TransBorder Marketing, Inc.

Trademark Trial and Appeal Board

Sep 10, 2007

No. 78788371 (T.T.A.B. Sep. 10, 2007)

Mailed: September 10, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re TransBorder Marketing, Inc.
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Serial No. 78788371
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Scott W. Petersen of Holland & Knight LLP for TransBorder
Marketing, Inc.

Tina Brown, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Hohein, Kuhlke and Mermelstein, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

TransBorder Marketing, Inc., applicant, has filed an
application to register the mark ANTYK (in standard
character form) for “alcoholic beverages, namely vodka” in
International Class 33.1
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 in connection with its

1 Serial No. 78788371, filed January 10, 2006, under Trademark
Act Section 1(b), 15 U.S.C. §1051(b), alleging a bona fide
intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78788371
2
identified goods, so resembles the registered mark ANTIQUE
(in typed form) for “cognac, eau-de-vie and brandies” in
International Class 33,2 as to be likely to cause confusion,
mistake or deception. In addition, registration has been
refused based on applicant’s failure to comply with the
requirement to submit the English translation for the word
ANTYK. Trademark Rule 2.61(b); TMEP §809 (4th ed. 2005).
When the refusals were made final, applicant appealed
and filed a request for reconsideration. The examining
attorney denied the request for reconsideration and the
appeal was resumed. The appeal is fully briefed. We
affirm the refusals.
Translation Requirement
We turn first to the examining attorney’s final
refusal based on the requirement that applicant provide a
translation for the term ANTYK. In support of this
requirement the examining attorney submitted the following
translation of ANTYK from Polish to English as retrieved
from the translation website poltran.com:
ANTYK: Antique; Antiquity; Old-fashioned object;
Greco-Latin Civilization.

www.poltran.com

2 Registration No. 1638570, issued March 19, 1991; renewed.
Ser No. 78788371
3
In addition, she submitted an excerpt from a Polish-
English English-Polish dictionary translating ANTYK as
ANTIQUE, Hippocrene Practical Dictionary Polish-English
English-Polish Dictionary (1993), and a memorandum from the
USPTO translation Office, indicating that ANTYK is a Polish
word that translates to ANTIQUE in English. She also
submitted several newswire reports retrieved from the
Internet indicating that applicant imports vodka from
Poland. Applicant did not present argument against this
requirement other than to state that “for purposes of this
application [applicant] would concede that ‘Antyk’ means
‘Antique’ ....” Br. p. 13.
In view of the above, the requirement to provide a
translation for ANTYK is affirmed.
Likelihood of Confusion
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.
Ser No. 78788371
4
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
identified in the application and the cited registration.
We must consider the cited registrant’s goods as they are
described in the registration and we cannot read
limitations into those goods. See Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002); and Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1987). If the cited registration describes goods broadly,
and there is no limitation as to the nature, type, channels
of trade or class of purchasers, it is presumed that the
registration encompasses all goods of the type described,
that they move in all channels of trade normal for these
goods, and that they are available to all classes of
purchasers for the described goods. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992).
In support of her contention that applicant’s vodka is
related to registrant’s cognac, eau-de-vie and brandies,
the examining attorney submitted third-party use-based
registrations to show that numerous entities have adopted a
Ser No. 78788371
5
single mark for vodka and for cognac and brandies.3 See,
e.g., Reg. No. 2743073 (OUT OF AFRICA for, inter alia,
brandy spirits, cognac and vodka); Reg. No. 2758755 (ROYAL
VALLET for, inter alia, brandy, vodka and cognac); Reg. No.
2887345 (ESTEPA for, inter alia, brandy, vodka and cognac);
Reg. No. 2756070 (CHANTECLAIR for, inter alia, brandy,
cognac and vodka); Reg. No. 2983349 (LA CHANCE for, inter
alia, cognac, brandy and vodka); Reg. No. 2537645 (REMY RED
for, inter alia, brandies, cognac and vodka); Reg. No.
2666039 (R. JELINEK for, inter alia, brandy, cognac and
vodka); and Reg. No. 2708766 (ONISTAR for, inter alia,
vodka, brandy and cognac). See In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993). The examining attorney
argues that the registrations serve to suggest that the
goods listed therein are of a kind that may emanate from a
single source.
We find the examining attorney’s third-party
registrations persuasive evidence as to the factor of the
relatedness of the goods. Applicant’s argument that the
goods are different and used for different purposes in that
“vodka is usually a cocktail enjoyed before a meal” whereas

