Thesis Chapter 1 Draft

DRAFT- DO NOT CITE WITHOUT PERMISSION OF THE AUTHOR

A consumer walks into a store with the intent to buy a wood burning stove or furnace. In the aisle, he encounters the two following products: PALOMA and DOVE.

[1] [2]

The consumer happens to be familiar with the Spanish language and notices that PALOMA is actually Spanish for the word DOVE, but that PALOMA in Spanish can also have other meanings, such as pigeon[3]. The consumer also notices that the two trademarks shown above do not resemble one another in either sight or sound (pronunciation).

In the above situation, despite the similar (though hardly identical) nature of goods being sold[4], the Trademark Trial and Appeals Board granted registration to DOVE due to: (1) the lack of similarity in sight and sound to PALOMA; (2) the fact that DOVE and PALOMA are not exact synonyms; and (3) the finding that gas heaters and other appliances of a similar kind are unlikely to be ‘impulse buys’ for many consumers and thus the two products would undergo a greater degree of scrutiny by a purchaser than a less expensive product[5].

As a result, the consumer in this instance, though familiar with Spanish, would still have to distinguish between PALOMA and DOVE on the basis of this rationale.

The Trademark Trial and Appeals Board (TTAB), a part of the United States Patent and Trademark Office, hears and decides all adversary proceedings involving: (1) opposition to the registration of trademarks; (2) petitions to cancel trademark registrations; and (3) proceedings involving applications for the concurrent use registrations of trademarks[6]. The TTAB also decides appeals that arise as a result of trademark examining attorneys’ refusals to allow registration of certain trademarks.

The same consumer familiar with Spanish leaves the furnace store and goes to another store in search of soap. The consumer encounters BUENOS DIAS hand soap in the same aisle as GOOD MORNING shaving cream. This situation, however, would not be allowed because the TTAB found that, unlike PALMOA and DOVE, in the case of BUENOS DIAS and GOOD MORNING, the consumer was likely to be confused (the TTAB finding the two phrases synonymous), and thus registration was denied to BUENOS DIAS, in 1987 (the same year as the PALOMA and DOVE case), in favour of protecting GOOD MORNING[7].

The study of the overlap between language and the law is neither new nor wihout great relevance to linguists, practitioners of law, and those they come into contact with. Christopher Hutton (2009)[8], professor of English at Hong Kong University, notes that linguists, as well as judges, “have generally recognized the common ownership of the English language by its speakers” (Hutton, p. 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 p. 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.

The Doctrine of Foreign Equivalents (DoFE) sets forth the guidelines in trademark law under which trademarks are analysed when they contain a foreign word or words. According to Elizabeth Rest (2006)[9], “the policy behind the doctrine is one of international comity. Because United States companies would be crippled in international trade if foreign countries granted trademark protection to generic or merely descriptive English words, the United States reciprocates and refuses trademark protection to words that, once translated into English, are generic or merely descriptive of the goods to which they apply” (Rest p. 1211). To this end, the DoFE is a part of trademark law that deals specifically with the translation, reception, and understanding of foreign language words by American consumers and courts, and this thesis will seek to examine whether or not the DoFE is properly informed by the knowledge and realities of linguistics in its application. The need for research is articulated by Rest, who notes, “the current state of the doctrine of foreign equivalents provides little guidance to owners of trademarks and service marks when choosing their marks, or to the TTAB and the courts when assessing a mark’s protectibility and registrability, or analysing the likelihood of confusion between marks” (Rest, p. 1212). Roger Shuy (2002)[10], emeritus professor at Georgetown University, further articulates a number of outstanding questions which have plagued the often at-odds findings of courts and the TTAB with regards to the DoFE: (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; (2) Can a mark be descriptive or suggestive in English when it is not in French, Spanish, or Arabic; and (3) Is a French name for expensive perfumes more suggestive than the English translation of that mark (Shuy, p. 144)? Given these interesting linguistic questions about the nature and reception of language (and whose understanding of the language should be considered – native speakers and the country of origin or the speakers and country where the word is received), I argue that the DoFE, as it is currently applied, leads to instances of consumer over-protection from a linguistic standpoint and stifles producer creativity and license, also, at times, denying producers the commercial benefits and appeal that might be derived from marketing their products with the cache leant by foreign languages.

