semiramis v. mdj nemry corp. d/b/a semiramis usa

Mailed: April 14, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

_____

Semiramis

v.

MDJ Nemry Corp. d/b/a Semiramis USA ___

Opposition No. 91244493

___

Umair A. Qadeer of Hojka Qadeer, LLC

for Semiramis.

Leela Madan of Madan Law PLLC

for MDJ Nemry Corp. d/b/a Semiramis USA.

______

Before Kuhlke, Adlin and Heasley,

Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Applicant MDJ Nemry Corp. d/b/a Semiramis USA seeks a Principal Register

registration for the mark shown below

for chocolate, other types of candy and sweets, baked goods and coffee in International

This Opinion is not a

Precedent of the TTAB


2

Class 30.1 In its notice of opposition, Opposer Semiramis alleges prior common law

use of SEMIRAMIS, “and the word SEMIRAMIS depicted in Arabic using Arabic

script,” as shown below

for pastries and sweets. 1 TTABVUE 2, 4-5.2 As its sole ground for opposition,

Opposer alleges that registration and use of Applicant’s mark would be likely to cause

confusion with Opposer’s mark. Id. at 9. In its answer, Applicant denies the salient

allegations in the notice of opposition and asserts affirmative defenses that for the

most part it did not pursue or prove at trial and which are accordingly waived. Miller

v. Miller, 105 USPQ2d 1615, 1616 n.3 (TTAB 2013); Baroness Small Estates Inc. v.

Am. Wine Trade Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012).

1 Application Serial No. 87772952, filed January 26, 2018 under Section 1(a) of the

Trademark Act, 15 U.S.C. § 1051(a), claiming first use dates of November 1, 2017. The

application states that “[t]he non-Latin characters in the mark transliterate to ‘SEMIRAMIS’

and this means ‘SEMIRAMIS’ in English.” The application includes this description of the

mark: “The mark consists of the word ‘SEMIRAMIS’ in Arabic in stylized calligraphic font.”

The identification of goods in its entirety is: “Arrangements of candy; Bakery desserts;

Bakery goods; Candies; Candy; Candy for food; Chocolate-coated nuts; Chocolate; Chocolate

and chocolates; Chocolate bars; Chocolate candies; Chocolate chips; Chocolate confections;

Chocolate covered fruit; Chocolate covered nuts; Chocolate covered raisins; Chocolate

mousses; Chocolate truffles; Chocolates and chocolate based ready to eat candies and snacks;

Coffee; Confectioneries, namely, snack foods, namely, chocolate; Pastries; Pastries with fruit;

Sweets; Turkish delight; Milk chocolate.”

2 Citations to the record reference TTABVUE, the Board’s online docketing system. The

number preceding “TTABVUE” corresponds to the docket entry number(s), and any

number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the

cited materials appear.


3

Applicant argues in its brief, however, based on Opposer’s evidence, that Opposer

cannot establish its entitlement to a statutory cause of action or priority of use,

because it abandoned its mark prior to filing its notice of opposition. Whether Opposer

abandoned its pleaded mark is the crux of this case. See Kemi Organics, LLC v.

Rakesh Gupta, 126 USPQ2d 1601, 1605 (TTAB 2018) (“Section 2(d) provides a ground

… based upon a likelihood of confusion with ‘a mark … previously used in the United

States … and not abandoned …. [Opposer] bears the burden of proving that its mark

was ‘previously used in the United States’ before [Applicant’s] constructive use

priority date. In this case, [Applicant’s] ‘abandonment allegation is, in effect, in the

stance of a defense to a prior use assertion.”) (cleaned up).3

I. The Record and Evidentiary Objections

The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),

37 C.F.R. § 2.122(b), the file of Applicant’s involved application. In addition, Opposer

introduced:

Testimony Declaration of one of its partners who we refer

to here as “John Doe” because Opposer designated his

identity as confidential4 (“Doe Dec.”). 56 TTABVUE.

3 Applicant’s defense that Opposer “lacks standing due to abandonment,” 4 TTABVUE 4, is

therefore addressed in the context of priority, as discussed below.

4 Shielding a witness’s identity from the public is problematic, discouraged and unlikely to

be accepted in all but the most unique cases, but the reasons justifying it in this case will

become apparent in the discussion of the relevant facts. Applicant is aware of the witness’s

identity and did not object to it being designated confidential. Opposer did not originally file

the required publicly accessible versions of its confidential materials, but did so after briefing

was complete, at 56-68 TTABVUE.


