Dark Horse Distillery, LLC

Trademark Trial and Appeal Board

Sep 30, 2012

No. 85125674 (T.T.A.B. Sep. 30, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 30, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Dark Horse Distillery, LLC
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Serial Nos. 85104448 and 85125674
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Chris A. Caseiro of Verrill Dana LLP for Dark Horse Distillery, LLC.

Giancarlo Castro, Trademark Examining Attorney, Law Office 110 (Chris A.F. Pedersen,
Managing Attorney).
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Before Kuhlke, Cataldo and Taylor, Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Dark Horse Distillery, LLC (“applicant”) has filed applications to register on the
Principal Register the standard character marks DARK HORSE for “Distilled spirits” in
International Class 33;1 and DARK HORSE DISTILLERY for “Spirits distillery services” in
International Class 40.2
Registration has been refused in each application under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that the mark is likely to be confused with the marks in
the registrations set forth below, all owned by the same entity:

1 Application Serial No. 85125674 (‘674 application), filed September 9, 2010, and claiming a bona fide
intention to use the mark in commerce pursuant to Trademark Act Section 1(b), 15 U.S.C. § 1051(b).
2 Application Serial No. 85104448 (‘448 application), filed August 10, 2010, and claiming a bona fide
intention to use the mark in commerce pursuant to Trademark Act Section 1(b), 15 U.S.C. § 1051(b).
Serial Nos. 85104448 and 85125674

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Registration No. 2919454,3 (‘454 registration) for the mark shown below, includes the
following translation: “The foreign wording in the mark translates into English as “Dark Horse.”

Registration No. 2952438,4 (‘438 registration) for the mark KUROUMA (in typed form),
includes the following translation: “The foreign wording in the mark translates into English as
“Dark Horse.”
Registration No. 2960169,5 (‘169 registration) for the mark in non-Latin characters (in
stylized form) shown below, includes the following translation: “The non-Latin characters in the
mark transliterate into “KuroUma”, and this means “Dark Horse” in English.”

Registration No. 2921177,6 (‘177 registration) for the mark in non-Latin characters (in
stylized form) shown below, includes the following description: “KUROUMA” as design with
non-Latin Characters. The registration also includes the translation: “The non-Latin characters
in the mark transliterate into “KuroUma”, and this means “Dark Horse” in English.”

3 Registered January 18, 2005, Section 8 affidavit accepted, Section 15 affidavit acknowledged.
4 Registered May 17, 2005, Section 8 affidavit accepted, Section 15 affidavit acknowledged.
5 Registered June 7, 2005, Section 8 affidavit accepted, Section 15 affidavit acknowledged.
6 Registered January 25, 2005, Section 8 affidavit accepted, Section 15 affidavit acknowledged.
Serial Nos. 85104448 and 85125674

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All four registrations are for goods identified as “Japanese distilled spirits of barley soju.”
in International Class 33.
When the refusal in each application was made final, applicant appealed. The appeals
have been fully briefed. Because they involve similar issues of law and fact and similar records,
we are deciding both appeals in this single decision.
Our determination of the issue of likelihood of confusion is based on an analysis of all the
probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood
of confusion analysis, two key considerations are the similarities between the marks and the
similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We turn first to a consideration of the goods and services. It is settled that the question of
likelihood of confusion must be determined based on an analysis of the goods and services
recited in applicant’s applications vis-à-vis the goods recited in the cited registrations. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); The
Chicago Corp. v. North American Chicago Corp., 20 USPQ 2d 1715 (TTAB 1991). Further,
where the goods and services in the application and registration are broadly identified as to their
nature and type (as is the case herein with applicant’s identifications), such that there is an
absence of any restrictions as to the channels of trade and no limitation as to the classes of
purchasers, it is presumed that in scope the identification of goods and services encompasses not
only all the goods and services of the nature and type described therein, but that the identified
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goods and services are offered in all channels of trade which would be normal therefor, and that
they would be purchased by all potential buyers thereof. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981).
Moreover, in analyzing the relatedness of applicant’s goods and services with respect to
registrant’s goods, it is not necessary that the goods and services of applicant and the goods of
registrant be similar or even directly competitive to support a finding that there is a likelihood of
confusion. It is sufficient that the respective goods and services are related in some manner
and/or that the conditions surrounding their marketing are such that they would be encountered
by the same persons under circumstances that could, because of the similarity of the marks used
in connection therewith, give rise to the mistaken belief that they emanate from or are associated
with a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1795 (TTAB 1993); In
re International Telephone and Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue,
of course, is not whether purchasers would confuse the goods and services, but rather whether
there is a likelihood of confusion as to the source of the services and goods. In re Rexel Inc., 223
USPQ 830 (TTAB 1984).
With respect to the goods identified in the ‘674 application and those in the cited
registrations, there is no question the “Japanese distilled spirits of barley” recited in the
registrations are encompassed by applicant’s “distilled spirits.” Accordingly, for purposes of the
likelihood of confusion analysis, applicant’s goods are legally identical to those in the cited
registration and must be deemed to be sold in the same channels of trade and to the same classes
of consumers.
With respect to the services recited in the ‘448 application and the goods in the cited
registrations, we find them related inasmuch as registrant’s distilled spirits of barley soju could
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be produced by applicant’s distillery services.7 The record is silent as to the normal channels of
trade and classes of purchasers for these goods and services.
In view of the foregoing, we find the du Pont factor of the similarity of the goods and
services favors a finding of likelihood of confusion in each of applicant’s applications. We
additionally find that the du Pont factors of the similarity of channels of trade and classes of
consumers favor a likelihood of confusion in the ‘674 application.
We now consider whether applicant’s marks and registrant’s marks are similar or
dissimilar when compared in their entireties in terms of appearance, sound, connotation and
commercial impression. The test is not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks are sufficiently similar in their
entireties that confusion as to the source of the goods or services offered under the respective
marks is likely to result. The focus is on the recollection of the average purchaser, who normally
retains a general, rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore, although the marks at issue must be
considered in their entireties, it is well-settled that one feature of a mark may be more significant
than another, and it is not improper to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985).

