Savisa (Pty) Ltd.

Trademark Trial and Appeal Board

Feb 24, 2005

No. 78154196 (T.T.A.B. Feb. 24, 2005)

Mailed:
February 24, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Savisa (Pty) Ltd.
________

Serial No. 78154196
_______

Arlen L. Olsen of Schmeiser, Olsen & Watts for Savisa (Pty)
Ltd.

Andrea D. Saunders, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______

Before Seeherman, Chapman and Drost, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Savisa (Pty) Ltd., a corporation of the Republic of
South Africa, has appealed from the final refusal of the
Trademark Examining Attorney to register SONOP for
“alcoholic beverages, namely, wines, distilled spirits and
liqueurs.”1 Applicant has stated that “the foreign wording

1 Application Serial No. 78154196, filed August 14, 2002, and
asserting a bona fide intention to use the mark in commerce.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78154196
2
in the mark translates into English as SUNRISE.”
Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark so resembles the mark SUNRISE, previously
registered for “wine,”2 that, if used on applicant’s
identified goods, it is likely to cause confusion or
mistake or to deceive.
The appeal has been fully briefed. Applicant did not
request an oral hearing.
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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003).
As a preliminary matter, we note that in its brief
applicant points to the du Pont factor of the market
interface between applicant and the owner of a prior mark,
and discusses the effect of a consent. However, applicant
has not provided a consent. Applicant had, on September
30, 2003, advised the Examining Attorney that it was