4

Testimony Declaration of Saadi Zuhayr Ramadan, another

of its partners, and the exhibits and supplement thereto

(“S. Ramadan Dec.”). 57, 18, 39, 58-68 TTABVUE.5

First Notice of Reliance (“NOR 1”) on Internet printouts. 28

TTABVUE.

Second NOR (“NOR 2”) on additional Internet printouts 29

TTABVUE.

Third NOR (“NOR 3”) on additional Internet printouts. 31

TTABVUE.6

Applicant did not take any testimony or introduce any other evidence.

Applicant objects to Exhibits N-P of Saadi Ramadan’s declaration, arguing that

they are “of unknown and unauthenticated origin” and “hearsay.” 40 TTABVUE 9-10

(Applicant’s Trial Brief at 5-6); 57 TTABVUE 7 (S. Ramadan Dec. ¶¶ 22-24) and 68

TTABVUE 5-12 (S. Ramadan Dec. Exs. N-P). The objections are overruled. Since 1999

Mr. Ramadan has been “responsible for managing all aspects of the international

business of Semiramis, including its business in the United States,” and his

responsibilities include “customer relations … receiving and confirming orders,

coordinating and confirming shipments, receiving payments and confirming

deliveries.” 57 TTABVUE 2 (S. Ramadan Dec. ¶ 1). Mr. Ramadan testified that the

5 Opposer filed a correction to Saadi Ramadan’s Declaration at 66 TTABVUE.

6 Opposer filed some of its trial evidence after the close of its testimony period on January 4,

2020 (17-33 and 38-39 TTABVUE), but Applicant did not object to the evidence on that

procedural basis and therefore waived the objection. Optimal Chem. Inc. v. Srills LLC, 2019

USPQ2d 338409 *3 n.28 (TTAB 2019); Genesco Inc. and Genesco Brands Inc. v. Martz, 66

USPQ2d 1260, 1264 (TTAB 2003). Furthermore, Applicant’s Trial Brief relies on some of

Opposer’s late-filed evidence. On the other hand, Opposer filed some of its trial evidence after

the deadline for Applicant’s brief (43 TTABVUE), and we have not considered this evidence

because it is untimely and Applicant has had no opportunity to object or respond to it.


5

exhibits in question are shipping notices or invoices which were maintained in the

“ordinary course of [Opposer’s] business for products it sold in the United States” in

the year indicated in each document. Id. at 7 (S. Ramadan Dec. ¶¶ 22-24). It is not

clear what type of additional “authentication” Applicant believes Opposer should

have provided, but Mr. Ramadan’s testimony is sufficient to authenticate and explain

the origin and reliability of the documents. The documents are not hearsay, as they

are directly supported by Mr. Ramadan’s personal knowledge and testimony and in

any event they are documents “maintained in the ordinary course of business.” Fed.

R. Evid. 803(6)(B).

Applicant also objects to Saadi Ramadan’s testimony about Opposer’s “authorized

distributor” Hala AlSham. 40 TTABVUE 10 (Applicant’s Trial Brief at 6); 57

TTABVUE 8 (S. Ramadan Dec. ¶ 30). Applicant specifically claims that Mr. Ramadan

“is not competent to testify to the state of mind of or intentions of an alleged ‘customer’

of Hala AlSham in 2018 and to why the word gifts appears,” apparently referring to

Paragraph 29 and Exhibit O to Mr. Ramadan’s Declaration. 40 TTABVUE 10. This

objection is also overruled, to the extent that the testimony relates to Mr. Ramadan’s

understanding and impressions. Indeed, Mr. Ramadan testifies, under penalty of

perjury, that he has “personal knowledge” of the relevant facts. 57 TTABVUE 2, 9 (S.

