TMEP 1207.01(b)(vi)(A): Background

October 2017 Edition of the TMEP

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1207.01(b)(vi)(A)    Background

With respect to likelihood of confusion, "[i]t is well established that foreign words or terms are not entitled to be registered if the English language equivalent has been previously used on or registered for products which might reasonably be assumed to come from the same source." Mary Kay Cosmetics, Inc. v. Dorian Fragrances, Ltd., 180 USPQ 406, 407 (TTAB 1973).

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 the "ordinary American purchaser" would "stop and translate" the foreign wording in a mark into its English equivalent. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005) (reversing holding of likelihood of confusion where the marks were VEUVE ROYALE (the French equivalent of "Royal Widow") and THE WIDOW, deeming it improbable that American purchasers would stop and translate "VEUVE" into "widow"). see In re Aquamar, Inc., 115 USPQ2d 1122, 1127 (TTAB 2015) (applying foreign equivalents doctrine after finding that Spanish is a common language in the U.S. and that ordinary purchasers would stop and translate mark MARAZUL into English). 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, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009).

With respect to the likelihood of confusion determination, the doctrine has been applied generally in the situation where the wording in one mark is entirely in English and the wording in the other mark or marks is entirely in a foreign language. See, e.g., 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). This is the most common scenario in the case law.

The Board, however, has applied the doctrine where the wording in both marks being compared is in the same foreign language. See In re Lar Mor Int’l, Inc., 221 USPQ 180, 181-83 (TTAB 1983) (noting that "[i]t seems to us that the fact that both marks may be comprised of foreign words should not mean that we can disregard their meanings" and translating the marks BIEN JOLIE and TRES JOLIE to compare their meanings, but concluding that confusion was not likely, despite their substantially similar meanings, because of, inter alia, the highly laudatory nature of the registered mark, BIEN JOLIE). In the Lar Mor case, the marks in question consisted of common French terms and, thus, it was perhaps more likely that the ordinary American purchaser would stop and translate such terms. Cf. Palm Bay Imps., 396 F.3d at 1377, 73 USPQ2d at 1692, 1696 (noting that the doctrine of foreign equivalents will not be applied when it is unlikely that an American buyer will translate a foreign mark and agreeing with TTAB’s determination that purchasers were unlikely to translate applicant’s French mark VEUVE ROYALE and opposer’s French marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT, but concluding that confusion was likely because, inter alia, the presence of the arbitrary term "VEUVE" as the first word in both parties’ marks renders the marks similar); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1756 (TTAB 2009) (determining that the relevant circumstances of the case did not warrant application of the doctrine where the parties’ respective marks were the Spanish terms PALOMITA and PALOMA, but concluding that confusion was likely because, inter alia, the marks were substantially similar in appearance, pronunciation, meaning, and commercial impression).

The Board has also applied the doctrine in an inter partes case where the wording in one of the marks was in a foreign language and the wording in the other mark or marks was in a different foreign language. See Miguel Torres S.A. v. Casa Vinicola Gerardo Cesari S.R.L., 49 USPQ2d 2018 (TTAB 1998) (applying the doctrine and concluding that confusion was likely where the applicant’s mark featured the Italian wording DUE TORRI, meaning "two towers," and the opposer’s marks featured the Spanish wording TORRES and TRES TORRES, meaning "towers" and "three towers" respectively), vacated and remanded on other grounds, 230 F.3d 1372 (Fed. Cir. 1999) (unpublished table decision). However, the Board has stated that, in general, it does not apply the doctrine where both marks are non-English words from two different foreign languages. Brown Shoe Co., 90 USPQ2d at 1756; see also Safeway Stores, Inc. v. Bel Canto Fancy Foods, Ltd., 5 USPQ2d 1980, 1982 (TTAB 1987) ("[T]his Board does not think it proper to take the French expression ‘bel air’ and the Italian expression ‘bel aria’ and then convert both into English and compare the English translations to determine whether there is similarity as to connotation...."). One reason for not applying the doctrine where the marks are in different foreign languages is that it is less likely that the ordinary American purchaser would be fluent in two or more foreign languages. In Miguel Torres, the Board noted that the relevant marks were of such a nature that it was unnecessary for those encountering the relevant marks to be fluent in both Spanish and Italian to understand the connotations of the marks, because, for instance, a purchaser who is fluent in Spanish and familiar with meaning of the mark TORRES may be able to discern the meaning of a mark containing the Italian wording DUE TORRI and a design of two towers. 49 USPQ2d at 2021. In any case, the doctrine may not be as relevant, and certainly not the sole determinative factor, in a situation such as the Miguel Torres case where the marks are also similar in other respects.

The Board has yet to apply the doctrine in a published decision where the wording in one or more of the marks being compared consists of a combination of English and foreign-language words or terms. In such a case, the issue would likely remain whether the ordinary American purchaser would stop and translate these combined-language marks. The sufficiency of the translation evidence, the nature of the combined foreign and English wording (i.e., whether the wording is arbitrary, suggestive, generic, etc.), and any other relevant facts and evidence should be considered in these cases.