Sight and Sound Prevail Over Identical English Translation and Fame in TTAB Opposition

Overview

This case is a TTAB precedent.

It centered on a dispute between August Storck KG and Florend Indústria e Comércio de Chocolates LTDA regarding the registration of a stylized mark for chocolate products. The Opposer, August Storck KG, relied on its long-standing and commercially successful MERCI brand, which translates from French as "thank you." The Applicant sought to register a stylized version of the word "DANKE," which translates from German as "thank you," for identical goods.

The primary legal tension involved the "doctrine of foreign equivalents," a rule that typically requires foreign words to be translated into English before being tested for similarity. The Board was tasked with determining if the shared English meaning of two common foreign terms was sufficient to create a likelihood of confusion when the marks were otherwise distinct in sight and sound.

A significant portion of the decision involved the commercial and conceptual strength of the Opposer’s mark. While the Opposer demonstrated substantial sales and advertising figures, the Board examined whether the concept of expressing gratitude through chocolate was a unique identifier or a common industry practice.

Background

The Applicant filed an application seeking to register the mark DANKE in a stylized format for “chocolate; chocolate bars” in International Class 30. The mark featured the word "DANKE" in brown with beige outlines, and the application included a translation statement clarifying that the English translation of "danke" is "thank you."

The Opposer filed an amended pleading opposing the registration on the ground of likelihood of confusion under Trademark Act Section 2(d). The opposition was based on several prior registrations and alleged common law rights. The Opposer’s primary focus was its MERCI mark. Other marks incorporating "MERCI" were also included, as well as unregistered marks under common law rights. The Opposer provided translation statements indicating that "merci" translates to "thank you" or "thanks."

The Opposer opposed the registration on the ground of likelihood of confusion under Section 2(d) of the Trademark Act. The opposition was based on several prior mark of MERCI and alleged common law rights. The Opposer provided translation statements indicating that "merci" translates to "thank you" or "thanks."

The Applicant initially asserted several affirmative defenses, including estoppel, waiver, and bad faith. However, the Board deemed these impliedly waived because the Applicant did not pursue them at trial.

Analysis

Opposer's Common Law Priority

While the Opposer successfully established priority for its registered marks, the Board rejected its attempt to show prior common law rights for the mark DANKE HEIßT MERCI. To support its common law claim, the Opposer introduced Amazon.com printouts dated May 15, 2023, showing the mark and its chocolates listed for sale.

The Board dismissed this evidence, noting that internet printouts without supporting testimony constitute hearsay and cannot prove a date of first use. Furthermore, the printouts were dated after the Applicant's priority filing date of March 26, 2021.

The Opposer also argued that the mark was used in Germany and on German websites where delivery to the United States was available. The Board found this unpersuasive, stating that foreign use or foreign website listings without evidence of actual distribution or sales to U.S. consumers prior to the Applicant's priority date cannot establish U.S. common law rights.

Consequently, the Board held that the Opposer failed to prove priority for the DANKE HEIßT MERCI common law mark and excluded it from the likelihood of confusion analysis.

DuPont #1: Similarity of the Marks

Regarding the doctrine of foreign equivalents, the Board determined it was appropriate to translate both marks into English for testing. The Board took judicial notice of census data showing that French and German are major, modern languages frequently spoken in U.S. households. The Board rejected the Applicant’s argument that consumers would not translate the terms, finding that an appreciable number of U.S. purchasers are capable of translating these common foreign words, especially in the context of chocolate marketing. The Board stated:

"The fact that MERCI and DANKE appear in U.S. English dictionaries, defined as foreign terms, establishes that U.S. consumers are likely to be familiar with both foreign language words and translate the words to understand their English meaning."

When comparing the marks after translation, the Board found they shared an identical meaning: "thank you." However, the Board observed that the marks were highly dissimilar in sound and appearance. The Applicant's stylized mark was pronounced "DAHN-kuh," while the Opposer’s mark was pronounced "mehr-SEE." They shared no similar letter strings or visual elements.

The Board also noted that while they shared the connotation of gratitude, the commercial impression was distinct because the terms derived from different languages. Ultimately, the Board determined that the stark differences in sound and appearance outweighed the identical meaning, particularly because the shared meaning reflected a common industry message.

DuPont #5: Fame and Commercial Strength of the Prior Mark

Next, the Board examined the commercial strength of the MERCI mark to define its scope of protection. The Opposer provided testimony from its subsidiary's president and marketing director. The evidence showed the MERCI mark had been used in the United States since 1965 and was sold in major national retailers such as Walmart, Target, Kroger, Walgreens, and Costco.