Ramadan Dec. ¶¶ 2, 33). Applicant’s mere argument, unsupported by any evidence,

that Mr. Ramadan “is incompetent to characterize [Hala AlSham] records as being

records of Opposer” is not well-taken when measured against Mr. Ramadan’s sworn

testimony about his personal knowledge regarding Opposer’s records, including the


6

Hala AlSham documents in question. We have not considered the “state of mind” of

anyone other than Mr. Ramadan, however, and Applicant is correct that some of the

documents in question do not by themselves establish who the ultimate purchaser

may have been.7

Applicant’s objection to Exhibits Q-S of Saadi Ramadan’s declaration on the

ground that they are “irrelevant and immaterial” is also overruled. Suffice it to say,

“we simply accord the evidence whatever probative value it deserves, if any at all …

Ultimately, the Board is capable of weighing the relevance and strength or weakness

of the objected-to testimony and evidence in this specific case, including any inherent

limitations, and this precludes the need to strike the testimony and evidence.” Hunt

Control Sys. Inc. v. Koninkijke Philips Elecs. N.V., 98 USPQ2d 1558, 1564 (TTAB

2011). See also Grote Indus., Inc. v. Truck-Lite Co., 126 USPQ2d 1197, 1200 (TTAB

2018) (“We also remind the parties that our proceedings are tried before judges not

likely to be easily confused or prejudiced. Objections to trial testimony on bases more

relevant to jury trials are particularly unnecessary in this forum.”) (citing U.S.

Playing Card Co. v. Harbro LLC, 81 USPQ2d 1537, 1540 (TTAB 2006)); RxD Media,

LLC v. IP Application Dev. LLC, 125 USPQ2d 1801, 1804 (TTAB 2018); Kohler Co. v.

Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1478 (TTAB 2017) (quoting Luxco, Inc.

v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479 (TTAB 2017)).

7 Whether “the UAE distributor” has “any rights to sell products in the United States,” 40

TTABVUE 10, is beyond the scope of, and not particularly relevant to the issues in, this

proceeding.


7

Applicant’s additional objection that these documents and Paragraph 4 of Saadi

Ramadan’s Supplemental Declaration should be excluded because they pertain “to

activity occurring after abandonment has been established and is a transparent

attempt to overcome abandonment by making use merely to preserve its rights long

after this proceeding began,” 40 TTABVUE 23, is overruled. While Applicant is

correct that if we ultimately decide that Opposer’s mark was abandoned before 2020

this evidence will not cure the abandonment, the evidence may be relevant to our

determination of whether the mark was abandoned in the first place. See Crash

Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387, 94 USPQ2d 1315, 1317 (Fed. Cir.

2010) (“The Board may consider evidence and testimony regarding Mattel’s practices

that occurred before or after the three-year statutory period to infer Mattel’s intent

to resume use during the three-year period.”); Exec. Coach Builders, Inc. v. SPV

Coach Co., 123 USPQ2d 1175, 1199 (TTAB 2017).

Applicant’s hearsay objection to Paragraph 11 of the Doe Declaration is sustained

to the extent that Mr. Ramadan testifies about what others said. To that extent, this

paragraph has been given no consideration.

II. The Parties’ Use of SEMIRAMIS in the United States, and the Syrian

Civil War’s Impact on Opposer’s Use

The parties both offer baked goods and sweets in the United States, Opposer under

the mark SEMIRAMIS and its Arabic equivalent, and Applicant under SEMIRAMIS

in Arabic. We take judicial notice that “Semiramis” identifies “a queen of Assyria

noted for her beauty, wisdom, and sexual exploits; reputed founder of Babylon: based


8

on a historical queen of the 9th cent. B.C.”8 Opposer was first to enter the United

States market, but after Opposer’s United States business was adversely affected by

the Syrian Civil War, Applicant began using its Arabic SEMIRAMIS mark for the

same types of goods.

A. Opposer

Opposer, which produces and sells pastries and sweets, “was established in 1956

in Damascus, Syria.” 56 TTABVUE 3 (Doe Dec. ¶ 3).9 It has sold pastries and sweets

to United States customers since 2001, in packaging bearing “the word SEMIRAMIS

depicted in English using Latin characters and the word SEMIRAMIS depicted in

Arabic using Arabic script.” Id.; 58-65 TTABVUE (S. Ramadan Dec. Exs. E-L)

(shipping documents and payment records from 2005-2012). The following examples

show how Opposer uses its pleaded mark:

8 Collins American English Dictionary. The Board may take judicial notice of dictionary

definitions, including online dictionaries that exist in printed format or have regular fixed

editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d

594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold TV Inc. v. Metronome Enters. Inc., 96

USPQ2d 1031, 1038 n.14 (TTAB 2010).

9 While we generally cite the Doe Declaration in this Section, much of his testimony is

supported by (and often identical to) Saadi Ramadan’s testimony about the same topics.


