Wednesday, April 23, 2008

Precedential No. 21: TTAB Finds "LA PEREGRINA" and "THE PILGRIM" Confusingly Similar for Jewelry Per Doctrine of Foreign Equivalents

In yet another case involving the doctrine of foreign equivalents, the Board affirmed a Section 2(d) refusal to register the mark LA PEREGRINA, finding it likely to cause confusion with the registered mark PILGRIM, both for jewelry. Applicant submitted four declarations from bilingual individuals, who averred that they would not translate LA PEREGRINA into PILGRIM, but the Board was unimpressed. In re La Peregrina Limited, 86 USPQ2d 1645 (TTAB 2008) [precedential].

Applicant stated in its application that the English translation of its mark is THE PILGRIM. Dictionary evidence confirmed that translation. Examining Attorney Evelyn Bradley maintained that the average consumer in this country would be likely to translate the foreign term into its English equivalent.

Applicant argued that the doctrine of foreign equivalents does not apply in this case because an American purchaser is unlikely to translate the Spanish mark, but rather "will simply accept it as it is."

The Board observed that the doctrine of foreign equivalents is applied when the ordinary American purchaser would stop and translate the term into its English equivalent. According to In re Thomas, 79 USPQ2d 1021 (TTAB 2006), the "ordinary American purchaser" refers to a purchaser who is "knowledgeable in English as well as the pertinent foreign language."

Notwithstanding Applicant's arguments that "only" 14-15 million individuals in this country are bilingual in English and Spanish, and that Spanish remains highly localized (primarily Texas and California), the Board concluded that, "by any standard, Spanish is spoken and understood by an appreciable number of U.S. consumers who also speak or understand English."

The Board then found "no compelling evidence in the record to establish that the mark would not be translated because of marketplace circumstances or the commercial setting in which the mark is used. [TTABlog note: Compare In re Tia Maria Inc., 188 USPQ 524 (TTAB 1975), in which the Board found it unlikely that a purchaser would translate TIA MARIA into "Aunt Mary" when dining at the TIA MARIA restaurant "surrounded by Mexican decor and Mexican food."]

Four declarations from bilingual individuals, asserting that they would not translate LA PEREGRINA into its English equivalent, were insufficient to rebut the PTO's evidence. Two declarants stated that LA PEREGRINA referred to a famous and unique pearl found in Panama. [TTABlog note: Just for fun, put "LA PEREGRINA" into the GOOGLE brand search box and see what comes up]. The Board, however, found the evidence "simply insufficient" to support a conclusion that "consumers in this country would be aware of the 'La Peregrina' pearl, and therefore that they would view 'La Peregrina' as a name in its own right." The other two declarants merely said, without explanation, that they would not translate the term.

The Board therefore found confusion likely, and sustained the refusal.

TTABlog comment: The Board's rule does makes some sense. If I were bilingual and I saw a product being sold under an English mark ABC and then saw the same product under the Spanish equivalent XYZ, why wouldn't I think that the same producer was simply translating the mark into the language of the two different markets?

What in my view needs clarification is how one comes to the conclusion that a bilingual consumer will not stop and translate a mark. For example, how about LA PEREGRINA for spanish wine? Does the applicant need survey evidence? Would four individual declarations suffice?

Text Copyright John L. Welch 2008.


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