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The Square Peg of a Multi-Language Mark

Posted by Thomas P. Howard | Nov 19, 2021 | 0 Comments

By James Juo.

“Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English to determine … descriptiveness.… When it is unlikely that an American buyer will translate the foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005) (citing In re Tia Maria, Inc., 188 USPQ 524 (TTAB 1975) (no likelihood of confusion between TIA MARIA for a Mexican restaurant and AUNT MARY'S for canned vegetables)); In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006).

The doctrine of foreign equivalents, however, “is not an absolute rule and should be viewed merely as a guideline” that applies when it is likely that “the ordinary American purchaser would ‘stop and translate [the mark] into its English equivalent.'” Palm Bay, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)). Such an “ordinary American purchaser” would include purchasers knowledgeable in English as well as the pertinent foreign language(s). See Thomas, 79 USPQ2d at 1024 (“The ‘ordinary American purchaser' in this context refers to the ordinary American purchaser who is knowledgeable in the foreign language”); see also In re La Peregrina Ltd., 86 USPQ2d 1645, 1647-48 (TTAB 2008) (“The Board has determined that the ‘ordinary American purchaser' in a case involving a foreign language mark refers to the ordinary American purchaser who is knowledgeable in English as well as the pertinent foreign language.”).

What if the trademark is a mash-up of words from two different languages? That was the scenario presented in the case of In re Taverna Izakaya LLC, Serial No. 88612441 (TTAB Nov. 17, 2021), where the applied-for mark was TAVERNA COSTERA for “restaurant, cafe, and bar services.” The application included a statement in the Translation field (“The English translation of TAVERNA COSTERA in the mark is COASTAL TAVERN”), along with a Miscellaneous Statement (“the word TAVERNA is Greek and Italian, while the word COSTERA is Spanish”).

The Trademark Examining Attorney applied the doctrine of foreign equivalents and refused registration of Applicant's mark under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), as merely descriptive of the identified services. The applicant argued that the doctrine of foreign equivalents should not be applied to its mark, where consumers would read the mark “as it is” rather than translating it. See Palm Bay, 73 USPQ2d at 1696 (“When it is unlikely that an American buyer will translate [a] foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied.”).

On appeal, the TTAB held that in the context of this mark, “taverna” should be treated as an English word. The record included English language dictionary definitions of “taverna” as a “café or small restaurant serving Greek food,” and third-party registrations with disclaimers of “taverna” (with some registrations not translating the term). Thus, “consumers would recognize ‘taverna' as an English language word – a variation of the word ‘tavern' that refers to a tavern featuring Greek food.”

Yet, when combined with the Spanish word “costera,” the TTAB found that combining different languages created a “suggestive” commercial impression. “[C]onsumers would not ‘stop and translate' marks comprised of terms in multiple languages, often finding that the marks combine the different languages for suggestive purposes to create a certain commercial impression.”

For example, in In re Universal Package Corp., the Board declined to apply the doctrine of foreign equivalents and held that the mark LE CASE for jewelry boxes was not merely descriptive as a whole, noting “[h]ere only one of the two components is foreign. Translation of an entire compound word mark is more likely to take place in the marketplace than is the translation of only part of the mark.” 222 USPQ 344, 347 (TTAB 1984). Similarly, in In re Sweet Victory, Inc., the Board held that “the combination of a foreign word ‘GLACÉ' and the English word ‘LITE' is not merely descriptive under Section 2(e)(1)” because “the juxtaposition of the French word ‘GLACÉ with the English word ‘LITE' changes the commercial impression of the mark.” 228 USPQ 959, 960-61 (TTAB 1986).

Thus, the TTAB found that the TAVERNA COSTERA mark as a whole was not descriptive and at most suggests, through the use of a particular combination of words from multiple languages, a “fusion” of cuisines. See Estate of P.D. Beckwith, Inc. v. Comm'r of Patents, 252 U.S. 538, 545-546 (1920) (“The commercial impression of a trade-mark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety ….”); see also Universal Package, 222 USPQ at 347 (use of the French article LE with the English word CASE changes the mark's commercial impression, and “imparts to the mark a French flavor, a continental connotation which is presumably desirable from the perspective of manufacturers of jewelry boxes”).

Given that ordinary consumers would recognize the first word in Applicant's mark not only as an English word – but one that connotes a Greek café and Greek cuisine – those consumers would not be inclined to stop and translate the next word in the mark from Spanish. Indeed, the record makes clear that the application's “translation” statement is not in fact a literal and direct “translation,” as commonly understood, from a particular foreign language into English; rather, it is an attempt to fit the square peg of a multi-language mark into the round hole of the “translation” in the application form.

Nonetheless, because “TAVERNA” is a recognized English language word that refers to a type of restaurant, this component of the mark is unregistrable, and a disclaimer of that term would be needed.  “[I]f Applicant submits a properly worded disclaimer of TAVERNA to the Board within 30 days from the date of this decision and prior to filing any appeal of this decision, the refusal will be set aside and the application will proceed.”

The trademark attorneys at Thomas P. Howard, LLC are experienced at prosecuting trademark applications before the USPTO, as well as enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.

About the Author

Thomas P. Howard

Thomas Howard is an experienced trial lawyer that handles intellectual property litigation nationwide, including copyright, trademark, trade secret and patent litigation, as well as complex civil litigation, including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud and fraudulent transfer of assets.


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