9

10

57 TTABVUE 3 (S. Ramadan Dec. ¶¶ 4-5); 18 TTABVUE 3-7 (S. Ramadan Dec. Exs.

A and B). As highlighted in the printout of Opposer’s website, Hala AlSham is

identified as “Semiramis Outlet” in the United Arab Emirates (“UAE”).

10 Saadi Ramadan is responsible for Opposer’s website and “supervised its development and

all updates and changes made to the website.” 17 TTABVUE 3 (S. Ramadan Dec. ¶ 5). His

testimony is therefore sufficient to establish the reliability of this Wayback Machine printout.


10

Opposer’s business has been negatively affected by the Syrian Civil War, which

started in 2011 and continues to this day. 28 TTABVUE 7-32. In fact, because the

conflict impaired the transport of products from Syria, in ways Opposer has

designated as “Confidential” and which we therefore do not repeat here, Opposer had

to suspend shipments from Syria to the United States. 56 TTABVUE 4 (Doe Dec. ¶ 5).

Despite difficulties reestablishing its business in Egypt, “[b]y June 2013” Opposer

began producing sweets in Cairo, and resumed selling them from the Cairo

production facility in October 2013. Id. (Doe Dec. ¶ 6).

Once it was reestablished in Cairo, Opposer “initially focused on shipping products

to customers who ordered large quantities of products, such as our original retail

store and wholesale customers in Saudi Arabia, the United Arab Emirates, Qatar,

and the United Kingdom.” Id. (Doe Dec. ¶ 7). Opposer also focused on the Egyptian

market. Id.

To serve its international online customers, Opposer “looked into using

international shipping service providers,” but “shipping perishable goods from Egypt

is very unstructured and costly.” Id. In fact, the cost for shipping small orders

internationally “would have been approximately twice the typical retail prices of

Semiramis products,” and thus “unfeasible.” Id. at 5 (Doe Dec. ¶ 7).

Therefore, Opposer “decided in November 2014 to open a new Semiramis

production facility in Turkey,” expecting that shipping small orders would be more

efficient and cost-effective from there. Opposer discovered, however, that “Turkey has

more stringent regulatory requirements for establishing a production facility for


11

edible products,” as well as “a number of other bureaucratic hurdles,” delaying the

process. Id. (Doe Dec. ¶ 8). Opposer did not send an international shipment from

Turkey until May 2019 (to Qatar), and is still waiting for permission to ship to

international online customers. Id. As a result, Opposer has not directly sold

SEMIRAMIS pastries and sweets from its own facilities to customers in the United

States since 2012, though it anticipates “that shipments of small orders to

international online customers will resume very soon, including to customers in the

United States.” Id.

In any event, Opposer “also sells its products through an authorized distributor

[Hala AlSham] in the United Arab Emirates since 2009.” Id. (Doe Dec. ¶ 9). “The

packaging for all Semiramis products sold by Hala AlSham is labeled with the word

SEMIRAMIS depicted in English using Latin characters and the word SEMIRAMIS

depicted in Arabic using Arabic script.” Id. at 5-6 (Doe Dec. ¶ 9). Portions of Hala

AlSham’s Facebook page, which show Hala AlSham’s use of Opposer’s pleaded mark,

are reproduced below:


12

29 TTABVUE 22, 49.

Through Hala AlSham, Opposer sold its products in the United States “in at least

2014, 2016, 2018, and 2019.” 56 TTABVUE 6 (Doe Dec. ¶ 10); 57 TTABVUE 7-8 (S.

Ramadan Dec. ¶¶ 26, 28). These sales are reflected in confidential shipping

documents which we therefore do not reproduce here, but which support Saadi

Ramadan’s and Mr. Doe’s consistent testimony that sales were made through Hala

AlSham in the United States in 2014, 2016, 2018 and 2019. 68 TTABVUE 2-12 (S.

Ramadan Dec. Exs. M-P) (confidential shipping documents).

B. Applicant

Although Applicant did not introduce any evidence, Opposer has established that

Mr. Doe learned in June 2018 that a “Semiramis” location opened in Houston, Texas.

