Manufactura de Tabacos (MATASA) S. A.

Trademark Trial and Appeal Board

Dec 9, 1999

No. 75150300 (T.T.A.B. Dec. 9, 1999)

Paper No. 21
gfr
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 9, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Manufactura de Tabacos (MATASA) S.A.
________
Serial No. 75/150,300
_______
Allen M. Krass, Julie A. Greenberg, and John G. Posa of
Gifford, Krass, Groh, Sprinkle, Patmore, Anderson &
Citkowski for applicant.
Ronald McMorrow, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney)
_______
Before Seeherman, Walters and Rogers, Administrative
Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Manufactura de Tabacos (MATASA) S.A. has filed a
trademark application to register the mark LA CIMERA for
“cigars.”1

1 Serial No. 75/150,300, in International Class 34, filed August
15, 1996, based on an allegation of a bona fide intention to use
the mark in commerce.
Ser No. 75/150,300
2
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d). The ground is that applicant’s mark so
resembles the mark CREST, previously registered for “little
cigars”2, and the composite mark shown below, previously
registered for “tobacco and tobacco products, namely
cigars”3, that, if used on or in connection with applicant’s
goods, it would be likely to cause confusion or mistake or
to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
As a preliminary matter, we note that both the
Examining Attorney’s final refusal of registration and

2 Registration No. 1,701,167 issued July 14, 1992, to Larus &
Brother Company, in International Class 34.
3 Registration No. 582,705, issued November 24, 1952; second
renewal January 12, 1994. The mark was originally registered for
a wider array of goods in class 34. It is now restricted to the
goods set out in the text, above.
Ser No. 75/150,300
3
appeal brief clearly rely on both of the referenced
registrations to support the refusal. During the pendency
of this appeal, however, registration no. 1,701,167 for the
mark CREST was cancelled for registrant’s failure to file
an affidavit or declaration of use under Section 8 of the
Trademark Act, 15 U.S.C. 1058. Thus, the appeal is moot as
to this registration and we limit our consideration to the
composite CREST and design mark.
In a likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods. Applicant’s and
registrant’s goods are identical and neither identification
contains limits as to channels of trade or classes of
consumers. Therefore, we turn our consideration to the
similarities between the marks, in view of the premise 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, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992).
The Examining Attorney relies on the doctrine of
foreign equivalents. He contends that “cimera” must be
translated so that it can be compared with prior
registrations; he has made of record excerpts defining
Ser No. 75/150,300
4
“cimera” from two Spanish-English dictionaries; he contends
that applicant has not provided any evidence or arguments
to dispute that “crest” is the English-language equivalent
of “cimera”; he contends that the terms are exact synonyms;
and, he distinguishes as inapposite cases relied on by
applicant where foreign and English-language terms were
held not confusingly similar.
Applicant contends that the Examining Attorney should
not translate the term “cimera” to its English-language
equivalent, because consumers of cigars would not do so, as
cigars often are branded with Spanish-language marks; that
even if the translation is made, “crest” has many meanings
and differing connotations; that the connotation of the
word “crest” in registrant’s mark, because of its design
element, is that of an heraldic device, whereas the
intended meaning of LA CIMERA in applicant’s mark is “the
peak, summit, or crest as in crest of a wave”; that if
applicant had intended its mark to convey an impression of
an heraldic device or coat of arms it would have used the
Spanish “blason”; and, that applicant’s mark and
registrant’s mark are dissimilar in sight and sound, as
well as connotation.4

4 Most of applicant’s arguments, which compare its mark with the
CREST and design mark, were articulated in its response to the
Ser No. 75/150,300
5
In support of its arguments, applicant relies, in
part, on a declaration from its president, who asserts that
he is fluent in Spanish; that “LA CIMERA refers to the
peak, summit or crest as in crest of a wave” and is used by
applicant to suggest high quality; and, that the “Spanish
term for a coat of arms or crest of that nature is BLASON.”5
The doctrine of foreign equivalents dictates that, in
certain circumstances, a likelihood of confusion may exist
between a mark including a foreign word or term and a
previously registered mark containing the English-language
equivalent. In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re
Ithaca Industries, Inc., 230 USPQ 702, 704 (TTAB 1986).
See also In re Atavio Inc., 25 USPQ2d 1361, 1363 (TTAB
1992) and cases cited therein.
We find it appropriate to consider the English meaning
of LA CIMERA. Based on the record before us, there can be

Examining Attorney’s initial office action. Applicant’s request
for reconsideration of the final refusal, its appeal brief, and
its reply brief, repeat applicant’s argument that the Examining
Attorney was wrong to translate its mark. Otherwise, applicant
focuses exclusively on the now-cancelled registration for the
word CREST.
5 Applicant also submitted, with its appeal brief, untranslated
Portuguese-language news stories, contending that the stories
evidence use of “cimera” in the sense of “summit”, as in a summit
meeting. The Examining Attorney has objected to these stories as
untimely and thus we have disregarded these stories. We note
that, even had we considered the stories, our decision would be
no different.
Ser No. 75/150,300
6
no dispute that applicant’s mark can be translated to mean
“the crest,” referring to a heraldic emblem or coat of
arms.6 Applicant has not rebutted the dictionary evidence
that a clear meaning in Spanish for “cimera” is a crest in
the nature of a heraldic emblem or coat of arms.
Similarly, the word “crest” in the cited registration
connotes a heraldic emblem or coat of arms, in view of its
heraldic design element.
Applicant has relied on cases where, under the
totality of the circumstances, a foreign term and its
English equivalent were held unlikely to create a
likelihood of confusion. We find those cases inapposite.
This case is more akin to In re Perez, supra, and In re
American Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987), than
the cases relied on by applicant.
In conclusion, we find that, in view of the
substantial similarity in commercial impressions of
applicant’s and registrant’s marks, their contemporaneous
use on essentially identical goods is likely to cause
confusion as to the source or sponsorship of such goods.

6 “Cimera” is defined in the Larousse Diccionario Español-Inglés
(1995) as “[…de escudo] crest…,” and “escudo” is defined as,
inter alia, “shield,” in the Oxford Spanish Desk Dictionary
(1997) and Random House Latin-American Spanish Dictionary (1997).
Ser No. 75/150,300
7
Decision: The refusal under Section 2(d) of the Act
is moot as to Registration No. 1,701,167 and affirmed as to
Registration No. 582,705.
E. J. Seeherman
C. E. Walters
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board