A chocolate company wanted to register the mark DANKE for chocolate bars. A well-known European chocolate brand, the maker of MERCI chocolates, opposed the application arguing that both marks mean "thank you" (MERCI in French, DANKE in German) so consumers will be confused.
The Trademark Trial and Appeal Board disagreed and dismissed the opposition.
This case was recently redesignated as a TTAB precedent, which means it carries binding weight in future proceedings.
What Happened
August Storck KG, the German company behind the MERCI chocolate brand, has sold its products in the United States since 1965. It owns several federal trademark registrations for MERCI and MERCI-formative marks. Between 2017 and 2022, U.S. sales surpassed $100 million.
Florend, a Brazilian chocolate company, filed an intent-to-use application for the stylized mark DANKE (the German word for "thank you") for chocolate and chocolate bars.
Storck opposed, arguing that because MERCI and DANKE are both foreign-language words for "thank you," consumers would be confused about whether the products came from the same source.
The Doctrine of Foreign Equivalents
Before comparing the marks, the Board had to decide whether to translate them. This is governed by the doctrine of foreign equivalents: when a mark is a foreign word, the USPTO will generally translate it into English and then assess the English meaning.
The wrinkle here is that both marks are foreign words, and they come from different languages. The Board found the doctrine still applied. French and German are both common, widely-spoken languages in the United States. Both "merci" and "danke" appear in U.S. English dictionaries and are understood by many American consumers.
Once translated, both marks mean the same thing: "thank you."
Why the Marks Were Still Found Dissimilar
Shared meaning alone is not enough to find likelihood of confusion. The Board evaluates marks based on appearance, sound, connotation, and overall commercial impression.
DANKE and MERCI are completely different in how they look and sound. DANKE is pronounced "DAHN-kuh." MERCI is pronounced "mehr-SEE." They share no letters. Their visual presentations are entirely distinct. On appearance and sound, they are about as far apart as two two-syllable words can be.
The Board found this dispositive. While connotation (shared meaning) is one factor in the analysis, it cannot carry the day when the marks are otherwise completely different. The Board cited a principle worth remembering: where the only similarity between marks is connotation, a much closer resemblance in sound and appearance is required before registration can be refused on that basis alone.
The "Thank You" Problem: Why Shared Meaning Gets Less Credit Here
The Board found that the shared meaning of these marks, "thank you," is conceptually weak when used in connection with chocolate.
Why? Because "thank you" and chocolate are already deeply connected in the minds of consumers. Chocolate is routinely marketed, sold, and given as a gift of gratitude. A search of the marketplace turns up dozens of chocolate products marketed with "thank you" themes. As such, the phrase is not a distinctive identifier of any one brand's product. Rather, it's a sentiment that saturates the entire category.
This matters because trademark protection is strongest for marks that are distinctive, meaning marks that consumers associate with a particular source. When a word or phrase is already so common in a product category that consumers see it as a general expression rather than a brand identifier, it carries a narrower scope of protection.
Storck's MERCI mark still had moderate commercial strength based on its long history and nationwide sales. But the shared "thank you" meaning between MERCI and DANKE, in the context of chocolate, was too thin a thread to support a finding of likely confusion, especially when the marks look and sound nothing alike.
Takeaways for Your Brand
Identical meaning between marks does not automatically mean confusing similarity. The likelihood of confusion analysis weighs multiple factors. Sound, appearance, and commercial impression all matter. A mark that means the same thing as a competitor's mark can still be registrable if it looks and sounds different enough.
The industry context of a word matters. When the shared element of two marks is a concept or phrase that is already pervasively used in the product category, the TTAB will give that shared meaning less weight. "Thank you" in the chocolate category is a good example. If you are trying to protect a mark, this cuts against you. If you are the newcomer, this can work in your favor.
The doctrine of foreign equivalents applies even when both marks are foreign. If your mark is a foreign word, the USPTO will look at what it means in English. A mark that seems distinctive in its original language may not survive that translation. The doctrine holds even when the other mark is also in a foreign language and needs to be translated into English.
Examining attorney approval is not the final word. The applicant in this case noted that the examining attorney had approved the application after searching the database and finding no conflicts. The Board pointedly noted that it is not bound by examining attorney findings, because that is exactly why the opposition process exists. Clearance from the USPTO office action stage is a milestone, not a finish line.
If you are building a brand and have questions about how the likelihood of confusion analysis applies to your mark, contact Five Dogs Law for a free consultation.
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