56 TTABVUE 6 (Doe Dec. ¶ 11). The store is called “Semiramis USA,” but it has no

affiliation of any kind with Opposer. Id. (Doe Dec. ¶ 12); 57 TTABVUE 9 (S. Ramadan


13

Dec. ¶ 32). Applicant’s webpage, while ambiguous, nevertheless may be read to

suggest, in at least one instance, that there is an affiliation between Opposer and

Applicant. Specifically, Applicant’s website, which is accessible via the domain name

“semiramisusa.com,” includes a note from Applicant’s owner Wafa Nemry stating: “I

am proud to announce the establishment of Semiramis in Houston, Texas, in hopes

of bringing the tradition of hospitality and signature taste to you!” 31 TTABVUE 6.

In any event, Applicant offers some of the same products as Opposer under the

identical mark SEMIRAMIS (in English), as well as its involved mark, SEMIRAMIS

in Arabic:

Id. at 9.


14

III. Opposer’s Entitlement to Statutory Cause of Action11

Entitlement to a statutory cause of action is a requirement in every inter partes

case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370,

2020 USPQ2d 10837 at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control

Components, Inc., 572 U.S. 118, 125-26 (2014)). A party in the position of plaintiff

may oppose registration of a mark when doing so is within its zone of interests and it

has a reasonable belief in damage that is proximately caused by registration of the

mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at * 6-7

(Fed. Cir. 2020) (holding that the test in Lexmark is met by demonstrating a real

interest in opposing or cancelling a registration of a mark, which satisfies the zone-

of-interests requirement, and a reasonable belief in damage by the registration of a

mark, which demonstrates damage proximately caused by registration of the mark).

Here, Opposer’s use of SEMIRAMIS in Latin and Arabic lettering for candy and

baked goods establishes its entitlement to a statutory cause of action. 56 TTABVUE

3 (Doe Dec. ¶ 3); 58-65 TTABVUE (S. Ramadan Dec. Exs. E-L). See Empresa Cubana

Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);

Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009); Syngenta

Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1118 (TTAB 2009) (testimony that

11 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the

Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this

inquiry as entitlement to a statutory cause of action. Despite the change in nomenclature,

our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain

equally applicable.


15

opposer uses its mark “is sufficient to support opposer’s allegations of a reasonable

belief that it would be damaged …” where opposer alleged likelihood of confusion).12

IV. Likelihood of Confusion

There is no serious dispute that the parties’ marks are likely to be confused. The

goods are identical, because both parties offer overlapping types of candy and baked

goods under their marks, which travel in the same channels of trade to the same

classes of consumers. This reduces the degree of similarity between the marks

necessary to find a likelihood of confusion. In re Viterra, Inc., 671 F.3d 1358, 101

USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 94

USPQ2d 1257, 1260 (Fed. Cir. 2010).

Opposer has established prior use of the marks SEMIRAMIS and

and Applicant’s mark is the word SEMIRAMIS in Arabic:

. While the marks are not identical in their entireties, they are

12 Applicant’s argument that Opposer is not entitled to a statutory cause of action because it

abandoned its pleaded mark, 40 TTABVUE 11-18, is not well taken. Opposer’s current and

former use of its mark, even if not continuous, entitle it to a cause of action whether or not

its ultimate claim of priority is successful. In other words, whether Opposer abandoned its

pleaded marks goes to the ultimate merits of this proceeding, specifically priority, not

whether Opposer is entitled to bring it in the first place. We have therefore considered all of

Applicant’s abandonment arguments in the context of priority, rather than in our

determination of whether Opposer has a statutory cause of action. See Azeka Bldg. Corp. v.

Azeka, 122 USPQ2d 1477, 1483 (TTAB 2017) (“Opposer must establish that it has priority of

use over Applicant. However, when a mark is abandoned, as Applicant claims in this case, it

becomes available for others to adopt and use as a trademark. Thus, we turn to the facts

surrounding Opposer’s purported abandonment of its AZEKA’S RIBS mark.”); Exec. Coach

Bldrs., 123 USPQ2d at 1179-80 (considering abandonment defense in the context of priority

rather than “standing”).


16

identical in part and otherwise quite similar.

The marks have identical meanings under the doctrine of foreign equivalents.

Under the doctrine of foreign equivalents, foreign words

from common languages are translated into English to

determine similarity of connotation with English word

marks. See Palm Bay Import[s], Inc. v. Veuve Clicquot

Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73

USPQ2d 1689 (Fed. Cir. 2005). The doctrine is applied

when it is likely that “the ordinary American purchaser

would ‘stop and translate [the term] into its English

equivalent.” Palm Bay, supra at 1696, quoting In re Pan

Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976.).

