Ing. Loro Piana & C.S.p.A.

Trademark Trial and Appeal Board

Nov 7, 2007

No. 79014582 (T.T.A.B. Nov. 7, 2007)

Mailed: 11/7/07

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ing. Loro Piana & C.S.p.A.
________

Serial No. 79014582
_______

John A. Clifford and Danielle I. Mattessich of Merchant &
Gould for Ing. Loro Piana C.S.p.A.

Ada P. Han, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Quinn, Holtzman and Cataldo, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Ing. Loro Piana C.S.p.A.,
a corporation organized under the laws of Italy, to
register the mark PECORA NERA for “yarns and threads” in
International Class 23; “textiles and textile goods, namely
fabrics for the manufacture of clothing, bedding, namely
blankets, duvet covers, mattress covers, and pillow covers,
fabric table cloths, textile napkins and placemats” in
International Class 24; and “clothing for men, women and
children, namely jackets, coats, skirts, trousers, cloaks,
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 79014582
2
mantles, overcoats, vests, scarves, mufflers, shawls, and
gloves; footwear; head wear” in International Class 25.1
The application includes the following statement: “The
English translation of the words PECORA NERA in the mark is
‘Black Sheep.’”
Registration was refused by the trademark examining
attorney in International Class 25 only. The examining
attorney refused registration under Section 2(d) of the
Trademark Act on the ground that applicant’s mark, when
applied to applicant’s goods in International Class 25, so
resembles the two previously issued registrations of the
mark BLACK SHEEP for goods in several classes, including
“sportswear and clothing, namely, hunting jackets, shirts,
pants, coats, vests, camouflage clothing, chaps, underwear,
coveralls, and caps” in International Class 25;2 and
“clothing for hunters and outdoorsmen, namely, poplin,
cotton, mesh, flannel and vinyl hats (insulated and
uninsulated); elastic suspenders; leather utility belts;
insulated nylon sportsman’s booties; and insulated nylon
hoods” in International Class 25,3 as to be likely to cause

1 Application Serial No. 79014582, filed June 6, 2005 under the
Madrid Protocol, Section 66(a) of the Trademark Act, 15 U.S.C. §
1141(f), based on International Registration No. 0859674, issued
June 5, 2005.
2 Registration No. 0785434, issued February 23, 1965; renewed.
3 Registration No. 1302411, issued October 30, 1984; renewed.
Ser No. 79014582
3
confusion. The cited registrations are owned by the same
entity.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
Applicant argues that confusion with the cited
registered mark is unlikely to occur because of the
dissimilarity between the marks, the differences between
the goods and their channels of trade, the sophisticated
nature of the purchasers, and the presence of third-party
registrations of BLACK SHEEP and SHEEP marks in the
clothing field. In support of its arguments, applicant
submitted copies of third-party registrations, an English
dictionary definition of the term “black sheep,” and
listings of the words “pecora” and “nera” in an
English/Italian dictionary.
The examining attorney maintains that the doctrine of
foreign equivalents applies in this case inasmuch as
consumers would be likely to translate the Italian words
into their Enlish equivalents. The examining attorney
contends that applicant has too narrowly construed the
doctrine: “The doctrine states that the consumer would be
likely to translate the foreign words into its English
equivalent, and not that the consumer would translate the
foreign words into the English equivalent AND ascribe its
Ser No. 79014582
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American colloquial meaning to the foreign phrase as well.”
(Brief, 4)(emphasis in original). The examining attorney
finds that, because the marks are foreign equivalents, they
are similar. As to the goods, the examining attorney
points out that they are, at least in part, identical, and
otherwise related. In support of the refusal the examining
attorney introduced excerpts of third-party websites, and
English/Italian dictionary translations of the words
“pecora” and “nera.”
Our determination of the issue of likelihood of
confusion is based on an analysis of all of 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods.
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).
Insofar as the goods are concerned, it is well settled
that the question of likelihood of confusion must be
Ser No. 79014582
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determined based on an analysis of the goods recited in
applicant’s application vis-à-vis the goods identified in
the cited registration. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1783 (Fed. Cir. 1992). Where the goods in the
application at issue and/or in the cited registration are
broadly identified as to their nature and type, 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
encompasses not only all the goods of the nature and type
described therein, but that the identified goods are
offered in all channels of trade which would be normal
therefore, and that they would be purchased by all
potential buyers thereof. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981).
Applicant’s argument that the goods are dissimilar
ignores well established case law requiring that the
comparison of the goods is based on how the identifications
read in the involved application and the cited
registration. The gist of applicant’s argument is that
opposer’s clothing is for “hunters and outdoorsmen.” The
identification of goods in Registration No. 0785434,
Ser No. 79014582
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however, is not so limited.4 The identification reads as
follows: “sportswear and clothing, namely, hunting
jackets, shirts, pants, coats, vests, camouflage clothing,
chaps, underwear, coveralls, and caps.” Thus, except in
the case of “hunting jackets” (and, arguably, “camouflage
clothing”), opposer’s clothing is not limited to use by
hunters and outdoorsmen. Based on a comparison of
applicant’s identification of goods and registrant’s
identification of goods in Registration No. 0785434, we
find that the goods are identical in part, and otherwise
related. More specifically, there is an overlap with
respect to pants, coats, vests and headwear/caps. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986 (CCPA 1981) [likelihood of confusion
found on basis of overlap of any item encompassed by the
identifications of goods]. Inasmuch as the identifications
of goods are legally identical, at least in part, we must
presume, for purposes of the likelihood of confusion
analysis, that the trade channels and classes of purchasers

