Thesis Chapter 2 Draft

DRAFT- DO NOT CITE WITHOUT PERMISSION OF THE AUTHOR

CHAPTER 2

2.0 | Overview

This chapter will address definitions of what a trademark is generally, as well as likelihood of confusion tests and spectrum of distinctiveness tests that apply to all trademarks during contestation and registration (including those relevant to the DoFE). The chapter will then go on to outline intended application and procedures relevant to the DoFE as set forth in the Trademark Manual for Examining Procedure, including exceptions to the doctrine. Pursuant of this, Chapter 2 will discuss instances of the Doctrine’s application in a number of the eleven cases the United States Patent and Trademark Office (USPTO) currently classifies as “citable as precedent”[1] for the TTAB. The chapter will discuss instances of decisions that are at-odds with one another due to a lack of clear and well-reasoned federal precedent resulting in misinterpretations of the doctrine and inconstancy in the doctrine’s application.

2.1 | The Trademark

The Lanham Act, the primary federal legislation establishing trademark law in the United States. The Lanham Act defines a “trademark” as including “any word, name, symbol, or device, or any combination thereof used by a person…to identify and distinguish her or her goods, including a unique product, from those manufactured or sold by others, and to indicate the source of the goods, even if that source is unknown[2].

Today, “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”[3] (Hutton, p. 640). To this end, “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 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, p. 646).

2.2 | Likelihood of Confusion

Trademarks, by definition, are meant to help consumers identify the source of a product they are purchasing or otherwise consuming and to protect a producer’s goodwill against the sale of other products that others claim to be the same. To ensure that consumers are able to best identify the source of a particular good, trademark law attempts to minimize the likelihood of confusion that can arise between two products that have similar trademarks or are marketed in similar or identical ways.

Likelihood of confusion tests exist across the country but much confusion can be said to exist as to the determination of confusion in the first place. Specifically, Kaeding (1992)[4] notes,

“the federal courts of appeals generally agree on the factors to be considered in determining whether a likelihood of confusion exists. The appellate courts disagree, however, on whether a lower court’s determination of the likelihood of confusion should be treated as a question of fact, upheld unless clearly erroneous, or as a question of law, reviewable de novo… the Second, Sixth, and Federal Circuits view the issue as a mixed question of law and fact… the Ninth Circuit also defines likelihood of confusion as a mixed question of law and fact but accords clearly erroneous review to all aspects of the inquiry… the remaining circuits define the likelihood of confusion inquiry as a question of pure fact subject to clearly erroneous review” (Kaeding, p. 1292).

To this end, there exists no standard across the Federal courts. Kaeding submits that a standard ought to be adopted, “in the interests of doctrinal coherence, judicial accuracy and efficiency, and the prevention of forum shopping, the clearly erroneous rule should become the uniform standard for reviewing likelihood of confusion determinations” (Kaeding, p. 1315). Kirkpatrick (1991)[5] also calls for the need for a federal standard:

“While the Federal Circuit will exercise de novo review of the TTAB’s decision on the “ultimate” issue of likelihood of confusion, the majority of civil review courts will accept the TTAB’s finding “unless the contrary is established by testimony which in, character and amount, carries thorough conviction.” … The exception is the issue of likelihood of confusion which the Federal Circuit, accustomed to the de novo standard of review, may review differently than the originating circuit” (Kirkpatrick, p. 1221).

The position of the federal courts with regards to their diverse review strategies are problematic because of the appellate jurisdiction that is shared with other courts over trademark decisions from the U.S. Patent and Trademark Office (including cases involving the DoFE). In determining likelihood of confusion, “factors vary somewhat depending on the circuit and the particular panel, but generally the courts consider, at a minimum: (1) the strength of plaintiff’s mark; (2) the similarity of the parties’ respective marks; (3) the similarities of the products or services; (4) evidence of actual confusion; (5) degree of purchaser care; and (6) the defendant’s intent” (Kirkpatrick, p. 1222). There is no precise mathematical formula that exists with regards to these factors, with certain factors holding more or less weight depending on the case at hand.

2.3 | Distinctiveness

At the registration stage, trademarks undergo processes that seek to place a mark along the spectrum of distinctiveness. The spectrum is seen to consist of four different areas a mark can fall under. As enumerated in Abercrombie & Fitch Co. v. Hunting World, Inc[6]. these are: (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful. The court’s opinion goes on to cite that, “a generic term is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species”. Furthermore, “the [Lanham] Act provides for the cancellation of a registered mark if at any time it ‘becomes the common descriptive name of an article or substance.’ This means that even proof of secondary meaning, by virtue of which some ‘merely descriptive’ marks may be registered, cannot transform a generic term into a subject for trademark”. Further along the scale, “a term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods”, whereas a term if suggestive if, “it requires imagination, thought and perception to reach a conclusion as to the nature of goods”. Terms that are found to be generic or merely descriptive of a product are not granted trademark protection[7], whereas terms that are found to be suggestive, arbitrary, or fanciful may receive protection in the United States. An example of a generic name would be naming a noodle product NOODLES, whereas descriptive example would be naming an apple company GREEN APPLES. An example of a suggestive mark would be COPPERTONE for the sun tan oil company. APPLE for computer products is considered an arbitrary trademark because although apple is a word in English there is no confusion likely between apples and computer software, whereas a fanciful mark example is gas company EXXON, who created an entirely new word to fit the product and service they were offering.

