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Is CENTURY Confusingly Similar with SECOLO for Wine?

The Biltmore Company, Applicant, sought to register the mark CENTURY (in standard characters) for wine in International Class 33. See In re The Biltmore Company, Serial No. 85561663 (Nov. 21, 2014) [Not precedential]. Originally, the Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the grounds the Applicant’s use of its mark was likely to cause confusion with registered mark SECOLO for table wine in International Class 33. In its decision, the Board noted that the word, “Secolo” it Italian for “Century.” Upon refusal, Applicant appealed and filed a request for reconsideration; the Trademark Examining Attorney denied the request for reconsideration and the appeal resumed.

Upon examination, the Board started with the du Pont factors, particularly with relatedness of the goods, the evaluation of which the Board based on the cited application and registration. As one might expect, the Board easily found relatedness between “wine” and “table wine,” noting that “table wine” is a “type of wine” and were thus “encompassed by Applicant’s broader identification” (i.e., wine). Id. at 3. Noting there are no limitations of goods with respect to channels of trade or classes of customers, the Board presumed that both Applicant and Registrant offered “at least table wine for consumption to the same classes of consumers through identical distribution channels.” Id. The second and third du Pont factors thus heavily favored a likelihood of confusion.

After, the Board reviewed the first du Pont factor, i.e., whether the marks or similar or dissimilar with respect to sound, appearance, connotation, or commercial impression. Similarity of any one factor can be enough to find the marks confusingly similar. The test does not consist of a side-by-side comparison, but rather instead asks whether the marks are sufficiently similar enough with respect to commercial impression such that individuals who encounter the marks would likely believe there to be an association between the two marks or a connection between the parties. Id. at 5. The Board focuses on the recollection of the average purchaser, which is believed to be a general impression of the marks as opposed to more a specific impression. Id. For this particular analysis, the Board found reason in the doctrine of foreign equivalents, under which:

[F]oreign words from common 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.

Id. (citing Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005)).

The doctrine of foreign equivalents is applicable when there is a likelihood that an ordinary American purchaser—who, for the purpose of the doctrine, is assumed to be knowledgeable in the foreign language—would stop and translate the foreign term into English. The doctrine of foreign equivalents is a rule in trademark law that allows a foreign term to be translated into English to determine whether the term may be registered or if the term is likely to cause confusion with similar, registered marks. “Generally, the doctrine is applied when the English translation is a literal and exact translation of the foreign wording.” Id. at 5. In its opinion, the Board noted there was no dispute that there are a considerable amount of Italian speakers in the U.S., and it was also indisputable that SECOLO is an Italian term that translates to “Century” in English. “Generally, however, applying the doctrine of foreign equivalents is only part of the determination of whether the marks being compared are confusingly similar.” Id. at 6. In addition to similarity of connotation, other factors (such as dissimilarity in overall appearance and pronunciation of the marks, difference in the goods to which the marks are applied, and degree of suggestiveness of applicant’s mark and the cited mark to the respected goods) are considered. Id. at 7 (quoting In re Ithaca Industries, Inc., 230 USPQ 702, 703 (TTAB 1986)).

When analyzing other such factors, the Board found that: (1) The marks SECOLO and CENTURY as dissimilar in appearance but somewhat similar in pronunciation; (2) The terms SECOLO and CENTURY are arbitrary when applied to table wine, and thus SECOLO was conceptually strong as a trademark; and (3) Wine and table wine are overlapping goods sold to the same customers through identical trade channels, which also increased likelihood of confusion. Idat 8.

Interestingly, Applicants argued that because Registrant, when prosecuting its trademark application, admitted that purchasers would not stop and translate SECOLO into its English translation, the Board should thus find that purchasers would take the mark at face value and not apply the doctrine of foreign equivalentsId. However, the Board noted that Registrant took this position in response to a previous refusal to register with respect to prior registered mark CENTURY OF PORT for port wine. Id. The Board reasoned that Registrant’s prior position was not an admission, however may be considered in the totality of the circumstance. In this particular case, the Board took the position that Registrant’s prior opinion could not be treated as its opinion in this circumstance with respect to Applicant’s mark because the matter at hand involved a mark quite different from the prior, third-party registration. (I.e., “CENTURY OF PORT” versus “CENTURY,” the former which includes additional words; SECOLO means CENTURY and does not translate directly to CENTURY OF PORT.)

Further, applicant argued that wine drinkers are used to seeing foreign terms on wine labels, and would thus not translate SECOLO into “Century,” however the Board decided there was “no evidentiary support for this position.” Id. at 9. While some labels may contain foreign text, such does not dictate that a potential purchaser will not translate the term into English.

Accordingly, the Board thus affirmed the Trademark Examining Attorney’s refusal to register, on the grounds that CENTURY would be likely to cause confusion with the mark SECOLO.

For more information on wine or alcohol law, labeling, or trademark, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

Lindsey A. Zahn

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Lindsey is the founder and author of On Reserve: A Wine Law Blog. She is an alcohol beverage and food attorney and is admitted to the New York State Bar.

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