SAS Lataste

Trademark Trial and Appeal Board

Mar 28, 2008

No. 79015771 (T.T.A.B. Mar. 28, 2008)

Mailed:
March 28, 2008
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SAS Lataste
________

Serial No. 79015771
_______

William C. Wright of Epstein Drangel Bazerman & James, LLP
for SAS Lataste.

Leigh A. Lowry, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Bucher, Taylor and Mermelstein, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
SAS Lataste seeks registration on the Principal
Register of the following mark:

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79015771
- 2 -
for goods ultimately identified in the application as
“wines” in International Class 33.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark
Examining Attorney has found that applicant’s mark, when
used in connection with the identified goods, so resembles
the mark CINQUANTE-CINQ (in standard character format) for
“wine”2 also in International Class 33, as to be likely to
cause confusion, to cause mistake or to deceive.
The Trademark Examining Attorney and applicant have
fully briefed the case. We affirm the refusal to register.
The Trademark Examining Attorney contends there is a
likelihood of confusion inasmuch as the goods are identical
and the marks are confusingly similar. As to the

1 Application Serial No. 79015771 was filed by SAS Lataste, a
French Societe Par Actions Simplifiee, on June 13, 2005 based
upon a request for extension of protection under Section 66(a) of
the Trademark Act, 15 U.S.C. § 1141f(a). The colors purple,
black and white are claimed as a feature of the mark. The color
purple appears in the number 55; the color black appears in the
background; the color white appears in the wording BLEND • fifty five •
Vincent Lataste. The name “Vincent Lataste” identifies a living
individual whose consent to use and register his name is of
record.

2 Registration No. 3025988 issued on December 13, 2005.
Applicant states that the foreign wording in the mark translates
as “fifty-five.”

Serial No. 79015771
- 3 -
similarity of the marks, the Trademark Examining Attorney
argues that registrant’s mark CINQUANTE-CINQ in the
French language translates precisely to “Fifty-Five,” the
dominant portion of applicant’s mark being the numeral 55
and the wording fifty-five.
In arguing for registrability, applicant argues that
it would be inappropriate even to invoke the doctrine of
foreign equivalents in this case. In the alternative,
applicant contends that if one employs this doctrine
herein, there is clearly no likelihood of confusion
provided one compares the two marks in their entireties.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood
of confusion is based upon our analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on this issue. See 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); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). In any likelihood of confusion analysis, however,
two key, although not exclusive, considerations are the
Serial No. 79015771
- 4 -
similarities between the marks and the relationship between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
The Goods, Trade Channels and Conditions of Sales
As seen above, the goods are identical. Applicant has
submitted no arguments to the contrary. Where the goods
are identical, and neither identification has any
limitations as to channels of trade, we must presume that
the respective goods would move through the same trade
channels to all the same classes of ordinary purchasers of
goods shown neither to be expensive nor purchased with
utmost care. See In re Elbaum, 211 USPQ 639 (TTAB 1981).
Hence, these three du Pont factors favor the position of
the Trademark Examining Attorney herein.
Similarity of the marks
We begin this part of the analysis mindful of the fact
that when marks would appear on identical goods, the degree
of similarity in 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).
Serial No. 79015771
- 5 -
Applicability of the Doctrine of Foreign Equivalents
In addition to the translation statement printed on
the cited registration certificate, the evidence of record
clearly shows that the single translation of the wording
“cinquante-cinq” is the number “fifty-five,” and the only
translation of “fifty-five” from English to French is
“cinquante-cinq.”3 For this reason, we find that the
situation in the instant appeal is distinguishable from a
case relied upon by applicant. Unlike the factual
conclusions of In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ
111, 112-13 (Fed. Cir. 1983) [no English-to-French
definition was cited supporting the conclusion that “second
chance” is an exact synonym or equivalent of “repechage”
when translated into the French language], we find that the
terms involved herein are exact equivalents.
Accordingly, the Trademark Examining Attorney contends
that under the doctrine of foreign equivalents, the
ordinary purchaser in the United States “who is
knowledgeable in the foreign language” will translate the
term “Cinquante-Cinq” into its English-language equivalent.
See In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006).