3 The examining attorney submitted a dictionary definition for
eau-de-vie that defines it as a type of brandy. See American
Heritage Dictionary of the English Language (4th ed. 2000)
retrieved from bartleby.com
Ser No. 78788371
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“brandies and cognac are nearly always associated with
after-dinner refreshment” (June 5, 2006 Response p. 5) is
misplaced given that it is well settled that the fact that
the goods may differ is not controlling. The issue to be
determined is whether there is a likelihood of confusion as
to the source of the goods not as to the goods themselves.
In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). In view
of the above, we find the goods to be related.
In addition, the examining attorney submitted excerpts
of websites that sell various alcoholic beverages,
including vodka, cognac and brandy in support of her
contention both that the goods are related and sold in the
same channels of trade. See, e.g., www.800spirits.com;
store.yahoo.com; beerliquors.com; and topliquor.com. While
applicant concedes that the goods would be found in the
same liquor store, applicant argues that they would be in
separate aisles. Applicant provides no evidence to support
this contention. However, as applicant admits, these goods
would be sold in the same specialized retail outlets and we
find that the channels of trade and class of purchasers
overlap.
Ser No. 78788371
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In view thereof, the du Pont factors of the similarity
of the goods, the channels of trade and class of purchasers
favor a finding of a likelihood of confusion.4
We turn now to the du Pont factor of whether
applicant’s mark and registrant’s mark are similar or
dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles. The test, under this du Pont factor, 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 terms of their overall commercial

4 We note the Board and other tribunals have often found various
alcohol products to be related and have overlapping channels of
trade. See, e.g., In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (beer and tequila closely
related; Jose Gaspar Gold v. Gaspar’s Ale); In re Majestic, supra
(brewed malt liquor and distilled tequila similar “by virtue of
the fact that both are alcoholic beverages that are marketed in
many of the same channels of trade to many of the same
consumers”); The Fleischmann Distilling Corp. v. Maier Brewing
Co., 314 F.2d 149, 160, 136 USPQ 508, 518 (9th Cir. 1963) (beer
and whiskey “being both within the alcoholic beverage industry,
are ‘so related as to fall within the mischief which equity
should prevent.’”); White Horse Distillers, Ltd. V. Ebling
Brewing Co., Inc., 30 USPQ 238 (CCPA 1936) (scotch whiskey and
ale are “goods of the same descriptive properties within the
meaning of the statute”); Somerset Distilling Inc. v. Speymalt
Whiskey Distributors Ltd., 14 USPQ2d 1539, 1542 (TTAB 1989)
(“scotch whiskey, gin and vodka are all closely related, in that
they are what might be characterized as basic alcoholic
beverages”); and In re AGE Bodegas Unidas, S.A., 192 USPQ 326
(TTAB 1976) (“there is clearly a relationship between wine and
whiskey, both of which alcoholic beverages are sold through the
same specialized retail outlets to the same purchasers, and are
frequently bought at the same time”).
Ser No. 78788371
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impression that confusion as to the source of the goods
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). Finally, “[u]nder the
doctrine of foreign equivalents, foreign words from common
languages are translated into English to
determine...similarity of connotation in order to ascertain
confusing similarity with English word marks.” Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1377 (Fed. Cir. 2005).
As shown above, the examining attorney has established
that ANTYK is the Polish word for ANTIQUE in English.
Further, she has shown that an “appreciable segment of
American consumers” speak Polish. See excerpt from
www.census.gov attached to Final Office Action.
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, supra at 1696, quoting In re Pan Tex Hotel Corp.,
190 USPQ 109, 110 (TTAB 1976). See also In re Thomas, 79
USPQ2d 1021 (TTAB 2006). “The ‘ordinary American
purchaser’ in this context refers to the ordinary American
Ser No. 78788371
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purchaser who is knowledgeable in the foreign language.”
In re Thomas, supra at 1024.
We find that ANTYK is the exact translation of ANTIQUE
and that the mark would be translated by those who are
familiar with the Polish language. This is not a case
where the mark would not be translated because of the
inherent nature of the mark. See In re Thomas, supra,
citing, In re Tia Maria, Inc. 188 USPQ 524 (TTAB 1984). We
acknowledge that this doctrine is not absolute and “where
the only similarity between the marks is in connotation, a
much closer approximation is necessary...to justify a
refusal to register on that basis alone.” In re Sarkli,
721 F.2d 353, 220 USPQ 111, 113 (Fed. Cir. 1983) (REPECHAGE
not confusingly similar to SECOND CHANCE). See also In re
Buckner Enterprises Corp., 6 USPQ2d 1316 (TTAB 1987)
(PALOMA, meaning both “dove” and “pigeon,” not confusingly
similar to DOVE). However, in this case, the only
translation of ANTYK is ANTIQUE, the marks sound the same,
and there are similarities in appearance inasmuch as both
begin with ANT and end with phonetic equivalents.
Moreover, applicant’s mark may be pronounced
identically to registrant’s mark. RE/MAX of America, Inc.
v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980)
(similarity in sound alone may be sufficient to support a
Ser No. 78788371
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finding of likelihood of confusion). We are not persuaded
by applicant’s argument that ANTYK is “considerably closer
to the word ‘Antic’....” It is settled that there is no
correct pronunciation of a trademark because it is
impossible to predict how the public will pronounce a
particular mark. Kabushiki Kaisha Hattori Tokeiten v.
Acuotto, 228 USPQ 461 (TTAB 1985). Thus, even if ANTYK may
be pronounced ANTIC it also may be pronounced ANTIQUE,
therefore, for our purposes they are phonetically
identical. Even without translation, when spoken, the
marks have the same meaning and connotation in connection
with these related goods.
Taking into consideration the foreign and phonetic
equivalency of the marks, and their similarities in
connotation, appearance and overall commercial impression,
we find the marks to be similar and this factor weighs in
favor of a finding of likelihood of confusion.
Applicant’s argument that the mark ANTIQUE is weak is
not supported by the record. Applicant has submitted TESS
printouts of three registrations.5 One has been canceled
under Section 8 and, thus, is of no probative value.

