contended that EL PATRÓN in Spanish means “the boss,” as well as “the owner” and “the landlord.” Applicant Talyoni argued that the doctrine equivalents should not be applied because “it is unlikely, given the nature of the products and mark, that the ordinary American purchaser would ‘stop and translate [the word] into its English equivalent.” Talyoni asserted that neither “el patron” nor “the boss” conveys any information about fragrances, and so a person fluent in Spanish “would recognize EL PATRÓN, without translation, as an arbitrary identification on a product.”

The Board, however, found no authority for the proposition that application of the doctrine of equivalents is limited to foreign words that are descriptive or suggestive of the goods. Nor did the Board find legal support for Talyoni’s assertion that, because EL PATRÓN has several possible meanings, the term will not be translated by persons fluent in Spanish.

In this case, the evidence clearly establishes that EL PATRÓN is a Spanish term that translates to “the boss,” “the owner” or “the landlord.” Applicant has translated EL PATRÓN as “the boss” in at least one prior registration and emphasizes that meaning in website advertisements. Applicant’s own actions thus appear to associate its EL PATRÓN mark with “the boss” as opposed to other potential definitions of the term. *** We find as a result that Spanish-speaking consumers will translate EL PATRÓN in accordance with the definitions of record and are particularly likely to translate the mark to “the boss.”

As to appearance and sound, the Board found the marks dissimilar. Talyoni asserted that the cited mark BOSS connotes Hugo Ferdinand Boss, registrant’s founder, but of course the Board pointed out that it must make its determination based upon the mark as it appears in the cited registration, and there was insufficient evidence to allow a conclusion that consumers would associate the mark BOSS with Herr Boss.

The Board therefore found that the first du Pont “somewhat favors a finding of likelihood of confusion.”

There were no limitations in the application or cited registration as to the price of the goods, and so the Board must assume that the applicable standard of care is that of the least sophisticated purchaser. Therefore, the Board found this factor to be neutral or slightly favoring affirmance of the refusal.

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.

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TTABlog comment: I suspect the translation in applicant’s prior registration was a killer in the Board’s consideration.

Text Copyright John L. Welch 2019.