3 http://www.wordreference.com/enfr/fifty-five
http://www.logosdictionary.org/ and
http://ets.freetranslation.com/

Serial No. 79015771
- 6 -
Applicant agrees with the general proposition that
under the doctrine of foreign equivalents, foreign words
from common languages are usually translated into the
English language to determine similarity of connotation in
order to ascertain confusing similarity with English word
marks. See Sarkli, 220 USPQ at 111-13 (Fed. Cir. 1983).
On the other hand, applicant argues that when it is
unlikely that the average American consumer will translate
the foreign mark and will take it as it is, then the
doctrine of foreign equivalents will not be applied, citing
to In re Tia Maria Inc., 188 USPQ 524 (TTAB 1975) [finding
it unlikely that a person who had purchased AUNT MARY’S
canned fruits and vegetables from a supermarket would, upon
dining at the TIA MARIA restaurant surrounded by Mexican
décor and serving Mexican food, translate “Tia Maria” into
“Aunt Mary” and then mistakenly assume that both goods and
services originated from the same source]. However, we
find nothing in this record to indicate the cited mark
would not be translated because of marketplace
circumstances or the commercial setting in which the mark
is used. See also In re Pan Tex Hotel Corp., 190 USPQ 209,
210 (TTAB 1976) [given the circumstances of this case, it
is unlikely that purchasers would stop and translate LA
POSADA into its equivalent “the inn”].
Serial No. 79015771
- 7 -
Applicant highlights the manner in which our primary
reviewing court used this same “stop and translate”
language in its decision of Palm Bay Import, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). Based on its interpretation
of Palm Bay, applicant argues that the Trademark Examining
Attorney has erroneously applied the doctrine of foreign
equivalents to the facts of the instant case. We turn then
to applicant’s arguments based upon its view of Palm Bay,
which applicant argues compels a finding that the doctrine
of foreign equivalents does not apply in this case.
Under the doctrine of foreign equivalents, foreign
words from common, modern languages are translated into
English to determine similarity of connotation in order to
ascertain confusing similarity with English word marks.
Applicant is correct in quoting the language from Palm Bay
that the doctrine should be applied “when it is likely that
the ordinary American purchaser would ‘stop and translate
[the term] into its English equivalent.’” Palm Bay,
73 USPQ2d at 1696.
The “ordinary American purchaser” in this case refers
to the ordinary U.S. purchaser of wine who is knowledgeable
in French. See In re Thomas, 79 USPQ2d at 1024 [the
“ordinary American purchaser” in a case involving a foreign
Serial No. 79015771
- 8 -
language mark refers to the ordinary American purchaser who
is knowledgeable in the pertinent foreign language].
Inasmuch as French is a common, modern foreign language, we
must consider that an appreciable segment of the buying
public will speak or understand French. In fact, we have
recently noted that in the United States, French is second
only to Spanish in terms of the largest number of foreign-
language speakers in the country. Id.
Nonetheless, Applicant argues that the Trademark
Examining Attorney’s position “flies in the face of well
established case law,” particularly as discussed in Palm
Bay (i.e., since “ … it is improbable that the average
American purchaser would stop and translate ‘VEUVE’ into
‘widow.’”). We disagree with applicant’s interpretation of
the Federal Circuit’s holding in the Palm Bay case, and
note that a recent Board decision responded thoroughly to
much the same argument. See In re Spirits International
N.V., ___ USPQ2d ____, Serial No. 74382759 (TTAB February
11, 2008). The Court in Palm Bay identified contradictory
findings by the Board but did not address the definition of
the “ordinary American purchaser.” Applicant’s
interpretation of Palm Bay conflicts with long established
case law involving the doctrine of foreign equivalents that
Serial No. 79015771
- 9 -
has consistently focused on the relevant consumer who
speaks or understands the foreign language. Id.
Thus, applying the doctrine of foreign equivalents in
this case, we find that “fifty-five” is an exact
translation of “cinquante-cinq,” and that this is a
probative fact in making our determination herein as to
whether these two marks are confusingly similar.
Comparing the marks in their entireties
Applicant argues as follows:
The Examiner in concluding that there is a
likelihood of confusion between the marks at
issue has improperly dissected the
respective marks, totally disregarding the
significance of the term “BLEND,” the name
“Vincent Latase,” and the color and
arrangement of the applied for mark.
However, when the marks are viewed in their
entireties, as is required, … the marks – as
discussed in detail in Applicant’s Appeal
Brief – are distinguishable in sound,
appearance, meaning, and perhaps most
noticeably, commercial impression.