2 Registration No. 2134554, issued February 3, 1998; Section 8
affidavit accepted; Section 15 affidavit received.
Ser No. 78154196
3
“currently entering into negotiations” with the owner of
the cited registration, and requested that examination of
the application be suspended. The Examining Attorney
denied this request because it was against Office policy to
suspend proceedings for this reason prior to the issuance
of a final Office action. After filing its notice of
appeal, applicant did not ask that the Board suspend action
in the appeal proceeding so that applicant could pursue its
negotiations. (Negotiating for a consent agreement will
normally constitute good cause for requesting an extension
of time to file an appeal brief.) Instead, applicant
merely stated, at page 11 of its 12-page brief, that it was
“currently exchanging documents requisite to the consent to
register,” and that it was placing the Board “on notice
that a consent to registration agreement may be submitted
during the course of the present appellate proceedings.”
That statement was obviously not a request for suspension,
and as it was made within the body of the brief, it was not
sufficient to advise the Board that obtaining a consent was
being contemplated. It is further noted that applicant did
not mention any negotiations in its reply brief, which was
filed on December 13, 2004. In any event, applicant had
more than a year from the date it advised it was seeking a
consent agreement (and almost two years from the mailing
Ser No. 78154196
4
date of the Office action refusing registration based on
the registrant’s registration) to obtain a consent
agreement, and was not able to do so.
Turning to the other du Pont factors, 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).
Here, the goods are, in part, identical. The cited
registration is for wine, and wine is one of the goods
identified in applicant’s application. Because the goods
are legally identical, they are presumed to travel in the
same channels of trade and be sold to the same classes of
consumers. These factors, thus, favor a finding of
likelihood of confusion.
When marks would appear on virtually identical goods
or services, 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). Here, applicant’s mark
is SONOP, which applicant has stated translates into
English as SUNRISE. SUNRISE is the cited mark. Under the
Ser No. 78154196
5
doctrine of foreign equivalents, in which foreign words
from common languages are translated into English to
determine their degree of confusing similarity to English
word marks, see In re Ness & Co., 18 USPQ2d 1815 (TTAB
1991), the marks are identical in meaning. See also, 3
J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition, §23.36 (4th ed. 2001).
We note that, in its brief, applicant makes the
statement that “where a mark has a foreign equivalent
translation it is well-established that the test for
determining a likelihood of consumer confusion is ‘whether
there is any likelihood that an appreciable number of
ordinarily prudent purchasers are likely to be misled, or
indeed simply confused, as to the source of the goods in
question.’” p. 3. Applicant cites Mushroom Makers, Inc.
v. R.G. Barry Corp., 580 F.2d 44, 199 USPQ 65 (2d Cir.
1978). The internal quoted language is accurately taken
from that decision, but the case did not involve the
doctrine of foreign equivalents in any respect; rather,
that case involved the marks MUSHROOM and MUSHROOMS.
Unlike many of the cases involving a consideration of
the doctrine of foreign equivalents in which the Courts and
the Board have found that the foreign word and the English
word are not direct translations, in this case applicant
Ser No. 78154196
6
does not dispute that the meaning of the marks is
identical. Cf. In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ
111 (Fed. Cir. 1983). Instead, applicant argues that,
because SONOP is a word in Afrikaans, an appreciable number
of American consumers would not be familiar with the
translation of SONOP as SUNRISE.
In support of this position, applicant submitted an
excerpt from TheFreeDictionary.com which provides a table
called “Primary Language at Home (2000)” and which lists
each language, followed by their percentage. Afrikaans is
listed under the category of “Other West Germanic
languages,” with the percentage of “0.096%.” Applicant
asserts, based on this information, that Afrikaans is “a
language spoken by less than 0.1% of Americans.
We believe that applicant has misinterpreted this table.
It shows percentages of “Primary Language at Home.” This
reflects the language that is spoken as the primary
language in peoples’ homes; this is not the same as
percentages of Americans who know a particular language.
Thus, people may speak English at home, but may still have
studied another language at school. Or people who have
emigrated to the United States from another country, or
have lived abroad, or whose parents or relatives are from
another country, may be familiar with, or even fluent in, a
Ser No. 78154196
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foreign language, but may still speak English as the
primary language in their homes. In this connection we
note that, with the exception of Spanish, there is no other
language listed in the table that reaches the level of even
one percent. For example, Italian is listed as the primary
language at home for 0.384% of Americans, although in In re
Ithaca Industries, Inc., 230 USPQ 702, 704-05 (TTAB 1986)
the Board stated that “it does not require any authority to
conclude that Italian is a common, major language in the
world and is spoken by many people in the United States.”
Similarly, Japanese is listed with a percentage of
“0.182%,” but in Matsushita Electric Industrial Co. v.
National Steel Constr. Co., 442 F.2d 1383, 170 USPQ 98
(CCPA 1971), the doctrine of foreign equivalents was
applied to the Japanese equivalent of NATIONAL in Katakana
characters. The percentage given for “Other West Germanic
languages” is higher than the percentages of people whose
primary language at home is, for example, Armenian, Hebrew,
Yiddish, Scandinavian languages, Thai and Hungarian.
The Board has previously found, at least implicitly,
that words in Afrikaans can fall under the doctrine of
foreign equivalents. Consolidated Cigar Corporation v.
Rembrandt Tobacco Corporation (Overseas) Limited, 176 USPQ
159 (TTAB 1972) involved the issue of whether OUDE MEESTER,
Ser No. 78154196
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which in Afrikaans translates as “Old Master,” was likely
to cause confusion with DUTCH MASTERS. Although the Board
found that confusion was not likely, it accepted that the
OUDE MEESTER was the equivalent of OLD MASTER, and that it
should be viewed as such for the purpose of comparing the
marks.
Moreover, the information of record in the present
appeal confirms this view. The Examining Attorney has
submitted a report from the USPTO translator for “German &
the principal Germanic languages: Norwegian, Danish,
Swedish, Dutch and Afrikaans.” He states that Afrikaans is
a well-established language, recognized by all of the
advanced and developed nations, and is a form of old Dutch.
It “is a European language, and that is why it is familiar
in the USA.” It is also one of the principal Germanic
languages, spoken by more than 20 million people. It is
taught in the schools in the Republic of South Africa, and
all road signs there are in Afrikaans as well as English.
The translator also states that SONOP is the same in
Afrikaans as “sonsopgang,”, which became “zonsopgang” in
Dutch. The word is composed of “SON” which means “SUN” and
a shortened form of OPGANG (AUSGANG in German). With his
report the translator has provided materials taken from the
Ser No. 78154196
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Internet (WebSearch) which state that Afrikaans is one of
the official languages of South Africa.
The World Almanac and Book of Facts, 2004,3 of which we
take judicial notice,4 states that six million people speak
the language, with significant numbers in ten countries.
The overall number compares with the number of people who
speak Finnish, Catalan and Slovak, and is larger than the
number of people who speak Hebrew, Danish, Sicilian and
Yiddish. Facts about the World’s Languages: An
Encyclopedia of the World’s Major Languages, Past and
Present,5 of which we also take judicial notice, states that
“Afrikaans is the home language of 6.2 million people in
South Africa (out of a total population of about 44 million
people). Afrikaans is spoken as a second or third language
by an indeterminate but very large number of Black South
Africans (who speak Bantu languages), Asians, and English-
speaking Whites. Afrikaans is the first language of about
152,000 speakers in Namibia. …it remains the dominant
lingua franca of Namibia’s total population of about 1.6
million.” p. 4.

