IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

 

No. 99-50854

 

ENRIQUE BERNAT F., S.A.; S.A. CHUPA CHUPS,

Plaintiffs-Counter Defendants-Appellees,

v.

GUADALAJARA, INC.; ET AL.,

Defendants,

GUADALAJARA, INC., doing business as

Dulces Vero USA,

Defendant-Counter Claimant-Appellant.

_______________________________

Appeal from the United States District Court

for the Western District of Texas

_______________________________

April 18, 2000

Before REYNALDO G. GARZA, HIGGINBOTHAM, and BENAVIDES, Circuit

Judges.

BENAVIDES, Circuit Judge:

Appellant Guadalajara, Inc. d/b/a Dulces Vero USA (“Dulces

Vero”) appeals from the imposition of a preliminary injunction

forbidding it to sell its soft-serve frozen yogurt cone-shaped

lollipops under the mark “Chupa Gurts” in the United States. The

district court determined that Dulces Vero’s mark infringed the

mark “Chupa Chups,” held by appellees Enrique Bernat F., S.A. and

S.A. Chupa Chups (collectively “Chupa Chups”). Because we find

that the record below adequately demonstrated that the term

“chupa” is a generic Spanish word that designates “lollipop,” we
2

hold that the district court abused its discretion in finding a

likelihood of confusion between the marks “Chupa Chups” and

“Chupa Gurts.” We therefore vacate the district court’s judgment

and remand.

I. Factual and Procedural Background

Headquartered in Barcelona, Spain, Chupa Chups manufactures

and distributes lollipops in, among other places, the U.S. and

Mexico, under the mark “Chupa Chups.” Though Chupa Chups sells

27 flavors of lollipops, its best-sellers (accounting for 50% of

its U.S. sales) are five “ice cream flavored” lollipops that

contain milk. 

Based in Mexico, Dulces Vero also produces lollipops for the

U.S. and Mexican market. Dulces Vero is renowned for crafting

lollipops in unusual shapes. One such effort is the subject of

this suit: a frozen yogurt-flavored lollipop shaped like a softserve frozen yogurt cone sold under the name “Chupa Gurts.”

Dulces Vero, which has been selling “Chupa Gurts” in Mexico

for two years, introduced the product to the U.S. at the 1998 All

Candy Expo (“the Expo”) in Chicago. The appearance at the Expo

led to a mention of “Chupa Gurts” in The Manufacturing

Confectioner, an industry magazine, which, in turn, alerted Chupa

Chups to the existence of its similarly-named competitor. Chupa

Chups contacted Dulces Vero to ascertain whether it was selling

“Chupa Gurts” in the U.S. Dulces Vero replied that it was not,

though apparently independent distributors–many of whom own “mom

and pop” stores–were purchasing “Chupa Gurts” in Mexico for
 

1 Between June 16, 1999, when the magistrate issued his report

and recommendation, and August 3, 1999, when the district court

adopted it, the confectionary industry held the 1999 Expo. 

Despite the fact that, at the time of the Expo, the report and

recommendation lacked the force of law (because it had not yet

been approved by the district court), Dulces Vero did not

showcase “Chupa Gurts” at the 1999 Expo because to do so would

have contravened the terms of the preliminary injunction the

magistrate recommended.

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resale in the U.S. Dissatisfied with this state of affairs,

Chupa Chups filed the instant suit.

After a hearing, the magistrate judge issued a report and

recommendation on June 16, 1999, advocating the granting of a

preliminary injunction barring Dulces Vero from selling or

marketing any candy or confectionary product under the name

“Chupa Gurts.” The district court adopted the magistrate’s

report on August 3, 1999.1

Dulces Vero timely filed this appeal.

II. Standard of Review

To obtain a preliminary injunction, a plaintiff must

establish: (1) a substantial likelihood of success on the merits;

(2) a substantial threat that it will suffer irreparable injury

absent the injunction; (3) that the threatened injury outweighs

any harm the injunction might cause the defendants; and (4) that

the injunction will not impair the public interest. See Sugar

Busters L.L.C. v. Brennan, 177 F.3d 258, 265 (5th Cir. 1999). 

Because these four elements constitute mixed questions of fact

and law, we review the district court’s factual findings for

clear error, but we apply de novo review to its legal
 

2 The district court did err, as Dulces Vero alleges, by

failing to conduct a validity of the mark analysis before

proceeding to the likelihood of confusion inquiry. See Pebble

Beach Co. v. Tour 18 I, Ltd., 155 F.3d 526, 536-37 (5th Cir.

