Manuel Jacinto, LDA

Trademark Trial and Appeal Board

Sep 29, 2008

No. 78905244 (T.T.A.B. Sep. 29, 2008)

Mailed: September 29, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Manuel Jacinto, LDA
________

Serial No. 78905244
_______

John S. Egbert of Egbert Law Offices for Manuel Jacinto, LDA.

James W. MacFarlane1, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Holtzman, Taylor and Wellington, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Manuel Jacinto, LDA has filed an application to register on
the Principal Register the mark CAVALINHO and design, shown
below,

for “leather and imitation leather goods, namely, handbags, all
purpose carrying bags, tote bags, wallets, purses, key cases,

1 The application was assigned to the current examining attorney for
consideration of the request for reconsideration and writing of the
brief.
THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Serial No. 78905244
2
briefcases, backpacks, suitcases, trunks, [and] travelling bags”
in International Class 18.2
Registration has been refused on the ground that
applicant’s mark is likely to be confused with the mark PONY (in
typed format and the subject of Registration No. 2741220) for
“bags, namely all purpose sports bags and wallets” in
International Class 183 under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d). In addition, registration has been refused
based on applicant’s failure to comply with the requirement to
provide a translation of the term CAVALINHO pursuant to
Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b).
When the refusals were made final, applicant appealed and
requested reconsideration of the final refusals. On February 1,
2008, the examining attorney denied the request for
reconsideration and, on February 13, 2008, this appeal was
resumed. Briefs were filed by both applicant and the examining
attorney. For the reasons discussed below, we affirm the refusals
to register.
Our determination of the issue of likelihood of confusion
is based on an analysis of all the probative facts in evidence
that are relevant to the factors set forth in In re E. I.

2 Serial No. 78905244, filed June 9, 2006, and alleging a bona fide
intention to use the mark in commerce.

3 Registration No. 2741220, issued July 29, 2003.

Serial No. 78905244
3
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also, In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood
of confusion analysis, 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). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.
Cir. 1997).
The examining attorney contends that there is a likelihood
of confusion between applicant’s mark and the cited mark
inasmuch as the goods are identical or closely related, and
because applicant’s mark and registrant’s mark are confusingly
similar in meaning and commercial impression, in that CAVALINHO
means “pony” in Portuguese, and the pony design in applicant’s
mark reinforces the translation.
Applicant, on the other hand, maintains that there is no
likelihood of confusion because its mark and the cited mark
differ in appearance and commercial impression. Applicant also
contends that the examining attorney has misapplied the doctrine
of foreign equivalents to come to the “incorrect” conclusion
that applicant’s mark is similar to the cited mark.
We consider first the goods based on a comparison of the
identifications in the application and the cited registration.
Serial No. 78905244
4
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 at n. 4
(Fed. Cir. 1993). In the present case, the identified goods of
applicant and those of the cited registrant have two items in
common, i.e., wallets and, because applicant’s broadly
identified all purpose carrying bags clearly include
registrant’s more narrowly identified all purpose sports bags,
all purpose carrying and sports bags. The additional goods in
applicant’s application (i.e., handbags, tote bags, purses, key
cases, brief cases, backpacks, suitcases, trunks and traveling
bags) are otherwise closely related items used to carry an
individual’s personal items. Applicant does not argue
otherwise.
Further, with regard, at least, to the identical goods, we
must presume that they will be sold in the same channels of
trade and will be bought by the same classes of purchasers,
while the related goods will be sold in some of the same
channels of trade, and will be bought by some of the same
purchasers. See Canadian Imperial Bank v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994). In view of the above, the
du Pont factors of the relatedness of the goods, channels of
trade and classes of purchasers favor a finding of likelihood of
confusion.
Serial No. 78905244
5
We now consider the similarity or dissimilarity of the
marks, keeping in mind that when marks would appear on even some
identical goods, as they do here, the degree of similarity
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).
In determining whether the marks are confusingly similar,
we must first consider whether the term “cavalinho” is the
foreign equivalent of the word “pony.”
Under the doctrine of foreign equivalents, foreign
words from common, modern languages are translated
into English to determine genericness,
descriptiveness, as well as similarity of connotation
in order to ascertain confusing similarity with
English word marks in a likelihood of confusion
analysis. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1696 (Fed. Cir. 2005).
… Although words from modern languages are generally
translated into English, the doctrine of foreign
equivalents is not an absolute rule and should be
viewed merely as a guideline… (id).