7 It frequently has been found that consumers are likely to be confused by the use of similar marks on or
in connection with goods and services featuring or related to those goods. See e.g., In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir, 1988) (holding BIGG’S for retail grocery and
general merchandise store services likely to be confused with BIGGS for furniture); In re Service
Distributors, Inc., 229 USPQ 237 (TTAB 1986) (holding design for distributorship services in the field of
health and beauty aids likely to be confused with design for skin cream); Steelcase Inc. v. Steelcare Inc.,
219 USPQ 433 (TTAB 1983) (holding STEELCARE INC. for refinishing of furniture, office furniture,
and machinery likely to be confused with STEELCASE for office furniture and accessories).
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The examining attorney applies the doctrine of foreign equivalents and contends that
applicant’s marks and the four cited registered marks are equivalent in meaning and connotation,
and essentially that such equivalence in connotation is sufficient to find the marks confusingly
similar. He specifically states that the non-Latin characters in the marks of the ‘169 and ‘177
registrations transliterate to “KUROUMA,” which is the whole of, or the literal element, of the
marks in the ‘438 and ‘454 registrations; and that “KUROUMA” translates into English as
“DARK HORSE.” The examining attorney argues with particular regard to the mark in the ‘454
registration, KUROUMA and design, that the translation is reinforced by the addition of the
design element in the nature of a “black” horse. The examining attorney solely relies on the
translation statements made in the cited registrations in support of this argument.
Applicant, in urging reversal of the refusal, argues that the doctrine of foreign equivalents
is inapplicable because there is no evidence of record that the single literal and direct translation
of KUROUMA, and the non-Latin (hiragana) characters , is “dark horse.” Applicant
particularly states that the Japanese written language consists of three alphabets: kanji (Chinese
characters); hiragana (a syllabic alphabet that can be used to spell out kanji characters and is used
together with kanji to modify verbs, etc.) and katakana (a syllabic alphabet not at issue in this
case). Applicant explains that the four hiragana characters ( , pronounced KU, RO, U,
and MA, respectively) of the ‘169 and ‘177 registrations are written as a single word, as there are
no “spaces” between words in written Japanese and, therefore, there is nothing to signify how
KUROUMA should be read. It could be read as KURO UMA just as easily as KUROU MA or
KU RO U MA. Splitting the mark into different “words,” applicant further explains, results in
very different meanings, depending on the how the word is split. This is so because a single
hiragana will always be pronounced the same, but may be represented by three different “kanji,”
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each with a dramatically different meaning. For this reason, applicant argues that the hiragana
characters of the ‘169 and ‘177 could be interpreted in dramatically different ways, as shown in
the table below, reproduced from applicant’s brief.8

There is no indication , applicant urges, in the hiragana characters as to how the letters
should be split into words, and as such, it is impossible to determine what meaning is intended,
and even the black animal silhouette design of the ‘454 registration does not compel a translation
of “dark horse,” because other possible translations would be equally suitable, such as “evil
horse” or “black horse.” Applicant has supported its position with printouts from Japanese
online dictionaries and translators.
“Under the doctrine of foreign equivalents, foreign words from common, modern
languages are translated into English to determine … similarity of connotation in order to
ascertain confusing similarity with English word marks in a likelihood of confusion analysis.”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1696 (Fed. Cir. 2005). Application of the doctrine of foreign equivalents turns

8 Applicant’s briefs in the involved applications are essentially the same with regard to the discussion on
the similarity of the marks. All quoted material in this regard will be taken from the brief filed in the
‘674 application.
We note further that the table was compiled from printouts from Japanese online dictionaries
(http://jisho.org) and translators (http://translation.babylon.com/japanese/) , originally submitted with
Applicant’s response, filed March 9, 2011.