4 In saying this, we recognize, of course, that the
identification of goods in opposer’s Registration No. 1302411 is
prefaced with the limiting terminology “clothing for hunters and
outdoorsmen.” We therefore have confined our decision to
Registration No. 0785434 that, of the two registrations cited by
the examining attorney, forms the strongest basis for affirmance
of the refusal.
Ser No. 79014582
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are identical. Id. Further, purchasers would include
ordinary members of the general public.
The partial identity between the goods, and the
identity in trade channels and classes of purchasers are du
Pont factors that weigh heavily in favor of finding a
likelihood of confusion.
We next turn to consider the marks, the factor on
which applicant and the examining attorney have focused
their attention. At the outset of this consideration, it
is noted that “when marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 32 USPQ2d 1698 (Fed. Cir. 1992).
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, 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 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 offered under the respective marks is likely to
Ser No. 79014582
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result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
The cited mark is BLACK SHEEP whereas applicant’s mark
is PECORA NERA, an Italian term that applicant has
translated into English as “black sheep.” Indeed, the
translations of the individual words “black” and “sheep”
that are of record establish this fact.
(www.ultralingua.com; www.allwords.com). Under the
doctrine of foreign equivalents, foreign words from common
languages are translated into English to determine
similarity of connotation with English words. See Palm Bay
Import, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 73 USPQ2d at 1696. The doctrine is applied when it
is likely that “the ordinary American purchaser would ‘stop
and translate [the term] into its English equivalent.”
Id., quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110
(TTAB 1976). See generally J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition, § 23:26 (4th ed. 2001).
The “ordinary American purchaser” in this context
refers to the ordinary American purchaser who is
knowledgeable in the foreign language. In re Thomas, 79
USPQ2d 1021 (TTAB 2006). The Board has already addressed
Ser No. 79014582
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the issue of whether the doctrine is applicable to the
Italian language, finding that “it does not require
authority to conclude that Italian is a common, major
language in the world and is spoken by many people in the
United States.” In re Ithaca Industries, Inc., 230 USPQ
702, 703 (TTAB 1986). Lest there be any doubt on this
point, the examining attorney in the present case has
introduced evidence in further support of the notion that
Italian is commonly understood in this country. The
website of The National Italian American Foundation
(www.niaf.org) indicates that there are nearly 25 million
Italian Americans in this country which, according to NIAF,
is the nation’s fifth largest ethnic group. The examining
attorney also filed a May 2002 summary report distributed
by the American Council on the Teaching of Foreign
Languages titled “Foreign Language Enrollments in Public
Secondary Schools, Fall 2000” showing that the number of
students studying Italian had significantly increased in
recent years. The report indicated that increased
enrollment in studying Italian “was the one bright spot of
the non-Spanish languages.” The report further indicated
that Italian was the fifth most-studied language (behind
Spanish, French, German and Latin). It is common knowledge
that foreign language instruction would include, very early
Ser No. 79014582
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on in the class, simple vocabulary words for colors and
animals, in this case, “black” and “sheep.”
Based on the record, we find that Italian is a common
language and that it is likely that an appreciable segment
of American consumers are speakers of Italian and would
translate the Italian term “pecora nera” to the English
term “black sheep.”
When evaluating the similarties between an English
word mark and a foreign word mark, we must, as in the
comparison of two English word marks, consider the marks in
their entireties in terms of sound, appearance, meaning and
commercial impression. In re Thomas, 79 USPQ2d at 1025.
Here, the marks BLACK SHEEP and PECORA NERA are obviously
different in sound and appearance. The marks have,
however, the same literal connotation, that is, a black-
fleeced sheep.
Applicant offers, however, a slight twist on
application of the doctrine of foreign equivalents in this
case, essentially contending that the word “black sheep”
has a figurative meaning in English while the word “pecora
nera” does not have a figurative meaning in Italian. Cf.
In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111 (Fed. Cir.
1983). In responding to the refusal, applicant points out
the Federal Circuit’s instruction that “[a]lthough words
Ser No. 79014582
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from modern languages are generally translated into
English, the doctrine of foreign equivalents is not an
absolute bar and should be viewed merely as a guideline.”
Id. Applicant “agrees that the foreign wording in the mark
translates into English as ‘BLACK SHEEP.’” (Brief, p. 6).
Applicant goes on to contend, however, that the term “black
sheep” in English refers to a “misfit,” whereas the term
“pecora nera” in Italian translates to the literal meaning
of “black sheep,” that is, a dark wooly animal related to
the goat. According to applicant, BLACK SHEEP in English
calls to mind a misfit or disreputable person, while PECORA
NERA in Italian calls to mind a black-colored sheep. Thus,
applicant contends, the Italian language does not give the
the same meaning to the term “pecora nera” that the English
language gives to “black sheep.” Applicant concludes by
asserting that the meanings and commercial impressions of
the marks are different, and that, therefore, application
of the doctrine of foreign equivalents is improper in this
case. In connection with its argument, applicant has
relied upon the following English definition of the term
“black sheep”: “misfit: somebody regarded by the other
members of a family or group as not living up to their
standards and expectations [because black wool is less
valuable than white].” (www.encarta.msn.com).
Ser No. 79014582
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We further take judicial notice of the following
meanings of “black sheep” in English:5
A recessive black-fleeced individual in
a flock of normally white-fleeced
sheep.

