The U.S. Trademark Trials and Appeals Board recently decided that an application for 100% WINE conflicted with an existing U.S. registration for the mark, CENT POR CENTO, also for wine. Are these two trademarks really confusingly similar? Does LOBO BLANCO for beer conflict with WHITE WOLF for distilled spirits?
Under the trademark law “doctrine of foreign equivalents,” these pairs and others present trademark conflicts.
The doctrine of foreign equivalents is a trademark law rule which requires that foreign words be translated in determining whether they are eligible for registration as trademarks, or are confusingly similar with existing marks. The doctrine applies when an ordinary American consumer would pause and translate the foreign wording in a mark. Thus, here is a threshold issue regarding the significance of the foreign mark to the relevant purchasers. The doctrine accordingly applies only to words or terms from common, modern languages.
Since the test is whether a relevant, ordinary American consumer would pause and translate the wording, the doctrine is most relevant when the English translation is literal and direct, with no contradictory evidence of other relevant meanings, or shades of meaning. Recall that the focus is on relevant purchasers. While fewer Americans may speak Russian than some other major languages, if the trademark pertains to vodka, a more significant portion of American consumers of vodka are likely to pause and translate a relevant term.
The requirement that a translation be considered is not limited to the question of whether there is a likelihood of confusion. Another consideration, made after translation, is whether a term is being used in a manner that is descriptive or generic.
The similarity of two trademarks after translation does not, however, automatically indicate that the senior mark will prevail. The other aspects of confusing similarity must then be considered. For example, the marks may be somewhat descriptive, and may be used in a crowded field in which a large number of similar trademarks co-exist. In that event, the question is whether there is confusing similarity between the trademarks if they both appeared in English in their original uses. Thus, not every foreign translation of an existing registration will defeat a new application.
The U.S. Patent and Trademark Office (USPTO) also considers alternative meanings, and the commercial setting in which the trademarks are used. The doctrine of foreign equivalents will therefore usually not be applied where the foreign wording has developed an alternate meaning in the relevant marketplace that is different from the translated meaning in English, so long as the evidence shows that the alternate meaning would be understood by the relevant purchasing public.
Accordingly, the French language mark, CORDON BLEU, which translates to mean “blue ribbon,” would not be translated by or have the same significance to an American purchaser because of the adoption of the wording CORDON BLEU into English. Evidence of this, accepted by the USPTO, were mere American dictionary entries indicating that “cordon bleu,” in English, refers to a cook of great skill.
Applying these principles, the Trademark Trials and Appeals Board (TTAB), in a decision made in January, affirmed the Examiner’s refusal of 100 PERCENT WINE for wine. It was blocked by the existing registration of CENTO PER CENTO for wine. The English translation of the Italian term is “100 Percent.” Both marks applied to wine, and they travel through the same channels of trade to the same consumers. Since PERCENT sounds like PER CENTO, the TTAB found that it would be likely to cause confusion among consumers.
The CENTO PER CENTO case is not, however, a unique or isolated case. The proposed trademark, LOBO BLANCO, was refused registration a few years ago for “a Mexican-style lager beer.” That application was refused because of a likelihood of confusion with the registered trademark, WHITE WOLF, which was registered for “distilled spirits.” The English translation of “lobo blanco” is “white wolf.” In light of the directness of the conflict, the doctrine of foreign equivalents barred registration of LOBO BLANCO.
The Trademark Manual of Examining Procedure states that a Trademark Examining Attorney should consider three factors in determining whether to apply the doctrine of foreign equivalents. One is “whether the English translation is unambiguously literal and direct.” The second consideration is “whether the foreign language is a common, modern language and not obscure.” Lastly, it is important to consider “whether the mark has an alternate meaning, or marketplace circumstances or the commercial setting in which the mark is used make translation of the mark more or less likely.” Thus, if the foreign word or term has a direct English language equivalent, then the doctrine is generally applied.
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