Thursday, June 05, 2008

Precedential No. 29: TTAB Affirms 2(e)(1) Refusal of Japanese Term Meaning "Walking" for Footwear

During prosecution, Applicant Tokutake shot itself in the footwear when it provided an English translation of its Japanese-language mark shown immediately below: it translated the mark as "walking, a step." Because its identified goods were footwear, Examining Attorney Laura Gorman Kovalsky not surprisingly issued a Section 2(e)(1) mere descriptiveness refusal. The Board affirmed. In re Tokutake Industry Co., Ltd., 87 USPQ2d 1697 (TTAB 2008) [Precedential].

Applicant acknowledged that both the foreign characters and the English lettering "represent the same term." Because the word "walking" is at least merely descriptive of footwear, the Board next considered "whether the doctrine of foreign equivalents applies in this case."

Under that doctrine, foreign words from common languages are translated into English to determine descriptiveness. The doctrine is to be applied, however, only when the ordinary American purchaser would "stop and translate" the foreign term into its English equivalent. The "ordinary American purchaser" refers to one who is knowledgeable in both English and the pertinent foreign language. Here, the Board found that Japanese is a modern language spoken by hundreds of thousands of people in this country; moreover, there was no evidence that the ordinary purchaser would not stop and translate the subject mark.

As to the meaning of the mark, the Examining Attorney provided an entry from, which translates the Japanese term "ayumi" as "walking." Applicant argued that this website is "imprecise," and that "it is common understanding among the Japanese that the Japanese translation of 'walking' is not 'ayumi.'" Applicant further argued that "ayumi" has multiple meanings, and that the meaning relied upon by the PTO was "taken out of context."

The Board was not impressed, noting that "[a]ttorney argument is no substitute for evidence." There was no proof regarding the "common understanding among the Japanese," nor that the PTO's meaning was taken out of context. Indeed, Applicant itself offered "walking" as the translation of its mark. In short, the Board declared:

"Once an applicant provides a translation of a foreign term that is a generic or descriptive term for the goods in English, it has a more difficult burden to then show that the term is not merely descriptive or generic. An applicant is not likely to succeed in this challenge when it relies primarily on the argument of its counsel."

Applicant's assertion that the term AYUMI has multiple meanings in Japanese was of little import. The Examining Attorney pointed to a number of English terms that have multiple meanings but nevertheless may be "generic for more than one item." Applicant provided "no admissible evidence to explain why Japanese speakers would not translate its mark as originally specified."

Concluding that AYUMI would immediately describe the Applicant's goods, the Board affirmed the Section 2(e)(1) refusal.

Text Copyright John L. Welch 2008.


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