D’Oro Cosmeticos Internacional, S.A. de C.V.

Trademark Trial and Appeal Board

Nov 23, 1999

No. 74642431 (T.T.A.B. Nov. 23, 1999)

Paper No. 17
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 23, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re D’Oro Cosmeticos Internacional, S.A. de C.V.
________
Serial No. 74/642,431
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Leslie Bertagnolli and John A. Bacon of Baker & McKenzie for
D’Oro Cosmeticos Internacional, S.A. de C.V.
Lynn A. Luthey, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______
Before Simms, Hohein and Bucher, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
D’Oro Cosmeticos Internacional, S.A. de C.V. has filed
an application to register the mark "D’GOLD," in the stylized
format reproduced below,
Ser. No. 74/642,431
2
for "cosmetics, namely skin lotions, mascara, lipstick, nail
hardeners, nail enamels, nail polishes, makeup, blush, eye
shadows, deodorants for personal use, and hair shampoos".1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles each of
the following marks, which are owned by the same registrant, as
to be likely to cause confusion, mistake or deception:
(i) "PARFUM D'ORO," which is registered
in the stylized format shown below,
for "perfume, essential oils for personal
use, skin soaps, hair bleaching preparations,
all purpose cleaning, polishing, scouring and
abrasive preparations, hair lotions, [and]
dentifrices";2 and
(ii) "D'ORO U.S.A.," which is registered
in the manner illustrated below,
for "nail polish, nail hardener, [and] nail
conditioner".3

1 Ser. No. 74/642,431, filed on March 6, 1995, which alleges a bona
fide intention to use the mark in commerce and also seeks registration
on the basis of Mexican Reg. No. 426210, issued on August 3, 1992.
2 Reg. No. 1,912,933, issued on August 22, 1995, which sets forth dates
of first use of December 14, 1993. The registration states that:
"The translation of the mark ’PARFUM D’ORO’ in [the] Italian language
means ’perfume of gold’" and that the term "PARFUM" is disclaimed.
3 Reg. No. 1,945,141, issued on January 3, 1996, which sets forth dates
of first use of April 15, 1986. The registration indicates that:
"The translation of the mark ’D’ORO’ in [the] Italian language means
’gold’" and that the term "U.S.A." is disclaimed.
Ser. No. 74/642,431
3
Applicant has appealed. Briefs have been filed,4 but
an oral hearing was not requested. We affirm the refusal to
register.
As a preliminary matter, we observe that the goods of
applicant and registrant are identical in part (nail hardeners
and nail polishes) and are otherwise closely related items of
cosmetics and personal care products. Respondent, we note, does
not contend otherwise and it is clear that, if such identical and
closely related goods were to be marketed under the same or
similar marks, confusion as to the source or sponsorship thereof
would be likely to occur.
Applicant contends, however, that confusion is not
likely because, when considered in their entireties:
[T]he only similarities [sic] between
the applied for mark, D’GOLD, and the cited

4 It is noted that applicant, for the first time, has attached copies
from a commercial database of several third-party registrations to its
appeal brief. Although the Examining Attorney has not objected to
such evidence on the grounds that it is untimely under Trademark Rule
2.142(d) and is otherwise not properly of record, neither has she
treated the evidence as being of record by discussing it in her brief.
In particular, Trademark Rule 2.142(d) provides that "[t]he record in
the application should be complete prior to the filing of an appeal"
and that the Board "will ordinarily not consider additional evidence
filed ... after the appeal is filed." Moreover, even if timely filed,
in order to make information regarding third-party registrations
properly of record, it is necessary to submit either copies of the
actual registrations or the electronic equivalents thereof, i.e.,
printouts of the registrations which have been taken from the Patent
and Trademark Office’s own computerized database. See, e.g., In re
Consolidated Cigar Corp., 35 USPQ2d 1290, 1292 (TTAB 1995) at n. 3; In
re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) at n. 3 and In
re Melville Corp., 18 USPQ2d 1386, 1388-89 (TTAB 1991) at n. 2.
Nevertheless, and in any event, we observe that inasmuch as none of
the third-party registrations which applicant attached to its brief is
for a mark which is as similar to applicant’s mark as are the marks of
the cited registrations, such evidence would make no difference in the
disposition of this appeal.
Ser. No. 74/642,431
4
registrations [for the marks,] PARFUM D’ORO
and D’ORO USA, is that "ORO" is Italian for
"gold". When the other components of the
[marks in the] cited registrations, namely
"PARFUM" and "USA" are considered, ...
consumers will not automatically assume that
products bearing the respective marks
originate from the same source. It is
applicant’s contention that differences in
visual impression and sound between the
applied for mark and the [marks in the] cited
registrations far outweigh the literal
meaning of the words, so that the relevant
consumer will not be confused as to the
origin of these goods.
Applicant further maintains that, while "[t]he doctrine of
foreign equivalents can be appropriately applied in determining
likelihood of confusion," this is not such a case because "it is
unreasonable to think that consumers will associate D’GOLD with
the Italian word for "gold" ("ORO"), compare the marks as a whole
and then determine that they are confused as to origin of the
products." In particular, applicant asserts that:
While Appellant does not suggest that
Italian is not a significant world language,
the potential for confusion between an
English word and an Italian foreign
equivalent mark is not at the same level as
the potential for confusion between an
English word mark and a trademark in the
French or Spanish language. These languages
are commonly taught in U.S. schools and the
number of average consumers familiar with
French or Spanish far outweigh the average
consumers who speak or understand Italian.
We agree with the Examining Attorney, however, that
confusion is likely. As the Examining Attorney accurately points
out:
The [respective] marks are similar in
appearance. The [applicant’s] ... mark and
the cited registered marks contain the
identical lettering, namely a stylized letter
Ser. No. 74/642,431
5
"D" followed by an apostrophe, and the word
"ORO" or "GOLD" The highly stylized and
capitalized letter "D" creates as strong and
prominent visual impression that dominates
the mark[s]. The part of the mark following
the "D", namely "GOLD"[,] in applicant’s mark
... is in smaller capital letters, as is the
registrant’s "ORO". Therefore, the marks
create the same visual impression, and a
consumer could be confused as to the source
of the goods.
Such is particularly the case inasmuch the generic term "PARFUM"
in respondent’s "PARFUM D’ORO" mark and the geographical term
"U.S.A." in its "D’ORO U.S.A." mark constitute subordinate matter
which, in light of the descriptiveness thereof, is insufficient
to distinguish registrant’s marks from applicant’s "D’GOLD" mark.
The Examining Attorney further contends that the
respective marks "have the same meaning under the doctrine of
foreign equivalents," arguing that (footnotes omitted):5
The term D’ORO in the registrant’s marks
means "gold" or "of gold" in Italian
according to the translation[s] on the
registrations. Also, the term ORO means
"gold" in Spanish. .... It is noted that
the applicant is a Mexican corporation and
ORO is a Spanish word. The translation of
ORO is "gold" and the applicant’s mark D’GOLD
is the foreign equivalent of the registrant’s
marks D’ORO.