The Opposer submitted evidence to show that its total U.S. sales from 2017 to 2022 exceeded $100 million. Its social media presence included 105,000 combined followers on Instagram and Facebook, generating millions of impressions and video views. The Opposer also highlighted extensive television advertising on networks like the Hallmark Channel and the Oprah Winfrey Network, with commercials airing approximately 2,000 times in December 2021 alone.

The Applicant criticized this evidence, noting a lack of annual advertising expenditure figures and market share context. The Applicant also criticized the Opposer's poll data for using "aided awareness" and introduced evidence of competitor brands like Snickers and Hershey’s, which had significantly larger social media followings.

Although the Board agreed with the Applicant that the poll utilizing aided awareness lacked significant evidentiary value and that the sales and marketing data lacked some context, it nonetheless concluded that the decades of use and $100 million in sales proved a moderate level of commercial success and brand recognition.

Therefore, the fifth DuPont factor was found to favor the Opposer.

DuPont #6 : Conceptual Weakness and Third-Party Use

The sixth DuPont factor addresses both conceptual and commercial strength. However, because the Applicant did not challenge the commercial strength of Opposer’s mark MERCI, the Board analyzed only its conceptual strength. The mark was presumed inherently distinctive because it was registered on the Principal Register without a claim of acquired distinctiveness under Section 2(f).

To show conceptual weakness, the Applicant submitted only one third-party use-based registration for a mark incorporating "MERCI" and 17 registrations for "thank you" formative marks. The Board rejected the 17 registrations because most did not include "merci" or "danke," and several covered unrelated goods or were cancelled. As for the single "MERCI" mark, the Board found that "[o]ne third-party registration incorporating the word MERCI for similar goods falls far short of demonstrating that MERCI is conceptually weak."

Because the Applicant failed to show any conceptual weakness of Opposer's mark through third-party registrations, the Board found the sixth DuPont factor to be neutral.

DuPont #13: Other - Conceptual Weakness and Third-Party Use

However, the analysis shifted significantly under the thirteenth DuPont factor, which allows for the consideration of any other established fact probative of the effect of use. The Applicant introduced a Google Images search showing that the phrase "thank you" is pervasively used as an ornamental or descriptive sentiment on chocolate packaging across the industry. The search results identified numerous retailers using "thank you" in a non-trademark, ornamental manner.

The Board found that consumers are conditioned to see "thank you" as an expression of gratitude rather than a source indicator in the chocolate market. The Board even noted that the Opposer’s own marketing slogans, such as "the sweetest way to say thank you" and "Thank you means merci," underscored the conceptual weakness of the term.

Because the shared meaning of the two marks was a common, descriptive sentiment in the trade, the Board concluded that the identical connotation was a weak basis for finding similarity. Therefore, this factor weighed against a likelihood of confusion.

DuPont #2, #3, and #4: Goods, Trade Channels, and Purchasing Care

The Board found that the goods were literally and legally identical, noting that the Opposer’s broad identification of "chocolate" necessarily encompassed the Applicant’s "chocolate bars." Because the goods were identical, the Board presumed they traveled through the same channels of trade to the same classes of purchasers.

Regarding purchasing care, the Board observed that chocolate is often a low-priced, impulse purchase. However, because the identifications were not limited to low-end or high-end products, the Board assumed the goods covered all price ranges and that the relevant public included both sophisticated aficionados and ordinary consumers. Following the standard of the "least sophisticated potential purchaser," the Board found that consumers would likely exercise only ordinary care.

Therefore, the second, third, and fourth DuPont factors all weighed in favor of a finding of likelihood of confusion.

Board’s Decision

Despite the identity of the goods and the overlap in trade channels, the Board concluded that confusion was unlikely. In this case, the significant differences in sound, appearance, and commercial impression under the first factor, coupled with the conceptual weakness of the "thank you" theme under the thirteenth factor, made confusion unlikely between the Applicant's mark and the Opposer's mark.

The conceptual strength of a mark appears across various DuPont factors. It can be used to argue the structural weakness of a common term or, as is most typical, analyzed under the sixth factor by demonstrating third-party registrations. Now, as this case illustrates, it can also play a pivotal role under the thirteenth factor.

This decision demonstrates that even when a mark is inherently distinctive and commercially successful, its scope of protection can be significantly narrowed by showing that its underlying meaning or theme reflects a common sentiment in the trade.