La Peregrina Limited

Trademark Trial and Appeal Board

Mar 14, 2008

No. 78676199 (T.T.A.B. Mar. 14, 2008)

Mailed: 3/14/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re La Peregrina Limited
________

Serial No. 78676199
_______

Thomas T. Chan and Lisa A. Karczewski of Chan Law Group for
La Peregrina Limited.

Evelyn Bradley, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

La Peregrina Limited filed an application to register
the mark LA PEREGRINA for “jewellery [sic]; precious
stones; pearls in loose pieces, pairs and strands; pearl
jewellery.”1 The application includes the following
statement: “The English translation of the wording ‘LA
PEREGRINA’ is ‘THE PILGRIM.’”

1 Application Serial No. 78676199, filed July 22, 2005, alleging
first use anywhere on September 21, 1999, and first use in
commerce on September 26, 1999.
THIS OPINION
IS A PRECEDENT OF THE
T.T.A.B.
Ser No. 78676199
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when applied
to applicant’s goods, so resembles the previously
registered mark PILGRIM for “jewelry” (in International
Class 14) and “brooches and hair clips” (in International
Class 26)2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
The examining attorney maintains that the marks are
essentially the same in that “la peregrina,” a Spanish term
meaning “the pilgrim,” is the foreign equivalent of the
cited mark. The examining attorney points to the sizeable
segment of the American population that speaks Spanish,
relying on evidence indicating that Spanish is the second
most common language in the United States after English.
Thus, the examining attorney contends, the average consumer
in this country would be likely to translate the foreign
term into its English equivalent. As to the goods, the
examining attorney finds that they are related and, in
connection therewith, has introduced third-party
registrations. In further support of the refusal, the