It should be noted that trademarks do not always fit neatly into categories, and it may be possible for a trademark, over time, to move from one category to the next. An example of this of supreme relevance to companies is when trademarks, “become so well known that they become used by society to describe that term become generic and lose their trademark rights in a process called ‘genericide.’ Prime examples of former trademarks that became the generic name for a whole class of products include ASPIRIN, THERMOS, TRAMPOLINE, ESCALATOR, and CELLOPHANE”[8].

Robert Moore (2003)[9] addresses how courts go about determining whether or not a mark has shifted to becoming generic by noting, “the question of what counts as evidence is crucial here, since it reveals the wide epistemological gulf that separates the construal of brands by legal institutions as a form of intellectual property from the construal of brands by branding and marketing professionals” (Moore, p. 345). Typically, Moore cites Lockhart (1999) as stating: “Evidence of genericness may take the form of direct testimony of members the relevant public or direct evidence of use; consumer survey or poll results; use of the term in books, newspapers, or periodicals or in dictionaries and other texts on contemporary word-usage; use of the term by the trademark registrant or competitors; or any of the preceding together with expert testimony derived from the foregoing sources” (Lockhart 22 as recounted by Moore, p. 345). Many of these same methods are used with foreign marks in efforts to determine confusion and actual meaning.

2.4 | Trademark Manual for Examining Procedure (TMEP)

The DoFE is introduced in TMEP § 1207.01 (b)(vi)[10]. Under this section, the basic assertion is that “a foreign word (from a language familiar to an appreciable segment of American consumers) and the English equivalent may be held to be confusingly similar” (TMEP § 1207.01 (b)(vi)). Below are two instances the TMEP cites as upholding this assertion. These include:

  1. In re Thomas, 79 USPQ2d 1021 (TTAB 2006)
    1. Holding that MARCHE NOIR for jewelry was likely to be confused with BLACK MARKET MINERALS for retail jewelry store services.
    2. In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983)
      1. Holding that EL SOL for clothing and footwear held likely to be confused with SUN and design for footwear.

In each of these instances, evidence was shown that the English translation of the term MARCHE NOIR and the word EL SOL, respectively, were literal and direct without any potential for other relevant meaning.

Explicitly stated in the TMEP is that, “although words from modern languages are generally translated into English, the doctrine of foreign equivalents has evolved into a guideline, not an absolute rule, and is applied only when the “ordinary American purchaser” would “stop and translate” the foreign wording in a mark.” (TMEP § 1207.01 (b)(vi)(A)). This purchaser referred to by the TMEP includes, “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English”[11]. At the application stage, those seeking registration must submit relevant translations or transliterations of their intended trademarks with their applications (TMEP § 809)[12]. According to the TMEP, if a mark is in a non-English language, the translation (or transliteration, if relevant) of the non-English word is necessary before performing a search for the marks in English deemed confusingly similar. In the event that a translation is not provided by an applicant, “The examining attorney may obtain the meaning of non-English wording through sources such as foreign language dictionaries and search engines” (TMEP § 809.01).

If after searching for the translation the examining attorney finds the “English translation is “literal and direct,” with no contradictory evidence of other relevant meanings or shades of meaning, then the doctrine should be applied, barring unusual circumstances. Further, if in its response to the application of the doctrine applicant argues that the foreign language is rare, obscure, or dead, then the examining attorney will need to provide evidence that the foreign language is a common, modern language” (TMEP § 1207.01 (b)(vi)(B)). More complicated still, when determining an appropriate translation, an examining attorney must view, “translations in the context of any significant features in the mark such as design or wording elements, the identified goods and/or services in the application, the relevant marketplace, and the specimen” (TMEP § 1207.01 (b)(vi)(B)). If evidence exists that the foreign term does not have a literal and direct translation then the doctrine should not be applied, as in the case of PALOMA and DOVE.

