"Foreign Equivalents" Article from The Trademark Reporter
Elizabeth J. Rest provides her analysis of the doctrine of foreign equivalents in "Lost in Translation: A Critical Examination of Conflicting Decisions Applying the Doctrine of Foreign Equivalents," 96 Trademark Reporter 1211 (November-December 2006).
Ms. Rest asserts that "many cases ... have reached incorrect decisions" not as the result of "sloppiness by the courts, or of the courts abusing their discretion," but rather because of the "lack of well-reasoned precedent set by the U.S. legislature or the U.S. Supreme Court." [TTABlog comment: I didn't know the "U.S. legislature" set "precedent."] She proposes "more clearly defined principles" that may be relied upon when assessing a foreign-word mark.
For purposes of the TTAB, the guiding precedent is Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689 (Fed. Cir. 2005). There, the CAFC ruled that "it is improbable that the average American purchaser would translate VEUVE into the English word "widow." The Board subsequently attempted to clarify its view of the doctrine in In re Thomas, Serial No. 78334625 (April 24, 2006), holding that MARCHE NOIR would be translated into English by American consumers familiar with the French language. [TTABlog posting here]. In my reading of these two cases, there remains a lack of clarity regarding the application of the doctrine, particularly regarding how to define the "average American purchaser."
TTABlog notes: Turning back to the article, I must say that I was a bit shaken at the outset by the author's assertion on the first page that the CAFC stated in Palm Bay that the TTAB is "inconsistent in its application of the doctrine of foreign equivalents." That may be true, but it is not what the CAFC said. It said that the Board had been inconsistent in that very case, not in general. See TTABlog posting here.]
Finally, a thank you to The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2006 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 96 TMR 1211 (November-December 2006).