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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA410763

Filing date: 05/24/2011

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91185180

Party DefendantNICARAGUA TOBACCO IMPORTS, INC.

CorrespondenceAddress

Jose GutmanFleit Gibbons Gutman Bongini PL551 NW 77th StreetBoca Raton, FL 33487UNITED STATEStmboca@fggbb.com

Submission Brief on Merits for Defendant

Filer's Name Jose Gutman

Filer's e-mail tmboca@fggbb.com

Signature /Jose Gutman/

Date 05/24/2011Attachments Trial_Brief_of_Applicant_5-24-11.pdf ( 21 pages )(94217 bytes )

http://estta.uspto.gov/http://estta.uspto.gov/

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

__________________________________________/

TATUAJE CIGARS, INC. Opposition No. 91/185,180

Opposer, Appl. Ser. No.: 77/359,141

v.

NICARAGUA TOBACCO IMPORTS, INC., Mark: TATTOO

Applicant.__________________________________________/

TRIAL BRIEF OF APPLICANT NICARAGUA TOBACCO IMPORTS INC.

Applicant Nicaragua Tobacco Imports, Inc., (Applicant), through its

undersigned counsel, hereby submits its Trial Brief in support of its application for

registration of its mark TATTOO and in defense of the Opposition by Opposer Tatuaje

Cigars, Inc.

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TABLE OF CONTENTS

I. INTRODUCTION 4

II. DESCRIPTION OF THE RECORD 8

III. STATEMENT OF THE ISSUES 9

IV. ANALYSIS 9

Stipulated Facts 9

Summary of Analysis 10

A. Proper Analysis for Doctrine of Equivalents 10

B. Dissimilar Sight and Sound 17

C. Technical Analysis By Two Examining Attorneys Separately

Resulted in Findings of No Confusing Similarity 19

V. CONCLUSION 20

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TABLE OF AUTHORITIES

CASES PAGE(S)

In re Buckner Enterprises Corp.,

6 U.S.P.Q.2d 1316 (T.T.A.B. 1987) 6, 13, 16Palm Bay Imports v. Veuve Clicquot Ponsardin,

396 F.3d 1369, 1377, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005) 11

In re Perez,

21 U.S.P.Q.2d 1075, 1076 (T.T.A.B. 1991) 6, 7, 16, 17

In re Thomas,

79 USPQ2d 1021, 1025 (TTAB 2006) 11

STATUTES

15 U.S.C. 1052(d) 5, 11, 20

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I. Introduction

Applicant is a well established producer and distributor of cigars that routinely

develops and promotes new in-house brands of cigars for sale to the general public.

Applicant had identified, without actual knowledge of Opposers mark TATUAJE, the

mark TATTOO for cigar products. The Applicant filed its application and the Trademark

Office examining attorney approved the mark TATTOO for registration. Once the

Applicants mark was published for opposition, Opposer filed this Opposition of the

application for the mark TATTOO. This was Applicants first actual knowledge of

Opposers mark.

The Applicant asserts that these two marks are not confusingly similar under the

standards of trademark law. Any comparison of these two words, whether it be a detailed

analysis as is performed in the course of this proceeding or a casual comparison from

memory as is often performed in the course of a consumer's purchase, clearly reveals that

TATUAJE and TATTOO have much different sight impressions and substantially

different sound impressions. The fact that the commercial impression of these two

different marks fail to create a likelihood of confusion is further evidenced by the

judgment of not only one, but of two different trademark examining attorneys of the

Trademark Office. One of these trademark examining attorneys explicitly considered, as

revealed by the trademark application examination record, the relationship between

TATUAJE and TATTOO given their translations from English to Spanish and vice versa.