“The doctrine applies to words or terms from common, modern languages, which encompasses all but dead, obscure, or unusual languages” (TMEP § 1207.01 (b)(vi)(B)). If an applicant contends that the language of their mark is in a dead, obscure, or unusual language the TMEP submits that the attorney should attempt to put forth evidence that the language is common and modern[13]. In the instance of Joint Stock Co. “Baik, 80 USPQ2d 1305, 1310 (TTAB 2006), cited in (TMEP § 1207.01 (b)(vi)(B)), evidence was presented “showing that 706,000 Russian-speakers live in the United States” and this was persuasive enough to established that a “significant portion of consumers” would understand the English meaning of the Russian mark for Russian vodka. This evidence was submitted despite the fact that numbers of Russian speakers across the United States, according to the 2000 U.S. Census[14], varied from as many as 218,765 people in New York to as few as 172 people in Wyoming. Therefore, although according to the Census Russian is claimed to be the tenth most spoken language (of those languages explicitly documented), the concentrations of speakers vary widely across the country and may result in findings not representative of consumers real knowledge of Russian.

Exceptions exist to the doctrine that allow for attorneys to demonstrate, if they are unable to find (or the evidence is not persuasive) numbers or percentages of speakers, that languages are modern or common based on whether the “foreign country(ies) where the language is spoken is a prominent trading partner of the United States or…the foreign language is spoken by a sizeable world population” (TMEP § 1207.01 (b)(vi)(B)). Such exceptions completely ignore the ordinary American consumer and their actual encounter with a foreign mark in the marketplace, instead opting to examine how many people may be familiar with a particular language around the world.

In the instance of In re Savisa (Pty) Ltd.[15], the applicant submitted evidence that only .096% of Americans spoke Afrikaans as their primary language at home. The Board found that, despite this, it was possible to imagine people having learned the language in school, having studied abroad, or having emigrated from abroad and being familiar with Afrikaans. The Board further submitted:

“The examining attorney has submitted a report from the USPTO translator for ‘German & the principal Germanic languages: Norwegian, Danish, Swedish, Dutch and Afrikaans.’ He states that Afrikaans is a well-established language, recognized by all of the advanced and developed nations, and is a form of old Dutch. It ‘is a European language, and that is why it is familiar in the USA.’ It is also one of the principal Germanic languages, spoken by more than 20 million people. It is taught in the schools in the Republic of South Africa, and all road signs there are in Afrikaans as well as English” (In re Savisa (Pty) Ltd., p. 8).

The Board goes on to discuss their acceptance of the World Almanac and Book of Facts, 2004, as well as Facts about the World’s Languages: An Encyclopedia of the World’s Major Langauges, Past and Present, both stating that over 6 million people speak Afrikaans in South Africa. The Board believe that, “because Afrikaans is taught in schools, it is reasonable to conclude that, although not their primary language, most English-speaking South Africans would be familiar with the Afrikaans language” and that “as the modern language of a very large country, as well as a major language of five other countries, we do not view Afrikaans as obscure. People from the Republic of South Africa are likely to emigrate to or visit the United States”  (In re Savisa (Pty) Ltd., p. 10). It further classifies SONOP, the word in question, with its English translation of SUNRISE, as a “relatively simple word” (In re Savisa (Pty) Ltd., p. 10).

Here it is clear that the court has made great assumptions about the likelihood of speakers in the United States knowing Afrikaans, drawing improper inferences from data that does not pertain to American consumers directly. The court has also made a value judgement about the simplicity or complexity of a particular word based on the frequency of that words usage, presumably, in English, rather than any knowledge of the commonality of the word in Afrikaans. Citing the Second Circuits opinion in Otokayama Co. v. Wine of Japan Import Inc., the Board bolstered its argument by reaffirming, “there are (or someday will be) customers in the United States who speak that foreign language. Because of the diversity of the population of the United States, coupled with temporary visitors, all of whom are part of the United States marketplace, commerce in the United States utilizes innumerable foreign languages” (In re Savisa (Pty) Ltd., p. 10). This thought process further divorces this finding from reality by making assumptions about the potential for future consumers to speak a particular language. It also makes amends to those temporarily visiting the United States, placing them on equal footing with residents of the United States.

A final exception to the doctrine arises when it can be shown that “the foreign wording has a meaning in the relevant marketplace that differs from the translated meaning in English[16],” and whether “it is more or less likely that the foreign expression will be translated by purchasers because of the manner in which the term is encountered in the marketing environment as used in connection with the goods and/or services[17]” (TMEP § 1207.01 (b)(vi)(B)).

2.5 | Application of DoFE by Courts and Cases Citeable as Precedent by TTAB

A primary development in the understanding and application of the DoFE was established In re Mark Thomas[18], by the TTAB in 2006. In this case, the TTAB submitted that the, “’ordinary American purchaser’ in this context refers to the ordinary American purchaser who is knowledgeable in the foreign language. See Trademarks and Unfair Competition, supra at 23:26 (4th ed.) (“The test is whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent.”)” (In re Mark Thomas, pg. 8). In this case the ordinary American consumer was altered to describe the ordinary American consumer who is familiar with the foreign language in question. This paper contends that such a reading puts a much greater burden on the producer of a product with a foreign language mark and may needlessly protect ordinary American consumers who are not knowledgeable in the language in question, and would simply take a mark ‘as is’, rather than translate it. This change in the understanding of the ‘ordinary American consumer’ was challenged in the case of In re Spirits International N.V.[19] in an oral hearing in July 2007. In this case, the applicant attempted to have the following mark registered and was originally denied registration on the grounds that the mark was “primarily geographically deceptively misdescriptive of the goods under Sections 2(a) and 2(e)(3) of the Trademark Act” (In re Spirits International N.V., pg. 2).

