Dunville Peat and Herbal Products LimitedDownload PDFTrademark Trial and Appeal BoardMar 24, 2014No. 79111854 (T.T.A.B. Mar. 24, 2014) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: 3/24/2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ________ In re Dunville Peat and Herbal Products Limited ________ Serial No. 79111854 _______ John Alumit of Alumit LP for Dunville Peat and Herbal Products Limited. Kristina Morris, Trademark Examining Attorney, Law Office 116 (Michael W. Baird, Managing Attorney). _______ Before Quinn, Ritchie and Greenbaum, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Danville Peat and Herbal Products (“applicant”), an “incorporated Irish company,” filed, on May 3, 2012, an application for extension of protection of an international registration under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a) (Madrid Protocol), to register the mark ÓGRA (in standard characters) for “hygienic and beauty care for human beings” (in International Class 44).1 The original application 1 Application Serial No. 79111854, based on International Registration No. 1113323, issued September 30, 2011. Serial No. 79111854 2 indicates that the applied-for mark, when translated to English, means “youth/young people.” The trademark examining attorney refused registration under Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on the ground that applicant’s mark, when used in connection with applicant’s services, is merely descriptive thereof.2 When the refusal to register was made final, applicant requested reconsideration. When the request for reconsideration was denied, applicant appealed. The examining attorney maintains that Irish is a modern language, that an American purchaser who speaks Irish is likely to stop and translate the mark into English, that the Irish word “ógra” is translated as “youths” or “young people,” and that the mark ÓGRA is merely descriptive of the intended users of applicant’s services, namely young people. In support of the refusal, the examining attorney introduced an Irish dictionary entry, and excerpts from third-party websites, some of which show that certain purveyors market their hygienic and beauty care services to young consumers. Applicant argues that its services do not target youths or young people as prospective consumers; rather, the age profile of applicant’s prime marketing target comprises females in the 2 The examining attorney also issued an alternative refusal that the proposed mark is deceptively misdescriptive. In her brief (p. 3, n.1), the examining attorney withdrew this alternative refusal. Serial No. 79111854 3 age group of 25 to 40. Applicant contends that its mark “is suggestive of a desired result, which is to rejuvenate skin so as to make prospective consumers appear younger.” (Brief, p. 7). Applicant also states that it has obtained trademark registrations for its mark in Ireland and the United Kingdom. In urging that the refusal be reversed, applicant submitted summaries using the Google search engine, search results using the USPTO’s Trademark Electronic Search System (“TESS”) database, copies of third-party registrations and excerpts of third-party websites, as well as its own website and advertisements. We first turn our attention to the issue of whether applicant’s mark qualifies as a “foreign equivalent.” It is the examining attorney’s burden to establish the prima facie case in support of the refusal of registration. The “doctrine of foreign equivalents” provides that foreign words from common, modern languages be translated into English to determine, among other issues, mere descriptiveness. In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006). The United States is a country of immigrants, and many citizens are bilingual, speaking both English and a foreign language. In re Peregrina Limited, 86 USPQ2d 1645 (TTAB 2008). Under the doctrine of foreign equivalents, a foreign word (from a modern language familiar to an appreciable segment of American consumers) and the English Serial No. 79111854 4 equivalent may be held to be merely descriptive. See In re Tokutake Indus. Co., 87 USPQ2d 1697 (TTAB 2008) (AYUMI and its Japanese-character equivalent held merely descriptive for footwear where the evidence indicated that the primary meaning of applicant’s mark is “walking”); In re Geo. A. Hormel & Co., 227 USPQ2d 813 (TTAB 1985) (SAPORITO, an Italian word meaning “tasty,” held merely descriptive because it describes a desirable characteristic of applicant’s dry sausage). Whether an examining attorney should apply the doctrine of foreign equivalents turns upon the significance of the foreign mark to the relevant purchasers, which is based on an analysis of the evidence of record. The doctrine may be applied to words or terms from common, modern languages, which encompasses all but dead, obscure, or unusual languages; it is generally not necessary to translate words from dead or obscure languages. Palm Bay Import, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). 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 it is likely that “the ordinary American purchaser would ‘stop and translate’ [the term] into its English equivalent.” Id., quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976). See generally TMEP § 1209.03(g) (8th ed. Oct. 2013). Serial No. 79111854 5 “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 Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1696, 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). The “ordinary American purchaser” includes “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009). Professor McCarthy’s view is that “[a] rigid, unthinking application of the ‘doctrine’ of foreign equivalents can result in a finding quite out of phase with the reality of customer perception.” Simply stated, Professor McCarthy’s opinion is that the “doctrine” should not be transformed into a mechanical and rigid rule. J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §§ 11:35; 23:36; and 23:37 (4th ed. 2014). “Irish” is defined as “another name for Irish Gaelic”; “Irish Gaelic” means “the Gaelic language of the Celts of Ireland, now spoken mainly along the west coast, an official language of the Republic of Ireland since 1921.” (collinsdictionary.com). Serial No. 79111854 6 The word “ógra” is an Irish word meaning “young people; youths.” (irishionary.com).3 There is no dispute regarding this meaning of the Irish word “ógra” when translated to English. The dictionary evidence shows that the English translation is unambiguously exact and direct, with no other relevant connotations or variations in meaning. Applicant does not contend to the contrary and, in fact, offered the same translation in its application. With respect to whether Irish is a common, modern language, Section 1207.01(b)(vi)(B) of the Trademark Manual of Examining Procedure (“TMEP”) offers the following guidance: The doctrine applies to words or terms from common, modern languages, which encompasses all but dead, obscure, or unusual languages. