From: Ririe, Verna Beth
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`Sent: 4/15/2022 4:00:11 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. Trademark Application Serial No. 88886981 - CAMBIO - N/A - EXAMINER BRIEF
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`Attachment Information:
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`Count: 1
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`Files: 88886981.doc
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`Unite d State s Pate nt and Trade mark Office (USPTO)
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`U.S. Application Serial No. 88886981
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`Mark: CAMBIO
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`Correspondence Address:
` TIMOTHY M HSIEH
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` MH2 TECHNOLOGY LAW GROUP LLP
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` 1951 KIDWELL DRIVE SUITE 310
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` TYSONS CORNER, DC 20006
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`Applicant: EWB Holdings LLC
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`Reference/Docket No. N/A
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`Correspondence Email Address:
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` tim@mh2law.com
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`Applicant has appealed the Trademark Examining Attorney's Final Refusal to register
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`the standard character trademark CAMBIO for use in conjunction with “jewelry” and “retail store
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`services featuring jewelry” on the grounds of likelihood of confusion under Trademark Act Section 2(d),
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`15 U.S.C. Section 1052(d).
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`FACTS
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`Applicant applied for registration on the Principal Register of the wording CAMBIO as a
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`trademark for use in conjunction with goods identified as “jewelry” and “retail store services featuring
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`jewelry” on April 24, 2020. In the Office Action mailed July 21, 2020, registration was refused under
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`Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), because of the likelihood of confusion with U.S.
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`Registration No. 5829466 for the trademark CAMBIARE for use in conjunction with “jewelry.”
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`This appeal, the notice of which was filed on October 14, 2021, follows the Examining Attorney’s
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`Final Refusal mailed April 14, 2021 and the denial of the Request for Reconsideration mailed December
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`14, 2021.
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`ARGUMENT
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`THE MARKS OF APPLICANT AND REGISTRANT ARE CONFUSINGLY SIMILAR AND THE GOODS AND
`SERVICES OF THE PARTIES ARE CLOSELY RELATED SUCH THAT THERE EXISTS A LIKELIHOOD OF
`CONFUSION, MISTAKE, OR DECEPTION UNDER SECTION 2(d) OF THE TRADEMARK ACT.
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`The Court in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973),
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`listed the principal factors to be considered in determining whether there is a likelihood of confusion
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`under Section 2(d) of the Trademark Act. Although the weight given to the relevant du Pont factors may
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`vary, the following two factors are key considerations in any likelihood of confusion determination:
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`similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and
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`commercial impression; and the relatedness of the goods or services as described in the application and
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`registrations. See, e.g., Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ
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`24, 29 (C.C.P.A. 1976). While other factors may be considered, “only factors of significance to the
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`particular mark need be considered.” (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d
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`1257, 1259 (Fed. Cir. 2010). In this case, the other factors will not be considered because no relevant
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`evidence concerning those factors is contained in the record. See In re National Novice Hockey League,
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`Inc., 222 USPQ 638 (TTAB 1984).
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`THE MARKS ARE HIGHLY SIMILAR
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`The test of likelihood of confusion is not whether the marks can be distinguished when
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`subjected to a side-by-side comparison, but whether the marks are sufficiently similar that there is a
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`likelihood of confusion as to the source of the goods or services. See Cai v. Diamond Hong, Inc., 901 F.3d
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`1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018). Although it is not proper to dissect a mark, if one
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`feature of a mark is more significant than another feature, greater weight may be given to the dominant
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`feature for purposes of determining likelihood of confusion. See, e.g., In re Viterra Inc., 671 F.3d 1358,
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`1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). When evaluated according to these standards,
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`Applicant’s proposed mark is highly similar to the registrant’s mark such that confusion as to the source
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`of the goods and services is likely.
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`The applicant’s proposed mark consists is a standard character mark for the wording CAMBIO.
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`The registrant’s mark is the wording CAMBIARE in standard characters. The marks are highly similar in
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`that both begin with the lettering “CAMBI,” both consist of a variant of the word “CAMBIARE,” and they
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`have the same meaning. These points of similarity outweigh the dissimilarities such that confusion is
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`likely.
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`The marks are very similar in sound and appearance, both beginning with the wording “CAMBI”
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`and differing only in the ending of “O” versus “ARE.” As such, the marks are more alike than they are
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`different. Marks may be confusingly similar in appearance where similar terms or phrases or similar
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`parts of terms or phrases appear in the compared marks and create a similar overall commercial
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`impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91
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`(TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811
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`F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH
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`confusingly similar).