2 Registration No. 2571488, issued May 21, 2002; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
Ser No. 78676199
3
examining attorney submitted an on-line dictionary listing
for “la peregrina,” an excerpt from applicant’s website, an
excerpt from Wikipedia, and excerpts from various third-
party websites.
Applicant’s principal argument in urging reversal of
the refusal is that the marks create different commercial
impressions, and that the doctrine of foreign equivalents
does not apply in this case because an American purchaser
is unlikely to translate the foreign mark, but rather “will
simply accept it as it is.” Applicant contends that many
Spanish-speaking individuals in this country are not fluent
in English, and that even those bilingual in English-
Spanish would not stop and translate applicant’s mark into
its English equivalent. In this connection, applicant
introduced the declarations of four bilingual individuals.
With respect to the goods, applicant contends that they are
not related, pointing to differences between the respective
jewelry as gleaned from registrant’s website. Applicant
further argues that purchase of the involved goods involves
careful consideration by sophisticated individuals. In
additional support of its position applicant submitted an
excerpt from Wikipedia, and excerpts from third-party
websites.
Ser No. 78676199
4
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
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first turn to a consideration of the goods. It is
well settled that the question of likelihood of confusion
must be determined based on an analysis of the goods
recited in applicant’s application vis-à-vis the goods
identified in the cited registration. In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993);
and Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Where the goods in
the application at issue and/or in the cited registration
are broadly identified as to their nature and type (as in
the case of “jewelry”), such that there is an absence of
any restrictions as to the channels of trade and no
limitation as to the classes of purchasers, it is presumed
Ser No. 78676199
5
that in scope the identification of goods encompasses not
only all the goods of the nature and type described
therein, but that the identified goods are offered in all
channels of trade which would be normal therefor, and that
they would be purchased by all potential buyers thereof.
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Likelihood of
confusion may be found based on any item that comes within
the identification of goods in the involved application or
registration. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Applicant’s identification of goods reads “jewellery;
precious stones; pearls in loose pieces, pairs and strands;
pearl jewellery” and registrant’s identification of goods
includes “jewelry.” At the very least, applicant’s
identified “jewellery” and registrant’s identified
“jewelry” are, for purposes of the likelihood of confusion
analysis, legally identical. Further, applicant’s precious
stones and loose pearls are closely related to registrant’s
identified “jewelry.” We must presume that the goods are
sold in the same trade channels to the same classes of
purchasers, including ordinary consumers.
Applicant asserts that registrant’s goods are
“primarily made of tin or zinc alloyed with copper, and
then plated with either enamel, 22 carat gold or sterling
Ser No. 78676199
6
silver,” whereas applicant’s goods are “primarily pearl
jewelry and precious stones in combination with such pearl
jewelry, which are not made of tin or zinc and alloyed and
plated.” Further, applicant states that registrant’s goods
“have a distinct creative twist” with “youthful, trendy
jewelry designs” while applicant’s goods are “very classic
and sophisticated.” However, given that applicant’s and
registrant’s goods are identified as “jewelry,” applicant’s
distinctions between the goods are irrelevant in our
analysis. Further, applicant’s statement that “cultural
differences and influences should be taken into
consideration when analyzing the relatedness of goods” is
not supported by case law; on the contrary, it is well
established, as noted above, that it is the identification
of goods that controls, not what extrinsic evidence may
show about the specific nature of the goods. Similarly,
applicant’s reliance on registrant’s website in an attempt
to restrict the scope of registrant’s goods is to no avail.
An applicant may not restrict the scope of the goods
covered in the cited registration by argument or extrinsic
evidence. In re Bercut-Vandervoort & Co., 229 USPQ 763,
764 (TTAB 1986).
The very identification of goods in the application
and registration would require us to find that applicant’s
Ser No. 78676199
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“jewellery” and registrant’s “jewelry” are legally
identical. In addition, the examining attorney has
introduced several use-based third-party registrations
showing that each registrant adopted a single mark for
goods of the type involved herein, namely jewelry, pearls
and precious stones. Third-party registrations that
individually cover different items and that are based on
use in commerce serve to suggest that the listed goods
and/or services are of a type that may emanate from a
single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467 (TTAB 1988). Thus, to the extent that
the goods are not identical, they are otherwise closely
related.
The identity, at least in part, between applicant’s
and registrant’s goods is a factor that weighs heavily
against applicant in the likelihood of confusion analysis.
As to the marks, we examine the similarities and
dissimilarities of the marks in their appearance, sound,
meaning, and commercial impression. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Where, as in
the present case, the marks appear in connection with, at
least in part, legally identical goods, the degree of
Ser No. 78676199
8
similarity between the marks that is necessary to support a
finding of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992).
The marks LA PEREGRINA and PILGRIM are different in
sound and appearance.
With respect to meaning, the Spanish term “la
peregrina” is translated into English as “the pilgrim.”
See Cassell’s Spanish-English English-Spanish Dictionary
(1978).3
Under the doctrine of foreign equivalents, foreign
words from common, modern languages are translated into
English to determine similarity of connotation with English
words in a likelihood of confusion analysis. See Palm Bay
Import, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 73 USPQ2d at 1696. The doctrine is applied when it
is likely that “the ordinary American purchaser would ‘stop
and translate [the term] into its English equivalent.”
Id., quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110
(TTAB 1976). See generally J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition, § 23:36 (4th ed. 2006).