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Thus, an examining attorney should provide evidence to show that the foreign language is a common, modern language. The type of evidence will vary depending on the particular facts of the case but, if available, the examining attorney should provide evidence of the percentage or number 3 Irishionary is a self-described “Collaborative Irish Dictionary.” We recognize the potential for uncertainty in an online dictionary definition and therefore, in considering its probative value, look to whether an opportunity to rebut the evidence was afforded. Applicant had the opportunity in this case to rebut this dictionary definition by submitting other definitions that may call into question the accuracy of this particular definition. Applicant did not rebut this evidence with any alternative meanings, but rather it agreed with the translation. Thus, we have considered this evidence. See In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2062 n.3 (TTAB 2013). Serial No. 79111854 7 of United States consumers who speak the language in question. For example: Census evidence provided by applicant, showing that only 0.6% of the American population speak French “very well” or “well,” was used by the Board against the applicant to find that French is a commonly spoken language and that, of the foreign languages with the greatest number of speakers in the United States, French was second only to Spanish. In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006). Evidence showing that 706,000 Russian- speakers live in the United States was persuasive evidence to establish that a “significant portion of consumers” would understand the English meaning of the Russian mark for Russian vodka. In re Joint Stock Co. “Baik,” 80 USPQ2d 1305, 1310 (TTAB 2006). Census evidence identifying the number of people who speak various foreign languages in the United States can be found at http://www.census.gov/hhes/socdemo/language. If such evidence is unavailable or unpersuasive, the examining attorney may instead provide other evidence that the language in question is a common, modern language by establishing, for example, that the foreign country where the language is spoken is a prominent trading partner of the United States or that the foreign language is spoken by a sizeable world population. Such evidence may be obtained from the USPTO’s Translations Branch, as well as the Internet, LexisNexis®, and any other relevant electronic or print resources. If evidence shows that the language at issue is highly obscure or a dead language, the doctrine will generally not be applied. See Palm Bay Imps., 396 F.3d at 1377, 73 USPQ2d 1689, 1696; cf. In re Spirits Int’l, N.V., Serial No. 79111854 8 563 F.3d 1347, 1351, 90 USPQ2d 1489, 1491 (Fed. Cir. 2009) (indicating that the doctrine of foreign equivalents does not require that terms from dead or obscure languages be literally translated for the purpose of determining descriptiveness). The determination of whether a language is “dead” is made on a case-by-case basis, based upon the meaning the word or term would have to the relevant purchasing public. For example, Latin is generally considered a dead language. However, if evidence shows that a Latin term is still in use by the relevant purchasing public (i.e., if the term appears in current dictionaries or news articles), then this Latin term would not be considered dead. The same analysis is applied to other words or terms from uncommon or obscure languages. The evidentiary record on this point is very sparse and of little probative value: a retail website located in the United States that offers “Irish (Gaelic) language learning materials (a collection of Irish language courses, grammars, dictionaries, and other books about the Irish language)” (omniglot.com); and a website regarding learning the Irish language: Irish, or “Irish Gaelic” is the national and first official language of Ireland, as well as one of the official languages of the European Union. Although everyone in Ireland speaks English, there are regions known as the Gaeltacht that use Irish as the main language of communication, both in businesses and in families. When we say Irish (the language) we don’t mean our accent in English, we mean a language on a completely different branch of Serial No. 79111854 9 the European language family tree. (fluentin3months.com) The examining attorney’s evidence, consisting of excerpts from two websites, falls short of establishing that any number of ordinary American purchasers is knowledgeable in the Irish language, that is, the number of such purchasers who would stop and translate the Irish word into its English equivalent. Contrary to the TMEP guidance and the examples set forth therein, the current record is devoid of any evidence showing the following: the percentage or number of United States consumers who speak Irish; the degree to which Ireland is a prominent trading partner of the United States; or that Irish is spoken by a sizeable world population. The record does not even disclose how many people speak Irish in Ireland (as opposed to English),4 let alone in the United States. In sum, although Irish may qualify, in reality, as a “common, modern foreign language,” the examining attorney has failed to introduce the type of probative evidence upon which we could base such a finding. In view of the above, we decline to apply the doctrine of foreign equivalents in this case, and the refusal must be 4 The examining attorney’s evidence referenced above indicates only that Irish is spoken mainly along the west coast of Ireland, in regions known as Gaeltacht. Serial No. 79111854 10 reversed on this basis alone. Accordingly, there is no need to reach the issue of mere descriptiveness. Decision: The refusal to register is reversed. Copy with citationCopy as parenthetical citation