In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006). See also In re Aquamar, Inc., 115

USPQ2d 1122 (TTAB 2015). Here, we take judicial notice that Arabic is a common,

modern foreign language, because according to the United States Census American

Community Survey Report on “Language Use in the United States: 2011,”13 Arabic is

spoken by more than 950,000 people in the United States, which easily ranks Arabic

among the top 10 foreign languages spoken in the United States. Furthermore, we

find that consumers would stop and translate Applicant’s mark because it identifies

a prominent person, an Assyrian queen, whose name is mentioned, in English, on

Applicant’s website. Furthermore, Applicant depicts SEMIRAMIS in Arabic

immediately above its English equivalent (just as Opposer depicts the term in Arabic

above the term in English). 31 TTABVUE 9. Applicant’s involved application itself

indicates that Applicant’s mark’s non-Latin (Arabic) characters “transliterate to

‘SEMIRAMIS’ and this means ‘SEMIRAMIS’ in English,” while Opposer’s marks are

13 https://www2.census.gov/library/publications/2013/acs/acs-22/acs-22.pdf.


17

SEMIRAMIS in English and the design mark combining SEMIRAMIS in English

depicted below SEMIRAMIS in Arabic.

We recognize that the marks’ “equivalency in connotation does not, in and of itself,

determine the question of likelihood of confusion,” and that connotation is “but a

single factor in the overall evaluation of likelihood of confusion,” In re Ithaca Indus.,

Inc., 230 USPQ 702,704 (TTAB 1986), but nevertheless find that here, as in many

doctrine of foreign equivalent cases, the similarity in connotation results in the marks

being confusingly similar in their entireties, especially when used for identical goods.

Id. (finding LUPO, for men’s and boy’s underwear likely to be confused with WOLF

for sportswear, in large part because LUPO means “wolf” in Italian). See also In re

La Peregrina Ltd., 86 USPQ2d 1645, 1649-50 (TTAB 2008) (“LA PEREGRINA and

PILGRIM [both for jewelry] are foreign equivalents and, thus, the marks are identical

in meaning. This factor outweighs the differences in appearance and pronunciation.”);

In re Thomas, 79 USPQ2d at 1024 (MARCHE NOIR for jewelry likely to be confused

with BLACK MARKET MINERALS for retail jewelry store services, despite marks

being “decidedly different in sound and appearance,” in large part because “marche

noir” means “black market” in French); In re Perez, 21 USPQ2d 1075, 1075 (TTAB

1991) (finding EL GALLO for fresh vegetables, namely tomatoes and peppers likely

to be confused with ROOSTER for fresh fruit, in large part because “gallo” means

“rooster” in Spanish).

The similarities between the marks do not end with their meanings, however.

Opposer’s mark includes not only SEMIRAMIS in English, but also “the word


18

SEMIRAMIS depicted in Arabic using Arabic script,” 56 TTABVUE 6 (Doe Dec. ¶ 9),

while Applicant’s involved mark “consists of the word ‘SEMIRAMIS’ in Arabic in

stylized calligraphic font.” Because the parties both use the Arabic word for

SEMIRAMIS, their marks will sound exactly the same in part, and the only difference

in sound will come from also pronouncing the English language word in Opposer’s

mark which conveys the same meaning as the Arabic term both marks share.

Furthermore, while Opposer’s “Arabic script” and Applicant’s Arabic “stylized

calligraphic font” do not look identical, they consist of the same letters, and to that

exceedingly important extent, Applicant’s mark and the Arabic portion of Opposer’s

mark look the same. The marks’ commercial impression is also essentially identical,

as both marks associate the Assyrian queen SEMIRAMIS with baked goods and other

sweets.

Because the goods are identical and the marks are identical in at least meaning

and otherwise highly similar, confusion is likely. This case therefore comes down to

priority, which is inextricably intertwined with Applicant’s allegation of

abandonment.

V. Priority (Abandonment)

Section 2(d) of the Act permits a party to base its opposition to registration on its

ownership of “a mark or trade name previously used in the United States … and not

abandoned.” Because Opposer does not own a registration, it must establish

proprietary rights in a mark through common law use. Giersch, 90 USPQ2d at 1023;

see also Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA

1981).


