Thesis Chapter 4 Draft

CHAPTER 4

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4.0 | Overview

In light of linguistic complications that cannot always be considered in court, as well as legal and pragmatic concerns for the DoFE’s workability, the DoFE should be abolished. This chapter will discuss legal considerations showing that the courts ignore stare decisis in continuing to apply the doctrine in many of the ways noted throughout this thesis. This chapter will also introduce concerns over various forms of linguistic authority that are utilized by the courts in deciding cases, as well as how the doctrine needlessly limits producers with regards to marketing on the basis of protecting small populations of consumers. In being so unpredictable, the doctrine does not inform producers as to what types of trademarks the doctrine may or may not be applied to, and the scope of potential decisions and divergent case findings that could be cited by courts for any given case constitute a gambling game wherein a foreign language term seeking registration might be dropped onto a roulette wheel with any number of outcomes possible.

4.1 | Legal Justifications for the Abolition of the Doctrine of Foreign Equivalents

Serge Krimnus (2010)[1] argues that a number of considerations exist as to why the DoFE should be done away with from a legal perspective. Krimnus argues that, “in the Federal Circuit’s recent In re Spirits International5 decision, the court sub silentio abolished the doctrine as it applies to one specific bar to registration—primarily geographically deceptively misdescriptive marks under subsection 2(e)(3) of the Lanham Act. Although the Spirits court expressly limited its analysis to primarily geographically deceptively misdescriptive marks, courts cannot justify refusing to extend Spirits’ reasoning to other bars to registration” (pg. 161).

Further, an argument can be made regarding the Supreme Court decision of Menendez v. Holt, which Krimnus asserts rejected the doctrine of foreign equivalents[2]. Because Menendez has not been overruled or revisited by the courts, under stare decisis Federal courts must uphold the ruling and abolish the doctrine.

4.2 | Menendez v. Holt[3] and its Recognition

This case, appealed by Menendez from the Circuit Court for the Southern District of New York, sought to have the decision reversed that the words LA FAVORITA, as used by the complainants could not be protect as trademarks because they infringed upon the defendant. Menendez sought to show that LA FAVORITA was merely descriptive because it indicated the favourite flour of the trademark owner. The Supreme Court rejected this argument finding that LA FAVORITA was not merely descriptive because it “did not, of course, in itself, indicate quality, for it was merely a fancy name and in a foreign language[4] (emphasis added). The Circuit Court’s decision, then, was affirmed, allowing Holt exclusive right to the term LA FAVORITA.

“Although the Supreme Court could have been more explicit in stating that the mark was fanciful because it was in a foreign language, it is clear that the mark “The Favorite”—the English equivalent of “La Favorita”—would not have been registrable since it is self-laudatory and descriptive.”[5] Since the mark was in a foreign language in this instance, and was deemed protectable under the Supreme Court, the “fancy name…in a foreign language” must have been considered fanciful as a trademark. In the case, the Supreme Court did not translate LA FAVORITA into its literal English equivalent, THE FAVORITE, before making the determination that LA FAVORITA is not merely descriptive and is, indeed, fanciful. To this end, the Supreme Court “held that foreign language marks should not be translated [and accordingly] application of the doctrine is foreclosed. Although the Federal Circuit and its predecessors have applied the doctrine for almost a century, Menendez plainly rejected the doctrine, and so must the Federal Circuit.”[6]

Five years after Menendez v. Holt, the United States Commissioner for Patents referenced the decision as justification for refusing registration to the mark THE FAVORITE.” In “Ex parte Lewis Pattberg & Bros., the applicant attempted to register the mark “THE FAVORITE.” In affirming the examiner’s refusal of registration, the Commissioner acknowledged that in Menendez, the Supreme Court upheld the validity of “LA FAVORITA,” the foreign equivalent of the mark at issue. The Commissioner, however, explained that the Supreme Court only held “LA FAVORITA” to be registrable because it was “‘in a foreign language,’ thereby drawing a clear line of distinction between that case and the present one.” Thus, the Patent Office recognized that Menendez stands for the proposition that marks “in a foreign language” are fanciful.”[7]