1998) (setting forth the two prong test for infringement: (1)

assess the validity of the mark, i.e. is it inherently

distinctive or has it acquired secondary meaning; and (2)

ascertain likelihood of confusion). Courts conduct the validity

analysis by classifying the mark as generic, descriptive,

suggestive, arbitrary or fanciful. See Pebble Beach Co. v. Tour

18 I, Ltd., 942 F. Supp. 1513, 1537 (S.D. Tex. 1986). Generic

marks, of course, receive no protection, and descriptive marks

must have secondary meaning to garner protection. Id. Here, the

district court, in assessing whether “Chupa Chups” was valid,

merely observed that Chupa Chups first registered the mark in

1966, and, after allowing it to lapse on April 7, 1997 for

failure to file the necessary affidavits for renewal, regained it

on November 24, 1998. Though a registered mark is entitled to a

presumption of validity, see 15 U.S.C. § 1057(b), this

presumption has never absolved the district court of its

responsibility to conduct an independent validity of the mark

analysis. 

Nevertheless, as Chupa Chups emphasizes, the district court

did find the mark arbitrary in the likelihood of confusion

analysis when it examined the strength of the mark. Therefore,

the district court classified the mark during the wrong part of

the analysis. This constitutes reversible error because, as we

detail below, “chupa” is generic, and therefore, that likelihood

4

conclusions. See Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d

246, 250 (5th Cir. 1997). We may only reverse the district

court’s ultimate decision to grant the injunction if we conclude

that it abused its discretion, though a decision based on

erroneous legal principles is subject to de novo review. See

Martin’s Herend Imports, Inc. v. Diamond & Gem Trading United

States of America Co., 195 F.3d 765, 772 (5th Cir. 1999).

III. Trademark Infringement

The parties agree that the controversy centers on the term

“chupa.” Dulces Vero claims the district court never conducted a

validity of the mark analysis2 and thereby failed to ascertain
of confusion analysis should have compared only the arbitrary

parts of the marks–i.e. “Chups” and “Gurts”–not “Chupa Chups” and

“Chupa Gurts.”

5

that the mark “chupa,” which corresponds to “lollipop” in

Spanish, is generic and unworthy of protection. Moreover, Dulces

Vero asserts that no likelihood of confusion exists between

“Chupa Gurts” and “Chupa Chups.” 

Chupa Chups counters that the district court correctly held

“chupa” to be an arbitrary mark, and that consumers are likely to

confuse the two marks.

The parties agree that application of the doctrine of

foreign equivalents governs the outcome of this dispute. This

doctrine requires courts to translate foreign words into English

to test them for genericness or descriptiveness. See Pizzeria

Uno Corp. v. Temple, 747 F.2d 1522, 1531 (4th Cir. 1984); see

also 2 McCarthy on Trademarks and Unfair Competition, § 11:34, at

11-60. The act of translation, of course, can itself be an

imprecise task, as foreign words sometimes have no exact

equivalent in English; therefore, courts may rely on the “primary

and common translation” in determining English equivalency. 3

McCarthy, supra, § 23:38, at 23-85. Additionally, courts need

not concern themselves with words from obsolete, dead, or obscure

languages, see McCarthy, supra, at 11-60-11-60.1, because one

policy undergirding the doctrine is “the assumption that there

are (or someday will be) customers in the U.S. who speak that

foreign language.” Otokoyama Co. Ltd. v. Wine of Japan Import,

Inc., 175 F.3d 266, 270 (2d Cir. 1999). The other policy
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justification is one of international comity: because U.S.

companies would be hamstrung in international trade if foreign

countries granted trademark protection to generic English words,

the U.S. reciprocates and refuses trademark protection to generic

foreign words. See In re Le Sorbet, Inc., 228 U.S.P.Q. 27, 31

(T.T.A.B. 1985) (“The rationale of these protests [by the State

Department against registration of generic English words abroad]

is that registration of generic terms as trademarks would

interfere with the free flow of international trade in products

known by that generic term.”); 2 McCarthy, supra, § 12:41, at 12-

85. Though the doctrine of foreign equivalents is a wellestablished precept of trademark law, no Fifth Circuit case has

heretofore applied it.

