Thesis Outline and Future Direction

Below you’ll find my articulated direction for my thesis for the remainder of the year!

  1. I.     Introduction (DUE DATE DECEMBER 17)
    1. Begin with examples from two cases
      1. i.     In re Buckner Enterprises Corp., 6 U.S.P.Q.2d (BNA) 1316 (T.T.A.B. 1987) (holding that the mark DOVE for solid fuel burning stoves and furnaces is not likely to be confused with PALOMA (meaning “pigeon” or “dove” in Spanish) used for various forms of gas heating apparatus)
      2. ii.     In re Am. Safety Razor Comp., 2 T.T.A.B. LEXIS 95 (1987) (finding that bilingual purchasers would “be likely to translate ‘BUENOS DIAS’ into its ‘GOOD MORNING’ English equivalent” thereby causing confusion to preclude registration).
    2. The application of linguistic thought to the Doctrine of Foreign Equivalents is beneficial.
      1. i.     The study of the overlap between language and the law is neither new nor short of interest and relevance to linguists, practitioners of law, or those they come into contact with. Major researchers in the areas of overlap such as Roger Shuy, Heidi Harley, Chris Hutton, John Joseph, and Peter Tiersma (to name only a brief few) focus on various topics including the nature of legal language, interpretation of legal texts, forensic linguistics, jury instruction, court bias, and definitions and lexicography (to highlight some topics) in efforts to determine how the law is informed by linguistic reality, and what the implications of this might be. Specifically, Hutton (2009)[1] notes that linguists, as well as judges, “have generally recognized the common ownership of the English language by its speakers” (Hutton 123). To this end, trademark law in particular can be considered “in effect a form of legally operational notice of linguistic change or innovation, and the law relies on both formal registration and the recognition of the courts that social practices may give rise to a legal right” (Hutton 121). Because trademark law relates so intimately to the study of linguistics, focused mainly on individual words, phrases, brands, and a company or individual’s right to exercise monopoly and ownership over them, my research will focus in on a particular aspect of trademark law, the Doctrine of Foreign Equivalents, as it pertains to linguistics.
    3. Statement of Problem, Questions, Need for Research
      1. i.     Problem: The Doctrine of Foreign Equivalents is a part of trademark law that deals specifically with the translation, reception, and understanding of foreign language marks by American consumers and courts, and this thesis will seek to examine whether or not the Trademark is properly informed by knowledge and realities of linguistics when being applied.
      2. ii.     Need for Research articulated by Roger Shuy of Georgetown University. Important questions include:
        1. “Should a mark’s descriptiveness or suggestiveness be considered from the perspective of speakers of the country where the protection is sought or from those who speak the foreign language itself?” (Shuy 144).
        2. “Can a mark be descriptive or suggestive in English when it is not in French, Spanish, or Arabic?” (Shuy 144).
        3. “Is a French name for expensive perfumes more suggestive than the English translation of that mark?” (Shuy 144).
        4. Shuy, Roger. (2002). Linguistic Battles in Trademark Disputes. New York: MacMillan.
      3. iii.     Some decisions can lead to consumer overprotection and/or the denial of commercial appeal for manufacturers
      4. iv.     Linguistic Implications
        1. What are courts assuming about the “ordinary” consumer in a linguistic sense?
          1. Conceptual Relevance: From a language attitudes standpoint courts could be biased in favor or against a certain type of construct, they could be assuming a certain rate of literacy that may not be true and thus disenfranchising populations.
          2. How is geo-linguistic diversity taken into consideration?
            1. Conceptual Relevance: Language changes depending on where it is spoken and encountered.
            2. How are people assumed to interact with and translate language in the marketplace?
              1. Conceptual Relevance: There are different theories on translation; are we prioritizing one over the other? Are we ignoring them altogether?
            3. Where do thresholds lie for fluency and likelihood of translation?
              1. Conceptual Relevance:
            4. Is there a sociolinguistic bias of courts, experts, dictionaries, litigants, and other forms of “language authority”
              1. Conceptual Relevance: Language attitudes are present and may possibly influence court decisions.
            5. How do we handle language in an increasingly global society, especially in lieu of the internet?
              1. Conceptual Relevance: Language  regulation and access is becoming trickier with greater access to the internet.
              2. Hamilton, Gary W. “Trademarks on the Internet: Confusion, Collusion, or Dilution?” The Emerging Law of Computer Networks (1996). HeinOnline. Web. 26 Nov. 2010. <http://heinonline.org/HOL/LandingPage?collection=journals&handle=hein.journals/tipj4&div=9&id=&page=>.
