Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE ALFONSO ENG PEREZ
Serial No. 73/777,892; 73/786,844
August 15, 1991
Stuart J. Friedman of Sixbey, Friedman, Leedom & Ferguson P.C., for applicant
Sloan B. Gregory
Trademark Examining Attorney
Law Office 14
(R. Ellsworth Williams, Managing Attorney)
Before Sams, Hanak and Quinn
Opinion by Quinn
Applicant, Alfonso Eng Perez, has appealed from the final refusals of the Trademark Examining Attorney to register the mark EL GALLO [FN1] and the mark shown below [FN2]
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for fresh vegetables, namely tomatoes and peppers. The Examining Attorney in both cases has refused registration under Section 2(d) of the Act on the ground that applicant's marks, when applied to applicant's goods, so resemble the previously registered mark shown below
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for fresh citrus fruit [FN3] as to be likely to cause confusion. Applicant and the Examining Attorney have filed briefs. After requesting an oral hearing, applicant later withdrew the request. Because of the similarity of the issues involved in these two appeals, and pursuant to applicant's request, the Board shall decide these cases in one opinion.
It is the Examining Attorney's position that "gallo" is the Spanish equivalent of "rooster" and that the respective goods are sold through the same channels of trade to the same class of purchasers, often under the same mark. Of record is a translation taken from Cassell's Spanish-English English-Spanish Dictionary (1978). The Examining Attorney also has submitted copies of a number of third-party registrations which show that entities have registered the same marks for fruits and vegetables.
Applicant's position, on the other hand, is that the Spanish word "gallo" has a broader meaning than the English word "rooster" and, thus, the words do not constitute foreign equivalents. Applicant also points to the dissimilarities between the marks in sound and appearance. Applicant further relies upon the facts that there has been contemporaneous use of the marks for fifty years, and contemporaneous registration for more than forty years, all without any instances of actual confusion. Applicant has submitted his declaration attesting to no known actual confusion. Finally, applicant argues that the marketing reality is that fresh produce is typically sold from bulk displays which omit any trademark; thus, applicant concludes, purchasers both at the wholesale level and the retail level will not encounter the marks which are the subject of this appeal.
There can be no real dispute that there is a close relationship between the involved goods. Applicant concedes that its "fresh vegetables--namely, tomatoes and peppers" and the cited registrant's "fresh citrus fruit" may all be described as "fresh produce." Applicant's and registrant's goods are sold in the same trade channels (e.g., retail grocery stores) to the same purchasers. [FN4] Consistent with our conclusion that these goods are related is the Examining Attorney's evidence of several previously issued registrations, each of which shows adoption and registration of the same mark for both fresh vegetables and fresh fruit.
*2 Turning next to the marks, EL GALLO and ROOSTER, there is no question that the term "gallo" is a Spanish word meaning "rooster", such translation being the first one listed in the dictionary entry. The marks are arbitrary as applied to the respective goods. While the Spanish term "gallo" may also have other English translations, there is no support for the argument that the other English meanings of "gallo" would be ascribed to the marks by purchasers. Moreover, in the dictionary listing for "rooster", only one Spanish word is given, namely "gallo."
Undercutting applicant's argument that the Spanish word "gallo" has meanings other than "rooster", and, thus, is not the foreign equivalent of registrant's mark, is the usage of applicant's mark in the commercial marketplace, as evidenced by the specimens of record. The specimens depict applicant's marks with a prominent representation of a rooster. While the rooster design is not a feature of the marks sought to be registered and, of course, cannot be considered when comparing the marks, the design would certainly reinforce to consumers in the marketplace the "rooster" translation of "gallo" as opposed to the other English meanings of "gallo."
While the marks are concededly distinguishable in their appearance and sound, it is our view that the equivalency in meaning or connotation is sufficient, in this case, to find likelihood of confusion. See: In re Maclin-Zimmer-McGill Tobacco Co., Inc., 262 F. 635 (DC Cir.1920) [EL GALLO and OUR ROOSTER and design, both for tobacco, found likely to confuse].