MOSKOVSKAYA[20]

For it to be shown that this is the case for a particular mark, the following criterion must be met: “(1) the mark’s primary significance is a generally known geographic location; (2) the relevant public would be likely to believe that the goods originate in the place named in the mark (i.e., that a goods/place association exists) when in fact the goods do not come from that place; and (3) the misrepresentation is a material factor in the consumer’s decision” (In re Spirits International N.V., pg. 6).

MOSKOVSKAYA was denied registration before appeal because “the examining attorney argued, based on entries from The Oxford Russian-English Dictionary (1972), that MOSKOVSKAYA is the adjectival form of the word “Moscow,” in Russian, meaning “of or from Moscow.” The examining attorney essentially contends that under the doctrine of foreign equivalents, the ordinary American purchaser, which as stated in In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) refers to the ‘ordinary American purchaser who is knowledgeable in the foreign language,’ and will translate the mark into its English equivalent” (In re Spirits International N.V., pg. 6). This denial utilizes the newer, narrower understanding of the ordinary American consumer as put forth by the decision of In re Thomas.

The applicant contended that based on its interpretation of Palm Bay Import, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772[21] that the examining attorney wrongly applied the DoFE with regards to this case. The applicant argued that the mark should be considered arbitrary because “the term would not be translated into English by consumers and…its geographic meaning would be lost on the public” (In re Spirits International N.V., pg. 8).

In the instance of Palm Bay Imports INC v. Veuve Clicquot Ponsardin Maison Fondee En 1777, the federal circuit had ruled that “an appreciable number of purchasers are unlikely to be aware that VEUVE means ‘widow’ and are unlikely to translate the marks into English” (PALM BAY IMPORTS INC v. VEUVE CLICQUOT PONSARDIN MAISON FONDEE EN 1772, 2005). This finding came despite that fact that French is second only to Spanish in prevalance as a foreign language spoken in the United Sates (U.S. Census Bureau, 2000). In the case of MOSKOVSKAYA, however, the TTAB upheld its reading of the ordinary American consumer, based off of the Palm Bay case, and set forth during In re Thomas, namely, that the ‘ordinary American consumer’ set forth in Palm Bay, was, in fact, an ordinary American consumer who is familiar with the foreign language in question. The TTAB argued that in the case of MOSKOVSKAYA, the “applicant had taken the [court’s] reference to the “ordinary American purchaser” out of context and that the [court] in fact “did not address the definition of the ‘ordinary American purchaser” (Welch, Precedential No. 6: TTAB Clarifies Doctrine of Equivalents, Affirms 2(e)(3) Refusal of “MOSKOVSKAYA” for Vodka , 2008). The TTAB went on to site that,

“Furthermore, the Court at no point said, or even suggested, that in determining the registrability of a mark in a foreign language, the ‘ordinary American purchaser’ who speaks or understands the foreign language can, in effect, be ignored. [The] applicant argues that the Thomas decision ‘cannot be squared’ with the Court’s holding in Palm Bay. The fact is, however, that applicant’s position ‘cannot be squared’ with the underlying principles of the Trademark Act.”

Despite this assertion by the TTAB, the applicant’s assertion that the court has shifted in its definition and treatment of the ordinary American consumer is valid, because regardless of the intentions of the original reading of ordinary consumer in Palm Bay, by In re Thomas, and, indeed, as applied to In re Spirits International N.V., the court (or at least the TTAB) was officially understanding any ordinary American consumer to speak any given language in question relevant to a case, and making determinations on that narrower construct[22].

John Welch, a prominent trademark attorney[23], questions, “if the CAFC meant what the TTAB now says it meant, i.e., that the relevant purchaser is the average American consumer who is knowledgeable in the foreign language, why did the CAFC agree that “VEUVE ROYALE” would not be translated into English [in the Palm Bay case]? It didn’t give any reasons. It didn’t say whether the TTAB applied the wrong test or simply got the wrong result” (Welch, Precedential No. 6: TTAB Clarifies Doctrine of Equivalents, Affirms 2(e)(3) Refusal of “MOSKOVSKAYA” for Vodka , 2008).

The MOSKOVSKAYA case is citeable as precedent for the TTAB[24].

