Dunville Peat and Herbal Products Limited

Trademark Trial and Appeal Board

Mar 24, 2014

No. 79111854 (T.T.A.B. Mar. 24, 2014)

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
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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.
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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

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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

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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

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“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).
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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

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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.,
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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

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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.
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reversed on this basis alone. Accordingly, there is no need to
reach the issue of mere descriptiveness.
Decision: The refusal to register is reversed.