Thesis Chapter 5 Draft



5.0 | Overview

Chapter 5 will begin by discussing an interview held with Trademark Trial and Appeal Board Judge James Walsh that affirms many of the arguments presented in this thesis and provides a segue into its conclusion. Chapter 5 will then present the case made by the thesis in support of the abolition of the doctrine of foreign equivalents. In the event that it proves impossible or highly unlikely that the doctrine will be dismissed altogether, pragmatic ways to reduce the affirmative and prospective harm caused by the doctrine, while not altogether writing the doctrine out of existence, will then be presented.

5.1 | Interview with TTAB Judge James Walsh[1]

Judge James Walsh was appointed to the Trademark Trial and Appeals Board in 2005. Prior to his appointment, Walsh served as a trademark examining attorney, a USPTO administrator for trademark policy and procedure, editor of the Trademark Manuel for Examining Procedure, and in private practice at Arnold & Palmer in Washington D.C. He received a bachelor’s degree from the College of the Holy Cross and his juris doctor from Georgetown University. Judge Walsh has over thirty years of professional experience with trademark law, and has specialized in trademark registration and protection in foreign countries. He is one of eighteen judges on the TTAB.

When asked about many of the DoFE cases that seem to violate the proportionality rule embraced by U.S. trademark law (such as the In re Savisa case incident with Afrikaans), Walsh conceded that indeed, it would “stretch common sense to conclude that there would be confusion” in many of the findings of the TTAB and the Federal court. Walsh stressed that frequently the application of the DoFE is “arbitrary” at best if viewed over a long period of time, and that the DoFE “fails one of the basic tests of jurisprudence because law has to be predictable to be logical. The doctrine of foreign equivalents is not.”

When asked about how the TTAB generally manages to go about determining things such as likelihood of translation, Judge Walsh noted that “a lot of it is guesswork”, since the TTAB “rarely has the benefit of [something like] a scientific survey of the public”, or the input of linguists or other specialists, in its efforts to determine whether or not the ordinary consumer is likely to translate a foreign trademark and whether or not that translation is likely to cause confusion. To this end, many TTAB decisions, Walsh feels, are “subjective to a significant degree”, with many of them being “close calls.” Despite serving as a judge on the Board whose purpose it is to uphold and use the DoFE guideline where necessarily, Walsh calls the DoFE a “legal fiction”, such that “the foreign equivalent phenomenon is an example of where the TTAB is forced to make subjective decisions about whether or not [trademarks] are confusing, [or] would be seen as descriptive or generic. This legal fiction complicates the task. It is largely a fiction that foreign terms should be treated as the equivalent of English terms.” Beyond literal equivalents, when asked about the treatment of idiomatic phrases like MARCHE NOIR or BLACKMARK, as in the In re Mark Thomas case, Judge Walsh noted that it is “indeed problematic as to whether or not idiomatic phrases would even have relevance in another language” or be understood in that way. In terms of translation and language proficiency in the United States, Walsh believes “the ability of people in the U.S. to translate any language is so limited even compared to Europe or other places. The general consuming public (with perhaps the exception of Spanish speakers) does not have a lot of knowledge of other languages”. Walsh noted that he included himself among that group of the general consuming public with little knowledge of other languages. When presented with information from the U.S. Census on language demographics in the United States, Walsh further commented that in the U.S. “there is a strong bias towards granting nationwide rights, it supports the orderly flow of commerce” but that “languages are frequently localized” and that this needs to be treated with a more critical eye.

Walsh was then asked about a number of decisions made by the TTAB (such as In re Savisa) that seemed to preclude registration from an Afrikaans trademark even though such a refusal would only protect a negligible population of American consumers. Walsh responded it is, “difficult for the TTAB to apply decisions because [we’re] making decisions in the abstract. In a court all the circumstances are presented and surveys are also presented, they have a much better basis [for conclusion] than the TTAB does.” The TTAB decisions are considered from “an ivory tower point of view, it’s the nature of what we do here”. Whereas Walsh believes Federal court decisions are much more in touch with the reality of the situation.

Walsh was asked about on whom the burden of proof lies when applying the doctrine of foreign equivalents, since that is never clarified in any official USPTO policies. Walsh believes that when it comes to likelihood of confusion there’s “a general presumption that if doubt exists (meaning confusion might arise) the court decides in favor of the prior registrant”, but that the USPTO has the burden “to make the prima facie case.” For determining distinctiveness (such as whether or not a mark can be deemed descriptive or geographically mis-descriptive) Walsh believes “the burden goes to the TTAB to prove this.” Ultimately, the USPTO should be working in a pro-registration fashion, with would-be registrants having the ability to obtain trademarks, “unless something else” or other complications exist. It should be the USPTO’s job, then, to prove this case.