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`The marks are highly similar in meaning and commercial impression as both consist of a variant
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`of the Latin root CAMBIARE which is used in various conjugations in modern language. See excerpts
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`from www.latin-is-simple.com and www.latin-dictionary.net attached to the Final Office Action of April
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`14, 2021 at pp. 2-7 and excerpts from www.wordsense.eu attached to the Response to Request for
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`Reconsideration of December 14, 2021 at pp. 2-8 as evidence that both marks are a form of the same
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`Latin root.
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`Applicant argues that the “doctrine of foreign equivalent” does not apply, citing Brown Shoe Co.
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`v. Robbins, 90 USPQ2d 1752, a case in which the Trademark Trial and Appeal Board acknowledged that
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`the Board does not generally apply the doctrine of foreign equivalents in cases where both marks are
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`non-English words from two different languages. However, in this case, as was the case in Brown Shoe
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`Co., evidence shows that both marks are Spanish words. The Board in Brown Shoe Co. stated that
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`“where both marks are Spanish words we must consider the connotation of the marks to both non-
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`Spanish consumers and Spanish-speaking consumers.” Id. at 1756. Evidence shows that both marks are
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`conjugations of the same word in the Spanish language. See excerpts from www.spanishdict.com,
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`attached to Final Office Action of April 14, 2020 at pp. 8-9 which shows that the Spanish word
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`“CAMBIAR” is a verb meaning “to change” with the word “CAMBIO” being the present tense of the word
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`and “CAMBIARE” being the future tense of the word. Accordingly, Spanish speaking consumers in
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`particular will view the marks as having the same commercial impression.
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`The English meanings of the marks further show that they are highly similar. Applicant states
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`that the English translation of “CAMBIO” is “CHANGE.” The registration indicates the English translation
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`of “CAMBIARE” is “TO CHANGE.” Accordingly, the marks essentially have a common meaning both
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`translating to a form of the verb “to change.”
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`The applicant’s proposed mark CAMBIO and the registrant’s mark CAMBIARE are confusingly
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`similar in sound, appearance, meaning and commercial impression.
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`THE GOODS AND TRADE CHANNELS ARE CLOSELY RELATED
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`If the marks of the respective parties are identical or highly similar, the commercial relationship
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`between the goods of the respective parties must be considered to determine whether there is a
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`likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983). The
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`issue of likelihood of confusion between marks must be determined on the basis of the goods as they
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`are identified in the application and the registration. Paula Payne Products Co. v. Johnson Publishing
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`Co., Inc., 177 USPQ 176 (C.C.P.A. 1973).
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`In this case, both applicant and registrant are using, or intend to use, their marks in conjunction
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`with “jewelry.” When the goods in an application and registration are identical, it is presumed that the
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`channels of trade and classes of purchasers are the same for these goods and services. See Cai v.
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`Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra
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`Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s
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`goods are related.
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`The applicant also intends to use its proposed mark in conjunction with “retail store services
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`featuring jewelry.” Though applicant does not dispute the relatedness of the goods and services for
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`purposes of this appeal, it is noted that evidence of record establishes that applicant’s retail services are
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`closely related to “jewelry” in that the same entity commonly provides jewelry and retail store services
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`featuring jewelry. See excerpts from www.zales.com, www.jared.com and www.tiffany.com attached to
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`the initial Office Action of July 21, 2020 at pp. 6-43 which show that jewelry stores sell their own jewelry
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`items, and copies of registered marks attached to the Final Office Action of April 14, 2021 at pp. 14-51
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`showing both jewelry and retail store services featuring jewelry provided under the same mark.
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`The overriding concern is not only to prevent buyer confusion as to the source of the goods
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`and/or services, but to protect the registrant from adverse commercial impact due to use of a similar
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`mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir.
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`1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the
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`registrant. TMEP §1207.01(d)(i).
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` Considering that the applicant’s proposed mark is highly similar to the registrant’s mark and the
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`fact that the goods and services as identified in the application are either identical or closely related to
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`those identified in the registration, a finding of likelihood of confusion is supported in this case.
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`CONCLUSION
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`For the foregoing reasons, the refusal to register the applicant’s proposed mark under Section
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`2(d) of the Trademark Act should be affirmed.
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`Respectfully submitted,
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`/Verna B. Ririe/
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`Trademark Examining Attorney
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`Law Office 104
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`(571) 272-9310
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`verna.ririe@uspto.gov
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`Zachary Cromer
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`Managing Attorney
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`Law Office 104
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