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During this Opposition proceeding in the TTAB, Opposer filed a new application

for registration of its mark TATUAJE in connection with smoking accessories and

clothing. See Applicants Notice of Reliance, Exhibits E, F, G, H, and I. The Opposer

specifically asserted in its application that [t]he English translation of "TATUAJE" in

the mark is "TATTOO". See Applicants Notice of Reliance, Exhibit E. A second

Examining attorney at the Trademark Office conducted a search and found that [t]he

Office records have been searched and there are no similar registered or pending marks

that would bar registration under Trademark Act Section 2(d), 15 U.S.C. 1052(d).

TMEP 704.02. See Applicants Notice of Reliance, Exhibit G.

The only issues remaining to be tried in this Opposition are 1) whether the mark

TATTOO as applied for by Applicant is similar to the mark TATUAJE as registered by

Opposer; and 2) if similar, whether confusion will be likely from registration of

Applicants mark TATTOO. The Applicant asserts that these marks are clearly

dissimilar except for the Opposer's assertion of similarity under the doctrine of foreign

equivalents. The Applicant asserts that even under the precedent defining the doctrine of

foreign equivalents, these two marks still fail to create a likelihood of confusion in the

marketplace.

Meaning and Connotation Not Exact Synonyms

In view of the multiple translations of the word TATUAJE into English, and the

plurality of meanings of the word TATUAJE (see Applicants Notice of Reliance,

Exhibit N; see also Deposition of Opposers Expert Witness Diana V. Valori on

November 4, 2010, Translators Report and Disclosure, pages 2-4, citing to multiple

dictionary translations of tatuaje and plurality of dictionary meanings of the words

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tatuaje and tattoo), it is evident that the meaning of the word tatuaje is broader than

the English word tattoo, and the words tatuaje and tattoo, nothwithstanding

Opposers repeated assertions to the contrary, are not exact synonyms. The word

tatuaje does not exactly translate into the English word tattoo in all cases.

Opposer agrees that the caseIn re Buckner Enterprises Corp., 6 U.S.P.Q.2d 1316

(T.T.A.B. 1987) stands for the proposition that the doctrine of foreign equivalents can

not be applied where the words are not exact synonyms. In that case, the word

paloma was found to be broader than the English word dove because the translation

of the word paloma encompasses the English words pigeon and dove. While

Applicant believes thatIn re Buckneris the applicable law in the present case, Opposer

argues the contrary and asserts that although a word may have multiple meanings or

multiple translations, it should still be considered a foreign equivalent if one of the

translations or meaning is an exact equivalent of the applied for mark. Opposer offers

an alternative case in support of its arguments. Opposer cites to the caseIn re Perez, 21

U.S.P.Q.2d 1075, 1076 (T.T.A.B. 1991) for the Boards finding that GALLO and

ROOSTER were foreign equivalents although, in addition to rooster the Spanish

word gallo is also translated into English to mean dory; float; wall-board; and false

note. What Opposer failed to include in Opposers analysis of the caseIn re Perez is

that the evidence in the record also showed that the mark "GALLO," despite having

several meanings in Spanish, was found by the majority to be the foreign equivalent of

the word "ROOSTER" due to the picture of a rooster on the packaging for the associated

goods. Specifically, the Board majority observed that: Undercutting applicant's argument

that the Spanish word "gallo" has meanings other than "rooster", and, thus, is not the

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foreign equivalent of registrant's mark, is the usage of applicant's mark[s] in the

commercial marketplace, as evidenced by the specimens of record. The specimens depict

applicant's marks with a prominent representation of a rooster. While the rooster design is

not a feature of the marks sought to be registered and, of course, cannot be considered

when comparing the marks, the design would certainly reinforce to consumers in the

marketplace the "rooster" translation of "gallo" as opposed to the other English meanings

of "gallo."

In the present case, one of the multiple translations of the word tatuaje is a

circle or mark that is left around the wound from a gun fired in very close proximity.