The doctrine should be applied only when it is likely that the
ordinary American purchaser would “stop and translate [the word]
into its English equivalent.” Palm Bay, supra at 1696, citing
In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976). While
applicant appears to suggest that the “ordinary American
consumer” may or may not speak Portuguese,4 the Board has

4 Applicant particularly states:
Serial No. 78905244
6
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 in
the pertinent foreign language. In re Thomas, 79 USPQ2d 1021,
1024-25 (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.”).
In urging that the doctrine of foreign equivalents does not
apply in this case, applicant maintains that “the average
American does not speak Portuguese, and only approximately
560,000 Americans speak the Portuguese language at all.” (Br.,
unnumbered p. 6). To support this contention, applicant made of
record data from the 2000 U.S. Census, obtained from Wikipedia,5
indicating the number of speakers of Portuguese (as well as

an American consumer encountering applicant’s mark would
either 1) not know the English equivalent of the word
“cavalinho” or 2) know the exact colloquial meaning of
the word as it is used in Portugal. Add to this fact
that an ordinary American consumers [sic] speaking
Portuguese would have a clear understanding that the
English word “pony” translates into “pônei.” … Therefore,
an ordinary American purchaser encountering Applicant’s
“CAVALINHO” design mark would almost certainly not
confuse Applicant’s mark with the mark of the cited
registrant.

5 The web pages are located at http://en.wikipedia.org/wiki/Languages
in_the_United_States.

Serial No. 78905244
7
other languages) in the home, which translates to .21% of the
United States population. Applicant concludes from this data
that “[s]ince there is such a small number of Portuguese-
speaking Americans, it is clear that the average American
consumer will not ‘stop and translate’ the Portuguese term
“CAVALINHO” into the English word ‘pony.’” (Id).
We disagree with applicant’s assertion that the doctrine of
foreign equivalents does not apply to marks in the Portuguese
language because it is not spoken by enough people in the United
States. As noted, words from common, modern languages are
generally translated into English. According to applicant’s
census data, more than half a million people speak Portuguese in
the home. However, because this figure reflects the language
that is primarily spoken as the primary language in peoples’
homes, it does not include persons who know a particular
language such as those who speak Portuguese as a second or third
language. Notably, with the exception of Spanish, there is no
other language listed in the table that reaches the level of
even one percent. Indeed, Board precedent has recognized the
application of the foreign equivalents doctrine to other
languages even less common in the United States (according to
applicant’s census data) than Portuguese. See, for example,
Matsushita Electric Industrial Co. v. National Steel Contr. Co.,
442 F.2d 1383, 170 USPQ 98 (CCPA 1971)(the doctrine of foreign
Serial No. 78905244
8
equivalents was applied to the Japanese equivalent of NATIONAL
in Katakana characters); and In re Bagel Nosh, Inc. 193 USPQ 316
(TTAB 1976)(Yiddish). “[W]e 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
product or service at issue.” In re Spirits Int’l N.V., 86
USPQ2d 1078, 1085 (TTAB 2008)(applying doctrine to mark in
Russian). We see no reason to deviate from this presumption in
this case. It is clear that Portuguese is a common, modern
language to which the doctrine of foreign equivalents applies.
The question now becomes whether those consumers who
understand Portuguese will “stop and translate the term into its
English equivalent.” Palm Bay Import, Inc., 73 USPQ2d at 1696.
In the present case, the examining attorney submitted the
declaration of Steven M. Spar that is set out below:
I, Steven M. Spar, declare that I am fluent in the
Portuguese language, that I am a Technical
Translator at the Patent and Trademark Office, and
that the word cavalinho means “little horse” or
“pony.”