A member of a group that stands in
conspicuous and unfavorable contrast to
the other members esp. by reason of
socially undesirable characteristics or
behavior (he’s the black sheep of his
family).
(Webster’s Third New International
Dictionary of the English Language
(unabridged ed. 1993)).

There is no issue herein that the Italian word mark
PECORA NERA is translated in only one way to English,
namely as “black sheep.” The difference in this case,
applicant argues, is that the English term “black sheep”
(not the Italian term) may be subject to more than one
meaning: the literal meaning of a sheep that is black in
color versus the idiomatic meaning of a misfit. Thus,
according to applicant, the English word “black sheep” has
a broader meaning than the Italian word in that the term
“pecora nera” translates to the literal meaning “black
sheep,” but not to the idiomatic meaning “misfit.”
We are not persuaded by applicant’s argument. The

5 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser No. 79014582
13
major problem is that there is no evidence in support of
applicant’s contention that, unlike the English term “black
sheep,” the Italian term “pecora nera” has no idiomatic
meaning. To the contrary, we find that Italian-speaking
individuals in this country would be just as likely to
ascribe the idiomatic meaning to “pecora nera” as they
would the literal meaning. In this connection, we take
judicial notice of these additional English/Italian
dictionary definitions:
Pecora: -nera FIG. black sheep