19

Here, there is no dispute that as between Opposer and Applicant, Opposer was

the first to offer baked goods and sweets in the United States, starting in 2001, and

continuing through at least 2012, under the marks SEMIRAMIS and

. 56 TTABVUE 3 (Doe Dec. ¶ 3); 58-65 TTABVUE (S. Ramadan

Dec. Exs. E-L) (shipping documents and payment records from 2005-2012). Applicant

did not file its involved application until 2018.14 The question is whether, as Applicant

alleges, Opposer abandoned its SEMIRAMIS marks at some point between 2012 and

2018, leaving SEMIRAMIS and the Arabic version thereof available for Applicant to

adopt and use. See Azeka Bldg. Corp., 122 USPQ2d at 1483.

Under Section 45 of the Act, 15 U.S.C. § 1127, a mark is considered abandoned

when “its use has been discontinued with intent not to resume such use,” and

“[n]onuse for 3 consecutive years shall be prima facie evidence of abandonment.”

“Use” of a mark “means the bona fide use of such mark made in the ordinary course

of trade, and not merely to reserve a right in a mark.” 15 U.S.C. § 1127. Applicant

“bears at minimum a burden of coming forth with some evidence of abandonment.”

Kemi Organics, 126 USPQ2d at 1605.

14 While the application asserts first use on November 1, 2017, we cannot rely on this claim

because Applicant failed to introduce any evidence to support it. Trademark Rule 2.122(b)(2)

(“The allegation in an application for registration, or in a registration, of a date of use is not

evidence on behalf of the applicant or registrant; a date of use of a mark must be established

by competent evidence.”). See generally, Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108

USPQ2d 1134, 1140-41 (TTAB 2013) (“for when an application or registration is of record,

the party may rely on the filing date of the application for registration, i.e., its constructive

use date”); Syngenta, 90 USPQ2d at 1119 (“applicant may rely without further proof upon

the filing date of its application as a ‘constructive use’ date for purposes of priority”).


20

Thus, if Applicant “can show three consecutive years of nonuse, it has established

a prima facie showing of abandonment, creating a rebuttable presumption that

[Opposer] has abandoned the mark without intent to resume use.” ShutEmDown

Sports Inc. v. Lacy, 102 USPQ2d 1036, 1042 (TTAB 2012). Applicant bears the burden

of proof to establish its case by a preponderance of the evidence. See On-Line Careline,

Inc. v. Am. Online, Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000); and

Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 13

USPQ2d 1307, 1309 (Fed. Cir. 1989). If Applicant makes a prima facie case of

abandonment, the burden of production, i.e., of going forward, shifts to Opposer to

rebut the prima facie showing with evidence, but “[t]he burden of persuasion remains

with [Applicant] to prove abandonment by a preponderance of the evidence.”

ShutEmDown Sports, 102 USPQ2d at 1042. See also Crash Dummy Movie, 94

USPQ2d at 1316.

Here, Applicant argues, based on what it calls “admissions” or “judicial

admissions” in Opposer’s partners’ testimony, that “Opposer’s sales to the United

States ended in 2012.” 40 TTABVUE 7. The evidence is to the contrary, however. In

fact, through its “authorized distributor” Hala AlSham, which is identified as

“Semiramis Outlet” on Opposer’s website, Opposer sold sweets to United States

customers in “at least” 2014, 2016, 2018 and 2019. 18 TTABVUE 7 (S. Ramadan Dec.

Ex. B); 56 TTABVUE 5, 6 (Doe Dec. ¶¶ 9-10); 57 TTABVUE 8 (S. Ramadan Dec. ¶ 26);

68 TTABVUE 2-12 (S. Ramadan Dec. Exs. M-P).


21

While these sales apparently reflect a significant decrease in the frequency and

quantity of Opposer’s sales to United States customers since 2012, they do not assist

Applicant’s efforts to make out a prima facie case that Opposer abandoned its mark.

In fact, having chosen to introduce no evidence of its own, Applicant has failed to

establish either that Opposer discontinued its use of its pleaded mark with an intent

not to resume use,15 or that Opposer discontinued use for three consecutive years.

Indeed, when we consider Hala AlSham’s sales in the United States in at least 2014,

2016, 2018 and 2019, we find that there is no three year period of nonuse, and when

we consider the record as a whole, we find that Opposer has always intended to

resume use of its mark in the United States, as it has successfully done elsewhere.

