Wednesday, May 27, 2009

Divided TTAB Panel Disagrees over Doctrine of Equivalents, Reverses 2(d) Refusal of "ALLEZ FILLES!" Over "GO GIRL"

Just how and when to apply the doctrine of foreign equivalents continues to cause problems at the TTAB. In the latest contretemps, a Board panel divided on that issue, reversing a Section 2(d) refusal of ALLEZ FILLES! & Design for certain clothing items and related retail services, finding the mark not likely to cause confusion with the registered mark GO GIRL for various clothing items [GIRL disclaimed]. In re Helen Trimarchi and Michael Merr, Serial No. 77222086 (May 14, 2009) [not precedential].

The key issue, of course, was the similarity or dissimilarity of the marks, and particularly of the terms ALLEZ FILLES! And GO GIRL.

The Examining Attorney asserted that GO GIRL is the exact translation of ALLEZ FILLES, based upon a Babelfish translation, Applicant’s own translation of the mark as GO GIRLS!, and an e-mail from the PTO translator stating: “Yes, the translation of ALLEZ FILLES is ‘Go Girls.’”

Applicant contended that the phrase “allez filles!” is not proper French and that a consumer knowledgeable in French would likely interpret “allez filles!” as the proper French phrase – “allez les filles!” –which will be commonly translated as “let[’]s go girls!”, with the verb “aller” connoting a command to “hurry up!” or “come along"
or “get a move on.” On the other hand, “Go Girl” has an “urban” connotation like the “you go girl” phrase made popular by Oprah Winfrey.

Judges Kuhlke and Seeherman found that GO GIRLS is merely the literal translation of ALLEZ FILLES and that ALLEZ FILLES is not the equivalent of the idiomatic phrase "go girls." Moreover, it was not clear to the panel majority that that French speakers would even stop and translate this phrase because it is grammatically incorrect; French speakers may simply “take it as it is.’”

In view of the lack of equivalency based on the nonsensical translation from a grammatically incorrect French phrase and the idiomatic meaning of registrant’s mark, we find that any similarity due to the literal translation does not outweigh the stark differences in sound and appearance and does not create an overall commercial impression that is confusingly similar to GO GIRL. Thus, taking into consideration the vast differences in sound, appearance, and overall commercial impression, and the lack of equivalency in meaning, we find the marks to be dissimilar.

Judge Drost, in dissent, noted that under Palm Bay, the doctrine of foreign equivalents “should be applied only when it is likely that the ordinary American purchaser would stop and translate [the word] into its English equivalent.” He would find that ALLEZ FILLES is “the type of term that prospective purchasers would stop and translate.”

The line between foreign words that consumers would stop and translate is not always clear [you can say that again! - ed.], but, as a general guideline, it should be assumed that people familiar with a foreign language will translate the words in that language unless there is a specific reason for not translating the term, such as the term is the name of another noteworthy object or it has another recognized meaning in the language.

Here, noted Judge Drost, “the mark is composed of two simple French words. The first is the common French word that is a form of the verb 'Go' and the second is the French word for 'Girls,' which can have the same meaning in English.” He maintained that these terms would be understood not only by those who are fluent in French, but also by many with a brief exposure to French. Moreover, based on the significant evidence supporting the PTO’s position, he would find that “a non-de minimis number of purchasers would stop and translate the French terms ALLEZ FILLES into English.” In any case, he failed to see much difference in the meanings of the marks.

Judge Drost would resolve any doubt in favor of the prior registrant.

TTABlog comment: In a final comment, Judge Drost noted that “the result in this case, unless there is a successful opposition, is that the mark GO GIRL and the French words that the registration will translate as GO GIRLS will exist on the register for identical goods.” Should the panel have required that Applicant supply a new translation for ALLEZ FILLES!? Would it make any practical difference if the ALLEZ FILLES! registration issues with the translation “GO GIRLS”? If so, to whom?

If you were the Applicant and were asked to translate “allez filles,” what would you say? That it wouldn't be translated because it’s a grammatically incorrect phrase? Or would you just give the literal translation? If you did the latter, is that necessarily an admission that the doctrine of foreign equivalents should be applied?

Text Copyright John L. Welch 2009.


Post a Comment

<< Home