Palm Bay Imports, Inc. (Palm Bay) appeals from the decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board (Board) refusing registration of the mark VEUVE ROYALE for sparkling wine on the ground of likelihood of confusion with three of opposer Veuve Clicquot Ponsar-din’s (VCP’s) marks.
Veuve Clicquot Ponsardin v. Palm Bay Imports, Inc.,
Opp’n No. 115,438,
I.
In April 1998, Palm Bay filed an intent-to-use trademark application under Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b), for the mark VEUVE ROYALE for “alcoholic beverages, namely, sparkling wine.” Veuve Clicquot Ponsardin, slip op. at 1. The examining attorney found no evidence of a similar mark that would bar registration on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). In response to the June 22, 1999 Official Gazette publication of Palm Bay’s application, VCP filed an opposition with the Board, alleging a likelihood of confusion between VEUVE ROYALE and five of its own marks. Specifically, VCP asserted a likelihood of confusion based on the following *1371 marks: (1) VEUVE CLICQUOT PON-SARDIN; (2) VEUVE CLICQUOT; (3) VEUVE CLICQUOT PONSARDIN Design; (4) THE WIDOW; and (5) LA VIU-DA.
On August 4, 2003, the Board refused registration of VEUVE ROYALE, finding a likelihood of confusion with (1) VEUVE CLICQUOT PONSARDIN, (2) VEUVE CLICQUOT, and (3) THE WIDOW. The Board dismissed VCP’s Section 2(d) claim for LA VIUDA finding the doctrine of foreign equivalents inapplicable to marks in two different foreign languages, i.e., Spanish and French. Palm Bay appeals.
II.
Likelihood of confusion under the Lanham Act, 15 U.S.C. § 1052(d), is a legal determination based upon factual underpinnings.
On-Line Careline, Inc. v. Am. Online, Inc.,
III. The VEUVE Marks
Palm Bay asserts that the Board erred in its findings on four DuPont factors during analysis of VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN: (1) the similarity of the marks; (2) third-party use of the term VEUVE; and (3) the fame of VCP’s marks; and (4) purchaser sophistication (corresponding to the first, sixth, fifth and fourth DuPont factors, respectively).
A.
The first
DuPont
factor requires examination of “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.”
DuPont,
1. Test for Similarity
The Board phrased the legal test for similarity as whether the marks “when compared in their entireties in terms of appearance, sound and connotation, are similar or dissimilar in their overall commercial impressions.” Veuve Clicquot Ponsardin, slip op. at 26-27. After conducting a thorough analysis of the appearance, sound, meaning, and commercial impression of the marks, the Board concluded that they were “more similar than dissimilar in their overall commercial impression for purposes of the first DuPont factor.” Id. at 29. In both instances, the Board treated “commercial impression” as the ultimate conclusion under this prong rather than as a separate factor along with appearance, sound, and meaning. Palm Bay contends that the *1372 Board’s inaccurate paraphrase of the legal standard infected its analysis and constitutes reversible error.
This court declines to find reversible error merely because the Board, in two instances, made a minor misstatement of the similarity test in an otherwise proper analysis. Moreover, this court’s precedent counsels that the phrase “commercial impression” is occasionally used as a proxy for the ultimate conclusion of similarity or dissimilarity of marks resulting from a comparison of their appearance, sound, and meaning.
Hewlett-Packard Co. v. Packard Press, Inc.,
2. Significance of CLICQUOT
Palm Bay next asserts that the Board gave insufficient weight to the relative dominance of CLICQUOT, while placing too much emphasis on the weaker VEUVE portion of VCP’s marks. Palm Bay notes that VCP admitted that CLICQUOT was the most distinctive portion of its marks in a World Intellectual Property Organization (WIPO) Internet domain name proceeding, and that VCP has used CLICQUOT in its marketing materials, including radio spots, promotional products, and as the URL of its website (www.clicquot.com). Moreover, Palm Bay argues, VCP has no enforceable trademark rights in the term VEUVE, and has never used-the term, standing alone, on its champagne bottles or in its marketing efforts.
The Board correctly weighed the relative importance of VEUVE and CLIC-QUOT. VEUVE is an arbitrary term as applied to champagne and sparkling wine, and thus conceptually strong as a trademark.
See, e.g., Nautilus Group, Inc. v. Icon Health & Fitness, Inc.,
This case is distinguishable from cases upon which Palm Bay relies where this court found no likely confusion between marks involving a common term.
See, e.g., Kellogg Co. v. Pack ‘em Enters., Inc.,
B.
