This article first appeared on WTR Daily, part of World Trademark Review, in June 2017. For further information, please go to www.worldtrademarkreview.com

Although language has always been fluid, in the social media age speech is constantly evolving, with new slang terms developed on a daily basis. What effect then does this have on trademark rights? Can adopting a slang variation of a traditional word be sufficient to differentiate two marks for related goods? No – according to a recent Trademark Trial and Appeal Board decision. In In re Cruz (Serial 86845373 (TTAB May 10 2017) (not precedential)), the board ruled that PA’DENTRO (slang) for tequila was likely to cause confusion with ADENTRO (traditional) for wines.

The applicant, Jose Cruz Jr, filed an intent-to-use application for the mark PA’DENTRO TEQUILA for “liquor and liqueur based beverages, namely, flavored tequila and ready to drink tequila-based beverages; tequila” in International Class 33. Two months later, Cruz amended the application, deleting the word ‘tequila’ from the mark. In response to an office action, Cruz later translated the word ‘pa’dentro’ to ‘inside’. The examining attorney refused registration based on a prior registration of ADENTRO for wines, also translated as “inside”. Cruz appealed after the refusal was made final.

The board began its opinion by swiftly dispensing with an evidentiary issue, and then turned to the Du Pont factors, enumerated in In re EI du Pont de Nemours & Co (476 F2d 1357, 177 USPQ 563 (CCPA 1973)). Notably, Cruz had argued that although the marks translated the same, consumers would differentiate between the two because ADENTRO was a formal term, while PA’DENTRO was “a slang, urbanized expression”. The board gave no credence to that argument. Instead, it simply adopted the examining attorney’s opinion that, despite these differences, the marks still conveyed the same commercial impression and consumers were likely to see PA’DENTRO as a variation on the ADENTRO mark.

As to the goods, the board called on established precedent and easily found that tequila and wine are sufficiently related to cause confusion. The board also found that without an express restriction as to the trade channels, both Cruz’s and the registrant’s products could be found on the same store shelves. Finally, Cruz argued that consumers of his tequila and the registrant’s wines would be discriminating, making their decisions based on unique preferences, and unlikely to confuse tequila and wine. The board was not persuaded. Without a specific limitation, the board had to assume that both alcoholic beverage aficionados and average consumers were the intended consumers of both entity’s goods. In other words, both sommeliers and college students alike must be accounted for when considering the potential for confusion.

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