Black sheep: n. FIG. Pecora f. nera
(Oxford Paravia Italian/English
Dictionary 2001)

pecora nera: (figurato) black sheep

black sheep: N (fig) pecora nera
(Collins Italian/English Dictionary
1995)

Sono la pecora nera della famiglia:
I am the black sheep of the family.
(Streetwise Italian
Dictionary/Thesaurus: The User-Friendly
Guide to Italian Slang and Idioms
(2005))

This dictionary evidence contradicts the basis of
applicant’s argument, namely that there is no figurative
meaning of “pecora nera” in Italian. Rather, the evidence
shows that “pecora nera” in Italian and “black sheep” in
English have the same literal and idiomatic meanings. See
Ser No. 79014582
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In re Thomas, 79 USPQ2d at 1025. In any event, given the
nature of the goods (clothing), it is reasonable to expect,
in the absence of contravening evidence, that Italian
speakers in this country, when encountering “pecora nera,”
would be just as likely to ascribe the literal meaning to
the translated term (a black-fleeced sheep) as they would
the idiomatic meaning (misfit).
In view of the above, we find that the doctrine of
foreign equivalents applies. While the marks differ in
sound and appearance, the identity in connotation (both
literal and figurative) is sufficient to support a finding
of likelihood of confusion, especially as used in
connection with identical clothing items. The fact that
the marks have the same connotation, resulting in a similar
overall commercial impression, is sufficient for us to
conclude that confusion is likely, despite the differences
in their appearance and sound. In re American Safety Razor
Co., 2 USPQ2d 1459 (TTAB 1987).
Applicant contends that the cited mark is weak and
entitled to a narrow scope of protection due to the
existence of numerous third-party registrations of marks
that “immediately call to mind a ‘BLACK SHEEP’” and other
SHEEP marks, all for clothing items in Class 25. This
evidence is not persuasive. Not a single one of these
Ser No. 79014582
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registrations is for the mark BLACK SHEEP; rather, most of
the marks are pictorial representations, some highly
stylized, of black sheep. The other registered marks
comprise the word “SHEEP” with other words, or marks
comprise pictorial representations of white sheep, again
several being highly stylized. In any event, the third-
party registration evidence is entitled to limited
probative value. The registrations are not evidence of use
of the marks shown therein and they are not proof that
consumers are familiar with such marks so as to be
accustomed to the existence of similar marks in the
marketplace, and as a result would be able to distinguish
between “BLACK SHEEP” marks based on differences between
them. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d
1004, 177 USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc.
v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982).
Applicant’s argument based on sophisticated purchasers
is entirely unpersuasive. According to applicant, “[t]he
complexity, danger and expense related to the purchase of
hunting equipment also dictates that consumers acquiring
such goods expend a significant amount of care and
sophistication when making purchasing decisions.” (Brief,
pp. 13-14). Firstly, the goods listed in Registration No.
0785434 are not limited to hunters and hunting equipment;
Ser No. 79014582
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rather, the identification of goods includes ordinary items
of clothing, and these clothing items would be purchased by
consumers with nothing more than ordinary care. Secondly,
there is no evidence to establish that applicant’s “target
customers” are “highly sophisticated.” In any event, as in
the case of the cited registration, applicant’s
identification of goods includes ordinary clothing items
that would be purchased by ordinary consumers. Further,
even if some of applicant’s customers were sophisticated,
that does not necessarily mean that they are knowledgeable
about trademarks or are immune from source confusion. See
In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
We conclude that consumers familiar with registrant’s
clothing sold under the mark BLACK SHEEP would be likely to
believe, upon encountering applicant’s mark PECORA NERA for
clothing, that the goods originated with or are somehow
associated with or sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Ser No. 79014582
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Decision: The refusal to register in International
Class 25 is affirmed. The application will proceed in
International Classes 23 and 24.