There are also a number of linguistic implications relating to the application and theory surrounding the DoFE in addition to those raised above. Dealing with how consumers are likely to encounter and understand a foreign language word or words in the marketplace forces courts to construct a model of what an ordinary consumer in a given instance might look like. From a language attitudes standpoint, courts could be biased in favour or against a certain type of construct, and could be assuming certain linguistic qualities, literacy rates, and fluency levels that may or may not be true based on incomplete or skewed evidence. Geo-linguistic diversity must also be taken into consideration by courts given that language changes depending on where it is spoken, who it is spoken by, and how it is encountered. The DoFE also forces courts to make assumptions and generalities about how consumers interact with and translate languages in the market. There exist multiple theories of how translation happens, however, and this thesis raises the question of whether or not courts prioritize one theory over another, or if they ignore them altogether. The courts are further forced to grapple with tough questions pertaining to where thresholds can be assumed to lie for fluency and likelihood of amorphous terms like confusion. It is possible to assume as well that courts may suffer from sociolinguistic bias based on the participants in court, dictionaries, and other forms of language authority that may influence decisions. Ultimately, however, the DoFE forces courts to square off with tough questions of how language is handled in an increasingly global society, especially in lieu of technological advances like the internet. Language regulation and access are becoming blurred as markets increasingly move from physical to digital spaces, changing the rules of the game[11].

In a meeting on 27 September 2010[12], Laura Heymann, associate professor of law at the College of William and Mary, noted that trademark registration is a “nationwide presumption of validity.” English is the de facto language of the United States but there is no official language of the country that is recognized at the Federal level[13]. Important questions ought to exist as to how federal courts chose to treat non-English languages, therefore, in the American marketplace. Further, different foreign languages are certainly more or less prevalent in different areas of the country[14]. Courts in applying the DoFE, therefore, should take into consideration where certain products are likely to be encountered (to the best of their ability, given the internet), whom those products are likely to be encountered by, who products are targeted to, and whether or not the product or mark in question is meant for a particular audience or a diaspora.

Federal circuit courts have specified that the DoFE may only apply when “the ordinary American purchaser would stop and translate the foreign word into its English equivalent”[15]. To this end, there are three indispensible questions the court must address in the application of the DoFE: (1) who is the ordinary consumer; (2) does the consumer have knowledge of the foreign mark in question; (3) would the consumer translate the mark? It is impossible to determine whether or not the American purchaser of a good would stop and translate a foreign word into its English equivalent (and become confused or not) if these three questions are not first addressed in the order given. The first question of determining whom the ordinary consumer constitutes raises questions of whether or not we are discussing all American, those consumers to whom the product is available, or those consumers for whom the product is intended. If it is not determined who the ordinary consumer is, and thus what their perception or knowledge of a foreign term or language is likely to be, then the DoFE “can result in a finding quite out of place with the reality of consumer perception” (McCarthy, 1984, p. 466)[16]. Under the Doctrine, “foreign words are translated into English then tested for descriptiveness or genericness”, the need exists to determine “whether that foreign word would be descriptive [of the product] to that segment of the purchasing public which is familiar with that language” (McCarthy, p. 466). The second question, regarding consumer knowledge of the foreign language, cannot be addressed if the first question is not decided upon. This second question forces courts to address whether or not instances may exist where a consumer can be fluent in a foreign language but not necessarily know all of the words contained in that language, or instances where a population may not be fluent in a foreign language but may know words or phrases from that language nonetheless (an example of this might be mass knowledge of GRACIAS, for thank you in Spanish). For the PALOMA instance noted in the beginning of this chapter, it may be possible for a consumer to know that PALOMA can mean both ‘dove’ and ‘pigeon’ in English, or a consumer may simply believe that PALOMA only means ‘dove’, thus resulting in confusion that was proved to be unlikely based on the precise definition of the word in Cassell’s Dictionary. The realities of linguistic understanding, therefore, may differ significantly from the ideal understandings presumed by dictionaries and courts. To this end, “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”[17]. For the final question, whether or not the consumer would then translate the mark, further questions arise as to whether or not knowledge of a foreign language automatically leads to translation into English and thus confusion, or whether or not translation may be more or less likely in certain circumstances. Even if people speak a foreign language, it may not be possible to determine that they will translate a foreign language into English rather than into another foreign language, nor may it always be possible to secure direct and literal translations across languages, often resulting in the creation of imprecise calques.

This thesis submits that the Doctrine of Foreign Equivalents can and should be better informed by linguistic realities regarding translation, perception, and consumer interaction with a foreign language mark than it is currently. It also posits that application of the DoFE by courts up until this point can be seen as disjointed and often contradictory in terms of its findings. It concludes that courts may be using shortcuts and generalities to determine that almost any trademark in a foreign language may potentially rise to a substantial level of confusion for consumers, thus over-protecting them and stifling producers. It will address important questions of how, in an increasingly global society and marketplace, American trademark law, which sees cases pertaining to American consumers, recognizes the need for international linguistic comity in a changing global marketplace, amidst shifting demographics in the United States. It will conclude that because the DoFE and American trademark law was designed to assess how American consumers interact with foreign language marks in the marketplace[18], that the DoFE should not consider the status of a word in a foreign language or country if it is not relevant to the knowledge or experience of the American consumer. This thesis will also establish that it does not make sense to first translate a foreign language mark into English and then submit that mark to standard distinctiveness and confusion tests when it is not the English translation, but rather the foreign mark in its natural form, that consumers encounter in the marketplace. This thesis posits that in partaking of such a practice, courts and registration processes are failing to consider the consumer experience as it pertains to the foreign language.