Palm Bay next contends that the Board erred in rejecting evidence of third-party use of at least five different alcoholic beverages that use the term VEUVE (or a foreign equivalent). This assertion requires analysis of the sixth
DuPont
factor, which considers “the number and nature of similar marks in, use on similar goods.’-’
DuPont,
In particular, Palm Bay argues that third-party evidence consists of at least five different alcoholic beverages that use the term VEUVE: (1) VIUDA DE ROMERO (tequila); '(2) VEUVE CAS-TARDE BAS ARMAGNAC (brandy); (3) VEUVE ROTH BRANDY (brandy); (4) VEUVE DE LALANDE (sparkling wine); and (5) VEUVE DU VERNAY (sparkling wine). Each of these brands has at various points of time appeared in an industry trade publication, the Beverage Media Guide, which lists all beverage products in the wine and spirits categories sold by wholesalers , to restaurants and retail stores in New York State. The Board rejected this evidence on the ground that the Beverage Media Guide is only distributed to the trade, and thus does not show the' extent to which consumers actually encounter these brands in the marketplace. ...
The probative value of third-party trademarks depends entirely upon their usage.
E.g., Scarves by Vera, Inc. v. Todo Imports, Ltd.,
Lloyd’s Food Products, Inc. v. Eli’s, Inc.,
Palm Bay further argues that the Board erred in minimizing the import of retail marketing evidence it presented for the third-party mark VEUVE DE VERNAY. Specifically, Palm Bay notes that its private investigator discovered that six New York stores displayed for sale the VEUVE DE VERNAY sparkling wine as well as internet web sites and restaurant lists. Though the Board determined that such evidence exhibited more than de -minimis use, it did not credit the single mark use with much weight. As the Board observed, “[t]he purpose of a defendant introducing third party uses is to show that customers have become so conditioned by a plethora of such similar marks that customers ‘have been educated to distinguish between different [such] marks on the bases, of minute distinctions.’ ” Veuve Clicquot Ponsardin, slip op. at 25 (citing McCarthy on Trademarks, at § 11:88). Palm Bay’s evidence does not rise to the level of demonstrating that the single third-party use was so widespread as to “condition” the consuming public.
Accordingly, substantial evidence supports the Board’s finding that the strength of VCP’s mark was not undermined by third-party use in either the Beverage Media Guide or the retail market.
C.
Palm Bay argues that the Board erred in concluding that VCP’s marks are famous, per the fifth DuPont factor, and therefore entitled to a wide scope of protection. In its view, the Board applied an incorrect legal standard for measuring fame by focusing on a narrow class of consumers limited to purchasers of champagne and sparkling wine. The proper standard for fame, Palm Bay asserts, is whether a mark has achieved “extensive public recognition and renown” among the general public.
Kenner Parker Toys, Inc.,
Fame of an opposer’s mark, if it exists, plays a “dominant role in the process of balancing the
DuPont
factors.”
Recot, Inc. v. M.C. Beaton,
This court’s statement in
Kenner Parker Toys
that fame for likelihood of confusion purposes is to be measured by whether a mark has achieved “extensive public recognition and renown” was not intended to require 'public awareness among every segment of the U.S. population. Indeed, the court in
Kenner Parker Toys
did not consider the issue of the extent of public renown necessary to qualify for treatment as a famous mark. Palm Bay’s argument for a general public standard would be contrary to the trend of our case law and improperly elevate likelihood of confusion fame to the higher and more rigorous standard for dilution fame required under the FTDA. In this case, some classes of consumers would not have occasion to be exposed to VCP’s champagne products, such as children or adolescents below the drinking age, or adults who for religious or other reasons choose not to consume alcoholic beverages. Thus, a general public awareness standard does not adequately reflect the mark’s fame amongst the purchasing public. Fame for confusion purposes arises as long as a significant portion of the relevant consuming public, namely, purchasers of champagne and sparkling wine, recognizes the mark as a source indicator. Although this court has not directly addressed the question of what segment of the consuming public must be aware of a mark in order for it to be considered famous in a likelihood of confusion analysis, it has indirectly suggested that a mark’s renown within a specific product market is the proper standard.