3 In addition to the translation relied upon by the examining
attorney (www.babelfish.altavista.com), we take judicial notice
of this translation.
Ser No. 78676199
9
The Board has determined that the “ordinary American
purchaser” in a case involving a foreign language mark
refers to the ordinary American purchaser who is
knowledgeable in English as well as the pertinent foreign
language. In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).
We presume that a word in one of the common, modern
languages of the world will be spoken or understood by an
appreciable number of U.S. consumers for the goods at
issue. In the present case, there is no question that
Spanish is a common, modern language. According to the
evidence submitted by the examining attorney, Spanish is
the second most common language in the United States after
English, with estimates of up to 30 million Spanish-
speaking people in this country. Applicant quibbles with
some of the figures introduced by the examining attorney,
with applicant asserting that much of the Spanish speaking
population in this country is not fluent in English
(according to applicant “only” 14-15 million individuals
can be accurately described as bilingual). Applicant also
asserts that Spanish remains highly localized (primarily in
California and Texas) rather than being spoken uniformly
throughout the United States; and that an overwhelming
majority of Americans are not bilingual in English and
Spanish. Notwithstanding these points, it is clear that,
Ser No. 78676199
10
by any standard, the Spanish language is spoken or
understood by an appreciable number of U.S. consumers who
also speak or understand English.
Thus, the question becomes whether those who
understand Spanish “will stop and translate the word into
its English equivalent.” Palm Bay Import, Inc., 73 USPQ2d
at 1696. This question in turn necessarily depends upon
the particular facts and circumstances of the case.
The term “la peregrina” and its translation, “the
pilgrim,” are equivalent in meaning. The dictionary
evidence shows that “pilgrim” is an exact translation of
“peregrina.” There is no dictionary evidence to the
contrary. Compare, e.g., In re Sarkli, Ltd., 721 F.2d 353,
220 USPQ 111 (Fed. Cir. 1983); and In re Pan Tex Hotel
Corp., 190 USPQ 109 (TTAB 1976). There is also no question
that the translated meaning of LA PEREGRINA is not obscure.
There is no compelling evidence in the record to
establish that the mark would not be translated because of
marketplace circumstances or the commercial setting in
which the mark is used. In saying this, we have
considered, of course, the declarations of the four
individuals relied upon by applicant.
Applicant submitted the declarations of four
individuals in an attempt to rebut the dictionary evidence
Ser No. 78676199
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showing that “la peregrina” means “pilgrim.” These
declarations are not form declarations (although two are
identical in their salient portions). The first is from
Brittmarie Janson Perez, who is bilingual in English and
Spanish and who was educated in Spanish schools. Ms.
Perez, who holds a doctorate in anthropology, states that
she has written two books published in Spanish, a third in
English, and has authored many articles in Spanish. For
fourteen years Ms. Perez worked for the Foreign Broadcast
Information Service, an entity affiliated with the Central
Intelligence Agency. Her job of “high responsibility”
entailed translating news from Spain and Latin American
countries into English for the U.S. Government. Ms. Perez
states the following:
When encountering the LA PEREGRINA mark
in the market place, I would not
translate the LA PEREGRINA mark as THE
PILGRIM. Most educated people know
that La Peregrina is the name of a very
famous and unique pearl discovered in
Panama, and the English word PILGRIM is
closely associated with the Europeans
who settled in the United States during
the 17th century. In fact, the
customary translation of the pearl La
Peregrina in English is “The Wanderer.”
Thus, when encountering LA PEREGRINA
mark in the market place, I would
simply accept the LA PEREGRINA mark as
it is with respect to Applicant’s goods
for jewelry, precious stones, pearls
and pearl jewelry.

Ser No. 78676199
12
A second individual, Desiree Pedreschi Hollingsworth,
states that she has been bilingual in English and Spanish
for 30 years. She further states as follows:
I would not stop and translate the LA
PEREGRINA mark into its English
equivalent, THE PILGRIM, when
encountering the LA PEREGRINA mark in
the marketplace. Rather, I would
simply accept the mark as it is with
respect to Applicant’s goods for
jewelry, precious stones, pearls and
pearl jewelry. Furthermore, when I
first encountered the name La
Peregrina, Ltd. on September 19, 2006,
I immediately thought that it is the
perfect name for a pearl jewelry
business because of the internationally
famous pearl with that name. If asked
what is the definition of “la
peregrina,” I would answer “a warbler,
a wandering female or a wild concept.”
I question if “pilgrim” is the best
translation for the word “peregrine”
[sic] because I think a pilgrim is more
like an outsider who settles in a new
place.