In further urging that the refusal be reversed, applicant points to his ownership of a prior registration, now expired, of EL GALLO and design (same stylization as that shown in application Serial No. 73/786,844) for fresh vegetables, namely tomatoes and peppers. Applicant states that he failed to file a second renewal through inadvertence, which resulted in expiration of the registration under Section 9 of the Act. Applicant goes on to argue that his registration was issued at that time over the registration now cited. Applicant argues that the absence of any actual confusion, as shown by Mr. Perez's declaration, despite almost fifty years of contemporaneous use and forty years of contemporaneous registration, tips the scales decidedly in applicant's favor.
While we confess that applicant's showing in this regard might raise an eyebrow, the absence of actual confusion is but one factor in our analysis which, in the case before us, is outweighed by the other factors bearing on likelihood of confusion. In any event, the issue before us is not one of actual confusion, but only the likelihood of confusion. As to the years of contemporaneous registration, we are, of course, not bound by an Examining Attorney's prior determination as to registrability.
We find that the situation in the appeal before us is distinguishable from two cases heavily relied upon by applicant, namely In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111 (Fed.Cir.1983) and In re Buckner Enterprises Corp., 6 USPQ2d 1316 (TTAB 1987). As opposed to those two cases, we find that the marks involved herein are exact synonyms. Moreover, unlike the goods in Buckner, fresh produce is relatively inexpensive and would likely be bought on impulse. Under such circumstances as presently before us, purchasers are held to a lesser standard of purchasing care and, thus, are more likely to be confused as to the source of the goods. See: Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed.Cir.1984).
*3 We conclude that the overall connotation of the marks and the close relationship between the goods are sufficient for confusion to be likely.
Decision: The refusals of registration are affirmed.
J. D. Sams
T. J. Quinn
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 73/777,892, filed January 31, 1989, claiming use since December 30, 1941.
FN3. Registration No. 362,421, issued November 15, 1938; twice renewed.
FN4. Applicant argues that the marketplace reality is that purchasers are unlikely to even see the involved marks. Applicant has failed, however, to submit any evidence to substantiate its argument. Even if supported, a different result would not be warranted given the fact that the identifications of goods have no restrictions.
I respectfully dissent from the result reached by the majority. The marks EL GALLO and ROOSTER are obviously totally dissimilar in terms of visual appearance and sound (pronunciation). Their only similarity is in connotation inasmuch as one of the English translations of the Spanish word "gallo" is "rooster." [The Spanish word "gallo" is also translated into English to mean "dory"; "float"; "wall-board"; and "false note." See Cassell's Spanish-English Dictionary (1978) ]. It must be remembered that "where the only similarity between the marks is in connotation, a much closer approximation is necessary ... to justify a refusal to register on that basis alone where the marks otherwise are totally dissimilar." In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113 (Fed.Cir.1983). In re Buckner Enterprises, 6 USPQ2d 1316 (TTAB 1987).
In addition, "such similarity as there is in connotation must be weighed against the dissimilarity in appearance, sound, and all other factors, before reaching a conclusion on likelihood of confusion as to source." In re Sarkli, 220 USPQ at 113 (emphasis added); In re Ness & Co., 18 USPQ2d 1815, 1816 (TTAB 1991). One of the other factors is "the length of time during and conditions under which there has been concurrent use without evidence of actual confusion." In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). Applicant has submitted an affidavit attesting to the fact that since he first used the mark EL GALLO in 1941, "there has not been a single instance of actual confusion between goods sold under the mark EL GALLO and goods sold by another under the mark ROOSTER." Given the fact that EL GALLO and ROOSTER are totally dissimilar in terms of visual appearance and pronunciation and are not "exact synonyms," [FN1] I believe that the absence of actual confusion for half a century is further indication that there is little likelihood of confusion.
FN1. "Gallo," as noted, also means other things besides "rooster." See In re Sarkli, 220 USPQ at 113; In re Buckner, 6 USPQ2d at 1317. ("This Board finds that PALOMA [EL GALLO] and DOVE [ROOSTER] are not exact synonyms. The Spanish word "paloma" ["gallo"] has a broader meaning than the English word "dove" ["rooster"] in that "paloma" ["gallo"] also includes "pigeon" ["dory," "float," etc.]."