Along these same lines, there exist other cases where likelihood of translation and confusion are at issue. Rest compares the instances of In re Oriental News, Inc. and Tia Maria, for In re Oriental News, the case involved “a Chinese-language mark for a newspaper targeted at the Chinese-American community, registration of the mark was refused on the ground that a ‘sizeable number’ of American consumers who speak Chinese would be likely to understand and translate the mark, and in doing so the mark would become merely descriptive” (Rest, 2006, p. 1234). Contrastingly, the court decided in the case of the mark TIA MARIA as the name of a Mexican restaurant that when compared with AUNT MARY’S canned vegetables, no confusion was found to exist because the court found that consumers would be likely to simply take TIA MARIA as is[25].

As of 28 December, 2010 the TTAB claimed eleven different cases as citeable as precedent[26] regarding the DoFE, including the above discussed MOSKOVSKAYA case.  Below I will briefly enumerate some of these decisions along with interesting questions that arise as to the application of the DoFE in each instance.

Brown Shoe Company, Ltd. v. Molly D. Robbins[27]

[28] [29]

Decision: In this instance the court found PALOMITA was sufficiently similar to PALOMA to not allow the applicant to register PALOMITA. “The evidence of record establishes that PALOMA is a Spanish word with the English translation of “dove,” and PALOMITA is the diminutive of the word PALOMA in the Spanish language, meaning “little dove.” See App. Responses to Opp. Requests for Admissions Nos. 79, 80, 82, 84-85. Applicant asserts that PALOMITA has additional meanings in Spanish, namely, “checkmark” and “popcorn.” During prosecution applicant provided the translation of PALOMITA as ‘checkmark’” (Brown Shoe Company, Ltd. v. Molly D. Robbions, pg. 7). Since both of the marks in this case were Spanish, the TTAB made the argument that for non-Spanish-speakers, because of the similarity of appearance and pronunciation of the words, consumers were likely to confuse the meaning of the two, despite other shades of meaning shown by the applicant.

Discussion: In this instance the court found, “as for Spanish-speaking consumers, even if they were to understand the multiple meanings of PALOMITA, it is clear that one meaning of the term is “little dove,” and there is nothing inherent in the goods that would lead a consumer to the “checkmark” or “popcorn” meanings over the “little dove” connotation” (Brown Shoe Company, Ltd. v. Molly D. Robbions, pg. 9). Yet for the DOVE versus PALOMA case, registration was granted to DOVE on a linguistic basis because PALOMA could have meanings other than ‘dove’ in Spanish (just as PALOMITA in this instance can have meanings other than ‘dove’, as well, such as ‘popcorn’, or ‘checkmark’). The court ultimately decided to reject PALOMITA in this instance, however, due to similarity of sound and pronunciation, a similarity which did not exist between PALOMA and DOVE.

In re Tokutake Industry Co., Ltd.[30]

In this case the applicant for the following mark was initially denied because the mark, which translates into “walking, a step” in English, was viewed as merely descriptive of footwear[31].

[32]

In this case, the applicant was refused registration of AYUMI because it was found to be merely descriptive on the spectrum of distinctiveness, translating literally into ‘walking’ in English. The court also cited confusion as likely, however, citing its precedent set in In re Mark Thomas and In re Peregrina Limited, by noting, “In this case, the foreign language is Japanese, which the evidence shows is a modern language spoken by more than 100 million people worldwide and by hundreds of thousands of people in the United States” (United States Patent and Trademark Office, 2008).

Discussion: Here again the TTAB assumes consumer knowledge of Japanese, based on its construction that it only consider ordinary American purchasers who know the language. This is because of a provision set up in Nestle’s Milk Products, Inc. v. Baker Importing Company, Inc. stating, “”Foreign language words, not adopted into the English language, which are descriptive of a product, are so considered in registration proceedings despite the fact that the words may be meaningless to the public generally”[33].

A clear definition of who the relevant consumers actually constitute is needed federally otherwise vagueness will persist and lower courts will continue to apply the DoFE on an ambiguous, subjective basis. The lack of a clear definition further hampers producers and those seeking to register marks because differing precedents may be set in different jurisdictions, and also because depending on the interpretation of the particular court in question regarding who the ordinary or relevant consumer constitutes (and their linguistic prowess for a given language), applicants may get a different outcome in different settings.

2.6 | The Use of a Term in a Foreign Country

In addition to the ambiguities of understanding surrounding the linguistic nature of the ordinary American consumer, the DoFE has historically been conflicted about its treatment of the status of words in foreign countries versus in the United States. In the case of In re Savisa (Pty) Ltd., the court submitted that even if it could not show a largely appreciable number of American consumers spoke Afrikaans, the language was still one that was relevant to a sizeable population of the world for a country the courts deemed noteworthy (South Africa). The court noted that over 6 million people speak Afrikaans in South Africa[34]. In the following example, the language usage in Britain is ignored over in favour of the perceived understanding of the ordinary American consumer or relevant purchasing public (in this case, Americans), whereas the situation and status of Afrikaans in South Africa is considered by In re Savisa (Pty) Ltd. The following decision for British English, in light of the case regarding Afrikaans, highlights the problem that “there is little agreement among courts regarding what the doctrine actually dictates, and there is disagreement as to when and how the doctrine should be applied” (Rest, 2006, p. 1223).