5 The Examining Attorney has requested that the Board take judicial
notice of dictionary definitions, copies of which are attached to her
brief, which show that "oro" is defined in the Zanichelli New College
Italian & English Dictionary (1990) at 923 and in Cassell’s Spanish-
English English-Spanish Dictionary (rev. ed. 1978) at 447 as meaning
"gold". Such request is approved inasmuch as it is settled that the
Board may properly take judicial notice of dictionary definitions.
See, e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203
F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of Notre Dame du
Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 74/642,431
6
The Examining Attorney insists, in view thereof, that
"[c]onsumers seeing the mark, D’GOLD, in stylized form used on
various types of cosmetics, and the registered marks PARFUMS
[sic] D’ORO and D’ORO U.S.A., in stylized form, also on various
types of cosmetics, are likely to mistakenly conclude that the
goods are related and originate from a common source."
Under the doctrine of foreign equivalents, marks which
consist of or contain foreign words from modern languages are
translated into English to, inter alia, ascertain whether they
are confusingly similar to English word marks. The test is
whether, to those American buyers familiar with the foreign
language, the word would denote its English equivalent. The
rationale behind the rule is that a foreign word familiar to an
appreciable segment of American purchasers may be confusingly
similar to its English equivalent, or vice versa. See 3 J.
Thomas McCarthy, McCarthy on Trademarks & Unfair Competition,
Sections 23:36--23:38 (4th ed. 1999). See also In re Perez, 21
USPQ2d 1075 (TTAB 1991); In re American Safety Razor Co., 2
USPQ2d 1459 (TTAB 1987); and In re Ithaca Industries, Inc., 230
USPQ 702 (TTAB 1986). In the present case, however, the
designation "D’GOLD" in applicant’s mark is not, strictly
speaking, an English word. It is instead a hybrid composed of
the Italian or Spanish term "D’," meaning "of," and the English
word "GOLD".
We thus disagree with the Examining Attorney that the
designation "D’GOLD" in applicant’s mark is the foreign
equivalent of the dominant and distinguishing term "D’ORO" in
Ser. No. 74/642,431
7
each of registrant’s marks. Nevertheless, it is still the case
that, due to the identity in meaning between the English word
"GOLD" and the Spanish and Italian word "ORO," purchasers and
prospective customers for cosmetics and other closely related
personal care products who are acquainted with such languages
would be likely to believe, in view of the substantial overall
similarities noted previously in the appearance of the respective
marks, that the goods share the same origin or affiliation. To
such consumers, who constitute a not insignificant segment of the
purchasing public in the United States, applicant’s mark "D’GOLD"
and the source-signifying term "D’ORO" in registrant’s marks
"PARFUM D’ORO" and "D’ORO U.S.A." would convey essentially the
same connotation and, given the virtual identity in the overall
stylization of the respective marks, including the prominently
displayed script letter "D," the marks would project the same
commercial impression when considered in their entireties.
We accordingly conclude that applicant’s stylized
"D’GOLD" mark, when used in connection with nail polishes, nail
hardeners and the other cosmetics set forth in its application,
would be likely to cause confusion as to source or sponsorship
with the contemporaneous use by registrant of its stylized
"PARFUM D’ORO" and "D’ORO U.S.A." marks for nail polish, nail
hardener and other closely related personal care products listed
in the cited registrations.
Decision: The refusal under Section 2(d) is affirmed.
R. L. Simms
Ser. No. 74/642,431
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G. D. Hohein
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial and Appeal Board