Walsh seems to support the idea that the TTAB “cannot be creating an unworkable standard” but believes overall that their decisions cannot have caused “any great damage” to the “overall integrity of the trademark system” or to trademark owners. Yet it is contended that damage has been done to the trademark system by making it unpredictable, subjective, and frequently arbitrary. Walsh himself notes that “laying over [these] subjective decisions about whether or not people would perceive translations or not, recognize that something is a translation of something else” is the norm when the TTAB hears cases regarding the DoFE, rather than the exception. When asked about the international scope of the doctrine, and its purpose of protecting multilingual Americans, Walsh commented that he was “not aware that any other country has a doctrine like this.” Despite seeming to acknowledge that the DoFE is arbitrary, subjective, and riddled with inconsistency, Judge Walsh noted that the TTAB was likely to continue along the way it always has, ceteris paribus.

The DoFE is a judicially created doctrine, not a statute. The U.S. Congress could abolish the DoFE but it is highly unlikely this will ever happen. Short of a call for the abolition from the legislature, the DoFE, and its application, largely become issues of judicial management and treatment of it, it cannot be statutorily dismissed. To this end, Federal courts, in their decisions to apply the doctrine, could have a large say on how broad or narrow of a reading the DoFE enjoys, and if the Federal circuit begins to treat the DoFE in a very restrictive way, that would necessarily trickle down to the TTAB. Walsh notes that the provision which pertains to which words primarily constitute surnames have taken a similar direction, with more restrictive readings of the statute being adopted in favor of adhering more closely to the actual ideals and purpose of such a statute. If the U.S. Congress or Federal circuit began to call for the abolition or restricted use of the DoFE, it would be possible, but those calls will not come from the TTAB. If the Supreme Court decided the DoFE needed to be done away with, all other courts, in stare decisis, would need to apply the same decision. The Federal circuit currently looks towards issues of the DoFE’s application as precedent, however, and to dismiss precedent the whole court would need to consider the DoFE, which is unlikely. In the absence of activism from higher courts, the TTAB will continue to “stumble along” according to Walsh. If the Federal circuit and higher courts did become more active in policing the use of the DoFE, however, these feelings would be reflected in the updated TMEP, which would then inform the decisions and actions of the examiners, the very heart of the registration and refusal process.

5.2 | Abolishing the Doctrine of Foreign Equivalents

The doctrine of foreign equivalents is an arbitrary, unworkable, subjective, and unpredictable practice as applied by trademark examiners, the Trademark Trial and Appeal Board, and the Federal court system. The doctrine is a vague guideline with decisions that are inconsistent with one another, and frequently directly contradictory. As a result, would-be registrants may be confused by the doctrine and the great proportion of the population is ignored by courts in favor of protecting negligible populations of American consumers on the basis of incomplete, abstracted, and presumptive knowledge, thus stifling U.S. commerce and harming consumers by denying them the opportunity to distinguish goods in the marketplace through reliance upon a registered trademark.

The justifications presented in this thesis are legion as to why the doctrine of foreign equivalents should be abolished on the grounds that it over-protects American consumers, violating the basic trademark law recognition of proportionality, while over-stifling consumers, denying them the financial gains and protection of having a registered trademark on an inappropriate and unpredictable basis. The following considerations must be taken into consideration by higher courts or the legislature, from both a linguistic, legal, and pragmatic stance, in support of the annulment or rescission of the doctrine.

5.2.1 – The doctrine does not properly recognize proportionality

There is a long tradition in trademark law supporting that a substantial or appreciable population of consumers must be affected by a trademark in order for the relevant statutory bar to registration to apply[2]. Although substantial has never been explicitly defined by courts, lending to the confusion, Krimnus (2010) cites McCarthy[3] as noting “[f]igures below 20% [of the public] become problematic,” with the lowest reported figure being 8.5%” (pg. 197).

Cases such as In re Savisa, In re Spirits, and Otokoyama Co Ltd all deal with languages who have speakers in proportions that should be considered negligible[4] in favor of proportionality. Krimnus also cites the case of La Peregrina Ltd., in noting that rather than considering proportions of speakers that would actually be knowledgable, translate, and become confused by a foreign language trademark, courts “presume that a word in one of the common, modern languages of the world will be spoken or understood by an appreciable number of U.S. consumers for the goods at issue” (pg. 197). Languages generally considered common, such as French and German, are nevertheless only spoken by 0.5% and 0.4% of U.S. residents, respectively[5], and fall well below the 20% suggested by McCarthy, and even the 8.5% suggested at the lower scale. Spanish, the most widely spoken language in the country, is still only spoken by 12.2% of Americans[6].

