Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE AMERICAN SAFETY RAZOR COMPANY
Serial No. 525,932
January 7, 1987
Hearing: November 13, 1986
Richard Linn, Paul Devinsky and Anthony W. Shaw for American Safety Razor Company
Trademark Examining Attorney
Law Office 7
(Lynne Beresford, Managing Attorney)
Before Sams, Simms and Krugman
An application has been filed by American Safety Razor Company to register the designation 'BUENOS DIAS' as a trademark for bar soap. [FN1]
Registration has been refused under Section 2(d) of the Trademark Act, in view of the previously registered mark 'GOOD MORNING' and design as depicted below
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
for latherless shaving cream. [FN2] It is the Examining Attorney's position that the respective goods are often sold through the same trade channels under the same mark and that applicant's mark is the Spanish equivalent of the literal portion of the cited registered mark. In support of her position, the Examining Attorney has submitted a translation taken from Cassell's Spanish-English English-Spanish Dictionary (1978) as well as a number of advertisements showing men's shaving cream and bar soap advertised together under the same trademark. The Examining Attorney has also submitted copies of a number of third-party registrations which show that companies have registered the same marks for shaving cream and for soap.
Applicant has appealed the refusal of registration. It is applicant's position that the doctrine of foreign equivalents is inapplicable in this situation for the reason that the phrase 'buenos dias' has entered the English language and does not stand in any need of translation. In support of this contention, applicant has introduced an excerpt from Webster's New Universal Dictionary of the English Language which contains a listing of 'buenos dias' and indicates that said term means '(Sp.) good day; good morning.' Applicant further contends that even if the doctrine of foreign equivalents is applied, the primary meaning of the term 'buenos dias' is 'good day' and said term only secondarily means 'good morning.' Finally, applicant argues that regardless of whether the doctrine of foreign equivalents is applied, there is no likelihood of confusion because the cited mark, unlike applicant's mark, is in a distinctive script together with a design element; because the respective goods are not similar and because the mark 'good morning' has some suggestive significance as applied to shaving cream.
Turning first to the goods, while latherless shaving cream and bar soap are obviously specifically different products, it is clear that they are related personal grooming products sold through the same channels of trade and purchased by the same purchasers in the same retail outlets. The Examining Attorney has introduced evidence showing instances of promotion by a single source of shaving cream and soap under the same trademark in the same advertisement. We believe purchasers, upon seeing bar soap and latherless shaving cream sold under the same or similar mark, would be confused as to origin and would believe that said products emanated from a single entity or were somehow associated with the same source.
*2 Turning next to the respective marks, 'GOOD MORNING' and design and 'BUENOS DIAS,' there is no question that the term 'buenos dias' is a Spanish expression meaning 'good morning.' While said term may also mean 'good day,' there is no support for the argument that 'good morning' is only a secondary meaning while the primary meaning is 'good day.' In point of fact, there is no equivalent expression in Spanish for 'good morning' except 'buenos dias' as evidenced by reference to Cassells Spanish-English English-Spanish Dictionary (1978).
Applicant has also argued that 'buenos dias' has entered the English language and, therefore, would not be translated into any equivalent term in English, as evidenced by the inclusion of 'buenos dias' in an English language dictionary. Applicant urges that the doctrine of foreign equivalents should not prevent the rational, logical and common sense resolution of this issue. Undercutting applicant's argument, however, that 'buenos dias' is an English expression which, in the real commercial world, would not be translated into its meaning of 'good morning,' is the usage of applicant's mark in the commercial marketplace, as evidenced by the specimens of record. These specimens, which appear to be wrappers or containers for the goods, depict the mark in connection with a smiling sun design and the term 'JABON.' The term 'jabon' is the Spanish word for soap, the name of the goods. In addition to the Spanish equivalent of the name of the goods, the specimens also include some advertising puffery concerning the quality of the product. This material also is in Spanish. It appears likely, therefore, that applicant markets and sells its soap (or at least the soap in connection with which the specimens of record are used) to Spanish-speaking purchasers. We believe that those bilingual purchasers familiar with registrant's 'GOOD MORNING' and design shaving cream would, upon encountering applicant's 'BUENOS DIAS' soap sold with Spanish-language phrases appearing on the container and with the name of the goods appearing in Spanish, be likely to translate 'BUENOS DIAS' into its 'GOOD MORNING' English equivalent and mistakenly believe that the 'BUENOS DIAS' product was a product emanating from registrant and marketed to the Spanish-speaking public. While the marks are concededly distinguishable in their appearance and pronunciation, it is our view that the equivalency in meaning or connotation is sufficient, in this case, to find likelihood of confusion. Contrast: In re Tia Maria, Inc., 188 USPQ 524 (TTAB 1975) where the Board found that there are foreign expressions that would not be translated but, rather, the expression would be accepted as it is, concluding no likelihood of confusion arising from the use of TIA MARIA for restaurant services and AUNT MARY or AUNT MARY'S for canned fruits and vegetables.
We also find this situation to be distinguishable from that presented in In re L'Oreal S. A., 222 USPQ 925 (TTAB 1984) (use of HAUTE MODE for hair coloring cream shampoo and HI-FASHION SAMPLER for fingernail enamel, held not likely to cause confusion). In that case, the Board found the marks, while similar in connotation, were different in that the cited mark contained the word SAMPLER. The Board also noted the obvious suggestive significance of the marks, the difference in the goods and the overall dissimilarity of the appearance and pronunciation of the marks and concluded that these differences outweighed the similarity in connotation of the marks. In the present case, we have marks which are essentially arbitrary, with perhaps a slight suggestiveness relating to the fact that the respective products are often used in the morning. In addition, the connotations of the marks are identical, with the sun design in the cited registered mark serving merely to reinforce the commercial impression engendered by the word portion. Finally, we believe the products involved herein are more closely related grooming aids than was the case in L'Oreal, supra.
*3 We conclude, therefore, that regardless of whether we invoke the doctrine of foreign equivalents and translate 'BUENOS DIAS' into 'GOOD MORNING' or whether we view 'BUENOS DIAS' as an English phrase meaning 'GOOD MORNING,' we find the overall connotation of the marks and the relationship between the goods sufficient for confusion to be likely.
J. D. Sams
R. L. Simms
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 525,932 filed March 8, 1985.
FN2. Registration No. 315,340 issued July 24, 1934. Renewed twice.