To the extent that Applicant may have intended to suggest that Opposer’s sales

through Hala AlSham from 2014-2019 were too sporadic, “incidental” or “isolated” to

constitute trademark use, 40 TTABVUE 10-12, we disagree. While many of the

details on the shipping and other documents related to these sales are designated

“confidential,” some of the documents contain indications (perhaps most importantly

shipment weights and quantities) that Opposer sold more than a “token” quantity of

its baked goods in the United States between 2014-2019 through Hala AlSham.

Therefore, we find that these sales are legitimate sales by Opposer through a

distributor and establish continued trademark use in the United States through

2019. Thus, Applicant has failed to establish nonuse for three consecutive years.

15 The only evidence of Opposer’s intent comes from Opposer’s witnesses, who make clear that

Opposer has always intended to overcome the obstacles arising out of the Syrian Civil War,

and more specifically to restore its business to its pre-War success.


22

To the extent Applicant argues based on the record as a whole that Opposer

intended not to resume use of its pleaded mark in the United States, we disagree.

Opposer has detailed with persuasive evidence not only the difficulties it has faced

for 10 years since the start of the Syrian Civil War, but also its extensive,

longstanding and expensive efforts to overcome those obstacles. This evidence in fact

establishes that Opposer has always intended to resume use of its mark, that it has

been successful in doing so in the Middle East and elsewhere, and that its efforts

continue.

Finally, even if Applicant had established three consecutive years of nonuse, that

Hala AlSham’s sales in the United States did not inure to Opposer’s benefit, or that

those sales were insufficient evidence of trademark use, which it did not, any nonuse

would be excusable due to the Syrian Civil War. Generally, “abandonment does not

result from a mere temporary withdrawal from the market forced by outside causes

(‘excusable nonuse’), and the prior user’s rights in a mark previously used in the

market will preclude registration by a later user if there is a likelihood of confusion

under Section 2(d) of the Lanham Act.” Miller Brewing Co. v. Oland’s Breweries

[1971] Ltd., 548 F.2d 349, 192 USPQ 266, 267 (CCPA 1976). More specifically, we

have previously found nonuse as a result of war, as in this case, excusable. Fort

Howard Paper Co. v. Standard Oil Co., 126 USPQ 22 (TTAB 1960) (finding pleaded

mark was not abandoned despite nonuse from at least 1941-1946 due to World War

II); Shenango China, Inc. v. The Rosenthal Block China Corp., 122 USPQ 93, 94

(Commr. Pat. 1959) (“Nonuse of ‘CONTINENTAL’ by applicant’s predecessors during


23

1941-1945, the years of World War II, and during 1945-1952, from the date of seizure

of the East Zone factory by the Russians until completion of the West Zone factory, is

excusable nonuse.”); Mfgs. Supplies Co. v. Fortuna-Werke Spezialmaschinenfabrik

AG, 115 USPQ 94, 95 (Commr. Pat. 1957) (“The record does not show abandonment.

Nonuse during the World War II years and during the adjustment period thereafter

is excusable nonuse.”). See also Chandon Champagne Corp. v. San Marino Wine

Corp., 335 F.3d 531, 142 USPQ 239, 242 (2d Cir. 1964) (“plaintiffs’ forced wartime

withdrawal from the American market was not an abandonment of the mark”);

Haviland & Co. v. Johann Haviland China Corp., 269 F.Supp. 928, 154 USPQ 287,

306 (S.D.N.Y. 1967); Stern Apparel Corp. v. Raingard, Inc., 87 F.Supp. 621, 83 USPQ

293, 294-95 (S.D.N.Y. 1949) (mark not abandoned where nonuse was the result of

“wartime restrictions”).

VI. Conclusion

Opposer has established prior common law use of its SEMIRAMIS marks, and

Applicant’s defense of abandonment fails because there is no proof that Opposer

discontinued use for three consecutive years or intended not to resume use. Even if

there were, Opposer’s nonuse is excusable due to the Syrian Civil War. That leaves

only the question of likelihood of confusion, which we have resolved in Opposer’s favor

because the marks are quite similar and the goods are identical.

Decision: The opposition to registration of Applicant’s mark on the ground of

likelihood of confusion is sustained.

semiramis v. mdj nemry corp. d/b/a semiramis usa

Documents