In the case of Carcione v. The Greengrocer, Inc., the maintained the opinion that when dealing with American trademark law the only relevant purchasers are American consumers[35], which calls into question the rationale of the justifications of In re Savisa (Pty) Ltd. In Anheuser-Busch Incorporated v. Stroh Brewery Company[36], the court cited Carcione v. The Greengrocer, Inc. in its opinion, recognizing, “A number of cases hold that a term may be generic in one country and suggestive in another. In Carcione v. The Greengrocer, Inc., 205 U.S.P.Q. (BNA) 1075 (E.D.Cal.1979), the defendant argued that the trademark Greengrocer, which is a generic term in Britain for a retailer of fruits and vegetables, was not entitled to protection as a trademark in the United States. The court rejected this argument on the ground that it is irrelevant how a term is used outside the United States: “The parties agree that the term is generic in Britain. Since we deal here with American trademark law, and thus American consumers, neither British usage nor the dictionary definition indicating such usage are determinative” (ANHEUSER-BUSCH INCORPORATED v. STROH BREWERY COMPANY, 1984).

If the Greengrocer case shows that a word can be generic in one country and suggestive in another, then it may be possible, as Shuy suggests, for a word to be generic in one language and suggestive in another (Shuy, 2002, p. 144).

According to Rest, the “general rule is that the determination of whether a mark is merely descriptive, for example, is a question of fact to be ascertained from the viewpoint of the relevant purchasing public” (Rest, 2006, p. 1232). An interesting contradiction arises in the comparison of two cases: Otokoyama Co. Ltd v. Wine of Japan Imp, Inc.[37] and Seiko Sporting Goods USA, Inc. v Kabushiki Kaisha Hattori Tokeiten[38]. These two cases have been selected for comparison because they both involve the Japanese language.

[39] [40]

In Otokoyama Co. Ltd v. Wine of Japan Imp, Inc., the dispute involved two importers of Japanese sake[41]. In this instance, the court noted, “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”. The defendant argued that in Japan the word OTOKOYAMA has served as a generic term for sake in Japan for over 300 years. “The district court, however, declined to accord any significance to the Japanese meaning of the word. The court stated that the Japanese meaning of OTOKOYAMA is “irrelevant to the U.S. PTO’s determination of [plaintiff’s] trademark rights․  [T]he meaning of the term ‘OTOKOYAMA’ in Japan is not relevant to this action.” (OTOKOYAMA CO LTD v. WINE OF JAPAN IMPORT INC, 1998). This decision was overturned by the Second Circuit on the grounds that:

“If OTOKOYAMA in Japanese signifies a type of sake, and one United States merchant were given the exclusive right to use that word to designate its brand of sake, competing merchants would be prevented from calling their product by the word which designates that product in Japanese. Any Japanese-speaking customers and others who are familiar with the Japanese terminology would be misled to believe that there is only one brand of OTOKOYAMA available in the United States” (OTOKOYAMA CO LTD v. WINE OF JAPAN IMPORT INC, 1998).

For the court, the meaning of OTOKOYAMA in Japanese was highly relevant to the case at hand, because it designates (is generic for) sake or a type of sake in Japan.

This case contrasts with the finding reached in Seiko Sporting Goods USA, Inc. v Kabushiki Kaisha Hattori Tokeiten by the exact same circuit court. In this instance, the plaintiff sought to prove that SEIKO was a generic term in Japanese. The court found that in the United States, “the mark SEIKO is arbitrary, fanciful and non-descriptive as applied to any product and therefore is entitled to protection” (Seiko Sporting Goods USA, Inc. v Kabushiki Kaisha Hattori Tokeiten, 1982). Further, the court noted, that while the plaintiff had “sought to show that Seiko is a generic term in Japanese, it is not so recognized in this country. Accordingly, the mark must still be regarded as arbitrary and fanciful in the United States.”

The rulings of OTOKOYAMA and SEIKO, both Japanese terms, differ drastically in their treatment of the status of foreign words in their country of origin (Japan), with the former vacating the trademarks surrounding OTOKOYAMA in lieu of a finding that the word is generic for sake in Japan, and the latter upholding the SEIKO trademark despite attempts to prove (and a finding by the court) that SEIKO is generic in Japan. In the latter decision, the court found that the status of words in a foreign country was of no concern to trademark law in the United States, whereas the former believed that because it was likely that citizens of Japan may live in the United States, or may come to live in the United States in the future, that the question of whether or not OTOKOYAMA was generic was of huge relevance to the court. Further, both of these cases were decided not by different, but rather by the same circuit court. They strongly illustrate that precedent is needed at the federal level to instruct courts as to the proper application of an overly vague doctrine.