      5. v.     English is the de facto national language of the United States but there is no official language of the country at the federal level. Important questions ought to exist as to how federal courts chose to treat non-English languages in the American marketplace.
        1. U.S. English. Web. 26 Nov. 2010. <http://www.us-english.org/>.
        2. People have strong opinions about English being the official language of the country.
      6. vi.     Federal Circuit further specified that the doctrine of foreign equivalents applies only when “the ordinary American purchaser would stop and translate the foreign word into its English equivalent.”[2] To this end the courts must address three questions in their application of the Doctrine:
        1. Question 1: Who is the ordinary consumer?
          1. In this instance are we talking about all Americans, those to whom the product is available, or targeted consumers of a specific product? What about the internet?
          2. If we do not determine who the ordinary consumer is, and what their perception of foreign words is likely to be, then the doctrine “can result in a finding quite out of place with the reality of customer perception.” (McCarthy 466). Under the DoFE, “foreign words are translated into English [are] then tested for descriptiveness or genericness,” “by seeing whether that foreign word would be descriptive [of the product] to that segment of the purchasing public which is familiar with that language,” 1 McCarthy, Trade-marks and Unfair Competition, § 11.14, p. 464-65 (2d ed. 1984 Lawyers Coop.)[3]
          3. Question 2: Does the consumer have knowledge of the mark in the foreign language?
            1. This question cannot be articulated if the first question is not addressed.
            2. What exceptions exist where courts do not consider the knowledge of the consumer?
            3. Is it possible to fluent and not know some words? What about not being fluent but knowing some words of another language? What about certain meanings and connotations?
            4. “But we think that a word which is not in general or common use, and is unintelligible and non-descriptive to the general public, although it may be known to linguists and scientists, may be properly regarded as arbitrary and fanciful and capable of being used as a trademark or trade-name.” Le Blume Import Co. v. Coty, 293 Fed. 344, 351 (2nd Cir. 1923).
            5. Question 3: Would the consumer translate the mark?
              1. Does knowledge of a foreign language automatically lead to translation into English and thus confusion? Can it be possible that translation is different in different contexts?
              2. Even if people speak a foreign language, it may not be possible to determine that they will translate that foreign language into English rather than simply another foreign language.
              3. It might not always be possible to secure direct and literal translation across languages. We may be creating calques rather than direct translations.
      7. vii.     Ideas of the Thesis
        1. Hypothesis: The Doctrine of Foreign Equivalents can be better informed by linguistic realities regarding translation, perception, and consumer interaction with a foreign language trademark than it is currently.
        2. In an increasingly global society and marketplace how is American trademark law, which sees cases pertaining to American consumers, reconciled with the need for international linguistic comity in a changing global marketplace and amidst changing demographic trends in the United States?
        3. To this end, should United States courts be concerned with recognition of and confusion by a mark for the ordinary American purchaser instead of the status of the mark in a foreign language?
        4. Does it make sense to first translate a foreign mark into English and then submit that mark to standard distinctiveness and confusion tests when it is not the English mark that consumers encounter in the marketplace? By doing this are courts failing to consider consumer reactions to and experiences with the foreign language?
    4. Overview of Chapters and Conclusion
      1. i.     Overview of Chapters
      2. ii.     Conclusions
        1. Conduct the classic trademark analysis (using the three step process) using the foreign language mark. This makes the registration basis more in touch with the consumer’s actual encounter of the foreign word in the marketplace (consumers do not encounter the already translated mark).
        2. Always apply the three-step process required for the application of the Doctrine of Foreign Equivalents. (1) Determine Ordinary American Consumer; (2) Determine if this consumer has knowledge of the foreign language term; (3) If familiar, determine whether or not the consumer is likely to translate.
        3. Then determine, upon translation, if confusion arises. Does confusion rise to the point where the law should take notice and act to protect the consumer or producer.
