Biflex Int’l., Inc.v.Superflex S.A. de C.V.

Trademark Trial and Appeal Board

May 2, 2001

OPP (T.T.A.B. May. 2, 2001)

5/2/01 Paper No. 47
EWH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________
Trademark Trial and Appeal Board
____________________
Biflex International, Inc.
v.
Superflex S.A. de C.V.
_____________________
Opposition No. 106,617
to application Serial No. 74/731,144
filed on September 19, 1995.
____________________
David B. Kirschstein of Kirschstein, Ottinger, Israel &
Schiffmiller, P.C. for Biflex International, Inc.
John M. Rannells of Baker & Rannells for Superflex S.A. de
C.V.
_____________________
Before Hanak, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Superflex S.A. de C.V. (applicant) seeks to register
BERLINA in typed drawing form for “underwear, namely,
panties, bras, camisoles, robes, shirts, sleepwear and
loungewear.” The intent-to-use application was filed on
September 19, 1995.
Biflex International, Inc. (opposer) filed a notice of
opposition alleging that long prior to September 19, 1995,
it both used and registered the mark BERLEI for women’s
intimate apparel, including brassieres. Continuing, opposer
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opp. No. 106,617
further alleged that the contemporaneous use of the mark
BERLINA by applicant and of the mark BERLEI by opposer for
goods which, in part, are identical is likely to result in
confusion, mistake and deception. While the notice of
opposition did not make specific reference to Section 2(d)
of the Trademark Act, it is clear that this is the basis for
the opposition.
Applicant filed an answer which denied the pertinent
allegations of the notice of opposition. Both parties made
of record evidence and filed briefs. Neither party
requested a hearing.
Both parties are in agreement as to what constitutes
the record in this proceeding. Opposer summarizes the
record at pages 2 and 3 of its brief. Applicant summarizes
the record at pages 1-3 of its brief. The parties are also
in agreement that, as stated by applicant at pages 1 and 3
of its brief, “there are no objections of record to any of
the evidence submitted by either party.”
In addition, applicant concedes at page 1 of its brief
that “priority is not an issue.” It rests with opposer. In
this regard we note that opposer has properly made of record
a certified status and title copy of its Registration Number
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Opp. No. 106,617
268,459 for the mark BERLEI depicted in typed drawing form
for “corsets and brassieres.” This registration issued on
March 18, 1930 with a claimed first use date of October
1917.
Thus, the only issue before this Board is whether there
is a likelihood of confusion resulting from the
contemporaneous use of opposer’s mark and applicant’s mark.
In any likelihood of confusion analysis, two key, although
not exclusive, considerations are the similarities of the
goods and the similarities of the marks. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976) (“The fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.”).
Considering first the goods, they are, in part,
absolutely identical. Applicant seeks to register its mark
BERLINA for, among other goods, bras. Opposer’s
registration for its mark BERLEI includes brassieres.
Applicant has never argued that the words “bras” and
“brassieres” are not synonyms. Moreover, the word
“brassiere” is defined as meaning “same as bra.” Webster’s
3
Opp. No. 106,617
New World Dictionary (1975).
Considering next the marks, we note at the outset that
when the goods of the parties are identical as is the case
here, “the degree of similarity [of the marks] 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). This is
particularly true when not only are the goods identical, but
in addition they are inexpensive items (such as bras)
purchased by ordinary consumers exercising limited care.
See Specialty Brands, Inc. v. Coffee Bean Distributors,
Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984) and
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289, 1290 (Fed. Cir. 1984).
Turning to a consideration of the marks, we note that
marks are compared in terms of visual appearance,
pronunciation and meaning or connotation. In terms of
visual appearance, we find that the two marks are very
similar. In both marks, the first four letters (BERL) are
absolutely identical. Moreover, the letter “I” appears as
one of the final two letters in opposer’s mark and as one of
the final three letters in applicant’s mark.
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Opp. No. 106,617
In terms of pronunciation, applicant argues that to
persons familiar with Latin based languages such as Spanish,
Italian or Portuguese or that to persons familiar with
Germanic language pronunciations “the two marks are readily
distinguishable in pronunciation.” (Applicant’s brief pages
5-7). We do not understand applicant’s reasoning. The
question before us is how the two marks will be pronounced
in English. In this regard, applicant acknowledges “the
general rule that there simply is no correct or proper
pronunciation of trademarks in English and that this case is
no exception.” (Applicant’s brief page 8). Applicant is
absolutely correct. It is long been recognized that “there
is no correct pronunciation of a trademark.” In re Belgrade
Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1967).
We accept opposer’s argument that the last two letters
of its mark BERLEI would typically be pronounced with the
sound of “ee.” Moreover, we accept opposer’s argument that
the letter “I” in applicant’s mark BERLINA would likewise be
pronounced with the sound of “ee.” Applicant has contended,
as will be discussed at greater length later, that Berlina
is a feminine given name and a surname. See applicant’s
brief page 9. Indeed, applicant’s director of operations
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Opp. No. 106,617
testified that while in the United States, he “met a girl
whose name was Berlina,” and this is how applicant’s mark