Serial Nos. 85104448 and 85125674

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upon the significance of the foreign mark to the relevant purchasers, which is based on an
analysis of the evidence of record, including, dictionary and Internet evidence. See generally
TMEP § 1207.01(b)(vi) (8th ed. 2011) and the authorities cited therein. The Federal Circuit has
stated the “[t]he test to be applied to a foreign word vis-à-vis an English word with respect to
equivalency is not less stringent than that applicable to two English words.” In re Sarkli, Ltd.,
721 F.2d 353, 354, 220 USPQ 111, 113 (Fed. Cir. 1983). For this reason, the English translation
evidence is a critical factor for the Board and the courts when determining whether to apply the
doctrine. If evidence shows that the English translation is unambiguously literal and direct, with
no other relevant connotations or variations in meaning, the doctrine is applicable. See, e.g., In
re Ithaca Industries, Inc., 230 USPQ 702 (TTAB 1986) (holding LUPO for men’s and boy’s
underwear and WOLF and design for various clothing items, likely to cause confusion, because,
inter alia “LUPO” is clearly the foreign equivalent of the English word “wolf”). However,
where the evidence shows that the English translation is not exact, literal, or direct, the doctrine
of foreign equivalents has generally not been applied to find the marks confusingly similar. See
In re Sarkli, 220 USPQ2d at 112-13 (holding REPECHAGE for various skin-products, and
SECOND CHANCE for face creams and other toiletries, not likely to cause confusion, where the
evidence failed to show that the terms were direct foreign equivalents); see also In re Buckner
Enterprises, 6 USPQ2d 1316 (TTAB 1987) (holding DOVE (with design) for stoves and
furnaces, and PALOMA for various forms of gas heating apparatus, not likely to cause
confusion, because, inter alia, the Spanish word “paloma” and the English word “dove” are not
exact synonyms in that “paloma” can be translated into either “dove” or “pigeon”).
After careful consideration of the evidence of record, we find applicant’s reliance on the
doctrine of foreign equivalents misplaced. We also find the examining attorney’s sole reliance
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on the translation statements in the cited registrations improper, as they are not proof of the truth
of the matter asserted. British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1200 (TTAB
1993). In addition, the translation statement is not included in the presumptions listed under
Section 7(b) of the Act. Moreover, applicant’s evidence clearly establishes that “dark horse” is
not an exact equivalent of “KUROUMA,” the subject of, or the literal portion of the marks in the
‘438 and ‘454 registrations and the transliteration of the hiragana characters in the ‘169
and ‘177 registrations, being only one of several relevant meanings. Because other relevant
translations of “KOROUMA exist, such as black horse, black animal, evil horse or evil animal,
the doctrine of foreign equivalents is inapplicable. The addition of a stylized horse design in the
‘454 registration does not compel a different result.
The examining’s attorney’s arguments regarding the pronunciation of KOROUMA are
unpersuasive and, in fact, bolsters our finding that the term is subject to more than one English
meaning.
Viewing applicant’s marks DARK HORSE and DARK HORSE DISTILLERY and the
cited marks (presented horizontally and diagonally), KUROUMA and KUROUMA and
design as they appear, we find that they are substantially different in sound, appearance and
commercial impression. Moreover, in view of the lack of equivalency in meaning, any possible
similarity in meaning does not outweigh the strong similarities. 9 As such, the du Pont factor of
the similarity of the marks favors applicant.

9 Although the examining attorney did not raise the issue that the horse design in the KUROUMA and
design mark of the ‘454 registration is the legal equivalent of the words DARK HORSE in applicant’s
marks, we note that the stylization of the horse and the fact that the term “dark horse” is a double entendre
results in a different overall commercial impression. In this regard we take judicial notice of the
definitions of “dark horse” from the online version of the Merriam Webster Dictionary (www.merriam-
webster.com/dictionary/dark+horse):
1. a : usually little known contender (as a racehorse) that makes an unexpectedly good
showing
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Accordingly, even though applicant’s goods in the ‘674 application are legally identical
to the goods in the cited registrations, and the services of the ‘448 application are related to the
goods of the cited registrations, we conclude that the doctrine of foreign equivalents is not
applicable and that applicant’s marks DARK HORSE and DARK HORSE DISTILLERY are
different in sound, appearance and commercial impression from the cited non-Latin characters
of the marks of the ‘169 and ‘177 registrations and the KUROUMA and KUROUMA and design
marks, respectively, of the ‘438 and ‘454 registrations .
Decision: The refusals to register under Section 2(d) of the Act in Application Serial
Nos. 85125674 and 85104448 are reversed.

b: an entrant in a contest that is judged unlikely to succeed