        4. Apply the classic trademark analysis to the mark translated in English if the court determines that the foreign mark is likely to be translated into English
      3. iii.     This thesis has been requested to be seen by Deborah Cohn, the Commissioner of Trademarks for the United States for potentially informing practices within the United States Patent and Trademark Office as they related to the Trademark Trial and Appeals Board, as well as their workers who apply the trademark analysis to marks seeking registration.
      4. iv.     Relevance, financial ramifications of trademarks for companies
  2. II.     Introduction to the Doctrine of Foreign Equivalents, How Courts have Used the Doctrine, Doctrinal Exceptions (DUE DATE DECEMBER 30)
    1. Trademarks and Rationale for Doctrine
      1. i.     “Today, in what has been termed ‘hypercapitalism’ (Graham, 2006), some of the most valuable objects in the world are linguistic entities created and protected by intellectual property law, namely trademarks. Coca Cola’ is estimated to have a value of 70 billion dollars. Increasingly global conglomerates like Nike are not in the business of manufacturing things: ‘image is everything’, and ‘there is no value in making things anymore’ (Klein, 1999, pp. 196-7). While this process may reflect the increasingly abstract nature of property rights, it also involves the legal reification or concretization of (particular elements of) language” (Hutton 640)
      2. ii.     “Intellectual property law constitutes one of the key forums within which global issues of ownership, culture, agency, information and control will be worked out in the 21st century. Given that language issues will remain at the very heart of these debates, intellectual property in the widest sense of that concept should be of central concern to linguistic theory as it evolves in the information age” (Hutton 646).
      3. iii.     Hutton, Christopher. “Who Owns Language? Mother Tongues as Intellectual Property and the Conceptualization of Human Linguistic Diversity.” Language Sciences 32.6 (2010): 638-47. Print.
    2. Spectrum of Distinctiveness
    3. Likelihood of Confusion
    4. What the Trademark Manual for Examining Procedure (TMEP) says about when the Doctrine is supposed to be applied (expected)
      1. i.     TMEP § 1207.01(b)(vi)
    5. How Courts have used the Doctrine of Foreign Equivalents (actual) and Exceptions to the Doctrine
    6. Survey of famous landmark cases
      1. i.     Popular Bank v. Banco Popular, 9 F. Supp. 2d 1347, 1359 (S.D. Fla. 1998)
      2. ii.     Anheuser-Busch, Inc. v. Stroh Brewery Co., 750 F.2d 631, 642 (8th Cir. 1984).
      3. iii.     Carcione v. The Greengrocer, Inc., 205 U.S.P.Q. (BNA) 1075 (E.D. Cal. 1979).
      4. iv.     Green Spot (Thailand) Ltd. v. Vitasoy Int’l Holdings Ltd. Opposition No. 91165010 (February 21, 2008)
    7. Contradicting decisions
      1. i. Seiko Sporting Goods USA, Inc. v Kabushiki Kaisha Hattori Tokeiten
      2. ii.     Otokoyama Co. v Wine of Japan Import Inc.
    8. Additional Exceptions of the Doctrine
      1. i.     Trading Partners
      2. ii.     Appreciable population of speakers in the US or world
      3. iii.     Common, modern v dead, obscure language
  3. III.     Likelihood of Translation (DUE DATE JANUARY 23)
    1. How do bilinguals encounter language? Does translation vary on environment, product expense?
      1. i.     Jacob Jacoby, The Psychological Foundations of Trademark Law: Secondary Meaning, Generisicm, Fame, Confusion and Dilution, 91 Trademark Rep. 1013, 1037 (2001).
      2. ii.     Ellen R. Foxman, et al, Consumer Brand Confusion: A Conceptual Framework, 9 Psychology & Marketing 123, 127 (Mar./Apr. 1992).
      3. iii.     Annette M. B. de Groot, Determinants of Word Translation, 18 J. of Experimental Psych.: Learning, Memory, & Cognition 1001, 1001 (1992).
      4. iv.     Ward O’Neill, et al, A Translation-Based Generation Effect in Bilingual Recall and Recognition, 21 Memory & Cognition 488, 494 (1993).
      5. v.     Judith F. Kroll & Erika Stewart, Category Interference in Translation and Picture Naming: Evidence for Asymmetric Connections between Bilingual Memory Representations, 33 J. of Memory & Language 149, 157-8 (1994).
