On My Mind Blog

A Brazilian company (Applicant) filed a U.S. intent to use application to register the German word mark DANKE (in slight stylization) for chocolate. 

A German company named August Storck KG (Opposer) challenged that application before the Trademark Trial and Appeal Board (TTAB) claiming a likelihood of confusion with its U.S. registration of the French mark MERCI (in plain typed lettering) and also its other registrations and common law uses, for chocolate.

The TTAB focused on the typed version of Opposer’s mark because it was the closest to the Applicant’s mark. 

Doctrine of Foreign Equivalents

The TTAB found it appropriate to apply the doctrine of foreign equivalents in which foreign words used as a mark are translated into English and then tested for likelihood of confusion.  Although this generally involves marks in English and a foreign language, here it involved marks in French and German.

The TTAB held that French and German are commonly known modern languages, and that the ordinary U.S. purchaser would stop and translate both words as “thank you,” an everyday expression appearing in U.S. English dictionaries.

However, despite their shared identical meaning, the TTAB found the marks to be highly dissimilar in appearance and sound.  This pointed both ways as to whether there was a likelihood of confusion.

Lack of Restrictions

The goods were identical, the registration and application had no restrictions as to trade channels or consumers, and there were no restrictions as to the price of the goods.  The TTAB found these factors to favor a likelihood of confusion. 

Commercial Strength

Did Opposer’s mark have commercial strength or fame which would further bolster its position?  This factor may be measured by consumer surveys or declarations, the volume of sales and advertising expenditures, the length of time of use, widespread critical assessments, notice by independent sources, the general reputation of the goods or services, and social media presence.

In this case, Opposer presented evidence of the use of its mark prominently on product packaging, engraved on its chocolate bars, featured in its advertising including television, and featured in its online publications, social media, and in-store displays.  There was a lack of market share evidence to put this information in context, but the TTAB nevertheless found this evidence to suggest a moderate level of commercial success and brand recognition, which Applicant did not challenge. 

Conceptual Strength

Applicant introduced evidence of third-party marketplace use of similar marks to challenge the conceptual strength of Opposer’s mark, even though that mark had been registered without a claim of acquired distinctiveness, so it was presumed to be inherently distinctive as applied to the goods.  The TTAB was unpersuaded by the single third-party registration it found relevant.

However, the TTAB was impressed by Applicant’s evidence of a Google® images search showing 27 product images of “Thank You” chocolates with pictures of the products, retailer identifications and, in some instances, statements that the goods were in stock.  This demonstrated that consumers were conditioned to seeing the phrase “thank you” as an expression of gratitude when used in relation to chocolate.  As a result, the TTAB found Opposer’s mark to be conceptually weak.  This weakness was underscored by statements in Opposer’s own product marketing promoting chocolate to say “thank you.”

Decision

On balance, the TTAB concluded that the widespread use of “thank you” in association with chocolate made that term weak in trademark significance, and that the differences in sound and appearance of the respective marks outweighed their identical meaning.

Accordingly, the TTAB held that confusion was unlikely, and it dismissed the opposition.

August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA, Opposition No. 91277224 (T.T.A.B. November 14, 2025).

Author’s Note:

August Storck KG has actively sought to protect its MERCI mark and trade dress in other U.S. and European proceedings. 

In one such case, August Storck KG v. Imagine S.L., Opposition No. 002561630 (EUIPO August 28, 2017), August Stork successfully opposed a European Trade Mark application, filed by the Spanish company Imagine S.L, to register the following mark:

(THANK YOU CHOCO LATS in stylized form with multi-colored lettering).  The European Union Intellectual Property Office (EUIPO) found that the two marks were conceptually highly similar, despite their visual and aural dissimilarity.  It further found that the evidence showed that the MERCI brand had been subject to long-standing and intensive use and was generally known in the relevant market with a high degree of recognition among the relevant public.  The EUIPO concluded that the contested mark was likely to take unfair advantage of the repute of the earlier mark, so it denied the application and awarded costs to August Storck.

For further information, please contact William M. Borchard or your CLL attorney.