With respect to the mark tatuaje being applied to cigar products, the usage of Opposer's

mark in the commercial marketplace, as evidenced by the specimens of record, and the

common experience of smokers being burned by lit cigars, would tend to create an

impression in the mind of consumers of the translated meaning of tatuaje as being a

gun powder burn on the skin. Therefore, even considering Opposers reliance on the case

In re Perez, the translated meaning and connotation of the Spanish word tatuaje when

analyzed in the context of the usage of Opposer's mark in the commercial marketplace on

cigar products, would likely support a commercial impression of a gun powder burn on

the skin. Opposer has failed to prove that the marks TATUAJE and TATTOO are

identical in connotation. Moreover, the conclusion of an expert linguist, such as

Opposers expert witness, is not the appropriate test for determining meaning of the

translation of the word tatuaje and the English word tattoo. A plain ordinary

consumers impression and meaning applied to these words is the correct test to apply.

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Such test is supported by the dictionary definitions of record, rather than by conclusions

as to meaning offered by an expert witness.

Sight and Sound of the Marks Are Not Similar And No Confusion is Likely

Applicants mark TATTOO does not look or sound similar to Opposers mark

TATUAJE. The number of letters and syllables are different between the two marks.

In summary, Opposer has failed to show identical meaning and connotation of the

two marks, and the sight and sound of the two marks are also different. The Board

should dismiss Opposers opposition and allow registration of Applicants mark TATOO.

II. Description of the Record

The evidence of record consists of every item listed in the Description of the

Record, in Opposers Trial Brief, except item (9) articles and excerpts of various print

and online dictionaries discussing the manner in which dictionaries are arranged and

organized. The substance of this last item (9) does not appear in the Exhibits attached to

the Deposition of Diana V. Valori, taken on November 4, 2010 or in the Opposers

Notice of Reliance, signed by attorney Jessica C. Bromall on November 11, 2010.

Applicant respectfully demands that Opposer show how this last item (9) was introduced

into the official record, or any reference to the substance of such item (9) should be

stricken from Opposers Trial Brief.

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III. Statement of the Issues

(1) Whether TATUAJE and TATTOO have the same meaning and

connotation to consumers of cigar products, and whether the doctrine of foreign

equivalents can be applied to conclude that the two word marks are identical in meaning

and connotation.

(2) Whether TATUAJE and TATTOO are similar in sight, sound, meaning,

and commercial impression, to cause confusion to the relevant consumers of cigar

products.

(3) Whether the registration of Applicants mark TATTOO would likely

cause confusion in the marketplace with respect to Opposers mark TATUAJE.

IV. Analysis

Stipulated Facts

First of all, Applicant agrees that Spanish is a commonly spoken and understood

language in the United States. Applicant agrees that the goods and services specified in

the Federal Registration No. 2,836,665 for the mark TATUAJE are similar to the subject

trademark application for the mark TATTOO. The Applicant further agrees that the

channels of trade commonly used for the goods specified in the Federal Registration for

the TATUAJE mark are similar to the channels of trade commonly used for the goods

specified in the subject trademark application for TATTOO.

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Summary of Analysis

The Applicant, however, asserts that the meanings and connotations of TATTOO

and TATUAJE are sufficiently different, given the multiple translations of TATUAJE

into English (and also the multiple translations of TATTOO and the multiple meanings of

TATTOO), to avoid causing confusion to an observer in the marketplace. Even assuming

a sufficient similarity of connotation between TATTOO and TATUAJE, a consumer

would not stop and think to translate TATUAJE into TATTOO, or vice versa, when

encountering the marks TATUAJE and TATTOO as they would appear in their channels

of commerce before the consumer made a purchase decision. Lastly, Applicant asserts

that the Sight and Sound of TATTOO and TATUAJE are sufficiently different, even

when considered in conjunction with any similarity in their connotation, to be likely to

avoid causing confusion to consumers of cigar products in the relevant marketplace.

