Comparison of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). Similarity in any one of these elements may be sufficient to find the marks confusingly similar. In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Profls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In this case, the applicant seeks to register the English-language equivalent of a registered mark. Under the doctrine of foreign equivalents, a mark in a foreign language and a mark that is its English equivalent may be held to be confusingly similar. TMEP §1207.01(b)(vi); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006). Therefore, marks comprised of foreign words are translated into English to determine similarity in meaning and connotation with English word marks. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Equivalence in meaning and connotation can be sufficient to find such marks confusingly similar. See In re Aquamar, Inc., 115 USPQ2d at 1127-28; In re Thomas, 79 USPQ2d at 1025.
The doctrine is applicable when it is likely that an ordinary American purchaser would stop and translate the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696; TMEP §1207.01(b)(vi)(A). The ordinary American purchaser refers to all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English. In re Spirits Intl, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024 (citing J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §23:26 (4th ed. 2006), which states [t]he test is whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent.).
Generally, the doctrine is applied when the English translation is a literal and direct translation of the foreign wording. TMEP §1207.01(b)(vi); see In re Aquamar, Inc., 115 USPQ2d at 1127-28 (holding MARAZUL for imitation crab meat and frozen and fresh processed fish and seafood likely to be confused with BLUE SEA for non-live and frozen fish, where mar azul is the Spanish equivalent of the English word blue sea); In re Thomas, 79 USPQ2d at 1021 (holding MARCHE NOIR for jewelry likely to be confused with the cited mark BLACK MARKET MINERALS for retail jewelry and mineral store services where evidence showed that MARCHE NOIR is the exact French equivalent of the English idiom Black Market, and the addition of MINERALS did not serve to distinguish the marks); In re Ithaca Indus., Inc., 230 USPQ 702, 704-05 (TTAB 1986) (holding LUPO for mens and boys underwear likely to be confused with the cited registration for WOLF and design for various clothing items, where LUPO is the Italian equivalent of the English word wolf).
Here, the attached translation evidence establishes that the cited registration means "beyond good and evil" in German, which is a common, modern language spoken by many people in the United States. See, e.g In re Jos. Schlitz Brewing Co., 223 USPQ 45 (TTAB 1983). The examining attorney has also attached evidence from
www.census.gov establishing that German is spoken by approximately 1,080,000 people in the United States, which indicates that it is a common, modern language to which the doctrine of foreign equivalents is applicable. Thus, the applicant's mark and the cited registration are identical in terms of their meaning. As such, the relevant consumers would likely believe that the applicant's mark and the registrant's mark emanate from the same source, and that the applicant's mark is simply the registrant's mark translated into English. Therefore, the marks have highly similar or identical commercial impressions.
Therefore, this factor favors a finding of a likelihood of confusion.
Comparison of the Goods and Services
The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) ([E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.); TMEP §1207.01(a)(i).
The respective goods and/or services need only be related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
In this case, the cited registration covers video games and the application covers a variety of entertainment and information services featuring video games and related activities. The attached Internet evidence consists of third-party websites of entities involved in sales of video games and provision of streaming video game services, entertainment services involving video game competitions and live performances by video game players, and information services in the field of video games. For example, the evidence from
www.valvesoftware.com and
www.geekwire establishes that VALVE® produces video games and offers online video game services, information regarding video games and the same types of video game entertainment services identified in the applicant's application. Similarly, the evidence from
www.xbox.com establishes that video games, online video game services, video game tournaments, and information about video games is provided under the XBOX® and MICROSOFT® marks. Finally, the evidence from
www.playstation.com and
www.playstationlifestyle.net establishes that video games, online video game services, video game information services, and video game tournament services are offered under the PLAYSTATION® mark.
This evidence establishes that the same entity commonly manufactures video games and provides the relevant video game services identified in the application, and markets these goods and services under the same mark through the same trade channels and to the same classes of consumers. Therefore, applicants and registrants goods and/or services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).
Thus, this factor favors a finding of a likelihood of confusion.
Because the marks are identical in terms of their meaning and commercial impressions, and the goods and services are highly related, registration of the applied-for mark must be refused under Section 2(d) of the Trademark Act.
Although applicants mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