was derived. (Gonzalez deposition page 8). Assuming for the
sake of argument the correctness of applicant’s position
that its mark BERLINA would be perceived as a feminine name,
then it follows in English that the “I” in applicant’s mark
would be pronounced with the sound of “ee” just as the
letter “I” in the following feminine names is pronounced
with the sound of “ee”: Nina, Tina, Christina and Sabrina.
In short, given the fact that there is no correct
pronunciation of a trademark, one reasonable manner of
pronouncing opposer’s mark is as BERLEE and one reasonable
manner of pronouncing applicant’s mark is BERLEENA. When so
pronounced, the two marks are quite similar in that the only
difference is that applicant’s mark has the final NA sound.
Finally, in terms of meaning or connotation, opposer
and applicant agree that opposer’s mark BERLEI is a coined
term which has no meaning in English. (Applicant’s brief
page 10; opposer’s brief page 6). As for applicant’s mark
BERLINA, we note that during the application process
applicant stated in a paper dated March 26, 1996 the
following: “The applicant submits that BERLINA has no
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Opp. No. 106,617
significance in the relevant trade or industry. Also, it
has no meaning in any foreign language.” In a paper dated
December 20, 1996 applicant stated that Berlina is a “given
feminine name.”
Now, however, applicant argues that BERLINA is a given
name and a surname; that BERLINA also engenders an
association with the German city of Berlin; and that BERLINA
refers to a “sedan style of automobile” or a “saloon car.”
(Applicant’s brief page 9). We find applicant’s arguments
to be unpersuasive. This Board has consulted numerous
dictionaries and has found no listing for the word
“berlina.” The words “berline” and “berlin” are defined as
“a limousine with a glass window between the front and rear
seats.” The American Heritage Dictionary for the English
Language (1992). We seriously doubt that all but an
insignificant number of American consumers would understand
the meanings of these obscure words “berline” or “berlin.”
Moreover, we do not believe that most Americans would
recognize BERLINA as a feminine name, nor would they
recognize BERLINA as referring to the world famous city of
Berlin. In short, both applicant’s mark and opposer’s mark
are, to the vast majority of Americans, arbitrary in nature.
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Opp. No. 106,617
In other words, consumers would not be able to distinguish
the two marks based on the fact that one mark has a certain
meaning (or no meaning) and the other mark has another
meaning.
Overall, we find that the marks are very similar in
terms of visual appearance and pronunciation, and that
further the vast majority of Americans would not be able to
distinguish the two marks based on differences in meaning or
connotation.
Given the fact that the marks are used on identical
inexpensive consumer goods which are purchased with minimal
care, we find that the two marks are similar enough such
that their use is likely to result in confusion.
Finally, we would like to address three arguments
raised by applicant. First, applicant argues that the
record is devoid of any evidence of actual confusion. This
is correct. However, two points deserve to be mentioned.
First, evidence of actual confusion is extremely hard to
come by, and evidence of actual confusion is not a
prerequisite to a finding of likelihood of confusion.
Second, opposer has shown that its United States sales of
all of its BERLINA products for the three year period from
8
Opp. No. 106,617
1996 to 1998 come to less than $10 million. In addition,
applicant has argued that its sales “vastly exceed the sales
of opposer’s products under opposer’s mark during the same
period.” (Applicant’s brief page 14). However, applicant
has failed to show the total sales of all brands of bras in
the United States, not to mention the sales of all brands of
other products on which opposer has used its BERLINA mark.
It is our opinion that applicant’s sales figures are, in
terms of the United States market, fairly insignificant and
that applicant has acknowledged that opposer’s sales are
even more insignificant. In short, it would appear that
there has been a very minimal chance for actual confusion to
have occurred.
Second, applicant argues at page 15 of its brief that
“there is no evidence of wrongful intent on the part of the
applicant.” This is true. However, it is clear that
wrongful intent is not necessary for a finding of likelihood
of confusion. 3 J. McCarthy, McCarthy on Trademarks and
Unfair Competition Section 23:107 (4th ed. 2000).
Finally, applicant argues that the mere list of 43
purported third-party registrations and applications for
various items of apparel wherein the marks begin with the
9
Opp. No. 106,617
formatives BER, BUR, BERL or BURL “are relevant when
evaluating likelihood of confusion.” According to
applicant, “consumers, being accustomed to such uses, are
conditioned to distinguish between names by minor
differences.” (Applicant’s brief page 16 emphasis added).
Applicant’s argument is factually and legally
deficient. It is factually deficient because most of the
marks on applicant’s list of purported registrations and
applications are extremely far removed from the marks at
issue here in terms of visual appearance and pronunciation.
Some of the marks which applicant has listed are as follows:
ANNE MARIE BERETTA; BERKSHIRE; MICHELLE BERGERON M and
MORTON BERNARD. Applicant’s argument is legally deficient
because third-party registrations and applications do not
establish that the marks have been used, and they certainly
do not establish that the marks have been used to such an
extent so as to condition the public to distinguish between
marks with minor differences. See Smith Bros. Mfg. Co. v.
Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA
1973).
Decision: The opposition is sustained.
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