This thesis will first introduce the Doctrine of Foreign Equivalents in a more detailed manner, as well as how courts have exercised the DoFE in the past and exceptions that exist to the DoFE. It will outline the spectrum of distinctiveness and likelihood of confusion tests that marks currently go through. It will then discuss likelihood of translation, addressing questions of how bilinguals encounter language, whether or not translation might vary depending on the environment and nature of the product, and current conceptions of fluency thresholds. The thesis will then move into further discussion of linguistic considerations and limitations of the DoFE, including examination of foreign words that may not necessarily be considered foreign in the United States, international resistance towards allowing foreign-sounding trademarks, and biases present in relied-upon linguistic authority. This thesis will address problems the DoFE poses towards producers’ marketing, as well as consideration of geo-linguistic diversity. Based on language attitudes and conceptions, this thesis will discuss how it may be impossible for the DoFE to take into consideration many of the points raised by Roger Shuy (Shuy, 2002), pertaining to the ability of words to be more or less suggestive in one language over another. The thesis will then conclude with proposed changes to doctrinal application as set forth in the Trademark Manual for Examining Procedure (TMEP)[19] as well as suggesting the need for codifying certain principles and precedents of the DoFE an over-arching Federal level[20]. The TMEP changes will include: (1) ensuring that the three-step process outlined above is applied in all cases pertaining to the DoFE; (2) applying the class trademark analysis to the mark before it is translated into English; and (3) determining whether or not the level of translation rises to a level of confusion. This thesis maintains that the Doctrine of Foreign Equivalents is a thoroughly well intentioned doctrine that can be improved upon in a way that will allow for it to continue preventing consumer confusion while not over-extending itself in such a way that unnecessarily impedes producer latitude.


[1] Image taken from (Paloma Tankless | About, 2010)

[2] Image taken from http://www.ipmall.info/hosted_resources/TTAB_Decisions/TTAB_Appeal_563836.asp

[3] The TTAB cites Cassell’s Spanish Dictionary (1978) here in their rationale for IN RE BUCKNER ENTERPRISES CORP. http://www.ipmall.info/hosted_resources/TTAB_Decisions/TTAB_Appeal_563836.asp

[4] DOVE applied to register for “solid fuel burning stoves and furnace,” whereas PALOMA registered for “Instantaneous gas water heaters, burner cookers, automatic gas ricecookers, gas heaters, bath-water burners, gas convectors, central gas heating furnaces, gas grills, ultra red ray gas grills and gas sake-warmers.” FN1 and FN2 from http://www.ipmall.info/hosted_resources/TTAB_Decisions/TTAB_Appeal_563836.asp.

[5] The TTAB cites “Fisher Stoves, Inc. v. All Nighter Stove Works, Inc., 205 USPQ 1009 (D.N.H.1979), aff’d 626 F.2d 193, 206 USPQ 961 (1st Cir.1980) where the District Court in considering wood-burning stoves in the $335 to $595 price range noted that “a party involved in such a purchase would carefully examine the stove.” (205 USPQ at 1016).” http://www.ipmall.info/hosted_resources/TTAB_Decisions/TTAB_Appeal_563836.asp.

[6] (United States Patent and Trademark Office, 2010)

[7] In re Am. Safety Razor Comp., 2 U.S.P.Q.2d 1459 (T.T.A.B. 1987) as cited in (Bouchoux, 2009).

[8] (Hutton, 2009)

[9] (Rest, 2006)

[10] (Shuy, 2002)

[11] (Hamilton, 1996)

[12] (Heymann, 2010)

[13] (U.S. English, 2010)

[14] (U.S. Census Bureau, 2000)

[15] (Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 2005)

[16] (McCarthy, 1984)

[17] (Le Blume Import Co. v. Coty, 1923)

[18] (Rest, 2006, p. 1214)

[19] (United States Patent and Trademark Office, 2010)

[20] (Rest, 2006) notes, “trademark law in the United States is primarily federal law. As such, based on the problems created and evidenced by the inconsistent application of the doctrine of foreign equivalents, the adoption of a national standard may be warranted” (Rest, p. 1212). Additionally, “if [certain principles] are set forth by a federal judicial or legislative entity with overarching authority, such as the U.S. Supreme Court or the U.S. Congress, the doctrine of foreign equivalents will evolve into a useful and equitable tool of U.S. trademark law, providing guidance to future foreign-word applicants, to the TTAB and to the courts” (Rest, p. 1215).