Fédération Internationale de Natation

Trademark Trial and Appeal Board

Dec 5, 2008

No. 79035427 (T.T.A.B. Dec. 5, 2008)

Mailed:
5 December 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fédération Internationale de Natation
________

Serial No. 79035427
_______

James R. Menker of Holley & Menker, P.A. for Fédération
Internationale de Natation.

Renee Servance, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______

Before Drost, Cataldo, and Bergsman, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On December 12, 2006, Fédération Internationale de
Natation (applicant) applied to register the mark FINA in
standard character form on the Principal Register for goods
ultimately identified as “jellies, jams, compotes; eggs,
milk and milk products, namely, dairy products excluding
ice cream, ice milk and frozen yogurt” in Class 29. The
application (Serial No. 79035427) is an extension of
protection under the provision of 15 U.S.C. § 1141f(a),
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 79035427
2
Section 66a of the Trademark Act with a priority date of
July 6, 2006.1
The examining attorney has refused registration on the
ground that applicant’s mark, when used on the goods, is
confusingly similar to the registered mark LA FINA, in
typed or standard character form, for “margarine” in Class
29 under Section 2(d) of the Trademark Act. 15 U.S.C.
§ 1052(d).2 The registration translates the mark as “The
Fine One.”
After the examining attorney made the refusal final,
this appeal followed.
We begin our likelihood of confusion analysis by
considering the evidence as it relates to the factors set
out by the Federal Circuit and its predecessor in cases
such as In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind

1 The application originally contained a number of classes. It
was divided and seventeen classes in the child application were
eventually published. Goods in Class 18 were also included in
the application at issue in this appeal, but applicant has not
appealed the refusal for the Class 18 goods. See Examining
Attorney’s Brief at unnumbered pp. 4-5.
2 Registration No. 2730223 issued June 24, 2003.
Ser. No. 79035427
3
that “[t]he fundamental inquiry mandated by § 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods [or services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We begin by addressing the “first DuPont factor [that]
requires examination of ‘the similarity or dissimilarity of
the marks in their entireties as to appearance, sound,
connotation and commercial impression.’” Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting
du Pont, 177 USPQ at 567). The marks in this case are LA
FINA and FINA. Both marks are in typed or standard
character form so there is no difference between the marks
based on the style of the marks. The marks are obviously
the same to the extent that they contain the word FINA.
The only difference is the registrant’s addition of the
term “LA.” The examining attorney argues (Brief at
unnumbered p. 7) that “Cassell’s Italian Dictionary defines
‘fino’ (the feminine being ‘fina’) as ‘fine,’ along with
other meanings. The evidence of record establishes that
the term ‘Fina’ means ‘fine’ or ‘fine one.’ Cassell’s
Ser. No. 79035427
4
Italian Dictionary 201 (1967). The term ‘La’ indicates the
definite article ‘the.’ Id at 284.”3
On the other hand, applicant argues (Brief at 5) that:
[T]he marks are similar in that they both include the
wording FINA. Nevertheless, the marks have very
different overall commercial impressions. As
established by the evidence of record, the applied-for
mark is the well-known acronym for the Fédération
Internationale de Natation. Also as established by
the evidence of record, the registered mark is the
Spanish idiom LA FINA which translates into English as
“the fine one.”

However, we cannot place much weight on the term “La.”
“The Spanish article ‘La,’ which means ‘The,’ cannot be
said to have any distinguishing effect.” In re Central
Soya Co., Inc., 220 USPQ 914, 916 (TTAB 1984).4 The Spanish
or Italian term “La,” like its English equivalent, is not a
term that is significant in distinguishing one mark from
another in a likelihood of confusion analysis. See also In
re Narwood Productions, Inc., 223 USPQ 1034, 1034 (TTAB
1984) (“There is no doubt that the word portion of
appellant’s mark and the mark subject of the cited

