Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE BUCKNER ENTERPRISES CORP.
Serial No. 563,836
December 2, 1987
Leitner, Greene & Christensen, P.C. for applicant
Abram I. Sachs
Trademark Examining Attorney
Law Office 8
(Sidney Moskowitz, Managing Attorney)
Before Simms, Krugman and Hanak
Members
Opinion by Hanak
Applicant applied to register DOVE in the form shown below for "solid fuel burning stoves and furnaces." [FN1]
Registration was refused under Section 2(d) of the Lanham Trademark Act on the grounds that applicant's mark, as applied to applicant's goods, so resembles the mark PALOMA--previously registered for essentially various forms of gas heating apparatus [FN2]--that confusion is likely. When this refusal was made final, applicant filed this appeal.
Applicant and the Examining Attorney have filed briefs. No oral hearing was requested.
There is no dispute that the marks PALOMA and DOVE are quite dissimilar in terms of sight (appearance) and sound (pronunciation).
The basis for the Examining Attorney's refusal to register is that "paloma" is the Spanish word for "dove" and hence the mark applied for is confusingly similar to the registered mark in terms of meaning or connotation. The Examining Attorney acknowledges "that the marks are not completely equivalent" in meaning or connotation in that the Spanish word "paloma" is defined as "pigeon, dove." See Cassell's Spanish Dictionary (1978).
The Court of Appeals for the Federal Circuit has stated that while it could not "rule out the possibility that likelihood of confusion may be shown between an English word mark and a foreign word mark which are not exact synonyms," that in such a case "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 sight and sound]." In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113 (Fed.Cir.1983) (emphasis added). [FN3] In addition, the Court held that "[t]he test to be applied to a foreign word vis-a-vis an English word with respect to equivalency is not less stringent than that applicable to two English words." (220 USPQ at 113).
This Board finds that PALOMA and DOVE are not exact synonyms. The Spanish word "paloma" has a broader meaning than the English word "dove" in that "paloma" also includes "pigeon." In English, the words "dove" and "pigeon" are understood to mean two different, although related, birds. Moreover, this Board must apply an equally stringent test in judging similarity of meaning between a foreign word (paloma) and an English word (dove) as it would between two English words (e.g. pigeon and dove). The words "pigeon" and "dove" are not synonyms, much less exact synonyms.
Faced with two marks which (1) are quite dissimilar in terms of sight (appearance) and sound (pronunciation), and (2) are not exact synonyms, we turn to a consideration of the goods.
*2 The goods of the registration and the goods of the application, while related, are by no means identical. Of all of the goods listed in the registration for PALOMA, "gas heaters" and "central gas heating furnaces" appear closest to applicant's "solid fuel burning stoves and furnaces". Applicant notes that its solid fuel burning stoves and furnaces are fairly expensive items which sell at retail for between $700 and $1200. While the description of goods in the application is not confined to fairly expensive solid fuel burning stoves and furnaces, this Board is of the view that such goods in general as well as the most pertinent goods of the cited registration (i.e. gas heaters and central gas heating furnaces) are not items which are bought on impulse. Some care and consideration is given in the purchase of these types of goods. See Mueller Furnace Co. v. United Conditioning Corp., 222 F.2d 755, 106 USPQ 112 (CCPA 1955) where the Court, in considering the marks CLIME-MATIC and CLIMATROL for air conditioners, heaters and furnaces, noted that "the goods of the particular parties are substantially identical, but they are relatively expensive and undoubtedly their purchase would be made only after a careful investigation." (106 USPQ at 115). See also Fisher Stoves, Inc. v. All Nighter Stove Works, Inc., 205 USPQ 1009 (D.N.H.1979), aff'd 626 F.2d 193, 206 USPQ 961 (1st Cir.1980) where the District Court in considering wood-burning stoves in the $335 to $595 price range noted that "a party involved in such a purchase would carefully examine the stove." (205 USPQ at 1016).
Moreover, while the Examining Attorney maintains that registrant's gas heaters and other products are sold in the same channels of trade as applicant's solid fuel burning stoves and furnaces, there is simply no evidence of record on which this statement is based. The Examining Attorney has cited no directory listings, for example, indicating that the same stores sell both products. Indeed, applicant points out that solid fuel burning equipment is not commonly sold in the same stores that sell gas heaters and other gas appliances. Rather, applicant notes that its goods are sold in outlets which carry several makes of wood and coal stoves, fireplaces and fireplace accessories.
Because PALOMA and DOVE (1) are quite dissimilar in terms of sight (appearance) and sound (pronunciation) and (2) are not exact synonyms, this Board finds that the contemporaneous use of these two marks is not likely to result in confusion, mistake or deception when said use is on different, albeit related, goods [FN4] that are purchased only after at least some examination and are not commonly sold in the same channels of trade.
Decision: The refusal to register is reversed.
R. L. Simms
G. D. Krugman
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Serial No. 563,836, filed October 18, 1985 claiming first use on June 1, 1985.
FN2. Registration No. 973,966 issued November 27, 1973 to Paloma Kogyo Kabushiki Kaisha (Japanese corporation). The goods of this registration are as follows: "Instantaneous gas water heaters, burner cookers, automatic gas ricecookers, gas heaters, bath-water burners, gas convectors, central gas heating furnaces, gas grills, ultra red ray gas grills and gas sake-warmers." Section 8 affidavit accepted. Section 15 affidavit filed.
FN3. See also In re L'Oreal S.A., 222 USPQ 925, 926 (TTAB 1984) ("The similarity in connotation must be viewed as but a single factor in the overall evaluation of likelihood of confusion ... Other factors to be considered in this case are the dissimilarity in overall appearance and pronunciation of the marks, the differences in the goods to which the marks are applied ...").
FN4. In finding no confusion between REGENT for gas furnaces (and other goods) and REGENCY for fireplaces and fireplace grills, this Board noted that "there are obvious substantial difference between the goods here involved, and on the record presented herein we are not persuaded that their sale under the similar but not identical marks REGENT and REGENCY would be likely to cause confusion or mistake or to deceive." In re International Heater Co., 168 USPQ 127, 128 (TTAB 1970). Like PALOMA and DOVE, REGENT and REGENCY are quite similar (but not identical) in meaning or connotation. However, unlike PALOMA and DOVE, REGENT and REGENCY are also quite similar in terms of sight and sound. Moreover, in In re Sarkli, Ltd., supra, the Court found no likelihood of confusion between REPECHAGE and SECOND CHANCE when used for goods which were "in part identical and otherwise closely related." (220 USPQ at 112).