Green Dragon Tavern, Inc.

Trademark Trial and Appeal BoardJan 26, 2016

No. 86111823 (T.T.A.B. Jan. 26, 2016)

This Opinion is not a Precedent of the TTAB Mailed: January 26, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Green Dragon Tavern, Inc. _____ Serial No. 86111823 _____ Heather A. Cameron of Procopio Cory Hargreaves & Savitch LLP, for Green Dragon Tavern, Inc. Matthew G. Galan, Trademark Examining Attorney, Law Office 113, Odette Bonnet, Managing Attorney. _____ Before Shaw, Kuczma and Goodman, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: Green Dragon Tavern, Inc. (“Applicant”) seeks registration on the Principal Register of the following mark:1 1 Application Serial No. 86111823 was filed under Section 1(b) of the Trademark Act, 15 U.S.C. § 1(b), on November 6, 2013. On August 29, 2014, Applicant filed an Amendment to Allege Use (AAU) with allegations of first use anywhere and first use in commerce of May 7, 2008. The Examining Attorney accepted the AAU on September 16, 2014. Serial No. 86111823 - 2 - for “Restaurant and bar services,” in International Class 43. The application includes the following description of the mark: “The mark consists of the words GREEN DRAGON appearing in uppercase letters arched over a fanciful profile of a dragon facing East and the words TAVERN & MUSEUM appearing in uppercase letters beneath the dragon.” Color is not claimed as a feature of the mark and Applicant disclaims the terms TAVERN and MUSEUM apart from the mark as shown. Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used with the identified services, so resembles the mark THANH LONG, which translates to “green dragon,” in standard characters for services identified as “restaurant and bar services” in International Class 43,2 as to be likely to cause confusion, mistake or deception. When the refusal was made final, Applicant appealed and requested reconsideration. The Examining Attorney denied the request for reconsideration, and the appeal resumed. The case is fully briefed. Analysis Our determination of the issue of likelihood of confusion is based on an analysis of all the probative facts in evidence 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In 2 Registration No. 3229307, issued April 17, 2007; combined Sections 8 and 15 affidavit accepted and acknowledged. Serial No. 86111823 - 3 - any likelihood of confusion analysis, two key considerations are the similarities between the services and the similarities between the marks. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). A. The nature and similarity or dissimilarity of the services, the established, likely-to-continue trade channels and classes of purchasers. We first consider the similarity of the services. Both Applicant’s and Registrant’s services are identical: “restaurant and bar services.” Applicant argues that its services and Registrant’s services are nevertheless different because Applicant advertises and sells “American pub food, ensconced in the historical tradition of the American Revolution and the original 13 colonies” whereas the Registrant advertises and sells “Vietnamese food.”3 This argument is unpersuasive. It is settled that in making our determination, we must look to the services as identified in the application vis-à-vis those recited in the cited registration. Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.”). Accordingly, we find that Applicant’s and Registrant’s services are identical. 3 Applicant’s Br., p. 8, 17 TTABVUE 10. Serial No. 86111823 - 4 - Moreover, where Applicant’s and Registrant’s services are identical, we must presume that the channels of trade and classes of purchasers for those services are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same). The du Pont factors relating to the similarity of the services, the channels of trade and classes of purchasers heavily favor a finding of likelihood of confusion. B. The similarity or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation and commercial impression. Next, we consider the similarity of the marks. In comparing the marks we must consider their appearance, sound, connotation and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The emphasis of our analysis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. Although we consider the mark as a whole, “in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Serial No. 86111823 - 5 - To determine similarity of meaning and connotation, in order to ascertain confusing similarity with English word marks, foreign words from common modern languages generally are translated into English under the doctrine of foreign equivalents. Palm Bay Imports Inc., 73 USPQ2d at 1696; McCarthy on Trademarks and Unfair Competition, § 23:36 (4th ed.). The doctrine of foreign equivalents is not an absolute rule, however, and should be viewed merely as a guideline. Id. “The doctrine should be applied only when it is likely that the ordinary American purchaser would ‘stop and translate [the word] into its English equivalent.’” Id. (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)). The “ordinary American purchaser” includes “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” In re Spirits Int’l N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009). Applicant argues, as a preliminary matter, that the doctrine of foreign equivalents does not apply because it is limited to cases where the marks are descriptive of the goods or services at issue: First, the doctrine of foreign equivalents is primarily applied in situations wherein two marks are descriptive of the goods or services bearing the marks—neither APPLICANT’s mark nor Registrant’s mark describe the services bearing either mark and thus the doctrine of foreign equivalents simply does not apply in the analysis of the registrability of APPLICANT’s mark.4 4 Applicant’s Br., p. 2, 17 TTABVUE 2. Serial No. 86111823 - 6 - We disagree. It is well settled that the doctrine of foreign equivalents applies to likelihood of confusion cases regardless of whether the marks at issue are descriptive. “Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine genericness, descriptiveness, as well as similarity of connotation in order to ascertain confusing similarity with English word marks.” Palm Bay, 73 USPQ2d at 1696 (emphasis added); see McCarthy on Trademarks and Unfair Competition, § 23:36 (“The rationale of the doctrine of foreign equivalents is that a foreign, non-English word familiar to an appreciable segment of American purchasers may be confusingly similar to its English equivalent.”); see also, In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (holding MARCHE NOIR for jewelry, and BLACK MARKET