3 We take judicial notice of these definitions as well as the
ones that are subsequently cited. University of Notre Dame du
Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
4 Ultimately, the board in that case determined that there was no
likelihood of confusion because, under Jacobs v. International
Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982),
to establish likelihood of confusion between food products and
restaurant services “a party must show something more than that
similar even identical marks are used”).
Ser. No. 79035427
5
registration are virtually identical since both consist
primarily of the term ‘music makers.’ The fact that the
presentation in the mark of the cited registration is as a
single word rather than two words is obviously
insignificant in determining the likelihood of confusion.
So also is the fact that appellant’s mark, as it is sought
to be registered, includes the definite article ‘the’”).
Accord Jay-Zee, Inc. v. Hartfield-Zodys, Inc., 207 USPQ 269
(TTAB 1980) (“Since the psychological and marketing impact
of petitioner’s mark in its earlier version clearly was
derived from the word ‘IMAGE,’ the omission of the word
‘THE’ (the definite article serving merely to emphasize
‘IMAGE’) from the later version did not interrupt the
continuity of use”); and United States National Bank of
Oregon v. Midwest Savings and Loan Association, 194 USPQ
232, 236 (TTAB 1977) (“The definite article ‘THE’ likewise
adds little distinguishing matter because the definite
article most generally serves as a means to refer to a
particular business entity or activity or division thereof,
and it would be a natural tendency of customers in
referring to opposer’s services under the mark in question
to utilize the article ‘THE’ in front of ‘U-BANK’ in view
of their uncertain memory or recollection of the many marks
Ser. No. 79035427
6
that they encounter in their everyday excursion into the
marketplace”).
Applicant has submitted evidence from Wikipedia that
the Fédération Internationale de Natation (FINA) “is
recognized by the International Olympic Committee for
administering international competition in the aquatic
sports… swimming, diving, synchronized swimming, water polo
and open water swimming.” Based on this, applicant argues
that “the meaning of the applied-for mark is unquestionably
that of an acronym representing the French name, Fédération
Internationale de Natation, or its English equivalent,
International Swimming Federation. The meaning is in stark
contrast to the meaning of the registered mark, ‘the fine
one.’” Brief at 7 (footnote omitted).
We do not find applicant’s argument to be persuasive.
First, the marks FINA and LA FINA are very similar in sound
and appearance. The difference created by the presence of
the term “La” in registrant’s mark does not result in
dissimilar marks. Similarity in any one of the elements of
sound, appearance, meaning, or commercial impression is
sufficient to support a determination of likelihood of
confusion. See Krim-Ko Corp. v. The Coca-Cola Co., 390
F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient
if the similarity in either form, spelling or sound alone
Ser. No. 79035427
7
is likely to cause confusion”) and In re White Swan Ltd., 8
USPQ2d 1534, 1535 (TTAB 1988) (“In appropriate cases, a
finding of similarity as to any one factor (sight, sound or
meaning) alone ‘may be sufficient to support a holding that
the marks are confusingly similar’”) (citations omitted)).
Therefore, even if the marks had different meanings, it
would not necessarily mean there was no likelihood of
confusion.
However, in this case we cannot agree with applicant
that many purchasers would find that the marks’ meanings
are different. The goods in this case are margarine and,
inter alia, dairy products that would include butter. The
purchasers would include all types of purchasers, including
those that are not well-acquainted with the Italian or
Spanish languages and those that have no interest in
aquatic sports. To these purchasers, the terms would
appear as similar words that may have some connection with
the English word “fine.” Also, inasmuch as applicant’s
mark is in standard character form, it may be displayed in
the same typed style, including “Fina.” Therefore, even
purchasers familiar with applicant may not recognized the
word displayed as “Fina” as an acronym and may instead
assume that there is an association with registrant’s “La
Fina” mark when the products are related.
Ser. No. 79035427
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Therefore, we conclude that applicant’s and
registrant’s marks are very similar in sound, appearance,
meaning, and commercial impression.
The next factor we consider is whether applicant’s and
registrant’s goods are related.
It is not necessary that these respective goods and
services be identical or even competitive in order to
support a finding of likelihood of confusion. Rather,
it is sufficient that the goods and services are
related in some manner, or that the circumstances
surrounding their marketing are such, that they would
be likely to be encountered by the same persons in
situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate
from or are in some way associated with the same
source or that there is an association or connection
between the sources of the respective goods or
services.