In The Trade-mark Reporter, published by the United States Trademark Association[8], the case of Ex parte Qualitas Patent Leader Corp, from July 1919, is discussed. In this case, the word QUALITAS “was held to be registrable for leather, although it is the policy of the Patent Office to refuse the foreign equivalent of English words.”[9] QUALITAS is the literal translation for the English QUALITY, a mark which had been “repeatedly held unregistrable” in no less than four cases cited.[10] The Patent Commissioner noted that the applicant, however, need not disclaim QUALITAS “in view of the fact that courts have frequently upheld descriptive words in a foreign language.”[11]

In failing to address Menendez v. Holt and the subsequent findings noted above, Federal Courts are ignoring Supreme Court precedent wherein a foreign word was not translated, accepted despite being descriptive in English in its literal equivalent, and held as fanciful due to its foreign nature. The result is a confusing body of law “that never should have existed.”[12]

Krimnus notes that because so few courts have cited the Menendez decision its scope must be considered before claiming that its decision abrogates the DoFE. To this end, “a broader reading of Menendez would prohibit translation of foreign marks to test them for any bar to registration, recognizing the Supreme Court’s total rejection of the doctrine of foreign equivalents. A narrower reading of Menendez, however, would limit its holding to prohibiting application of the doctrine only when testing marks for distinctiveness, the specific bar at issue in Menendez.”[13] The former approach, it is argued, should be adopted because it would be strange to treat the doctrine differently with regards to some bars to registration but not others. It is well settled in that, “[c]ourts apply the doctrine of foreign equivalents to treat words in a foreign language as if they are in English.”[14] This reading is both logical and legally informed because “there is no reason the doctrine’s primary policy rationale of protecting multilingual Americans would apply to some bars but not others.”[15] Under a more narrow scope of Menendez, transaction costs would be even higher and lead to more confusing outcomes[16]. Under the broader approach, foreign marks would never be translated into English before being tested for the relevant bars to registration. This thesis believes this approach is more preferable because analysis of the non-translated mark with regards to confusion and descriptiveness is the most reflective of the experience the consumer has with the mark in the marketplace. Because the trademark will ultimately be registered as a foreign language, rather than the English equivalent, searching for likelihood of confusion or descriptiveness in the foreign language is the logical precursor to registration.

4.3 | In re Spirits Intl.[17]

The case of In re Spirits Intl. is introduced and discussed in Chapter 2.6 of this thesis. In this case, the court agreed with the applicant that the reasoning in In re Mark Thomas was incorrect with regards to their reading of the ordinary American purchaser. The Spirits court found, “the “ordinary American purchaser” is not limited to only those consumers unfamiliar with non-English languages; rather, the term includes all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English”[18] (emphasis added). The ordinary purchaser, then, is anybody who would come into contact and potentially consumer the product at hand, irrespective of whether or not they speak the foreign language in question. Further, with regards to MOSKOVSKAYA, the Russian mark in question, “even though the court held that the doctrine of foreign equivalents applies, the court did not utilize the English equivalent of the mark as required under the doctrine. Instead, the court— without explanation—treated the mark as foreign throughout the rest of the opinion.”[19]

For MOSKOVSKAYA, the court noted that they had long, “recognized a proportionality requirement for materiality in false advertising cases, requiring that a substantial portion of the audience be deceived.”[20] This is because, the “Lanham Act, and the common law—requires that a significant portion of the relevant consuming public be deceived. That population is often the entire U.S. population interested in purchasing the product or service.”[21] The court noted that the TTAB, in their original rationale with regards to denying MOSKOVSKAYA, “the Board [in it’s] decision… elsewhere rejected a requirement of proportionality”[22] by discussing the fact that Russian was a modern, common world language understood by an appreciable number of consumers, in the U.S., but the Board did not consider whether or not a considerable proportion of the intended audience of the product were Russian speakers. The court went on to reject that Russian constitutes a substantial portion of the U.S. public by noting, “we express no opinion on the ultimate question of whether a substantial portion of the intended audience would be materially deceived. We note that only 0.25% of the U.S. population speaks Russian…If only one quarter of one percent of the relevant consumers was deceived, this would not be, by any measure, a substantial portion.”[23] The court considered, arbitrarily, that it might be possible that a larger percentage of the vodka-drinking population of the U.S. speak Russian, or that vodka drinkers, even if they did not speak Russian, might believe that the applicants MOSKOVSKAYA brand came from Moscow. These considerations are both immaterial and non-topical, however. “The Spirits court’s holding essentially disavowed any use of the doctrine, since consumers who do not speak the foreign language would generally be unable to translate the foreign mark, and thus the doctrine would not apply.”[24]