A. Proper Analysis for the Doctrine of Foreign Equivalents

Opposer asserts that the TATTOO mark is confusingly similar to the TATUAJE

mark primarily based upon the two words being exact synonyms - both meaning

drawings engraved on or under the skin, as recognized under the Doctrine of Foreign

Equivalents. See Opposers Trial Brief, page 10, second paragraph. Opposer asserts that

it is likely that a significant portion of American consumers would stop and translate

Opposers Mark into its English equivalent and that [t]he translated meaning of

TATUAJE is not obscure. See Opposers Trial Brief, page 11, first and second

paragraphs.

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Applicant asserts that Opposers arguments misstate the analysis to be performed

under the Doctrine of Foreign Equivalents and also misstate certain facts concerning the

translation of TATUAJE and TATTOO.

To begin, the Applicant agrees with Opposers assertion that Spanish is a

commonly understood language in the United States. However, the Applicant disagrees

with Opposers assertions regarding the uncontestable facts underlying the analysis

required under the Doctrine of Foreign Equivalents.

The Doctrine of Foreign Equivalents is used to evaluate the similarity of

connotation between foreign word and English word marks. Palm Bay Imports v. Veuve

Clicquot Ponsardin, 396 F.3d 1369, 1377, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005). When

it is unlikely that an American buyer will translate the foreign mark and will take it as it

is, then the doctrine of foreign equivalents will not be applied. Id. Words from modern

languages are generally translated to English under the doctrine of foreign equivalents,

but the doctrine is not an absolute rule and should be viewed merely as a guideline. Id.

Even when determining similarity of connotation under the Doctrine of Foreign

Equivalents, a complete inquiry into the likelihood of confusion between a foreign word

mark and an English word mark requires one to consider the marks in their entireties in

terms of sound, appearance, meaning, and commercial impression. In re Thomas, 79

USPQ2d 1021, 1025 (TTAB 2006).

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1. Consumers would not stop and translate TATUAJE upon

seeing the TATUAJE mark

Opposer seems to assert that simply because Spanish is a commonly understood

and spoken language in the United States, a significant portion of American consumers

would stop and translate Opposers Mark into its English equivalent. Opposers Trial

Brief, page 11, first paragraph. The Applicant asserts that this is not the proper test to

apply under the Doctrine of Foreign Equivalents. The Applicant further asserts that a

proper analysis using test required under the Doctrine of Foreign Equivalents requires

resolution of disputed underlying facts, which Opposer has failed to prove.

2. Translation of TATUAJE and the meanings of TATTOO

The Opposer asserts that voluminous dictionary definitions and expert testimony

eliminate any doubt that tatuaje means tattoo and vice versa. Also, Opposer

assertsthere can be no question that TATUAJE and TATTOO are exact equivalents.

See Opposers Trial Brief, page 11, third full paragraph. In contrast to the Opposers

assertion, the Applicant points out that tatuaje has multiple meanings in Spanish each

with its associated separate translations and that tattoo also has multiple meanings in

English, which each translate into different Spanish words or phrases. See Applicants

Notice of Reliance, Exhibits J to N; see also Deposition of Opposers Expert Witness

Diana V. Valori on November 4, 2010, Translators Report and Disclosure, pages 2-4,

citing to multiple dictionary translations of tatuaje and plurality of dictionary meanings

of the words tatuaje and tattoo.

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a. TATUAJE has several meanings in Spanish and

translations into English

The Opposer asserts that TATUAJE is an exact translation of the English word

tattoo. Opposers Trial Brief, page 12, last paragraph. Opposer however supplies

several dictionary translations for tatuaje.

In contrast to Opposers assertion, the Spanish word tatuaje has at least two

meanings, 1. the action and effect of tattooing, and 2. circle or mark that is left around

the wound from a gun fired in very close proximity. See Applicants Notice of

Reliance, Exhibit N; see also Deposition of Opposers Expert Witness Diana V. Valori on

November 4, 2010, Translators Report and Disclosure, pages 2-4, citing to multiple

dictionary translations of tatuaje and plurality of dictionary meanings of the word

tatuaje. Therefore, tatuaje refers to either a tattoo or to a gun powder burn.

