MON AMI Too Similar to AMÌ, Affirms CAFC

The U.S. Court of Appeals for the Federal Circuit (CAFC), in a Per Curiam opinion, today affirmed a Trademark Trial and Appeal Board (TTAB) ruling that the mark MON AMI is confusingly similar to the previously registered mark, AMÌ, and that MON AMI could therefore not be registered.

Marini y Compañía, S.A. applied to register the mark MON AMI for edible pet treats in several forms. The examiner refused based on the registered mark AMÌfor “‘[f]oodstuffs for animals’ in International Class 31, which also includes the narrower ‘edible pet treat’ classifications used by the Marini marks,” according to the CAFC opinion.

Applying the DuPont factors, the TTAB on appeal found that all but one factor weighed in favor of likelihood of confusion, using the mark with the most points of distinction from AMI to conduct the analysis (see below). Because the TTAB determined that the factors overall favored a likelihood of confusion, it also determined the same would be true for Marini’s other three marks, which had fewer points of distinction from AMÌ, and therefore the Board rejected all of the marks.

On appeal to the CAFC, Marini argued that the TTAB erred in its application of the DuPont factors, particularly factor one: the similarity of the marks. Marini primarily argued that the Board failed to treat the accent over the “I” in the AMÌ mark properly and failed to properly consider the “MON” element of Marini’s mark. “In essence, Marini appears to argue that, because the AMÌ mark has a grave accent mark and its registrant stated that it had no literal translation from Italian to English, that it was somehow error for the Board to find similarity with the MON AMI mark, which does not include a grave accent mark and which translates to ‘my friend’ in English,” wrote the court.

The CAFC rejected this reasoning and said that the TTAB did consider Marini’s arguments regarding the accent mark and translation, but that its determination that it is “well settled that ‘consumers may pronounce a mark differently than intended by the brand owner” was supported by substantial evidence and CAFC precedent.

With respect to “MON”, the CAFC said the Board’s decision to give less weight to this element of Marini’s mark was not improper, as it “relied on the fact that all of Marini’s marks contained translation statements that indicated ‘MON AMI’ means ‘my friend’” and “‘MON’ adds nothing to the impression of [Marini’s] mark except to reinforce that meaning.” Furthermore, regardless of which element is dominant, “the mark’s ‘meaning is similar to the word AMI in the registered mark,” said the opinion.

Having found no reversible error in the TTAB’s analysis, the CAFC affirmed the rejection of Marini’s mark.