      6. vi.     Wouter Duyck & Marc Brysbaert, Semantic Access in Number Word Translation: The Role of Crosslingual Lexical Similarity,  55 Experimental Psychology 102, 103-104 (2008).
      7. vii.     David Luna & Laura A. Peracchio, What’s in a Bilingual’s Mind?: How Bilingual Consumers Process Information, 26 Advances in Consumer Research 306 (1999)
      8. viii.     David Luna & Laura A. Peracchio, “Where There Is a Will …”: Motivation as a Moderator of Language Processing by Bilingual Consumers, 19 Psychology & Marketing  573, 588-89 (July/Aug. 2002).
      9. ix.     Potentially email and solicit information from Professor Silvia Zetterstrand
    2. Fluency thresholds
      1. i.     COLIN BAKER & SYLVIA PRYS JONES, Encyclopedia of bilingualism and bilingual education. Clevedon, Avon, UK: Multilingual Matters (1998).
        1. i.     Page 75 – Thresholds Theory
  4. IV.     Other linguistic considerations and Doctrinal Limitation (DUE DATE FEBRUARY 20)
    1. Foreign words that we don’t associate as being foreign.
      1. i.     Survey?
        1. Do people see certain words as being connected to or having the qualities of a foreign language?
        2. What does having a foreign name mean?
        3. Do people translate the mark and does this suggest something about transferable qualities
    2. Resistance of other countries towards using foreign-sounding marks
      1. i.     Shuy, Roger. Linguistic Battles in Trademark Disputes. New York: MacMillan (2002).
      2. ii.     S.P. Landas
    3. Linguistic Authority
      1. i.     Dictionaries and establishing literal meaning
        1. Hutton, Christopher. Language, Meaning and the Law. Edinburgh: Edinburgh UP, 2009. Print.
        2. Why consult a dictionary? – “One tactic that courts sometimes employ when having difficulty with the meaning of an ordinary word is to consult a dictionary. For courts, dictionaries have several advantages over linguists as expert witnesses on the ordinary meaning of words. Consulting a dictionary is a familiar practice within the linguistic experience of lawyers, but asking a linguist is not. Dictionaries are created by professional lexicographers, and so can serve a court as a kind of surrogate expert witness. There is a wide choice of professionally edited dictionaries on the market, with differing definitional styles and contrasting organization of entries. The dictionary is also obviously cheaper and more readily available, and its point of view can be ignored if unhelpful, or a second opinion sought” (Hutton 86).
        3. Why consult a dictionary cont: “From the judge’s point of view, the dictionary is literally a handier guide to meaning than the linguist. Unlike the linguist as expert witness, the dictionary has no notice of the facts of the case. In this sense the dictionary entry is like the text of the statute: it is ‘closed’ prior to the case and can be presented as neutral with respect to it. The dictionary is useful to the judge not because it can provide sociolinguistically accurate guidelines to follow, but because it offers an authority seen as objective and general” (Hutton 101).
        4. Shortcomings of Dictionaries: Dictionaries may provide a good starting place for teasing out the literal meaning of words, but it is unlikely that the average consumer, in the example of trademarks and product consumptions, consults a dictionary in the marketplace before interacting with a product. As Hutton cites Lord Blackburn in River Wear Commissioners v Atkinson (1877) as asserting, “But from the imperfection of language it is impossible to know what the intention [of a word] is without inquiring further, and seeing what the circumstances were with reference to which the words were used and what was the object appearing from those circumstances which the person using them had in view, for the meaning of words varies according to the circumstances with respect to which they were used” (Hutton 87) (emphasis added). Determining a reliable, legal precedent for the meaning of the word ‘insult’ in a statute such as that which occurred in the interpretation of S 5 of the Public Order Act of 1936 in the United Kingdom (discussed in Hutton 89) should be treated quite differently from attempting to determine, through common usage and definitions, whether or not two trademarks are sufficiently similar or suggestive to cause confusion regarding a product.