These two meanings show that the Spanish word tatuaje has a broader meaning

than the English word tattoo. In English, the action and effect of tattooing and a

gun powder burn are two very different things. The Applicant asserts that comparing

tattoo to gun powder burn yields quite dissimilar connotations, resulting in tatuaje

and tattoo not being synonyms, much less exact synonyms. In re Buckner

Enterprises Corp., 6 USPQ2d 1316, 1317 (TTAB 1987). InBuckner, the Board

evaluated the similarity of meaning between the marks PALOMA and DOVE. The

meaning of PALOMA was found to include dove and pigeon. In comparing

pigeon to the mark DOVE, the terms were found to be not exact synonyms. In

comparing these two marks, it was held that the Board must apply an equally stringent

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test in judging similarity of meaning between a foreign word (paloma) and an English

word (dove) as it would between two English words (e.g. pigeon and dove). Id.

Furthermore, one of the multiple translations of the word tatuaje is a circle or

mark that is left around the wound from a gun fired in very close proximity. With respect

to the mark tatuaje being applied to cigar products, the usage of Opposer's mark in the

commercial marketplace, as evidenced by the specimens of record, and the common

experience of smokers being burned by lit cigars, would tend to create an impression in

the mind of consumers of the translated meaning of tatuaje as being a gun powder burn

on the skin. Therefore, the translated meaning and connotation of the Spanish word

tatuaje when analyzed in the context of the usage of Opposer's mark in the commercial

marketplace on cigar products, would likely support a commercial impression and

meaning of a gun powder burn on the skin. Opposer has failed to prove that the marks

TATUAJE and TATTOO are identical in connotation.

Additionally, the conclusion of an expert linguist, such as Opposers expert

witness, is not the appropriate test for determining meaning of the translation of the word

tatuaje and the English word tattoo. A plain ordinary consumers impression and

meaning applied to these words is the correct test to apply. Such test is supported by the

dictionary definitions of record, rather than by conclusions as to meaning offered by an

expert witness.

The Applicant further asserts that the multiple meanings of the Spanish word

tattoo reduce the strength of the similarity of connotation between the TATUAJE

mark and the TATTOO mark. The Applicant asserts that the strength of the similarity

of connotation between these marks and the overall analysis of the likelihood of

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confusion between these marks therefore at least involves disputed facts, which the

Opposer has failed to prove conclusively, concerning the translation that a consumer

would use when viewing the TATUAJE mark, if in fact such a translation is even made.

b. TATTOO has Several Meanings and Translations

into Spanish

In evaluating the similarity of connotation between TATTOO and TATUAJE, it is

also relevant to consider the several meanings that the word tattoo has in the English

language. One dictionary identifies the following definitions of tattoo: 1: a rapid

rhythmic rapping. 2 a: a call sounded shortly before taps as notice to go to quarters. b:

outdoor military exercise given by troops as evening entertainment. VERB transitive

verb: to beat or rap rhythmically on: drum on. intransitive verb: to give a series of

rhythmic taps. See Applicants Notice of Reliance, Exhibits J, K, L, and M. . In

addition, the definitions include to mark or color (the skin) with tattoos. See

Applicants Notice of Reliance, Exhibit L.

c. Multiple Translations Leave Unresolved Issues

Regarding The Similarity Of Connotation

The Applicant asserts that these multiple meanings for tattoo similarly show that

the meaning of tattoo in English is broader than the meaning of the Spanish word

tatuaje. For reasons similar to those enumerated above with regards to the multiple

meanings of the word tatuaje, the Applicant asserts that the comparison between

TATUAJE and TATTOO show that these terms do not have synonymous meanings.

Clearly, tattoo and tatuaje are not identical synonyms to a consumer of cigar

products when encountering these terms as trademarks.

