TTAB Keeps it 100, Rules in Favor of Cento Per Cento

Facts

The Applicant, Big Heart Wine LLC, filed an intent-to-use application for 100 PERCENT WINE (“WINE” disclaimed) for “dessert wines; fortified wines; fruit wine; grape wine; red wines; rose wines; sparkling wines; still wines; table wines; white wines; wines” in Class 33. The Examining Attorney refused registration on the grounds of likelihood of confusion with a prior mark CENTO PER CENTO for “wine” in Class 33. The cited mark translates to “100 percent” in Italian. The CENTO PER CENTO registration was issued on September 21, 1993 and was based on use in commerce since as early as June 15, 1992. The Applicant appealed.

Legal Analysis

Per the doctrine of foreign equivalents, English translations of words in common foreign languages are considered in the likelihood of confusion analysis. For example, the mark BUENOS DIAS was found to be confusingly similar to the mark GOOD MORNING for soap and shaving cream, respectively, in In re Am. Safety Razor Co. (2 U.S.P.Q.2d 1459 (TTAB 1987)).
 
Here, the Board gave little weight to the word “WINE” in the Applicant’s mark given that it is a generic term of the applied-for goods and instead considered 100 PERCENT to be the dominant portion of the mark. In comparing the Applicant’s mark to the cited mark, the Board referred to the Examining Attorney’s evidence indicating the translation of CENTO PER CENTO to mean 100 PERCENT in Italian. The Applicant submitted evidence that only 0.18% of the population would be old enough to purchase wine and translate the cited mark, and argued that the American consumer would not stop and translate the cited mark. However, the Board was not persuaded, and held that there is no need to determine whether Italian is familiar to an appreciable segment of American consumers and that the Applicant’s own evidence showed that Italian is a common, modern language. Accordingly, the Board found that the doctrine of foreign equivalents was applicable.
 
Next, in analyzing the appearance and sound of the marks, the Board found that the marks were somewhat similar. The term PERCENT within the Applicant’s mark was similar to the term PER CENTO within the Registrant’s mark, whereas the other elements “100” and “WINE” are dissimilar. 
 
In analyzing the relatedness of the goods, the Board held that the respective goods are identical, and noted that the identification of goods lacked any restriction as to trade channels or consumers. The Board was thus unpersuaded by the Applicant’s arguments that the goods would be purchased by sophisticated consumers due to the lack of limitations in the identification of goods indicating that the products were available only at high prices and purchased by consumers with specialized knowledge.  
 
The Board affirmed the refusal. 
 
This opinion demonstrates the importance of considering the translation (either foreign language to English or English to foreign language), as well as the component terms of prior marks and conducting comprehensive trademark clearance searches to minimize the risk of finding a likelihood of confusion. As part of its full service trademark practice, Arent Fox routinely handles clearance searches and trademark prosecution.