Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE NESS & CO.
Serial No. 73/778,313
March 14, 1991
William A. Birdwell, Spears, Lubersky, Bledsoe, Anderson, Young & Hilliard for applicant
Michael C. Mason
Trademark Examining Attorney
Law Office 2
(R. Ellsworth Williams, Managing Attorney)
Before Sams, Hanak and Quinn
Members
Member
Ness & Co. (applicant) applied to register GOOD-NESS in the form shown below for "aged blue cheese, blue cheese crumbles and pre-packaged meats." [FN1]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Registration was refused pursuant to 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 LABONTE'--previously registered in the form shown below for "pasteurized soft ripened cheese"--such that confusion is likely. [FN2] The Examining Attorney notes that the mark LABONTE' can be translated from French into English as "the goodness."
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
When the refusal was made final, the applicant appealed to this Board. Applicant and the Examining Attorney filed briefs. Applicant did not request an oral hearing.
This case involves "the doctrine of 'foreign equivalents' [wherein] foreign words from common languages are translated into English to determine ... their [[[degree of] confusing similarity to English word marks." 2 J. McCarthy, Trademarks and Unfair Competition, Section 23:14 at page 78 (2d ed. 1984). Of course, in applying the doctrine of foreign equivalents, it would be improper to compare a foreign word mark with an English word mark solely in terms of connotation or meaning. As has been stated, "such similarity as there is in connotation [between the foreign word mark and the English word mark] 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, Ltd., 721 F.2d 353, 220 USPQ 111, 113 (Fed.Cir.1983).
In comparing applicant's mark GOOD-NESS with the registered mark LABONTE', we note at the outset that the marks are totally dissimilar in terms of sight (visual appearance) and sound (pronunciation). Moreover, in terms of meaning or connotation, applicant's mark--as depicted in its particular stylized format-- is by no means identical to the cited mark. That is to say, applicant's mark GOOD-NESS is not identical to the English word "goodness," much less the cited mark LABONTE'. By separating the "GOOD" portion of its mark from the "NESS" portion of its mark, applicant has created a total mark which plays on applicant's trade name "Ness & Co." In short, applicant's mark has a double meaning. In one sense, applicant's mark indicates the common, laudatory term "goodness." In another sense, applicant's mark indicates "good Ness," and it would be perceived in a manner like "good Smith" or "good Jones."
Given the fact that applicant's mark GOOD-NESS and the registered LABONTE' mark are totally dissimilar in terms of appearance and pronunciation, and the additional fact that in terms of meaning or connotation, applicant's mark and the registered mark have certain differences, we find that their contemporaneous use on nearly identical goods (i.e. different types of cheeses) will not result in confusion, mistake or deception. In making this determination, we also note--as did the Examining Attorney--that the word "goodness" is a highly laudatory term as applied to food items. "Highly laudatory ... terms have been accorded a narrower scope of protection than arbitrary or fanciful terms because purchasers are less likely to view the terms as an indication of source." In re Lar Mor International, Inc., 221 USPQ 180, 181-182 (TTAB 1983) (TRES JOLIE was held not confusingly similar to BIEN JOLIE when both were used on women's apparel even though the marks translated into the highly laudatory terms "very pretty" or "quite pretty.") [FN3]
*2 Decision: The refusal to register is reversed.
J.D. Sams
E.W. Hanak
T.J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Serial No. 73/778,313 filed February 2, 1989 claiming first use on May 21, 1987.
FN2. Registration No. 1,412,497 issued October 7, 1986.
FN3. In finding that the simple word "goodness" is highly laudatory as applied to food items, we make no finding as to the strength of applicant's mark or the registered mark. Obviously, neither mark is identical to the simple word "goodness." However, the point to be made is that the only area of similarity between the two marks GOOD-NESS and LABONTE' is the indication of "goodness."