In re Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001).
In this case, registrant’s goods are “margarine,”
while applicant’s goods are “jellies, jams, compotes; eggs,
milk and milk products, namely, dairy products excluding
ice cream, ice milk and frozen yogurt.” Applicant’s milk
and milk products, namely, dairy products excluding ice
cream, ice milk and frozen yogurt, include butter within
this identification of goods. In re Elbaum, 211 USPQ 639,
640 (TTAB 1981)(“[W]here the goods in a cited registration
are broadly described and there are no limitations in the
identification of goods as to their nature, type, channels
of trade or classes of purchasers, it is presumed that the
Ser. No. 79035427
9
scope of the registration encompasses all goods of the
nature and type described, that the identified goods move
in all channels of trade that would be normal for such
goods, and that the goods would be purchased by all
potential customers”).
A dairy is “an establishment as a room, building, or
buildings, where milk and cream are kept and where butter
and cheese are made.” Butter is the “fatty portion of
milk, separated as a soft whitish or yellowish solid when
milk or cream is agitated or churned.” The Random House
Dictionary of the English Language (unabridged) (2d ed.
1987). Applicant has submitted a definition of margarine
as a “fatty solid butter substitute consisting of a blend
of hydrogenated vegetable oils mixed with other
ingredients, as emulsifiers, vitamins and coloring
matters.” New Riverside University Dictionary (1994)
(emphasis added). The dictionary entry goes on to explain
that “Margarine is naturally white; it is colored yellow in
imitation of the natural color of butter.” See also
Webster’s Third New International Dictionary of the English
Language (Unabridged) (Margarine is “a food product that is
used as a substitute for butter and made from a blend of
refined oils, esp. vegetable oils (as cottonseed oil,
soybean oil) to which other ingredients (as salt,
Ser. No. 79035427
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emulsifiers, vitamin A, vitamin D) are added and that is
churned with ripened skim milk so as to have a consistency
that permits ready spreading”).5
The examining attorney argues that “margarine and
other dairy goods such as eggs, milk, butter, and other
dairy products are sold in the same channels of trade.”
Denial of Request for Reconsideration dated May 21, 2008 at
3. The examining attorney has also submitted evidence that
butter and margarine are not merely sold in the same stores
but they are listed together. See Netgrocer.com (“Butter &
Margarine”); Safeway listing (under “Butter & Margarine” –
Butter Sticks, Liquid Margarine, Margarine Sticks, Soft
Butter, and Soft Margarine); and Albertson’s (Organic
Butter and Margarine). Ultimately, we conclude that
margarine and butter are related inasmuch as purchasers are
likely to believe that, when very similar marks appear on
butter and margarine (a butter substitute), there is some

5 Applicant maintains that the examining attorney argues that
“margarine is a dairy product. However, this is factually
incorrect.” Brief at 8. Even if margarine is not a dairy
product, it does not mean that butter and butter substitutes are
not related products, especially when margarine is designed to
imitate butter. We add that, while strictly speaking, margarine
is not a dairy product because it does not appear to be made in a
dairy, it is apparently listed under “Dairy” and marketed with
butter. See, e.g., Netgrocer.com (first listing under “Dairy” is
“Butter & Margarine”). See also In re Pollio Dairy Products
Corp., 8 USPQ2d 2012, 2015 (TTAB 1988) (“All of these products
[including registrant's margarine] may be found in the dairy
cases”).
Ser. No. 79035427
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relationship between the sources of the products.6 Accord
Pollio Dairy, 8 USPQ2d at 2015 (cheese and margarine are
related products); Mead Johnson & Co. v. Lever Brothers
Co., 152 USPQ 769, 770 (TTAB 1967) (“Opposer’s dietary
foods and margarine, particularly a low-calorie margarine,
are obviously closely related in that they are both food
products which are sold through the same trade channels to
the same class of purchasers”), aff’d, 411 F.2d 213, 162
USPQ 213, 214 (CCPA 1969) (The CCPA agreed that the “goods
of the parties are closely related”).
Furthermore, we find that the channels of trade and
purchasers, who would not necessarily be sophisticated or
careful purchasers, would overlap. As indicated above,
margarine and dairy products such as butter are sold in the
same section of stores, and purchasers who purchase butter
are also potential purchasers of margarine for reasons such
as possible cost savings or dietary reasons.
When we consider that the marks here, FINA and LA FINA
are very similar and the goods are related, we conclude
that there are is a likelihood of confusion.
Decision: The refusal to register is affirmed.

6 A refusal under Section 2(d) is appropriate if any of the goods
within applicant’s description of its goods is related to
registrant’s goods. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).