As an IP update on trademark practice, the doctrine of foreign equivalents was applied by the US Trademark Trial and Appeal Board (TTAB) to affirm an examining attorney’s refusal to register the mark PECORA NERA by an Italian corporation in view of the registered mark BLACK SHEEP.  In re Ing. Loro Piana & C.S.p.A., Serial No. 79014582 (November 7, 2007; non-precedential).
 
The identification of goods in the PECORA NERA trademark application included three classes, including International Class 25 for clothing items in common with the BLACK SHEEP registered mark.  Also, the PECORA NERA trademark application included a statement that “pecora nera” in Italian translated to “black sheep” in English.  In review of the PECORA NERA trademark application relative to the BLACK SHEEP registered mark, the TTAB found the scope of identified goods for PECORA NERA to include all pants, coats, vests and headwear/caps (since these overlapped the BLACK SHEEP identified goods) purchased by ordinary members of the general American public.
 
The TTAB affirmed the Section 2(d) (15 U.S.C. §1052(d)) refusal to register PECORA NERA under the doctrine of foreign equivalents.  The TTAB noted Italian is a common, major language in the world.  The TTAB took judicial notice of English/Italian dictionary definitions and found “Italian-speaking individuals in this country would be just as likely to ascribe the idiomatic meaning ['misfit'] to ‘pecora nera’ as they would the literal meaning.”  While the marks PECORA NERA and BLACK SHEEP differ in sound and appearance, the TTAB ruled “the identity in connotation (both literal and figurative) is sufficient to support a finding of likelihood of confusion, especially as used in connection with identical clothing items.”  So, the refusal in International Class 25 was affirmed, with the PECORA NERA trademark application left to proceed in other classes only.

December 6, 2007

Text Copyright © 2007 Bob Brill

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