        5. Literal versus figurative meanings of words: Some dictionaries, such as Black’s from the late nineteenth century, for example, which are nevertheless well respected and relied on by the legal community might lack utility in their inability to account for common understandings of terms. When discussing Olmstead v United States, the definition of the word ‘search’ is sought as it pertains to criminal cases. Hutton submits that “in lexicographic terms, a search is generally understood first as a physical search” (Hutton 93) yet it might be possible to submit that conducting a search, for people of my own generation and upbringing, rarely involves anything more physical than typing a phrase into a Google search bar on the internet. Testimony or data outside of a dictionary may be useful in ways impossible for a dictionary in addressing not how the word search is actually defined, but the evolving nature of how a particular word is understood, most importantly by the parties involved in any particular legal exchange. In the example I have constructed above, there may not even be the question of whether or not there exists a “classic jurisprudential clash of literal versus figurative meaning” (Hutton 95) if it could be argued that to search on Google is, in fact, perceived as completely literal for people almost as much as rummaging through their homes might be.
        6. Does meaning exist outside of context? – “dictionaries are fundamentally indeterminate, in that they frequently offer more than one meaning for a word, and cannot capture the full contextual meaning of a word in a statute, since meaning in its fullest sense does not exist outside context” (Hutton 99).It should also not be equivocated, as is proposed, that an expert having knowledge of the specifics of a case in some way constitutes a bias which detracts from their credibility or utility. Hutton notes that, ““most importantly the organization of a dictionary entry is also untainted by direct exposure to the linguistic facts of the case in their social setting. The dictionary, more than justice itself, is blind to the moral rights and wrongs of the case, whereas an expert witness testifying as to the meanings of words at issue does so with notice or knowledge of the wider legal conflict” (Hutton 87).
        7. Possible uses of words versus ordinary uses of words: In the example of John Angus Smith v United States (1993), Justice Scalia argues for the necessity to distinguish between possible uses of words and ordinary usages of words. Unfortunately, there may never be a way to say whether or not the majority or the dissent in the case is more correct in their interpretation of the word ‘use.’ What is certain, however, is that it seems odd to consult a dictionary (especially one like the Oxford English Dictionary which is compiled on the basis of usage) and then somehow feel strongly about not using a linguist (who themselves is a member of a speech community). To consult a dictionary based on usage but feel opposed to consulting a linguist prepared to give testimony in support a words usage seems contradictory. The question of the word ‘use’ in John Angus Smith v United States is one of “the idea of literal meaning frequently emerg[ing] as important in a case where there is a perceived divide between two possible meanings available to, or forced upon, the attention of the reader/interpreter. This may often be a question of the extension of a term from a concrete domain to a more abstract one” (Hutton 91).
      2. ii.     Expert testimony (also included above)
    4. Doctrinal Limitation – Marketing
      1. i.     Marketing
        1. Appealing to consumers: “The concept of a brand is that some of a company’s value comes not from the usefulness of its products but from all the other qualities that buyers associate with it. Nike is youth, vitality, and sexy energy. By purchasing the brand, customers participate in those qualities. Nokia is elegant and so up-to-the-minute as to be almost futuristic. Ralph Lauren’s Polo brand is languorously aristocratic – at ease, diffident, and in command. Wearing or wielding one of these brands imparts some of the same qualities to the buyer, in others’ eyes or in her own.” Marketers for brands realize this, of course, and it flows that they attempt to package products so that they appeal to consumers – especially if they target markets: Hispanics, college students, New Englanders, etc. The Doctrine of Foreign Equivalents holds that if the average consumer would stop and translate a mark in a foreign language, the mark can held to be confusing if the products are alike but the source is not (causing consumer confusion). The Doctrine lacks the flexibility, however, to truly account for targeted markets, where demographics may be completely different than in other areas.
      2. ii.     Geographic populations
        1. Take a language such as French, for example. We generally consider French to be a ‘common’ language, even though the ‘average consumer’ in the US may not, in fact, have the ability (or automated response) to translate a foreign language mark in French into its English equivalent upon contact in the marketplace (all the complexities of translation theories aside). In certain areas people may indeed stop to translate this language – areas like old French colonies in the U.S. or areas known to have high demographic concentrations of speakers or people familiar with the language. It is understandable that, in an effort to protect them from confusion, laws in the US would be enacted such that foreign language trademarks likely to be ‘confused’ with English counterparts would be banned from those specific markets for certain product types.