3 McGeveran, W ., editorial dir., © 2004.
4 The Board may take judicial notice of standard reference
works. Sprague Electric Co. v. Electrical Utilities Co., 209
USPQ 88 (TTAB 1980).
5 Garry, J. and Rubino, C., eds., © 2001.
Ser No. 78154196
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Because Afrikaans is taught in the schools, it is
reasonable to conclude that, although not their primary
language, most English-speaking South Africans would be
familiar with the Afrikaans language, and would be able to
translate a relatively simple word such as SONOP as
SUNRISE. Further, those English speakers who are familiar
with Dutch are likely to be able to understand that SONOP
means SUNRISE.
As a modern language of a very large country, as well
as a major language of five other countries, we do not view
Afrikaans as obscure. People from the Republic of South
Africa are likely to emigrate to or visit the United
States, and obviously the English-speaking people from that
country would not encounter a language barrier here. In
discussing a reason for the doctrine of foreign
equivalents, in the context of descriptive or generic
terms, the Second Circuit said that it rests on the
assumption that “there are (or someday will be) customers
in the United States who speak that foreign language.
Because of the diversity of the population of the United
States, coupled with temporary visitors, all of whom are
part of the United States marketplace, commerce in the
United States utilizes innumerable foreign languages.”
Ser No. 78154196
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Otokayama Co. v. Wine of Japan Import Inc., 175 F.3d 266,
50 USPQ2d 1626, 1629 (2d Cir. 1999).
Accordingly, because Afrikaans is a modern language
which is not obscure, and because there is no dispute that
SONOP means SUNRISE, we find that the doctrine of foreign
equivalents applies, and that the marks should be
considered the same in meaning. It is because of this
identical meaning that the du Pont factor of the similarity
of the marks favors a finding of likelihood of confusion.
As an additional point, however, we note that there is some
phonetic similarity between the marks as well, with the
initial syllable in each mark being pronounced the same.
Moreover, the cited mark SUNRISE is an arbitrary mark for
wine, and there is no evidence of any third-party use of
this or similar words for the goods at issue. Accordingly,
this factor also favors a finding of likelihood of
confusion.
Applicant argues that the du Pont factor of
“conditions under which and buyers to whom sales of
applicant’s goods are made” preclude confusion. It is
applicant’s contention that its goods “are purchased by
sophisticated consumers who purchase the goods only after
making a careful selection. Consumers purchasing either
Appellant’s goods or wine in general are particularly
Ser No. 78154196
12
concerned with product quality and readily recognize
differentiations between competing brands.” Brief, p. 8.
Among these concerns, according to applicant, is the
geographic location where the wine is made.
The problem with applicant’s argument is that its
goods, and those of the registrant, are identified solely
as “wine.” There is no limitation in the identifications
as to the price or the type of customers or the channels of
trade. Thus, we must deem applicant’s and the registrant’s
goods to be sold through all channels of trade that are
appropriate for the sale of wine, and to all appropriate
classes of customers. Wine is bought by the general
public. Some purchasers may well be sophisticated
consumers who purchase wine only after making a careful
selection. However, wine purchasers may also be people
without a great knowledge of wine, who simply want a bottle
to accompany a meal, or buy jug wine for a party or to make
punch, or would like to bring a bottle of wine as a hostess
gift. For such consumers, wine may very well be an impulse
purchase, made without a great deal of thought or
deliberation, and without regard to the geographic origin
of the wine.
Applicant has argued that the wine reviews it has
submitted indicate that wine originating from Sonop Wine
Ser No. 78154196
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Farm is known for its quality. Excerpt for one excerpt,
all of the reviews made of record by applicant are from
foreign websites: the United Kingdom, the Netherlands (in
Dutch) and the Cocos Islands (in German). Even those
people who are familiar with applicant’s SONOP wine from
its sales or promotional efforts abroad and know that it is
made in South Africa are likely to believe, upon
encountering the mark SUNRISE on identical goods in the
United States, that applicant is using the English
translation of its mark in marketing its wine in the United
States. Or such consumers may believe that applicant has
adopted the English version of its SONOP mark for wines it
makes in the United States. In either event, consumers are
likely to believe that there is a connection or sponsorship
between the maker of SONOP wine and SUNRISE wine.
Finally, to the extent that there is any doubt on the
issue of likelihood of confusion, we follow the well-
established principle that such doubt must be resolved in
favor of the registrant and prior user. In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration is affirmed.