The first step in the analysis is translating the word

“chupa.” Though Dulces Vero elicited testimony from Chupa Chups’

representative, Victor Tresserras (“Tresserras”), a native

Spanish-speaker, that “chupa” translates as “lollipop” in Spanish

slang, the district court found that the primary meaning of the

word was “to lick” or “to suck.” This finding is not an abuse of

discretion because the district court should use the primary and

common translation of the word, and both parties agree that

“chupa” is a form of the verb “chupar,” meaning “to lick” or “to

suck.” 

The analysis does not end here, however, because Dulces Vero

maintains that the verb meaning “to lick” or “to suck,” when used

as a noun, is nonetheless a generic designator of lollipops in
 

3 The Spanish word for “lollipop” is “paletas,” but this does

not foreclose “chupa” from functioning as an additional generic

term for lollipops, much as the word “sucker” in English is also

a generic term for a lollipop. See 2 McCarthy, supra, § 12:9, at

12-19 (“Any product may have many generic designations.”). 

7

Spanish. Chupa Chups scoffs at this argument, claiming that

generic terms are always nouns that translate literally to mean

the general term for a product–i.e. “paleta” means “lollipop.”3

The cases, however, do not endow “generic” with quite so narrow a

definition. In Otokoyama Co., the defendants alleged that

“otokoyama” was the generic Japanese term for “sake.” The Second

Circuit agreed, even though “otokoyama” literally translated as

“man/mountain,” not “rice liquor.” See 175 F.3d at 268. 

Similarly, in Burke v. Cassin, 45 Cal. 467, 476 (1873), the

California Supreme court held that “schnapps” was generic for

gin, despite the fact that its literal translation from German

meant “dram” or “drink.” And again, in Holland v. C. & A. Import

Corp., 8 F. Supp. 259 (D.N.Y. 1934), the court found “est est

est” to be the generic term for Montefiascone wine, even though

the term literally translates as “it is it is it is.” Therefore,

despite the fact that the lower court did not literally translate

it to mean “lollipop,” “chupa” could be generic if it has come to

signify lollipops in Spanish-speaking countries, like Mexico.

The evidence in the record suggests that “chupa” does

generically designate “lollipops.” Most significantly, Dulces

Vero presented evidence that two other products–aside from “Chupa

Chups” and “Chupa Gurts”–use the mark “chupa” on lollipops in
 

4 Specifically, this dialect is spoken in Argentina and

Uruguay. Chupa Chups argues that because this dialect is not

spoken in a single, Spanish-speaking country, the dialect is

irrelevant. Its argument must fail. The doctrine of foreign

equivalents does not require that the language or dialect be

spoken in a country as a whole. “A word may . . . be generic by

virtue of its association with a particular region, cultural

movement, or legend.” Otokoyama Co., 175 F.3d at 271.

 

5 Chupa Chups argues vigorously that it intended this phrase

as a slogan, like “Motts means fruit,” not as a literal

8

Mexico. These marks are “Chupadedo” and “Tutsi Chupa Pop,” the

latter having been licensed by Tootsie Roll Industries

(“Tootsie”). That other lollipops in Mexico use the term “chupa”

in their marks is a strong indication that the Spanish-speaking

Mexican population understands “chupa” to designate lollipops. 

Moreover, Tresserras, who was Chupa Chups’ own representative, testified, “In certain regions ‘chupa’ is used to refer to

a lollipop or a sucker when used as a noun. When somebody goes

into a local candy shop and asks for a chupa, then it’ll be

understood more times than not that it’s a lollipop.” Dulces

Vero additionally submitted evidence that other derivations of

“chupar” also mean lollipop in different Spanish dialects: “chupa

chupa” means lollipop in southern South America4 and “chupatinos”

means “lollipop” in Argentina.

Chupa Chups itself encourages consumers to think of “chupa”

as a common word, not a trademark. The “Chupa Chups” wrapper

states “‘Chupa Chups’ means ‘to lick a lollipop’ in Spanish.” 

While this phrase casts “chups,” not “chupa” as meaning

“lollipop,” the overall import of the wrapper is that “chupa”

functions as a common word, not a trademark.5 
translation of its trademark. This is unpersuasive. The average

English-speaking consumer knows “Motts means fruit” is a slogan

because it identifies “Motts” as a trademark and understands the

phrase to mean that Motts uses fruit in its products. 