Applicant’s reply brief, at 3.
We disagree with this assessment. The Trademark
Examining Attorney’s appeal brief summarizes the
similarities in the marks as follows:
Here, the numeral 55 in the applicant’s
mark is clearly the dominant portion of the
mark. Although the marks are compared in
their entireties under a Section 2(d)
analysis, one feature of a mark may be
recognized as more significant in creating a
Serial No. 79015771
- 10 -
commercial impression. Thus, greater weight
is given to that dominant feature in
determining whether there is a likelihood of
confusion. In re National Data Corp.,
753 F.2d 1056 (Fed. Cir. 1985); Tektronix,
Inc. v. Daktronics, Inc., 534 F.2d 915 (CCPA
1976); and In re J.M. Originals Inc., 6 USPQ2d
1393 (TTAB 1987). Here, the overall visual
representation of the applied-for mark clearly
shows that the number 55 is the dominant
portion.
As clearly evident, the numeral 55
dominates the mark in its contrasting bright
purple color and central placement that fills
almost the entire solid black background of
the mark. Thus, the eye is immediately drawn
to the numeral 55, which is the only element
seen at any distance. Additionally,
reinforcing the dominance of the numeral 55, a
second instance of “FIFTY FIVE” (spelled out),
covers the entire center third of the mark.
The design portion and disclaimed portion
BLEND are not given as much weight when
comparing the marks. In re Dakin’s Miniatures
Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re
Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
The remaining wording in the mark, which
is the name VINCENT LATASTE, appears in much
smaller font than any other term in the mark,
is written sideways and is almost flush left.
Compared to the other elements, it is the
least visible portion of the mark.

Trademark Examining Attorney’s appeal brief, unnumbered
pages 10 - 11.
To the extent we find that the ordinary purchaser in
the United States knowledgeable in the French language will
readily translate CINQUANTE-CINQ into “Fifty-Five,” we
Serial No. 79015771
- 11 -
also find that registrant’s mark creates a
connotation and commercial impression most
similar to applicant’s mark – if one focuses
on the large purple digits or on the written-out form of
the numeral “fifty-five” in white letters. Irrespective of
whether the “fifty-five/55” combination has suggestive
connotations or is seen as an arbitrary designation, it
will have exactly the same connotation for registrant’s
wines and for applicant’s wines, as identified. To focus
on the “fifty-five/55” designation is not a dissection of
the mark, or our ignoring the other parts of applicant’s
composite mark. While we must consider the marks in their
entireties, there is nothing improper when articulating
reasons for reaching a conclusion on the issue of
similarity of the marks, to set out as the Trademark
Examining Attorney has done quite rational reasons for why
more weight is to be given to the two portions of
applicant’s mark that reinforce each other and create a
dominance for the designation “fifty-five/55,” while
suggesting that less weight is to be given to other
features of the composite mark (e.g., a disclaimed term,
words written vertically in much smaller letters, a mere
background color, etc.).
Serial No. 79015771
- 12 -
Of course there are obvious differences in the
appearance of the two marks. Moreover, if one sounds out
the entire wording in applicant’s mark in English, and
contrasts this with the pronunciation of registrant’s mark
in French, the aural differences are unmistakable.
Nonetheless, we find that with marks having quite similar
connotations and commercial impressions, we weigh this
strong similarity against the dissimilarity in appearance
and sound before reaching a conclusion on the similarity of
the marks. See Sure-Fit Products v. Saltzson Drapery Co.,
254 F.2d 158, 117 USPQ 295, 297 (CCPA 1958). Accordingly,
we find after weighing all the types of similarities and
dissimilarities of the marks, that this du Pont factor too
weighs in favor of the position of the Trademark Examining
Attorney.
Likelihood of Confusion: Conclusions
With identical goods, and marks that create similar
connotations and commercial impressions, we find that there
will be a likelihood of confusion herein. The fact that
applicant itself is French exacerbates the likelihood of
confusion herein. The Trademark Examining Attorney
correctly notes that inasmuch as the geographical origins
of wines are important to prospective purchasers, given
Serial No. 79015771
- 13 -
applicant’s corporate headquarters in France, it is even
more likely that consumers would assume common source
between applicant’s “fifty-five/55” and registrant’s
“cinquante-cinq.”
Finally, to the extent we harbor any doubts about our
conclusions, we resolve such doubt, as we must, in favor of
the prior registrant and against applicant. See Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992); Ava Enterprises Inc. v.
Audio Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006); and
Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d
1844 (TTAB 2004). It is well established that one who
adopts a mark similar to the mark of another for the same
goods does so at his own peril. See J & J Snack Foods
Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889
(Fed. Cir. 1991); In re Hyper Shoppes (Ohio), Inc.,
837 F.2d 463, 6 USPQ2d 1025 (Fed Cir. 1988); and W.R. Grace
& Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ 308
(TTAB 1976).
Decision: The Trademark Examining Attorney’s refusal
of registration under Section 2(d) of the Lanham Act is
hereby affirmed.