5 The printout of a report from TESS listing various applications
and registrations is of little to no probative value. As to the
applications, they are only evidence of the fact that they were
filed. With regard to the registrations, the list does not
Ser No. 78788371
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Another one is for carbonated beverages which are more
distant from vodka, brandy and cognac. The last one is for
the mark YALUMBA ANTIQUE TAWNY for wine. One third-party
registration is hardly evidence that the term ANTIQUE has
some meaning in the field of alcoholic beverages such that
minor differences between marks allow consumers to
distinguish the source of the goods. See AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 1406, 177
USPQ 268, 269-70 (CCPA 1973).
Applicant contends that the purchasers of the
respective goods are “usually more sophisticated consumers
who will know that producers of vodka do not produce brandy
just as wine producers do not brew beer.” June 5, 2006
Response p. 5. Applicant provides no evidentiary support
for this contention. Moreover, applicant’s goods and
channels of trade are not limited. Therefore, we must
consider applicant’s potential purchasers to include all
usual purchasers of the goods, and make our determination
on the least sophisticated. In this case that would
include members of the general public who are ordinary
purchasers. In re Bercut-Vandervoort & Co., 229 USPQ 763,

provide the goods or services for which the marks were
registered.
Ser No. 78788371
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765 (TTAB 1986) (average ordinary wine consumer must be
looked at in considering source confusion).
Finally, applicant states that “the cited registration
has been used since 1991 [and there] has been no confusion
(and not a whisper of comment from the Registrant).” Br.
p. 12. We note that the application is based on an
intention to use the mark and there is no statement or
evidence in the record that the mark in the application has
been used in commerce. Therefore, this factor carries no
weight. In any event, The Federal Circuit has addressed
the question of the weight to be given to an assertion of
no actual confusion by an applicant in an ex parte
proceeding:
With regard to the seventh DuPont factor, we
agree with the Board that Majestic's
uncorroborated statements of no known instances
of actual confusion are of little evidentiary
value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating
that self-serving testimony of appellant's
corporate president's unawareness of instances of
actual confusion was not conclusive that actual
confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if
not conclusive, of a high likelihood of
confusion. The opposite is not true, however.
The lack of evidence of actual confusion carries
little weight, [citation omitted], especially in
an ex parte context.

Ser No. 78788371
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Majestic Distilling, 65 USPQ2d at 1205. With regard
to the other du Pont factors mentioned by applicant,
they do not outweigh the factors discussed above.

Decision: The refusal to register under Section
2(d) and the refusal based on the requirement for a
translation are affirmed.