5.2.2. – The doctrine does not consider whether people speak English

In order to be confused under the doctrine of foreign equivalents, the ordinary American consumer would have to have knowledge of both the foreign language mark at hand as well as English, and translate and confuse the two. In re Thomas affirms that consumers must be “knowledgeable in English[7] as well as the pertinent foreign language. “According to the U.S. Census, speakers of many foreign languages in the United States do not speak English very well. For example, with respect to the most widely spoken foreign language in the United States—Spanish—47% of speakers do not speak English very well.”[8] The same applies to other foreign languages in the U.S., so that even if the consumer in the United States speaks the foreign language at hand, they may not speak English very well or at all, and the doctrine would provide them with no protection.

5.2.3. – The doctrine ignores current consumers

The court noted regarding Afrikaans that, “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”[9] (In re Savisa (Pty) Ltd., p. 10). This point is completely beside the point with the court trading off the actual confusion of current consumers to whom the product is relevant with the potential demographic of consumers at some hypothetical time in the future. Not only, then, does the decision in this case seek to protect a negligible percentage of Americans at the expense of the general public, it seeks to protect a negligible population in the future.

5.2.4. – The doctrine is exceptionally inconsistent in application

“The Federal Circuit has never made clear what constitutes a common language, in what cases consumers would be unlikely to translate foreign marks, and on whom the burden of proof of likelihood of translation lies. Perhaps most importantly, the Federal Circuit’s decision in Spirits, aside from being confusing and internally inconsistent, has forced the T.T.A.B. to unreasonably use a different definition of “ordinary American purchaser” for geographic deceptiveness refusals than all other bars to registration.”[10]

The Supreme Court ruled in Patterson v. McLean Credit Union[11] that that case law needed to be overturned and abolished by courts if it was subject to “inherent confusion” and failed to be “coheren[tly] and consisten[tly]” applied by courts. Under this rationale, due to the lack of definition (and frequently contrastive) treatment of exactly who the ordinary American consumer is, when consumers are likely to translate (or when they are likely to not translate, as in In re Tia Maria), and whether they will be confused, the doctrine deserves to be nullified.

5.2.5. – The doctrine violates Supreme Court precedent in Mendendez v. Holt

LA FAVORITA was determined to be a “a fancy name and in a foreign language[12] and was not translated into its literal English equivalent, THE FAVORITE. Because the U.S. Supreme Court determined in Menendez v. Holt that foreign language words should not be translated in determining where marks fall on the spectrum of distinctiveness, application of the DoFE was foreclosed. Under stare decisis, Federal courts are required to adhere to the decision of the higher court.

5.2.6. – The doctrine is used to uphold a word’s status in foreign countries

In Otokayama Co. v. Wine of Japan Import Inc.[13] the court considered the treatment of OTOKAYAMA as a descriptive term for sake in Japan, even though it was not understood to be so by consumers in the United States. In considering how OTOKAYAMA is viewed in Japan, rather than in the United States, the court completely ignored the ordinary American consumer and their experience with the trademark in the U.S., in favor of the encounter of a Japanese consumer in Japan.

5.2.7. – Decisions fail to recognize the complexity of translation

Shortcuts taken by the courts, especially the TTAB, as noted by Judge Walsh, place many decisions regarding the DoFE out of touch with reality and render them a guessing game by judges. This is especially true considering that courts already assume all consumers to know English, which may not be the case. Generally, courts fail to consider: (1) the same symbol (word) may be translated in a number of different ways depending on a person’s background (Jacoby, 1998); (2) consumers invest greater thought and consideration into products deemed as more important or more expensive. It is reasonable to conclude that consumers would put greater time and energy into translating or otherwise understanding foreign language words as parts of trademarks for products that are expensive or more high-risk purchases (Muehling, 1990); (3) consumers are likely to take words from the SL and translate them into the TL word that is the most conceptually or semantically relevant; the term of ‘best fit’, rather than a direct translation (de Groot and Christoffels, 2006) and (Paradis, 2004); (4) semantic features and associations activated by one word are not necessarily the same features activated by its translation equivalent (de Groot, 1992) and (Luna and Peracchio, 1999); (5) words representing abstract thoughts, and non-cognate words in one language can generate substantially different concepts than words that are common across all languages, such as colors and numbers  (Duyck and Brysbaert, 2008) and (Luna and Peracchio, 1999); (6) words with large form overlap (cognates) enjoy greater levels of translation, with non-cognates suffering a lower rate of translation. Lexico-semantic organization in the brain occurs more at the word level than the language level, regardless of proficiency, resulting in differing translation patterns and standards for lexically similar languages than lexically dissimilar languages (Duyck and Brysbaert, 2008); (7) words are organized at two different levels in the brain – lexical and conceptual. To this end, trademarks in a consumer’s L2 (despite fluency) are believed to register more at a lexical level, with the ordinary consumer seeking meaning through a lexical item in their L1 (searching for a learned equivalent) (Luna and Peracchio, 2002) based on (Dufour & Kroll, 1995; Kroll & de Groot, 1997); (8) the effects of language on thoughts are moderated by the consumption context of the product. Product categories also have an effect, with products more naturally associated with an L1 versus an L2 triggering greater L1 thinking, and vice versa (Noriega and Blair, 2008).