Conversely, the average English-speaking consumer who does not

also speak Spanish will have no basis for realizing that the

slogan “‘Chupa Chups’ means ‘to lick a lollipop’ in Spanish,” is

a slogan, rather than a literal translation. Moreover, even

Spanish-speaking consumers might read the phrase literally

because “chupa” does mean “to lick.” That the Spanish-speaking

consumer would not recognize “chups” does not alter this analysis

because he might assume that “chups” is simply another derivation

of “chupar” meaning “lollipop” in a dialect with which he is

unfamiliar.

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The district court relied heavily on the fact that SpanishEnglish dictionaries did not seem to translate “chupa” as

“lollipop,” but “numerous terms have been found to be generic

despite their absence from the dictionary.” Liquid Controls

Corp. v. Liquid Control Corp., 802 F.2d 934, 937 (7th Cir. 1986). 

This results from the fact that dictionary evidence is not

dispositive. “[T]here is likely to be a delay between a word’s

acceptance into common usage and its entry in a dictionary. 

Dictionary entries also reflect lexicographical judgment and

editing which may distort a word’s meaning or importance.” 

Berner Int’l Corp. v. Mars Sales Co., 987 F.2d 975, 983 (3d Cir.

1993). This latter point is particularly persuasive in the

context of a Spanish-English dictionary, where the editor’s

discretion extends not merely to the meaning of the English word,

but also to what its closest Spanish equivalent might be. 

Because translation is itself such an interpretative task, the

absence in the record of an entry in a Spanish-English dictionary

that defines “chupa” as a “lollipop” is not controlling.
10

In addition to this evidence in the record demonstrating

that “chupa” is generic, the policies undergirding the doctrine

of foreign equivalents both strengthen that conclusion. The

first explanation for denying trademark protection to generic

foreign words is that Spanish-speakers in the U.S. will

understand “chupa” to be generic. This is particularly true on

these facts, where “Chupa Gurts” are now available in the U.S.

only in ethnic “mom-and-pop” stores that serve Spanish-speaking

consumers. In addition, Spanish is widely spoken in the U.S.,

particularly in Texas, where “Chupa Gurts” are being sold by

these independent distributors. The district court discounted

these facts, emphasizing that Dulces Vero’s ultimate goal was to

market “Chupa Gurts” more widely. Even a wider distribution,

however, will not change the fact that Spanish-speakers from

Mexico and parts of South America will understand “chupa” to be

the generic designator of “lollipop.” “No merchant may obtain

the exclusive right over a trademark designation if that

exclusivity would prevent competitors from designating a product

as what it is in the foreign language their customers know best.” 

Otokoyama Co., 175 F.3d at 271.

Moreover, the policy of international comity has substantial

weight in this situation. If we permit Chupa Chups to monopolize

the term “chupa,” we will impede other Mexican candy makers’

ability to compete effectively in the U.S. lollipop market. Just

as we do not expect Mexico to interfere with Tootsie’s ability to

market its product in Mexico by granting trademark protection in
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the word “pop” to another American confectioner, so we cannot

justify debilitating Dulces Vero’s attempts to market “Chupa

Gurts” in the United States by sanctioning Chupa Chups’ bid for

trademark protection in the word “chupa.”

For these reasons, we hold that “chupa” is a generic Spanish

word that designates “lollipop” or “sucker.” Because generic

terms cannot obtain trademark protection, the only part of Chupa

Chups’ mark that can garner trademark protection is “Chups.” The

district court therefore erred by conducting the likelihood of

confusion analysis with the marks “Chupa Chups” and “Chupa Gurts”

instead of “Chups” and “Gurts,” which are the only distinctive

parts of either of the parties’ marks. Thus, its assessment that

a likelihood of confusion existed between the two marks was in

error, and consequently, so was its determination that Chupa

Chups had shown a likelihood of success on the merits. The grant

of a preliminary injunction was therefore an abuse of discretion.

As a result of our disposition of this case, we need not

reach the questions of the amount of the bond or of whether the

trial court enjoined the proper parties.

IV. Conclusion

We hold that “chupa” is a generic term designating

“lollipop” in Spanish. We therefore conclude that the district

court abused its discretion when it found a likelihood of

confusion between the marks “Chupa Chups” and “Chupa Gurts.” For

this reason, we vacate the preliminary injunction and remand to

the district court for further proceedings.
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VACATED and REMANDED.