Two other individuals, Nancy Valenzuela and Mary
Isabel Zachovay, indicated that they have been bilingual in
English and Spanish for 20 years, and both made the
identical statement:
I would not stop and translate the LA
PEREGRINA mark into its English
equivalent, THE PILGRIM, when
encountering the LA PEREGRINA mark in
the marketplace. Rather, I would
simply accept the mark as it is with
respect to Applicant’s goods for
jewelry, precious stones, pearls and
pearl jewelry.
Ser No. 78676199
13

The declarations do not persuade us that consumers
would not translate “la peregrina” as “the pilgrim,” but
would simply accept the term as it is. Given Ms. Perez’s
background, she hardly can be characterized as a typical or
ordinary consumer. The identification of applicant’s
“jewelry” in the application is not limited by price, so we
must assume that the jewelry includes inexpensive items
that consumers would purchase with nothing more than
ordinary care. These consumers likely are not as
knowledgeable as Ms. Perez about language or famous gems.
We note Ms. Perez’s statement that “la peregrina”
would be translated to “the wanderer,” and Ms.
Hollingsworth’s statement that the term “la peregrina”
would be translated as “a warbler, a wandering female or a
wild concept.” These statements lack probative value
inasmuch as they clearly are undermined by applicant’s own
translation of “la peregrina” as “the pilgrim.” Applicant
has not disputed the exactness of the translation it has
offered. (Response, June 12, 2006).
We further note Ms. Perez’s statement, as well as a
similar one by Ms. Hollingsworth, about a pearl named “La
Peregrina.” Ms. Perez claims that “La Peregrina” is the
“name of a very famous and unique pearl discovered in
Ser No. 78676199
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Panama,” and Ms. Hollingsworth refers to “the
internationally famous pearl with that name.” We agree
that if the relevant purchasing public viewed “La
Peregrina” as the name of a pearl, this would be a
situation where purchasers would not translate the name (in
the way that the public would not translate the woman’s
name “Blanche” as “white,” but would view “Blanche” as a
name in its own right). However, the evidence of record is
simply insufficient for us to conclude that consumers in
this country are aware of the “La Peregrina” pearl. Ms.
Perez herself limits the knowledge of the pearl to “most
educated people,” a far more exclusive purchaser class than
the one comprising ordinary consumers. Aside from the
statements in the two declarations, there is one mention of
the “La Peregrina” pearl on a Smithsonian Institution
webpage that indicates the pearl was part of a 2005
exhibit. There is no indication in the record, however,
about any publicity for that exhibit, or the number of
people who may have viewed it, or anything from which we
could conclude that consumers, especially ordinary ones,
will know about the existence of a pearl named “La
Peregrina.” The evidence of record is simply insufficient
for us to conclude that consumers in this country would be
aware of the “La Peregrina” pearl, and therefore that they
Ser No. 78676199
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would view “La Peregrina” as a name in its own right. As a
result, we find that the consumers of applicant’s goods
would translate “la peregrina” as “the pilgrim.”
The declarations of Ms. Valenzuela and Ms. Zachovay
likewise are not persuasive. The declarants offer nothing
more than a conclusory statement; while they state that
they would not stop and translate the Spanish term into its
English equivalent, no reason is given why this is so.
In sum, the declarations are insufficient to overcome
the clear dictionary evidence bearing on the foreign
equivalence of “peregrina” and “pilgrim.” We are not
willing to take the opinions of only four individuals and
extrapolate their views to the relevant ordinary American
purchasers.
Applicant argues that purchasers of the goods are
sophisticated. However, as indicated above, the involved
identifications of goods are not limited, so we must
presume that the classes of purchasers include ordinary
consumers as well.
In view of the above, we find that LA PEREGRINA and
PILGRIM are foreign equivalents and, thus, the marks are
identical in meaning. This factor outweighs the
differences in appearance and pronunciation. Applying the
doctrine of foreign equivalents, we find that confusion is
Ser No. 78676199
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likely to occur in the marketplace. We conclude that
bilingual (English and Spanish) consumers familiar with
registrant’s jewelry sold under the mark PILGRIM would be
likely to believe, upon encountering the Spanish equivalent
LA PEREGRINA for jewelry, precious stones and loose pearls,
that the jewelry originated with or is somehow associated
with or sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.