See Bose Corp.,
Given this clarification of the proper relevant market for evaluating the fame of a mark, this court finds that there was sufficient factual evidence of fame within the market of purchasers of champagne and sparkling wine to support the Board’s conclusion. The record indicates that VCP’s sales, volume and advertising expenditures since 1990 have been substantial. VEUVE CLICQUOT, champagne is the second leading brand sold in the U.S. The brand is sold in 8,000 restaurants nationwide, and in liquor stores, wine shops, and other retail establishments. VCP advertises in general interest magazines such as Vanity Fair and in wine specialty magazines, radio ads, point-of-sale displays, through in-store and in-restaurant wine tastings and events, through sponsorship of events, and on its Internet site. VCP’s products have *1376 been featured in articles and reviews in both specialized and general interest magazines. According to an April 2001 issue of Wine and Spirits, VEUVE CLICQUOT was the most-ordered wine in the “sparkling wine” category of the 363 survey respondents. VCP’s products have also been featured in Business Week, American Way (in-flight magazine of American Airlines), The New York Times, the Boston Globe, Money magazine, and the Detroit News. Moreover, Palm Bay’s President, David Taub, admitted that the VEUVE CLICQUOT mark is famous. His later qualification that such fame was limited to the “top-end” segment of the market does not diminish the significance of his admission in view of the Board’s finding that high-end champagne and less-expensive sparkling wines are marketed in the same channels of trade to the same consumers. Finally, the Board noted that several WIPO domain name arbitration decisions had found VCP’s marks to be famous. While acknowledging Palm Bay’s argument that a mark must be famous among purchasers in the United States, whereas WIPO examined VCP’s marks worldwide, the Board properly noted that such evidence nonetheless provided a “confirmatory context” for VCP’s other evidence of fame. Considering this evidence in its totality and in context, this court finds that substantial evidence supports the Board’s finding of fame.
D.
The fourth
DuPont
factor examines the conditions under which, and to whom, sales are made.
DuPont,
In concluding that this factor was “neutral, at best,” Veuve Clicquot Ponsardin, slip op. at 15, the Board found that champagne and sparkling wines are not necessarily expensive goods which are always purchased by sophisticated purchasers who exercise a great deal of care in making their purchases. This court agreed with the Board’s finding. Although some champagne can be expensive, many brands sell for around $25 a bottle, and sparkling wines for less than $10 a bottle. Moreover, general consumers, not just connoisseurs, occasionally purchase champagne or sparkling wines on celebratory occasions, with little care or prior knowledge.- And even more sophisticated purchasers might be aware that champagne houses offer both types of products under similar marks, and could easily conclude that VEUVE ROYALE was Veuve Clicquot’s sparkling wine. This market expansion rationale undercuts Palm Bay’s argument that because VCP has never sold a sparkling wine product or low-priced champagne, and that it has always used its CLICQUOT house mark in connection with its sales, consumers would be unlikely to confuse Palm Bay’s inexpensive sparkling wine and VCP’s slightly more expensive champagne products. Considering this evidence in its entirety, this court concludes that substantial evidence supports the Board’s finding under this DuPont factor.
IV.
The Board held that Palm Bay’s VEUVE ROYALE was confusingly similar to VCP’s mark THE WIDOW, in part because under the doctrine of foreign equivalents, an'appreciable number of purchasers in the U.S. speak and/or understand French, and they “will translate” applicant’s mark into English as “Royal Widow.” Veuve Clicquot Ponsardin, slip op. at 36. The Board erred in so finding.
*1377
Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine genericness, descriptiveness, as well as similarity of connotation in ¡order to ascertain confusing similarity with English word marks.
See In re Sarkli, Ltd.,
In comparing VEUVE ROYALE with VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT, the Board found that “an appreciable number of purchasers are unlikely to be aware that VEUVE means ‘widow’ and are unlikely to translate the marks into English.” Veuve Clic-quot Ponsardin, slip op. at 11 (emphasis added). In comparing VEUVE ROYALE with THE WIDOW, however, the Board found that “[A]n appreciable number of purchasers in the United States speak and/or understand French, and they, will translate applicant’s mark into English as ROYAL WIDOW.” Id., slip op. at 14 (emphasis added). An appreciable number of U.S. consumers either will or will not translate VEUVE into “widow,” and the Board was inconsistent in its application of the doctrine of foreign equivalents.
Although words from modern languages are generally translated into English, the doctrine of foreign equivalents is not an absolute rule and should be viewed merely as a guideline.
In re N. Paper Mills,
CONCLUSION
This court affirms the Board’s decision that a likelihood of confusion exists between applicant’s VEUVE ROYALE mark and opposer’s marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT. We reverse the Board’s conclusion of the likelihood of confusion as to the THE WIDOW mark and we affirm the Board’s refusal to register Palm Bay’s VEUVE ROYALE mark.
COSTS
Each party shall bear its own costs.
AFFIRMED
Notes
. Under the 1996 Federal Trademark Dilution Act (FTDA), 15 U.S.C. § 1125(c), only "fa *1375 mous” marks are protected. The FTDA lists eight nonexclusive factors courts are to consider in determining whether a mark is “distinctive and famous.” See 15 U.S.C. § 1125(c)(1)(A) — (H) (2004).