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Opposer agrees that the caseIn re Buckner Enterprises Corp., 6 U.S.P.Q.2d 1316

(T.T.A.B. 1987) stands for the proposition that the doctrine of foreign equivalents can

not be applied where the words are not exact synonyms. See Opposers Trial Brief,

page 11, last full sentence. In that case, the word paloma was found to be broader than

the English word dove because the translation of the word paloma encompasses the

English words pigeon and dove. While Applicant believes thatIn re Buckneris the

applicable law in the present case, Opposer argues the contrary and asserts that although

a word may have multiple meanings or multiple translations, it should still be considered

a foreign equivalent if one of the translations or meaning is an exact equivalent of the

applied for mark. Opposer offers an alternative case in support of its arguments.

Opposer cites to the caseIn re Perez, 21 U.S.P.Q.2d 1075, 1076 (T.T.A.B. 1991) for the

Boards finding that GALLO and ROOSTER were foreign equivalents although, in

addition to rooster the Spanish word gallo is also translated into English to mean

dory; float; wall-board; and false note. What Opposer failed to include in

Opposers analysis of the caseIn re Perez is that the evidence in the record also showed

that the mark "GALLO," despite having several meanings in Spanish, was found by the

majority to be the foreign equivalent of the word "ROOSTER" due to the picture of a

rooster on the packaging for the associated goods. Specifically, the Board majority

observed that: Undercutting applicant's argument that the Spanish word "gallo" has

meanings other than "rooster", and, thus, is not the foreign equivalent of registrant's

mark, is the usage of applicant's mark[s] in the commercial marketplace, as evidenced by

the specimens of record. The specimens depict applicant's marks with a prominent

representation of a rooster. While the rooster design is not a feature of the marks sought

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to be registered and, of course, cannot be considered when comparing the marks, the

design would certainly reinforce to consumers in the marketplace the "rooster" translation

of "gallo" as opposed to the other English meanings of "gallo."

In the present case, one of the multiple translations of the word tatuaje is a circle

or mark that is left around the wound from a gun fired in very close proximity. With

respect to the mark tatuaje being applied to cigar products, the usage of Opposer's mark

in the commercial marketplace, as evidenced by the specimens of record, and the

common experience of smokers being burned by lit cigars, would tend to create an

impression in the mind of consumers of the translated meaning of tatuaje as being a

gun powder burn on the skin. Therefore, even considering Opposers reliance on the case

In re Perez, the translated meaning and connotation of the Spanish word tatuaje when

analyzed in the context of the usage of Opposer's mark in the commercial marketplace on

cigar products, would likely support a commercial impression of a gun powder burn on

the skin. Opposer has failed to prove that the marks TATUAJE and TATTOO are

identical in connotation. Moreover, the conclusion of an expert linguist, such as

Opposers expert witness, is not the appropriate test for determining meaning of the

translation of the word tatuaje and the English word tattoo. A plain ordinary

consumers impression and meaning applied to these words is the correct test to apply.

Such test is supported by the dictionary definitions of record, rather than by conclusions

as to meaning offered by an expert witness.

B. Dissimilar Sight and Sound

The confusing similarity analysis further requires an analysis of the similarity

of the sight and sound of the mark, even when comparing similarity of connotation

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under the Doctrine of Foreign Equivalents. The Applicant asserts that the sight and

sound of TATUAJE and TATTOO are quite different and that no likelihood of confusion

would exist based on the sight and sound of these marks alone. TATUAJE has seven (7)

letters while TATTOO has six (6) letters clearly forming two syllables.

The pronunciation of TATUAJE uses three (3) syllables to create ta-ta-je, as is

the common pronunciation by Spanish speakers. The Applicant points out that in the

common Spanish pronunciation of tatuaje, the second syllable of TATUAJE ends in an

ah sound while the second syllable of tattoo clearly ends in an oo sound.

The Applicant admits that the sound of a mark is not generally limited to the

common pronunciation of a word. However, the Applicant asserts that under the

Doctrine of Foreign Equivalents, the consumer is recognizing a foreign word and

translating it to its English equivalent. The Applicant asserts that in recognizing this

translation, a speaker of the foreign language is very likely to place in his or her mind the

common pronunciation of a foreign word to be translated than would the case when

comparing marks based on English or coined terms.