Therefore, the examining attorney has provided evidence the term
“cavalinho” can be translated as “pony.”
The examining attorney also made of record evidence from an
online translation site, Babel Fish Translation
(http://babelfish.com/tr), showing that the translation of the
word “cavalinho” from Portuguese to English is “pony.” In
Serial No. 78905244
9
addition, the examining attorney made of record copies of web
pages from various websites showing the word Portuguese word
“cavalinho” translated to the English word “pony,” or vice
versa, including a lyric website translating Nelly Furtado’s
“One-Trick Pony” song, an advertisement for a toy, a guitar
tablature (including lyrics and “translations” thereof), a
famous Portuguese idiom and a blog site. For example, the title
of Nelly Futado’s song “One-Trick Pony” translates to “Um
Cavalinho Amestrado.”
Based on the evidence of record, we find that the examining
attorney has established prima facie that the Portuguese term
“cavalinho” directly translates to the English term “pony.” The
record further establishes that Portuguese speakers will “stop
and translate” the term “cavalinho” to the English term “pony.”
We find this especially so because the pony design in
applicant’s mark reinforces the translated meaning of the term
“cavalinho.” We thus find that the doctrine of foreign
equivalents applies in this case, and that the terms “cavalinho”
and “pony” have the same meaning.
In an attempt to rebut this showing, applicant argues that
“it is clear … that the word “cavalinho” has only a loose
colloquial meaning within Portugal of “little horse,” and no
direct translation at all.” (Br., unnumbered p. 3). This,
added to the fact that an ordinary American consumer speaking
Serial No. 78905244
10
Portuguese would understand that the English word “pony”
translates into Portuguese as “pônei,” applicant contends, makes
it more likely that the average purchaser would “take it [its
CAVALINHO and design mark] as it is.” (Brief, unnumbered p. 4).
Applicant also questions the probative value of the examining
attorney’s Internet evidence, arguing that “online Internet
translation websites such as the one supplied by the Examiner in
the Official Action are notoriously inaccurate. Furthermore,
the reliability of the other sources attached by the Examiner is
not easy to determine.” (Br., unnumbered p. 5).
In support of its position, applicant made of record
evidence from the Larousse Concise Dictionary, Portuguese-
English English-Portuguese, which includes an entry showing a
translation of the word “pony” from English to the Portuguese
word, “pônei,” and an absence of an entry for the word
“cavalinho.”
We are not persuaded these arguments and evidence. The
lack of an entry for the term “cavalinho” in a single “Concise”
dictionary does not invalidate the fact that the term
“cavalinho” is an exact translation of “pony.” Nor is the fact
that “pony” may also be translated as “pônei” controlling.
Portuguese speaking consumers and potential consumers of
registrant’s goods sold under the PONY mark, upon seeing
CAVALINHO used in connection with identical and closely related
Serial No. 78905244
11
goods will “stop and translate” the term “CAVALINHO” to “PONY,”
and therefore are likely to be confused as to the source of
those goods. Further, although applicant maintains that the
term “cavalinho” has only the loose colloquial meaning of
“little horse,” there is no evidence to support this claim.
We also find unpersuasive applicant’s unsupported
statements that the examining attorney’s Internet evidence is
somehow unreliable. The Internet examples showing the
Portuguese term “cavalinho” used in place of the English term
“pony” in translated matter corroborate the Spar translation.
Significantly, applicant did not question the Spar translation.
Having found that the doctrine of foreign equivalents
applies and that the term “cavalinho” and “pony” have the same
connotation, we now compare applicant’s CAVALINHO and design
mark and the cited mark PONY in their entireties in terms of
sound, appearance, meaning and commercial impression. See Palm
Bay Imports, supra. The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but
rather whether the marks are sufficiently similar in terms of
their overall commercial impressions that confusion as to the
source of the goods offered under the respective marks is likely
to result. In addition, as pointed out by applicant, in
articulating reasons for reaching a conclusion on the issue of
likelihood of confusion, there is nothing improper in stating
Serial No. 78905244
12
that, for rational reasons, more or less weight has been given
to a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties. In re National Data Corp., supra.
Applicant argues that the marks differ in connotation and
appearance, and that the addition of its unique design gives its
mark an overall commercial impression that differs from the
cited mark in a manner sufficient to overcome any similarities
between the two marks.
We disagree. While the literal portion of applicant’s mark
clearly differs in sound and appearance from the cited mark, the
equivalency in meaning or connotation is sufficient to support a
finding of likelihood of confusion when used in connection with
the identical and closely related goods. Moreover, the
pony/horse design in applicant’s mark does not distinguish it
from the registered mark. Rather, the design merely reinforces
the meaning of the literal portion. Quite simply, despite the
differences in sound and appearance, the fact that applicant’s
mark and the registrant’s mark have the same meaning leads us to
conclude that applicant’s mark the cited mark, when viewed in
their entireties, have a highly similar overall commercial
impression. Accordingly, the du Pont factor of similarity of
the marks favors a finding of likelihood of confusion.
Serial No. 78905244
13
One final argument made by applicant requires comment.
Applicant contends that the marks at issue in this proceeding
currently coexist within Portugal and other European Community
countries, and that “such coexistence shows a lack of confusion,
as well as a dissimilarity in connotation, between the two
marks.” (Br, unnumbered p.8). To the extent that applicant is
arguing a lack of actual confusion based on this coexistence,
such argument is unavailing. The coexistence of the marks
outside of the United States is irrelevant to our determination
of likelihood of confusion in this case. Applicant has neither
alleged in its application nor argued that it has used the mark
in the United States. Therefore, there is no evidence that
there has been an opportunity for confusion to occur. Moreover,
in the context of an ex parte proceeding, “the lack of evidence
of actual confusion carries little weight.” In re Majestic
Distilling Co., supra. Therefore, this du Pont factor is
neutral.
In sum, when we consider the record and the relevant
likelihood of confusion factors, we conclude that in view of the
substantial similarity in the commercial impressions of
applicant’s mark, CAVALINHO and pony design, and registrant’s
mark, PONY, their contemporaneous use on identical and closely
related goods is likely to cause confusion as to the source or
sponsorship of such goods.
Serial No. 78905244
14
We add that the examining attorney’s requirement for a
translation of the term CAVALINHO is also affirmed. The
examining attorney has made of record the declaration of Mr.
Spar, the USPTO’s Technical Translator, that specifies that
CAVALINHO can be translated as “pony,” as well as Internet
evidence confirming this translation. As noted previously, we
find the absence of the word “CAVALINHO” from a single “Concise”
dictionary insufficient to rebut this evidence, and the
requirement for a translation is appropriate.

Decision: The refusals to register under Section 2(d) of
the Trademark Act and that applicant must provide a translation
of the term CAVALINHO are affirmed.