In re Spirits is thus completely incompatible with the decision reached in In re Mark Thomas, because in the latter case the TTAB found that the DoFE applies to a foreign word “in registration proceedings despite the fact that the words may be meaningless to the public generally.”[25]

On remand from the court, the TTAB in Spirits, “recognized that the proper test is “whether a substantial portion of the relevant consumers is likely to be deceived, not whether any absolute number or particular segment of the relevant consumers (such as foreign language speakers) is likely to be deceived.” In effect, the Board acknowledged that the doctrine of foreign equivalents is inapplicable in subsection 2(e)(3) cases.”[26] In a revised TMEP, contrary to the In re Mark Thomas decision, the USPTO explained that “either: (1) the foreign words must be “recognizable as such to consumers who do not speak the foreign language”; or (2) consumers who speak the foreign language must be the “target audience.” These procedures effectively abolished the doctrine of foreign equivalents in the Patent Office with respect to geographic deceptiveness refusals.”[27] Spirits decision should also apply to DoFE application in likelihood of confusion cases, but the TMEP is confusing with regards to when it suggests trademark examiners apply the DoFE[28].

The Spirits decision should completely reject the Thomas understanding of the DoFE and its applicability, with courts considering any foreign language mark from the interpretation of the ordinary American purchaser, rather than the effect of a particular mark on purchasers who speak the particular foreign language in question. The Spirits decision, which pertained to a geographically deceptive misdescriptive mark, MOSKOVSKAYA, should not logically only apply to that bar to registration but not to others. For other bars, the TTAB continues to apply the Thomas decision, rather than the Spirits decision[29]. This makes no sense because, “the ordinary American purchaser does not actually change depending on the bar to registration at issue”[30] and creates confusion with regards to the application of the doctrine, with application now being fragmented and unpredictable with some bars to registration being treated differently than others.

4.4 | The Mental Lexicon

Other linguistic considerations exist as to how the meaning of words is established by courts. The DoFE uses dictionaries as its means of establishing whether or not trademarks overlap in meaning or infringe upon one another, as well as how consumers understand a word when they see it. Linguists know there’s a lot more going on than a simple definition when people encounter a word from a psycholinguistic and sociolinguistic standpoint. For example, as noted earlier in the thesis is Harley’s (2006)[31] situation where, “for a long time while I was a teenager, I thought the word facetious was related to the word feces – during that time, for me, facetious was a fancy way of saying ‘full of shit.’ I had created a folk etymology” (Harley 93). Folk Etymology is one way of demonstrating that even when people are ‘fluent’ in a language personal etymologies can skew their understanding of the marks that they come into contact with.

In other ways, words can also undergo semantic changes like amelioration or perjoration as well as widening or narrowing. The word nice, for example, has gone from meaning ‘stupid’ to ‘pleasant’ and the word bully historically meant ‘lover’ or ‘sweetheart’ and now refers to something quite the opposite. The first word underwent amelioration while the latter underwent semantic perjoration. But they’re both still the ‘same’ word. Likewise words can undergo widening, formerly being associated with or used to describe a more specific concept, or narrowing, where the opposite is the case. Beyond even being associated with specific semantic meanings and definitions words can also be associated with register. “Words can be polite, rude, or neutral, suitable for high society or the neighborhood bar.”[32] To this end, “a given listeme’s annotation for register can change over time.”[33]

From a psycholinguistic standpoint, then, in addition to all the confusion and gray area that exists with attempting to determine exactly how people encounter words pragmatically and what they each individually bring to bear in that experience, experts are at odds as to whether or not humans construct the meaning or words based on a ‘definitional’ theory of meaning or an ‘atomized’ theory of meaning. The DoFE concentrates on the former – but it may be possible for people to create meaning in their minds in atomized, rather than definitional ways. What this means is that for the word ‘bachelor’, a definitional psycholinguistic model would note that bachelor means nothing inherently, and is simply a function of the aggregate of its entailments, or things associated with it. To this end, one knows that ‘bachelor’ is an: (a) male and; (b) unmarried. Only with those two separate, definitional concepts can the word ‘bachelor’ attain its own meaning – thus, to know bachelor, you must know man and unmarried. The atomized approach, conversely, “holds that lexical entailment relations are facts you learn about a listeme, but these relations aren’t the meaning itself.”[34] For ‘bachelor’, then, the concept is a primitive or an atom of thought. The list of entailment relations associated with this atom of thought are meaning postulates that are simply facts one learns or discovers about that particular concept. The reason this approach is appealing to many is because it seems reasonable to conclude that simply because one doesn’t know all the entailments of a word (like the facetious example provided above) doesn’t preclude somebody from knowing that word itself. A consumer can know the word ‘tree’ for instance without necessarily knowing ‘plant’ or ‘trunk’. This point is particularly relevant in light of the Spirits decision which noted that consumers not fluent or completely competent in a language nevertheless constitute the relevant public at hand in any given case. The way these possibilities are considered is crucial for establishing pragmatic approaches both to how people encounter words in the marketplace as well as how these encounters are treated in the law. Trademark law will need to do a much better job at attempting to truly understand the mental lexicon and the ways information is organized and perceived in the brain in order to be truly informed.