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

[2] 15 USCS §1127 (2010)

[3] (Hutton, Who Owns Language? Mother Tongues as Intellectual Property and the Conceptualization of Human Linguistic Diversity, 2010)

[4] (Kaeding, 1992)

[5] (Kirkpatrick, 1991)

[6] (Abercrombie & Fitch Co. v. Hunting World, Inc., 1976)

[7] Descriptive marks may be granted protection if secondary meaning can be proven. “Descriptive marks are not inherently distinctive, i.e.they do not identify a particular source. As such, they can only be protected if they have acquired “secondary meaning.” According to the U.S. Supreme Court, “secondary meaning is acquired when in the minds of the public, the primary significance of a product feature…is to identify the source of the product rather than the product itself.” (Lombard & Geliebter, LLP, 2010)

[8] (Registering a Trademark .Com, 2010)

[9] (Moore, 2003)

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

[11] In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009) is cited as precedent here for TMEP § 1207.01 (b)(vi)(A).

[12] “An application to register a mark that includes non-English wording must include an English translation of that wording. 37 C.F.R. §2.32(a)(9). Similarly, an application for a mark that comprises non-Latin characters must include a transliteration of those characters, and either an English translation of the transliterated term, or a statement that the transliterated term has no meaning in English. 37 C.F.R. §2.32(a)(10). A transliteration is the phonetic spelling, in corresponding Latin characters, of the word(s) in the mark that are in non-Latin characters” (TMEP § 809).

[13] Common, modern languages have been found to include Spanish, French, Italian, German, Chinese, Japanese, Russian, Polish, Hungarian, Serbian, and Yiddish. See, e.g., Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 129 USPQ 411 (C.C.P.A. 1961) (Hungarian); La Peregrina, 86 USPQ2d at 1648 (Spanish); Joint-Stock Co. “Baik,” 80 USPQ2d at 1305 (Russian); Perez, 21 USPQ2d at 1075 (Spanish); In re Oriental Daily News, Ltd., 230 USPQ 637 (TTAB 1986) (Chinese); Ithaca Indus., 230 USPQ at 702 (Italian); In re Jos. Schlitz Brewing Co., 223 USPQ 45 (TTAB 1983) (German); In re Westbrae Natural Foods, Inc., 211 USPQ 642 (TTAB 1981) (Japanese); In re Optica Int’l, 196 USPQ 775 (TTAB 1977) (French); In re Bagel Nosh, Inc., 193 USPQ 316 (TTAB 1976) (Yiddish); In re Hag Aktiengesellschaft, 155 USPQ 598 (TTAB 1967) (Serbian); In re New Yorker Cheese Co., 130 USPQ 120 (TTAB 1961) (Polish). (TMEP § 1207.01 (b)(vi)(B)).

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

[15] (United States Trademark Trial and Appeal Board, 2005)

[16] See Cont’l Nut Co. v. Le Cordon Bleu S.A.R.L., 494 F.2d 1395, 1396-97, 181 USPQ 646, 647 (C.C.P.A. 1974) where it was found the French language mark CORDON BLEU, “which translates to mean “blue ribbon,” would not be translated by or have the same significance to an American purchaser because of the adoption of the wording CORDON BLEU into English, as evidenced by American dictionary entries indicating that such wording refers to a cook of great skill” (TMEP § 1207.01 (b)(vi)(B)).

[17] See In re Tia Maria, Inc., 188 USPQ 524, 525-26 (TTAB 1975) (finding that the Spanish language mark TIA MARIA for restaurant services, which translates to mean “Aunt Mary,” when compared with the registered mark AUNT MARY’S for canned fruits and vegetables, would not likely be translated by American purchasers because a person who had purchased Aunt Mary’s canned fruits and vegetables from a supermarket would, upon dining at the TIA MARIA restaurant surrounded by its Mexican décor and serving Mexican food, not likely translate TIA MARIA into AUNT MARY). (TMEP § 1207.01 (b)(vi)(B)). An issue here arises though in the assumption that those who dine at TIA MARIA would potentially have consumed AUNT MARY’S products before, and the argument could be made, just as in In re Savisa (Pty) Ltd., that ‘aunt’ is a simple term in any language and particularly likely to be translated if in Spanish.