      3. iii.     Linguistic language connotations – can a word be more suggestive in one language than in another?
        1. People naturally associate connotations with certain dialects or languages – characteristics that, just like trademarks, convey certain ideas. British English, for the most part, tends to be a prestige dialect, and while Spanish is considered ‘useful,’ French is often considered a ‘pretty’ language. Marketers play off of these natural and often times sub-conscious consumer assumptions about language and will attempt to use them to their advantage. A company, therefore, might market a perfume for women in a French name (even if the company itself is not French) in an effort to imbue a certain ‘pretty’ or ‘elegant’ quality to the perfume that consumers, by purchasing and wearing that perfume, will then become a part of. In short – transferable properties; one ‘becomes’ what one wears or consumes.
      4. iv.     Distinctiveness Theory
        1. According to Briggs and Torres (2005), Distinctiveness Theory “supports the idea that a person’s distinctive traits in relation to other people in the environment will be more salient to the person than more common traits. Thus, a person’s ethnicity is more likely to be spontaneously evoked in social contexts in which others of the same ethnic group are few. This idea supports the notion that targeting a minority ethnic group “buys” more favorable attention than does targeting a majority ethnic group.” (152). What this means for us is that if in fact there were some French speakers in that market, even though they were a minority (even economically negligible in terms of profit), they might be more likely to translate the brand and, if potential for confusion existed, become confused.
      5. v.     Accomodation Theory
        1. (Briggs and Torres 2005 referencing Giles et al., 1991), “recommends that communicators make themselves similar to a target audience to increase the likelihood of reaching communication objectives. Marketing communicators can apply this idea by using spokespersons of an ethnic background matching that of their intended audience, hiring ethnic salespeople, or using ethnic language, national flags, or other cultural symbols in advertising. In other words, the communicator “accommodates,” noticeably, to the audience.” (153).
      6. vi.     Marketers are not necessarily attempting to ‘confuse’ a consumer, but make a product appeal to them. However, under the DoFE, depending on the context, they may be denied the ability to register a particular language mark (and thus denied the capital benefits to be derived from sales [buttressed by the aforementioned theories, presumably]).
      7. vii.     Banks, Jaime (2006). “Gender Differences in Response to Wordmark Visual-Verbal Incongruity”. Paper presented at the annual meeting of the International Communication Association. Dresden, Germany: Dresden International Congress Centre. Online Accessed 08/01/2010. http://www.allacademic.com/meta/p92457_index.html.
      8. viii.     Briggs, E., Torres, I. (2005). Does Hispanic-target advertising work for services? Journal of Services Marketing. 19 (3). 150-156.
  5. V.     Proposed Changes to Doctrinal Application, TMEP, and Conclusion (DUE DATE MARCH 16)
    1. Proposed Changes to Doctrinal Application, TMEP
      1. i.     Ensure that the three step process is actually applied in all cases
      2. ii.     Applying the classic trademark analysis to the mark translated into English
      3. iii.     Determination of whether or not the level of translation rises to confusion
      4. iv.     Propose these then take a particular case (yet undecided) where the outcome may have been different if any one (or all) of these changes or considerations had been taken into consideration
    2. Conclusion
      1. i.     Discussion of potential future direction of the Doctrine in lieu of internet and globalization, greater access to products and variations in the marketplace (physical versus virtual)
      2. ii.     Courts may be using shortcuts (cutting out three steps in analysis) and generalities to determine that almost any trademark in a modern foreign language will raise to a substantial level of confusion for consumers, thus over-protecting them and stifling companies
      3. iii.     Improved application of the Doctrine will allow the doctrine to continue to prevent consumer confusion while not over-extending itself such that it hurts producers.

[1] Hutton, Christopher. Language, Meaning and the Law. Edinburgh: Edinburgh UP, 2009. Print.

[2] Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005).  See also TMEP § 1207.01(b)(vi) (citing Palm Bay Imports, Inc.).

[3] as cited in Pizzeria Uno Corp. v. Temple, 747 F. 2d 1522 – Court of Appeals, 4th Circuit 1984. http://scholar.google.com/scholar_case?case=8409860314506773065&q=%22doctrine+of+foreign+equivalents%22&hl=en&as_sdt=20000000002.