4.5 | The Utility of Dictionaries and Expert Testimony

Moving past how meaning is constructed by consumers are questions of how meaning is constructed by various forms of linguistic authority relied upon by the courts in cases involving the DoFE. Hutton (2009)[35] notes, “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”[36] (Hutton 86).

It is impossible to generalize the utility of dictionaries across all types of court cases, however. Many of the cases referenced and discussed by Hutton focus on questions of words included within statues, rather than instances of needing to use a dictionary or expert opinion to determine the status or meaning of a trademark word or word perception and reception of a specific word by a speech community in question (which may not be able to be articulated by dictionary definition). 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[37] emphasis added). Determining a reliable, legal precedent for the meaning of the word ‘insult’ in a statute 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, especially across languages.

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”[38] 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 constructed above, there may not even be the question of whether or not there exists a “classic jurisprudential clash of literal versus figurative meaning”[39] 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.

Judges, in this instance, though justified in their assertions that dictionaries are impartial and convenient, are incorrect in ignoring some form of linguistic authority or expert testimony that might be better equipped to discuss the distinctions between how words can be used and how words are ordinarily used and understood by populations of speakers.

If we are to assume, as Hutton does, that “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”[40], then a case can be made for the superiority of linguistic analysis of meaning over a mere traditional lexicographic approach. 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 that 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”[41]. In DoFE cases, having an expert fluent in a foreign language and the connotations or idiomatic uses of a particular phrase (for example, CORDON BLEU) would be valuable for courts.

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 [emerging] 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”[42] (Hutton 91).

Courts run into problems with words across different languages because, “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.”[43] Foreign word trademarks submitted by registrants are evaluated first by examiners and then by courts on the basis of dictionary definitions that have the potential to divorce the meanings of words from their actual reception in the marketplace, and different dictionaries, depending on how they are compiled, submit diverging definitions for the same foreign word or translation in question.

4.6 | The Denial of Foreign Appeal

The DoFE over-protects consumers and over-stifles producers when it denies registration to foreign language marks that should not be barred registration based on proportionality. This is because producers depend on the ideas and images conjured up by foreign marks for their products.

“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.”

The words above are offered by Jedediah Purdy, a law professor at Duke University. Part of this equation as it plays into the DoFE from other theories in marketing and intellectual property. One of these, cited by Banks (2006)[44], is consumer learning by analogy, or CLA. “According to CLA, the strategy by which consumers make product judgments depends on the extent to which consumers are familiar with the product category, with experienced consumers relying on existing knowledge and novice consumers relying on accessible attributes for product assessment.”[45] 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 DoFE lacks the flexibility to truly account for targeted markets, where demographics may be completely different than in other areas.

French is considered by the courts 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. French is often considered a ‘pretty’ language, though, and may be attached to a product that does not necessarily originate in France. Marketers play off of these natural and often times sub-conscious consumer assumptions about language 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. The DoFE, however, might deny a trademark in French for infringing upon a pre-existing English equivalent mark because French is considered a ‘common’ language in the US, even if the ordinary consumer cannot be shown to stop to translate the perfume name into its English equivalent, associate it with a product, and potentially become ‘confused’.

According to Briggs and Torres (2005)[46], 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.”[47] What this means 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.

We arrive, therefore, at a crossroads between business and law.  Accommodation theory, “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…in other words, the communicator “accommodates,” noticeably, to the audience.”[48] Producers are stifled, however, by frequently confusing TTAB and Federal court decisions and denied the ability to accommodate to consumers, or to appeal to consumers by use of a foreign language, on the basis of potentially confusing a negligible population.


