Coto Interpreting & Translating, Inc.v.Languages Unlimited, Inc.

Trademark Trial and Appeal Board

Jan 4, 2001

No. 92028224 (T.T.A.B. Jan. 4, 2001)

1/4/01 Paper No. 11
TLW
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Coto Interpreting & Translating, Inc.
v.
Languages Unlimited, Inc.
_____
Cancellation No. 28,224
_____
Theresa W. Middlebrook of Christie, Parker & Hale, LLP for
Coto Interpreting & Translating, Inc.
Wm. Cates Rambo of Porter, Wright, Morris & Arthur for
Languages Unlimited, Inc.
_____
Before Simms, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Coto Interpreting & Translating, Inc. (petitioner), a
California corporation, seeks cancellation of the registered
mark ARABIC TO ZULU for the following services:
Educational services, namely, conducting seminars
and individual instruction in foreign languages;
conducting seminars to make people aware of
differences of other cultures, in class 41.
Providing interpretation of foreign languages
in spoken form, foreign language document
translation, in class 42.1
1 Registration No. 2,125,372, issued December 30, 1997, based
upon an application filed November 21, 1996, claiming use since
January 1, 1994.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 28,224
2
The registration is owned by Languages Unlimited, Inc.
(respondent), an Ohio corporation. In the petition,
petitioner asserts that it has used the mark ARABIC TO ZULU
since at least as early as January 15, 1993, prior to
respondent’s use, in connection with foreign language
translation services, and that respondent’s mark so
resembles petitioner’s mark as to be likely to cause
confusion, to cause mistake or to deceive. Petitioner also
asserts that respondent’s mark is disparaging and falsely
suggests a connection with petitioner.2 In its answer,
respondent has denied the essential allegations of the
petition for cancellation.
Only petitioner took testimony and filed a brief
herein. No oral hearing was requested.
According to the testimony of Daniel Trevor,
petitioner’s president, petitioner began using the mark
“From Arabic to Zulu” as early as January 15, 1993, when
petitioner conducted a mailing of brochures advertising its
interpreting and translation services. The mark has been
used on envelopes, letterheads, business cards and on such
collateral merchandise items as pens and mugs. Petitioner
has also used the mark in connection with a Yellow Pages
advertisement. Petitioner has also promoted its services
2 In its brief, petitioner argues only the issue of likelihood of
confusion. Accordingly, no further consideration will be given
Cancellation No. 28,224
3
using the mark at various trade shows since the fall of
1993. Petitioner has promoted its services to attorneys,
insurance companies, doctors, the entertainment industry,
public relations firms and to large corporations.
Petitioner has also filed an application to register the
mark.
Petitioner has established that it used the mark “From
Arabic to Zulu” since prior to the earliest date on which
respondent may rely —- November 21, 1996 -- the filing date
of the application which matured into respondent’s
registration. Presto Products Inc. v. Nice-Pak Products
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). Since the respective
marks are virtually identical and because respondent’s
foreign language educational and translation services are
closely related, if not identical, to petitioner’s foreign
language translation services, the contemporaneous use of
these marks will obviously be likely to cause confusion.
Decision: The petition for cancellation is granted and
respondent’s registration will be cancelled in due course.
to petitioner’s claims of disparagement and false suggestion of a
connection.