TATTOO and TATUAJE trademark case: foreign equivalent doctrine
December 12th, 2011 by Jacob
Just after my last post on the Foreign Equivalents Doctrine I read on The TTABlog about a recent Trademark Trial and Appeal Board decision focusing on the doctrine. I will add my take below, but have a look at The TTABlog for more details.
The company Nicaragua Tobacco Imports, Inc. attempted to register the mark TATOO for cigar, cigarettes and related goods. Tatuaje Cigars, Inc. opposed the registration based on a likelihood of confusion with its registered trademark TATUAJE for cigars. Tatuaje is the Spanish word for tatoo and the two sound very similar. I would hazard to guess most Americans would guess the correct meaning of tatuaje regardless of their knowledge of Spanish. Indeed, Tatuaje asserted in its opposition, in addition to the translation that the sound and appearance of the two words are similar.
The Board reasoned
Nicaragua Tobacco (TATOO) cited several cases where marks also had direct translations such as Paloma (Spanish for dove/pigeon) versus Dove and REPECHARGE and SECOND CHANCE were not found confusingly similar. However, the Board held the tatuaje clearly translated to tatoo, and the words sounded and looked similar. The Board clearly was not impressed by arguments to the contrary.
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TATTOO and TATUAJE trademark case: foreign equivalent doctrine
Just after my last post on the Foreign Equivalents Doctrine I read on The TTABlog about a recent Trademark Trial and Appeal Board decision focusing on the doctrine. I will add my take below, but have a look at The TTABlog for more details.