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Pidgin Incongruity

Posted by James Juo | Dec 19, 2023 | 0 Comments

Under the doctrine of foreign equivalents for evaluating a trademark's appearance, sound, connotation and commercial impression; it is presumed that foreign words from common languages are translated into English to determine their similarity of connotation with English word marks. See Palm Bay Import, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). But this is not an absolute rule and should be viewed merely as a “guideline.” Id. The doctrine is applied when it is likely that the ordinary American purchaser would “stop and translate” a foreign language term into its English equivalent. Id.; In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976); In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006).

The doctrine of foreign equivalents, however, often is not applied where the mark contains words in two different languages. See In re Taverna Izakaya LLC, 2021 USPQ2d 1134 (TTAB 2021) (reversing descriptiveness refusal of TAVERNA COSTERA for restaurant services based on doctrine of foreign equivalents, because the mark's constituent terms are in different languages which suggests a “fusion” of cuisines); see also In re Universal Package Corp., 222 USPQ 344, 347 (TTAB 1984) (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”).


The TTAB recently held that there was no likelihood of confusion between the applied-for EVERYDAY HEROES mark for musical recordings and entertainment services, and the registered HEROES COTIDIANOS mark for downloadable television programs and television entertainment services, where HEROES COTIDIANOS translated from Spanish to “Everyday Heroes.” Stardust Music Productions, LLC, Ser. No. 90804879 (TTAB Dec. 13, 2023).

            Of course, Spanish is a “common language” in the United States. February 16, 2022 Office Action TSDR 8-9; September 7, 2022 Office Action TSDR 9-14. We have routinely applied the doctrine of foreign equivalents to Spanish language marks. In re Aquamar, Inc., 115 USPQ2d 1122, 1127 (TTAB 2015); In re La Peregrina Ltd., 86 USPQ2d 1645, 1648 (TTAB 2008) (“there is no question that Spanish is a common, modern language”); In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re Am. Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983); Rosenblum v. George Willsher & Co., 161 USPQ 492 (TTAB 1969).


We do not agree that Spanish being spoken by American consumers is enough in and of itself to invoke the doctrine. Indeed, if it was, the doctrine of foreign equivalents would cease to be a mere “guideline,” as Palm Bay tells us it must be, and would instead become an “absolute rule,” at least with respect to marks in Spanish and other “common” languages.

The use of pidgin or hybrid languages often has been found to create an incongruity by the TTAB. Because the registered mark, HEROES COTIDIANOS, was in two different languages, English (“HEROES”) and Spanish (“COTIDIANOS”), the TTAB declined to apply the doctrine of foreign equivalents.

            Here we find similarly that consumers would not translate just one of the words in Registrant's two-word mark, but would instead take it “as it is.” In re Tia Maria, Inc., 188 USPQ 524. 525-26 (TTAB 1975) (“there are foreign expressions that even those familiar with the language will not translate, accepting the term as it is”). In fact, it is not clear from either the cited mark itself, or from the mark's use in connection with television programs, that one or both of the mark's constituent terms are supposed to be translated, much less to which language.

            Rather, just as TAVERNA COSTERA suggests a “fusion” of cuisines and LE CASE imparts “a French flavor, a continental connotation,” HEROES COTIDIANOS may perhaps convey a television show about a mixed group of heroes with different backgrounds, or that some of the show's “heroes” speak English and some speak Spanish. Perhaps the mark is intended to identify a television show popular with both English and Spanish speakers. While the record does not reveal why the cited mark is in two languages, whatever the reason, here we find that as in Taverna Izakaya, Universal Package and other cases, consumers would be unlikely to translate the Spanish word “COTIDIANOS” when the mark also includes an English word. See In re Sweet Victory, Inc., 228 USPQ 959, 960-61 (TTAB 1986) (“juxtaposition of the French word ‘GLAC,' with the English word ‘LITE' changes the commercial impression of the mark and makes the expression a somewhat more incongruous one”); In re Universal Package, 222 USPQ2d at 347 (“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.”); French Transit, Ltd. v. Modern Coupon Sys., Inc., 818 F.Supp. 635, 29 USPQ2d 1626 (S.D.N.Y. 1993) (finding that doctrine of foreign equivalents does not apply to LE CRYSTAL NATUREL because it includes both French (LE and NATUREL) and English (CRYSTAL) terms, pointing out that evidence indicated that two languages were used “to highlight that the product was imported from France”) (citing Universal Package).

Comparing the marks “as is,” the TTAB concluded that “[j]ust as consumers would not associate the source of canned fruits and vegetables sold in supermarkets with the source of restaurant services, consumers will be unlikely to assume that the source of the HEROES COTIDIANOS television series is also the source of EVERYDAY HEROES music and live musical performances.”

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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