MINERALS for retail jewelry and mineral store services, likely to cause confusion); In re Hudnut, 121 USPQ 636 (TTAB 1959) (refusal to register mark DERNIERE TOUCHE for face powder affirmed in view of registration of THE FINAL TOUCH for cologne); Ex parte Odol-Werke Wien G.m.b.H., 111 USPQ 286 (Comm’r. Pats. 1956) (refusal to register mark CHAT NOIR for eau de cologne affirmed in view of registration of the mark BLACK CAT for cosmetic items including perfume); and Golden Arrow Toiletries v. Lancome S.A., 79 USPQ 352 (Comm’r. Pats. 1948) (mark FLECHES for perfumes and rouges held not registrable in view of opposer’s prior registered mark GOLDEN ARROW for facial and bath soaps). Finally, “when the goods at issue are identical, ‘the degree of similarity necessary to support a conclusion of likely confusion declines.’” Viterra, 101 Serial No. 86111823 - 7 - USPQ2d at 1912 (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992)). Applicant’s mark is comprised of the words GREEN DRAGON TAVERN & MUSEUM with a “fanciful profile of a dragon.” While we must consider the mark in its entirety, we find the wording GREEN DRAGON to be the most dominant portion of Applicant’s mark. This wording comes first in the mark and is in the largest typeface. The dragon design is less dominant because when a mark comprises both wording and a design, greater weight is given to the wording. It is the wording that purchasers generally use to refer to or request the goods or services. See Viterra, 101 USPQ2d at 1908; CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983). Here, the dragon design would be seen as reinforcing the connotation or commercial impression of the dominant wording GREEN DRAGON. The wording TAVERN & MUSEUM also is less dominant because it is smaller, it comes at the end of the mark, and it is descriptive of Applicant’s restaurant which simulates a tavern and includes a museum.5 Registrant’s mark is the Vietnamese wording THANH LONG which translates to “green dragon.”6 The record does not show any other meaning of THANH LONG. The doctrine of foreign equivalents is applied when it is likely that “the ordinary American purchaser would ‘stop and translate’ [the term] into its English equivalent.” Palm Bay, 73 USPQ2d at 1696, quoting In re Pan Tex Hotel Corp., 190 USPQ at 110. See also, In re Thomas, 79 USPQ2d at 1024 (“The ‘ordinary American 5 Applicant’s Amendment to Allege Use, August 28, 2014, p. 5. 6 Examining Attorney’s Office Action, February 28, 2014, p. 2. Serial No. 86111823 - 8 - purchaser’ in this context refers to the ordinary American purchaser who is knowledgeable in the foreign language.”). The record shows that an appreciable number of American consumers speak Vietnamese. The 2011 Census Department report submitted by both Applicant and the Examining Attorney titled Language Use in the United States: 2011 shows that Vietnamese is the fourth most common foreign language spoken in the United States, after Spanish, Chinese, and Tagalog.7 According to the Census report, approximately 1,419,539 people in the United States speak Vietnamese, and of these, 66.9% or approximately 949,672 people, also speak English “well” or “very well.” Moreover, Vietnamese is more widely-spoken in the United States than French, Italian, German, Russian, or Korean. Even taking into account the lower percentage of Vietnamese speakers who only speak English “well” or “very well,” these Vietnamese speakers still outnumber the comparable number of Italian, Russian, or Korean speakers.8 Given the large number of Vietnamese speakers and the absence of any other meaning, we find it likely that these speakers would “stop and translate” THANH LONG into its English equivalent, GREEN DRAGON. As our primary reviewing court recognized, “the PTO may reject an application . . . solely because of similarity in meaning of the mark sought to be registered with a previously registered mark.” In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113 (Fed. Cir. 1983). Generally, however, applying the doctrine of 7 Applicant’s Response to Office Action, August 28, 2014, pp. 3-18; Examining Attorney’s Office Action, September 16, 2014, pp. 2-17. 8 Id. Serial No. 86111823 - 9 - foreign equivalents is only part of the determination of whether the marks being compared are confusingly similar. “[S]uch similarity as there is in connotation must be weighed against the dissimilarity in appearance, sound, and all other factors, before reaching a conclusion on likelihood of confusion as to source.” Id. See also, In re Ithaca Indus., Inc., 230 USPQ 702, 704 (TTAB 1986) (“[O]ther factors to be considered are the dissimilarity in overall appearance and pronunciation of the marks, the differences in the goods to which the marks are applied, and the degree of suggestiveness of applicant’s mark and the cited mark as applied to the respective goods.”). When we compare the marks in their entireties, the differences in appearance and pronunciation of the marks are obvious and substantial. Nevertheless, THANH LONG is a direct translation of GREEN DRAGON, and the connotation of the marks are the same: GREEN DRAGON for restaurant and bar services. Moreover, GREEN DRAGON is arbitrary as applied to restaurant and bar services, and therefore it is conceptually strong as a trademark. Palm Bay, 73 USPQ2d at 1692 (“VEUVE is an arbitrary term as applied to champagne and sparkling wine, and thus conceptually strong as a trademark.”). The fact that Applicant identifies itself as a “tavern” does little to distinguish the marks, especially since Registrant’s mark has no such modifier. We recognize that the similarity of connotation of the marks, by itself, is not determinative and that this factor must be weighed against the dissimilarities in sound and appearance of the marks and all the other relevant factors bearing on the Serial No. 86111823 - 10 - likelihood of confusion. However, when we consider the similarity of the marks in their entireties, we find that the similarity of connotation and commercial impression, together with the relative strength of the mark and the absence of any other meaning of THANH LONG, combine to outweigh the dissimilarities in the marks. This du Pont factor weighs in favor of a finding of a likelihood of confusion with respect to the cited registration. C. Conclusion Because the marks are similar, and the services are identical and travel in the same trade channels, there is a likelihood of confusion between Applicant’s mark, GREEN DRAGON TAVERN & MUSEUM and design, and the mark, THANH LONG, in the cited registration. Decision: The refusal to register Applicant’s mark under Section 2(d) of the Lanham Act is affirmed.