MYRURGIA SA v. COMPTOIR DE LA PARFUMERIE, ETC., Patent Appeal No. 8401.

• Decision Date: 13 May 1971
• Docket Number: Patent Appeal No. 8401.
• Citation: 441 F.2d 673,169 USPQ 587
• Parties: MYRURGIA, S. A., Appellant, v. COMPTOIR DE LA PARFUMERIE S. A. ANCIENNE MAISON TSCHANZ, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

169 USPQ 587, 441 F.2d 673 (1971)

MYRURGIA, S. A., Appellant, v. COMPTOIR DE LA PARFUMERIE S. A. ANCIENNE MAISON TSCHANZ, Appellee.

Patent Appeal No. 8401.

United States Court of Customs and Patent Appeals.

May 13, 1971.

Alex Friedman, Martin J. Beran, New York City, attorneys of record, for appellant.

Russell L. Law, Washington, D. C., for appellee.

Before RICH, ALMOND, BALDWIN, and LANE, Judges, and NEWMAN, Judge, United States Customs Court, sitting by designation.

BALDWIN, Judge.

Appeal is taken from the decision of The Trademark Trial and Appeal Board,¹ dismissing the opposition filed by appellant, Myrurgia, S.A., to registration² of the trademark "SENORITA" for cologne, toilet water, lipstick, face cream, hand cream, face powder and toilet and bath soap.

Appellant predicated the opposition on its claimed prior use and registration of the trademark "SENORIAL"³ for perfumery essence, toilet water and hair lotions, and upon prior use of the unregistered trademark "SI SENOR" for cologne. The mark "SI SENOR", although not registered, has been used and promoted extensively by the appellant. Apparently considerable good will in the mark has been established. We note the board's finding on this point as follows:

According to its record, opposer through an exclusive distributor has sold a cologne for men under the mark "SI SENOR" in the United States in department stores, specialty stores, and drug stores continuously since a time prior to July 28, 1964. "SI SENOR" cologne has been promoted through advertisements in consumer and trade magazines such as "The New Yorker" and "Beauty Fashion", the magazine section of the Sunday New York Times, newspapers through cooperative agreement with retailers, and by the distribution of mailing inserts, samples and testers, counter cards, window displays and the like. Advertising and promotion expenditures by opposer directed to "SI SENOR" cologne from 1964 through September 30, 1966 were in excess of sixty-four thousand dollars. During this same period, the retail dollar value of sales of "SI SENOR" cologne approximated two hundred thousand dollars.

There is no dispute before us as to appellant's prior use or the fact that the goods of the parties are, at least in part, identical. The sole issue is whether the marks are so similar as to be likely to cause confusion, mistake or deception when applied to the relevant goods here involved. We hold that they are.

The words "SENORITA" and "SENORIAL" have the same number of letters and syllables. The first six letters of each word are identical. They look alike and sound alike. The "SENOR" portion of "SI SENOR" also contains the first five letters of "SENORITA" and "SENORIAL". All of the marks are of Spanish origin and center around the word "SENOR". We note in particular that "SENORITA" is the female form of "SENOR", i. e., "SENORITA" means "girl, young lady, miss"; "SENOR" means "lord, owner, master."⁴ While it may be true, as indicated by the board, that to a Spanish-speaking person or one knowledgeable in that language the marks "SI SENOR" and "SENORIAL" and the mark "SENORITA" would not be "confusingly similar", we point out that such is not the critical test under the statute.

Referring specifically to the marks "SI...