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Archived updates for Wednesday, February 20, 2008

Ordinary American Purchasers Include Those Knowledgeable in English and Foreign Language

In In re Spirits International N.V., Serial No. 74382759 (February 11, 2008) the U.S. Trademark Trial and Appeal Board clarified that "in determining whether a mark in a
foreign language is deceptive as to geographic origin, the question is whether an appreciable number of consumers for the goods or services at issue will be deceived. At least one
significant group of 'ordinary American purchasers' is the purchaser who is knowledgeable in English as well as the pertinent foreign language."

With the above principles in mind, we presume that a word in one of the common, modern languages of the world will be spoken or understood by an appreciable number of U.S. consumers for the product or service at issue. . . .

As for the present case, there is no question that Russian is a common, modern language. . . .

The term MOSKOVSKAYA and its translation, "of or from Moscow," are essentially equivalent in meaning. . . .

There is nothing in the record to indicate the mark would not be translated because of marketplace circumstances or the commercial setting in which the mark is used. . . .

There is also no question that the translated meaning of MOSKOVSKAYA is not obscure. . . .

Thus, applying the doctrine of foreign equivalents in this case, we find that the primary meaning of MOSKOVSKAYA, meaning "of or from Moscow," is geographic. The common, adjectival form of the term does not detract from the geographic meaning of the mark as a whole. See In re Joint-Stock Co. "Baik," supra (BAIKALSKAYA, meaning "from Baikal" in English, is primarilygeographically descriptive of vodka from that area); and In re Jacks Hi-Grade Foods, Inc., 226 USPQ 1028 (TTAB 1985) (NEAPOLITAN held primarily geographically deceptively misdescriptive as applied to sausage emanating from the United States). Indeed,
the adjectival meaning, "from Moscow" actually emphasizes the geographical significance.

. . . Applicant argues that the Board's decision in Thomas is inconsistent with the holding in Palm Bay "to the extent that the Board interpreted the Court's reference to the 'ordinary American purchaser' to mean 'the ordinary American purchaser who is knowledgeable in the foreign language,'" and that the Thomas case along with the authorities cited for this proposition "are no longer good law." (Brief, p. 23, n. 12.) Applicant contends that the Board's interpretation in Thomas "simply can not be
squared" with the holding in Palm Bay which, according to applicant, found that "it was 'error' for the Board to have based its decision on the fact that 'an appreciable number of purchasers in the U. S. speak and/or understand French. . . '"

We disagree with applicant's interpretation of the Palm Bay case. Applicant has improperly taken the Court's references to the "ordinary American purchaser" out of context and has missed the import of the decision. . . .

Contrary to applicant's contention, the Court did not hold that it was "error" for the Board to have based its decision on the fact that "an appreciable number of purchasers in the U.S. speak and/or understand French," or that the Board erred in defining this "appreciable number of purchasers" as the relevant group for analysis under the doctrine of foreign equivalents. Rather, the Board's error was in finding that such purchasers "will translate" applicant's VEUVE ROYALE mark into English.8 In view of the Board's own finding, on the one hand, that purchasers would be "unlikely to translate" applicant's VEUVE ROYALE mark and two of opposer's three marks, and its contradictory finding, when comparing applicant's mark with opposer's third mark (THE WIDOW), that purchasers would translate applicant's mark, the Court merely decided which of the contradictory findings was correct and which was in error. Thus, when the Court agreed with the Board that the average American purchaser was unlikely to translate the VEUVE ROYALE mark and disagreed with the Board's contradictory finding, it did not address the definition of the "ordinary American purchaser."

FOOTNOTE 8 This view of Palm Bay is supported by Sutter Home Winery, Inc. v.
Madrona Vineyards, L.P., 2005 WL 701599 (N.D. Cal. 2005) (unpublished). The Court observed that reliance on the doctrine of foreign equivalents "is merely an application of the general rule that two marks are confusingly similar only when their use 'would cause confusion of any appreciable number of ordinary prudent purchasers as to source of the goods' [citation omitted]." Continuing, the Court noted, citing Palm Bay ("396 F.3d at 1377"), that this inquiry "in turn depends on whether
an 'appreciable number of purchasers in the United States,' who courts presume to speak English as well as the pertinent foreign language, will understand the meaning of the foreign word mark at issue and translate that mark into its English equivalent."

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