In fact, this last point, (8), is completely disregarded in favor of the opposite finding in In re Tia Maria when the court found that consumers would likely take TIA MARIA as is, rather than confuse it with AUNT MARY, because they encountered the trademark TIA MARIA in a Mexican restaurant surrounded by Mexican food and décor.

Case law, in fact, gives a number of different (seemingly odd) times when consumers would be unlikely to translate a foreign mark. These are: “(1) foreign words which have entered the English vernacular; (2) grammatically incorrect foreign phrases; (3) marks on canned goods; and (4) goods encountered in an environment associated with the relevant foreign culture.”[14] Further, courts provided no logical basis as to why these four instances would render a consumer unlikely to translate.

5.2.8.Courts fail to take expert opinion or context into consideration, making decisions in a vacuum

Examiners, in only being able to rely on dictionaries and online sources, are forced to make tough registration decisions regarding foreign language trademarks in a vacuum. Because translation can be tempered by situation, courts like the TTAB are forced to make decisions in the “abstract”, according to Judge Walsh, are rendered incapable of reaching an informed decision in many instances where they can scientifically justify their decisions as to the likelihood of translation.

5.2.9. – Producer harm and would-be registrant confusion

Would-be registrants are confused an unable to predict the decisions that trademark examining attorneys might reach, or decisions courts might reach on appeal regarding the registration of foreign language marks. When registration is denied in efforts to protect nugatory populations of consumers, not only is the general public hurt by being denied the ability to distinguish products on the basis of that trademark, but producers are harmed by the inability to protect their own products with that trademark, which may carry with it a foreign connotation that might appeal to consumers.

5.3 | Better Application of the Doctrine

In the event that Congress or a higher court will not write the DoFE out of existence altogether, Federal courts need to take substantial steps towards narrowing the applicability of the doctrine, or discontinuing its use through judicial means.

If the doctrine must continue to be applied, courts will need to set forth standards as to: (1) exactly who the ordinary consumer constitutes; (2) when it is likely a consumer will translate; (3) instances when it is unlikely a consumer will translate; and (4) when this translation rises to the level of confusion. The DoFE must have the same standards for all bars to registration, and courts must begin to codify specific thresholds in efforts to better help themselves, examiners, and registrants.

In order to ensure that courts avoid improperly considering the status of a word in another country, courts must be required to submit all cases to a four step process involving: (1) determining who the ordinary consumer is; (2) determining whether or not the consumer has knowledge of the mark in the foreign language; (3) determining whether or not the consumer would translate the mark; (4) determining whether or not this translation would rise to a level of confusion. If all four of these steps cannot be confirmed, then the court will have failed to meet its burden of proof in denying registration to a particular mark.

The nature of the foreign language mark itself must be considered before it is translated into English, pursuant of Menendez v. Holt, in order to give appropriate credence to the real consumer experience with the foreign trademark. After all, it is the foreign mark, not its English equivalent, that consumers encounter in the marketplace. The commercial value of foreign language trademarks is great, and would be better served and understood if courts conducted appropriate analysis on the foreign mark as-is, comparing it to other existing marks, before translating it. Furthermore, foreign language marks have the potential to generate different commercial impressions in the mind for consumers. Subjecting the foreign language mark to confusion factor tests would demonstrate whether or not consumers who encounter that foreign mark in the marketplace would confuse it with other existing trademarks without knowing the exact translation or meaning of the foreign mark in English. The trademark will be registered in the foreign language, not its English equivalent, so this test should preclude registration.

Courts should consider all possible consumers of a product as the relevant purchaser of that product, regardless of whether or not the consumer has knowledge of the relevant foreign language at hand. Even if the consumer did have knowledge of that foreign language, there is still the possibility that the consumer would have an incomplete or non-existent grasp of English. Taking into consideration the entire possible audience of a product or service will allow the courts to remain in greater touch with the essential mission of trademark law to protect the greatest segment of the public at a time. This is especially important given that trademark registration is a nationwide presumption of validity, a notion affirmed by Judge Walsh.