The Opposer apparently uses a pronunciation of TATUAJE that has four syllables,

dividing the word into TA-TU and A-JE. The Opposer has not shown in the record

any objective basis for this division of the word TATUAJE into these four syllables. The

Applicant asserts that a pronunciation of TATUAJE with four syllables as opposed to the

obvious 2 syllables of TATTOO further reduces the similarity of the sound of these

marks.

With regards to similarity of sight, the Applicant asserts that TATUAJE and

TATTOO are quite different in sight as is readily noticed by observation. The Opposer

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only asserts that the first syllables of the two words, which only contain three (3) letters,

are similar in sight. Opposers Trial Brief, page 13, last paragraph. The remaining four

(4) letters of TATUAJE, over half of the Opposers mark, therefore differ from the

remaining three (3) letters of TATTOO.

C. Technical Analysis By Two Examining Attorneys Separately Resulted In

Findings of No Confusing Similarity

The Applicant asserts that these two marks are not confusingly similar under the

standards of trademark law. Any comparison of these two words, whether it be a detailed

analysis as is performed in the course of this proceeding or a casual comparison from

memory as is often performed in the course of a consumer's purchase, clearly reveals that

TATUAJE and TATTOO have much different sight impressions and substantially

different sound impressions. The fact that the commercial impression of these two

different marks fail to create a likelihood of confusion is further evidenced by the

judgment of not only one, but of two different trademark examining attorneys of the

Trademark Office. One of these trademark examining attorneys explicitly considered, as

revealed by the trademark application Serial No. 77/823,272 examination record, the

relationship between TATUAJE and TATTOO given their translations from English to

Spanish and vice versa.

During this Opposition proceeding in the TTAB, Opposer filed a new application

for registration of its mark TATUAJE in connection with smoking accessories and

clothing. See Applicants Notice of Reliance, Exhibits E, F, G, H, and I. The Opposer

specifically asserted in its application that [t]he English translation of "TATUAJE" in

the mark is "TATTOO". See Applicants Notice of Reliance, Exhibit E. A second

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Examining attorney at the Trademark Office conducted a search and found that [t]he

Office records have been searched and there are no similar registered or pending marks

that would bar registration under Trademark Act Section 2(d), 15 U.S.C. 1052(d).

TMEP 704.02. See Applicants Notice of Reliance, Exhibit G.

While these two separate findings by two examining attorneys of the Trademark

Office are not binding on the Board, they provide additional evidence that there is no

confusing similarity between the two marks.

V. Conclusion

Based on the above, the Applicant respectfully requests that the Opposition be

dismissed and that the Applicants application for its mark Tattoo be allowed to register

in the Principal Register.

Date: May 24, 2011 /Jose Gutman/

Jose Gutman

Fleit, Gibbons, Gutman,Bongini, & Bianco, PL551 N.W. 77th Street

Boca Raton, FL, 33487

Phone: (561) 989-9811Fax: (561) 989-9812

e-mail: tmboca@fggbb.com

Attorney for Applicant

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CERTIFICATE OF SERVICE

I hereby certify that a true and complete copy of the foregoing TRIAL BRIEF OF

APPLICANT, has been served on Brennan C. Swain by mailing said copy on May 24, 2011,

via First Class Priority Mail, postage prepaid to:

Jeffer Mangels Butler & Marmaro LLPAttn: Brennan C. Swain

1900 Avenue of the Stars, 7th Floor

Los Angeles, CA 90067

Date: May 24, 2011 /Jose Gutman/

Jose Gutman

Fleit, Gibbons, Gutman,

Bongini, & Bianco, PL551 N.W. 77th Street

Boca Raton, FL, 33487

Phone: (561) 989-9811Fax: (561) 989-9812

e-mail: tmboca@fggbb.com