[18] (United States Patent and Trademark Office, 2006)

[19] (United States Patent and Trademark Office, 2007)

[20] Image obtained from (Welch, Precedential No. 6: TTAB Clarifies Doctrine of Equivalents, Affirms 2(e)(3) Refusal of “MOSKOVSKAYA” for Vodka , 2008)

[21] The court in this case stated, “Although words from modern languages are generally translated into English, the doctrine of foreign equivalents is not an absolute rule and should be viewed merely as a guideline. In re N. Paper Mills, 20 C.C.P.A. 1109, 64 F.2d 998, 999 (1933);  McCarthy on Trademarks, at § 11:34. The doctrine should be applied only when it is likely that the ordinary American purchaser would “stop and translate [the word] into its English equivalent.” In re Pan Tex Hotel Corp., 190 U.S.P.Q. 109, 110 (T.T.A.B.1976). This court agrees with the T.T.A.B. that it is improbable that the average American purchaser would stop and translate “VEUVE” into “widow.” Substantial evidence does not support the Board’s finding regarding the doctrine of foreign equivalents. This court, therefore, reverses the Board’s finding of likelihood of confusion for THE WIDOW” (PALM BAY IMPORTS INC v. VEUVE CLICQUOT PONSARDIN MAISON FONDEE EN 1772, 2005).

[22] The MOSKOVSKAYA applicant argues the, “Board’s decision in Thomas is inconsistent with the holding in Palm Bay “to the extent that the Board interpreted the Court’s reference to the ‘ordinary American purchaser’ to mean ‘the ordinary American purchaser who is knowledgeable in the foreign language,'” and that the Thomas case along with the authorities cited for this proposition “are no longer good law.” (Brief, p. 23, n. 12.) Applicant contends that the Board’s interpretation in Thomas “simply can not be squared” with the holding in Palm Bay which, according to applicant, found that: “it was ‘error’ for the Board to have based ‘an appreciable number of and/or understand French.” In particular, [the] applicant argues:

In The Court of Appeals was…consistent [throughout the decision] in describing the relevant purchaser to whom its test should be applied as (1) ‘an American buyer’, (2) ‘the ordinary American purchaser’, and (3) ‘the average American purchaser’ — characterizations that all have the same essential meaning. Nowhere in the Palm Bay decision is there any suggestion that the relevant purchaser is, as the Board held in Thomas, ‘the ordinary American purchaser who is knowledgeable in the foreign language.’ To the contrary, the court of Appeals specifically rejected as ‘error’ the Board’s attempt to so define the relevant purchaser in Palm Bay… (Reply Brief, p. 10, emphasis in original.)

(United States Patent and Trademark Office, 2007)

[23] (People – John L. Welch, 2010)

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

[25] (In re Tia Maria, Inc., 1975)

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

[27] (UNITED STATES PATENT AND TRADEMARK OFFICE, 2009)

[28] Image taken from (Picante Pickz for Baby & Kids, 2010)

[29] Image taken from (Welch, 2009)

[30] (United States Patent and Trademark Office, 2008)

[31] In this instance the examining attorney argued that the, “proposed mark is descriptive of the goods because consumers of footwear bearing the word AYUMI and Japanese-character equivalent will be told – on the actual goods or packaging therefor – that the footwear is meant for walking because AYUMI translates into English as ‘walking.’” (United States Patent and Trademark Office, 2008)

[32] Image taken from (United States Patent and Trademark Office, 2008)

[33] (Nestle’s Milk Products, Inc. v. Baker Importing Company, Inc., 1950)

[34] (United States Trademark Trial and Appeal Board, 2005)

[35] (Rest, 2006)

[36] (ANHEUSER-BUSCH INCORPORATED v. STROH BREWERY COMPANY, 1984)

[37] (OTOKOYAMA CO LTD v. WINE OF JAPAN IMPORT INC, 1998)

[38] (Seiko Sporting Goods USA, Inc. v Kabushiki Kaisha Hattori Tokeiten, 1982)

[39] Image taken from (Otokoyama Yushutsu Junmai)

[40] Image taken from (Inter Optics, 2010)

[41] Plaintiff, a Japanese corporation, has been brewing sake-a Japanese wine made from fermented rice-on the northern island of Hokkaido since the 1930s.   In Japan, its sake is sold under the name “Hokkai Otokoyama,” Hokkai being a reference to the island of Hokkaido.   Since 1984, plaintiff has imported its sake into the U.S., where it is marketed and sold as “Otokoyama” brand sake.   Plaintiff registered the English transliteration of otokoyama and three trademarks of Japanese pictograms comprising otokoyama with the U.S. Trademark Office.

Defendant is a domestic corporation, which imports various brands of sake into the U.S. Defendant’s importation and sale of sake under the designation “Mutsu Otokoyama,” begun in or around 1997, is the subject of this suit.   As noted, plaintiff claims the defendant’s use of otokoyama infringes plaintiff’s trademark, while defendant claims that because otokoyama is a generic word for a type of sake, it is not eligible for use as a trademark for sake. (OTOKOYAMA CO LTD v. WINE OF JAPAN IMPORT INC, 1998).