5.4 | Conclusion

The doctrine of foreign equivalents began as a well-intentioned doctrine meant to protect an increasingly multilingual American population from confusion and deception in the marketplace. Because confusion may arise from a foreign language term in the marketplace, those not familiar with a foreign language will likely regard that mark as fanciful and not translate it. Those who are familiar with the foreign mark in question and do translate it into its English equivalent, however, could potentially become confused as to the origin or nature of seemingly identical products that are, in fact, not the same. What began as an altruistic effort to protect consumers and respect international linguistic comity, however, has been riddled since the offset over a century ago with inconsistency and confusion. Courts have created shortcuts and gross generalizations about the linguistic profile of the United States and its people, and have come to the conclusion that almost any word which appears in a modern, common language in the world is likely to cause confusion to American consumers. Trademarks in these languages, therefore, are literally prohibited by law from appearing in U.S. markets where consumers might encounter them. Producers are limited by the DoFE by being denied the ability to protect their products and services with such trademarks, and are further denied the not insubstantial commercial benefits of foreign sounding trademarks. The vast majority of consumers are over-protected by the courts, instead favoring the protection of inconsequential amounts of consumers, because courts fail to recognize that just because trademark law seeks to protect a substantial population of consumers does not mean that it can protect every single consumer. Courts must return to the ideal and original purpose of the doctrine, which seeks to prevent consumer confusion at an appreciable, nation-wide level to the best of its ability. The doctrine is, even in the words of a trademark judge, “arbitrary” in its workability, and confusing to the point that it does harm to would-be registrants, perhaps preventing them altogether. Courts over-simplify complex psycholinguistic notions of translation, infrequently consulting those knowledgeable in language whatsoever, thus forcing them to make decisions in the abstract, divorced from important contextual considerations that have the ability to influence consumers interactions with a foreign language trademark. This thesis has shown that the vast majority of cases, including those considered precedent, relating to the doctrine of foreign equivalents are mal-informed, presumptive, and frequently contradictory. The doctrine of foreign equivalents is unworkable and should be excised from practice immediately, with many of the courts decisions invalidating its use when compared to other decisions from other cases. Doing much more harm than good, the doctrine serves no manifest benefit to U.S. trademark law. If, indeed, the doctrine cannot be fully written out of existence, then a firm, understood set of principles is needed to guide courts’ future conduct with regard to it. Dependable and judicious practices must be required of every court and trademark examiner so that both registrants and courts themselves can assume and expect sound, un-fluctuating application. Were the doctrine to be kept, a much narrower reading of it must apply, coming down from higher courts, and with regards to the spectrum of distinctiveness and likelihood of translation, the burden of proof must always be on the examiner, the TTAB, and higher courts.

Abolition of the doctrine of foreign equivalents would allow the entire market, composed of both consumers and producers, to more appropriately benefit from all that can be gained, commercially and in consumption, from a diversification of languages in trademarks.

[1] (Walsh, 2011)

[2] Krimnus, 2010, cites a number of cases: e.g., Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 114 (2d Cir. 2009) (appreciable number) (citation omitted); Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 534 (2d Cir. 2005) (substantial number); Nautilus Group, Inc. v. ICON Health and Fitness, Inc., 372 F.3d 1330, 1338 (Fed. Cir. 2004) (appreciable number) (quoting Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1151 (9th Cir. 2002)). The “appreciable number” standard was first adopted by courts in the early twentieth century. See, e.g., Guth Chocolate Co. v. Guth, 215 F. 750, 760 (D. Md. 1914), aff’d, 224 F. 932 (4th Cir. 1915). This standard was, in turn, adopted by the Restatement of Torts. See RESTATEMENT (FIRST) OF TORTS § 728 cmt. a (1938) (“[T]he issue [in a likelihood of confusion analysis] is whether an appreciable number of prospective purchasers of the goods or services” are confused.), quoted with approval in Eastern Wine Corp. v. Winslow Warren Ltd., Inc., 137 F.2d 955, 960 (2d Cir. 1943). (pg. 196).

[3] (McCarthy, 1984)

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

[5] (Bureau, 2006-2008)

[6] (Bureau, 2006-2008)

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

[8] (Krimnus, 2010, pg. 199)

[9] (In re Savisa (Pty) Ltd., p. 10)

[10] (Krimnus, 2010, pg. 202)

[11] (Patterson v. McLean Credit Union, 1989)

[12] (Menendez v. Holt, 1888)


[14] (Krimnus, 2010, pg. 171)