March 08

Use a Foreign Word In Your Beverage Name? Better Make Sure It’s English Equivalent Isn’t Already Trademarked and Vice Versa

If a = b, then b = a.  In math, it’s called the “symmetric property of equality.”  There’s a similar principle in trademark law called the “doctrine of equivalents.”  Foreign words have protection from their english equivalents, and english words have protection from their foreign equivalents.  It applies to words from “common, modern languages.”  Italian is one of those languages. That’s about all you need to know to evaluate this dispute between “100 Percent Wine” and “Cento Per Cento” wine.

Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine genericness, descriptiveness, as well as similarity of connotation in order to ascertain confusing similarity with English word marks.” Palm Bay, 73 USPQ2d at 1696. The doctrine is applicable when it is likely that an ordinary American purchaser would “stop and translate” the foreign term into its English equivalent. Id. “The ‘ordinary American purchaser’ in this context refers to the ordinary American purchaser who is knowledgeable in the foreign language.” In re Thomas, 79 USPQ2d at 1024. Generally, the doctrine is applied when the English translation is a literal and exact translation of the foreign wording. See In re Thomas, 79 USPQ2d at 1021; In re Am. Safety Razor Co., 2 USPQ2d 1459, 1460 (TTAB 1987) (finding BUENOS DIAS for soap confusingly similar to GOOD MORNING for shaving cream); In re Ithaca Industries, Inc., 230 USPQ 702, 703 (TTAB 1986) (holding applicant’s mark LUPO for men’s and boys’ underwear likely to be confused with the cited registration for WOLF and design for various clothing items, where LUPO is the Italian equivalent of the English word “wolf”).

You can read the opinion of the Trademark Trial and Appeal Board over this attempt to register the english equivalent “100 Percent Wine” of an already existing mark “Cento Per Cento” for wine (not precedential) here.  Big Heart Wines had their application for “100 Percent Wine” refused based on the already existing “Cento Per Cento” mark for wine.  Big Heart appealed.  The board applied the doctrine of equivalents in assessing the likelihood of confusion under the duPont factors, you get someone trying to register 100 Percent for wine when “hundred percent” (cento per cento) already is registered for wine… and that’s not going to work.  The applicant quibbled in its brief over the notion from the case law that an average American would stop and translate the foreign term, but the Board rejected this argument finding as a matter of black letter law that the doctrine automatically applies to “words from common, modern languages.” In re La Peregrina Ltd., 86 USPQ2d 1645, 1647–48 (TTAB 2008) (citing Palm Bay, 73 USPQ2d at 1696).  And that Italian is one of those languages.

The Board acknowledged that the translation alone was ground for refusal, but went on to analyze whether there was enough similarity between the two pronunciations to find confusion – “per cento” sounding enough like “percent.”  Guess what; it found there was enough similarity, even though it found that 100 and Cento were phonetic differences.

The doctrine of equivalents is important in creating and protecting your brand’s image. You need to remember to pay attention to foreign equivalents in searching, clearing and maintaining awareness of competing products.