[1] (Krimnus, 2010)

[2] (Krimnus, 2010, pg. 161)

[3] (Menendez v. Holt, 1888)

[4] (Menendez v. Holt, 1888)

[5] (Krimnus, 2010, pg. 188)

[6] (Krimnus, 2010, pg. 189)

[7] (Krimnus, 2010, pg. 190)

[8] (The Trade-mark Reporter, 1920)

[9] (The Trade-mark Reporter, 1920, pg. 517)

[10] These are: Ex parte Brackett, Shaw & Lunt Co., 124 Ms. Dec. 215 [7 T.M. Rep. 601]; Ex parte Stecker Lithographic Co., 122 Ms. Dec. 367 [7 T.M. Rep. 347]; Ex parte F. A. Martocio Macaroni Co., 122 Ms. Dec. 458 [7 T.M. Rep. 333]; and Ex parte The Piston Ring Co., 124 Ms. Dec. 212 (The Trade-mark Reporter, 1920, pg. 517)

[11] (The Trade-mark Reporter, 1920, pg. 517)

[12] (Krimnus, 2010, pg. 191)

[13] (Krimnus, 2010, pg. 191)

[14] (LAZZARONI USA CORP. v. STEINER FOODS, B&R CLASSICS, LLC, and PAOLO LAZZARONI & FIGLI, 2006)

[15] (Krimnus, 2010, pg. 192)

[16] Specifically, Krimnus (2010) argues, “Construing Menendez narrowly would also lead to a convoluted and arbitrary procedure and results. Under such a narrow reading, the doctrine would be applied as follows. First, a court would translate a foreign mark and test it for all the statutory bars to registration. Second, upon translation, if a mark were unregistrable due to lack of distinctiveness, a court would then apply Menendez (narrowly construed), “un-translate” the mark, and allow registration. The same procedure would apply if the mark could only be refused registration as geographically deceptive under Spirits. This simply cannot be what the Supreme Court had in mind. Such a convoluted procedure would lead to added confusion for applicants and their attorneys and increase transaction costs. These transaction costs would then be passed down to the consuming public. Moreover, this confusion would lead to less predictable decision-making amongst trademark applicants since applicants would have to predict what bars may be at issue in order to know whether the doctrine may apply to their mark” (pg. 192).

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

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

[19] (Krimnus, 2010, pg. 180)

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

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

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

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

[24] (Krimnus, 2010, pg. 180)

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

[26] (Krimnus, 2010, pg. 183)

[27] (Krimnus, 2010, pg. 184)

[28] Krimnus (2010) states, in the “section entitled “When an Ordinary American Purchaser Would ‘Stop and Translate,’” the TMEP states that if “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.” Essentially, examiners are instructed to always apply the doctrine “barring unusual circumstances.” This part of the TMEP ignores Spirits’ holding that the ordinary American purchaser includes all purchasers, not just those familiar with the relevant foreign language (who would generally be likely to “stop and translate” the foreign mark). Thus, in one section, the TMEP appears to extend Spirits’ reasoning to likelihood of confusion cases making its application much less likely. In another section, to the contrary, examiners are instructed to simply apply the doctrine “barring unusual circumstances.” This glaring contradiction, of course, adds to the confusion associated with the doctrine” (pg. 185).

[29] See In re Trimarchi, (In re Helen Trimarchi and Michael Merr, 2009)

[30] (Krimnus, 2010, pg. 186)

[31] (Harley, 2006)

[32] (Harley, 2006, pg. 104)

[33] (Harley, 2006, pg. 104)

[34] (Harley, 2006, pg. 198)

[35] (Hutton, Language, Meaning and the Law, 2009)

[36] (Hutton, 2009, pg. 86)

[37] (Hutton, 2009, pg. 87)

[38] (Hutton, 2009, pg. 93)

[39] (Hutton, 2009, pg. 95)

[40] (Hutton, 2009, pg. 99)

[41] (Hutton, 2009, pg. 87)

[42] (Hutton, 2009, pg. 91)

[43] (Hutton, 2009, pg. 101)

[44] (Banks, 2006)

[45] (Banks, 2006, pg. 17)

[46] (Briggs and Torres, 2005)

[47] (Briggs and Torres, 2005, pg. 152)

[48] (Briggs and Torres, 2005, pg. 153)