Tuesday, January 10, 2012

WYHA? Applying Doctrine of Foreign Equivalents, TTAB Finds LA PELLE Merely Descriptive of Leather for Furniture

Rejecting Applicant's "double entendre" argument, the Board affirmed a Section 2(e)(1) refusal to register the mark LAPELLE, finding it merely descriptive of "leather for furniture." Examining Attorney Ronald E. DelGizzi relied on dictionary evidence showing that, in Italian, "la" means "the" and "pelle" means leather." Would you have appealed? In re Shanghai Leather, Inc., Serial No. 77846384 (December 12, 2011) [not precedential].

The Board pointed out that the doctrine of equivalents "generally requires considering the meaning of a mark in a non-English language to the speakers of that language," provided that the language is modern and not dead or obscure. Even so, the doctrine should be applied only when it is likely that the ordinary American purchaser would stop and translate the term into its English equivalent. The "ordinary American purchaser" includes those proficient in a non-English language "who would ordinarily be expected to translate words into English."

Applicant argued that, under the CAFC's decision in In re Spirits International, the PTO must show that the number of people who speak Italian constitute a "substantial portion" of the intended audience. However, the Board pointed out, Spirits involved a refusal under Section 2(e)(3) on the ground that the mark was primarily geographically deceptively misdescriptive. Under that provision, it must be shown that the misdescription is material to the purchasing decision and that "an appreciable number of consumers for the goods and services will be deceived." That is not a test for mere descriptiveness.

The essential question before us in this application is whether Italian speakers would translate the mark or take the mark at face value; not whether Italian speakers would find the mark deceptive.

The Board found that Italian speakers would understand LA PELLE to mean "the leather," and therefore it is merely descriptive of Applicant's goods. The compression of the words into a single term does not avoid this finding.

Finally, Applicant played the "double entendre" card, arguing that LAPELLE also means a part of a sport coat. The Board, however, found no double meaning. The mark must be considered not in the abstract, but in the context of the identified goods, and there was no reason to think that an Italian speaker who recognized LAPELLE as meaning "the leather" would associate the mark with a lapel of a coat. Moreover, the Italian word for "lapel" is "risvolto."

And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2012.


At 1:29 PM, Anonymous Anne Gilson LaLonde said...

I think this was probably correct as it follows In re Spirits. But there's something not quite right here. The amount of people finding a misdescription material have to be *substantial* to find a mark deceptive under Spirits. But the amount of people who are fooled by a misdescription or understand a term to be descriptive can be very small indeed (i.e., the number of Italian or Russian speakers in the U.S.) for the registration to be rejected on those grounds. Yes, deceptive marks can never be registered, but you still have to show secondary meaning with descriptive and misdescriptive terms.

At 10:05 AM, Blogger Robert said...

While the Board may have correctly applied In re Spirits, I think this decision exemplifies the unsupported speculation that inheres in the application of the doctrine of foreign equivalents. The mark is a single word, LAPELLE, which has no meaning in Italian. Meanwhile, LA PELLE means "the leather" in Italian. Fair enough, but why are Italian speakers more likely to view LAPELLE as a compound word instead of a single meaningless word? We don't know because there is no evidence supporting the former interpretation; it's an unquestioned assumption, oddly accepted by everyone even apparently the applicant.

Moreover, do we even know if the average Italian speaker would even translate LA PELLE as "the leather"? PELLE has a range of meanings including "hide, skin, leather, pelt, casing, peel" depending on context. There is little evidence on which meaning is preferred or more common. Perhaps a person familiar with Italian would select a more suggestive meaning.

This is why I find the doctrine so maddening. Its application typically requires all involved to make assumptions for which they are usually not equipped to make. Yet the goal is to prevent likely confusion in a fraction of a tiny group of consumers.

At 11:08 AM, Anonymous Anonymous said...

@Robert: I am an Italian (born and raised) IP attorney (also licensed in the US) I think that the Board got it right; true that "pelle" means also "skin" (but not "pelt" or anything else) but I do not think a more suggestive could ever be found in this case, this is clearly a mere descriptive mark (even if spelled out in one single word LAPELLE)for the goods at issue. - Francesca

At 10:43 AM, Blogger Robert said...

@ Anonymous (Francesca): I do not necessarily disagree with the result. Instead I disagree with how the doctrine is applied.

For example, you are a native Italian speaker, and you say that "pelle" does not mean "pelt." I don't speak Italian, and so I am not in position to dispute you. But the Board cites a definition of "pelle" that includes "hide," "pelt," "felt," or "rind." Similarly my translation came from www.wordreference.com which is based on the Concise Oxford Paravia Italian Dictionary.

PTO policy is that a translation must be exact. But that is largely a fiction. Few persons are in position to really assess if a translation is exact. Instead they compare the translation with the goods, and if there is a translation that implicates the goods, they apply that sense.

Moreover, the policy depends on the premise that a person familiar with the language (what does that even mean? native speaker? fluent? able to read a menu or ask for the toilet?) is familiar the language's nuances and would translate in accordance. This is a fiction. The well-educated and eloquent proprietor of this blog was unfamiliar with the idiomatic meaning of "hair of the dog" referring to a hangover cure containing alcohol. Similarly I had a translator from the Translation Branch all but accuse a Russian applicant of dishonesty when the applicant declared he was unfamiliar with an obscure Russian slang term, which was supported by numerous citations to Russian-English dictionaries with different meanings for the same term.

That is ultimately a problem with the doctrine of foreign equivalents. It requires non-native speakers to make unsupported assumptions to apply it. Now perhaps in most cases it reaches the right result. But it belies the PTO policy that translations should be exact and provides little guidance as to when and how it is applied.

Moreover, I wonder if it is really necessary to apply such a confusing doctrine to protect a relatively small number of consumers. While there is no set threshold for likelihood of confusion, is confusion is really likely if a small number of potential consumers would be affected? (Other than Spanish I don't think any foreign language is spoken by 10% or more of U.S. consumers.)

At 1:50 PM, Anonymous Anonymous said...

Robert made the point about avoiding confusion of a small segment of the population. In fact he LAPELLE case was not about avoiding confusion, but about whether the mark is descriptive or not. The policy behind descriptiveness refusals is that you should not be able to tie up the language by providing exclusive rights to descriptive terms.

In the circumstance of the facts at hand, the issue is whether the freedom to talk about leather furniture to Italians in the United States should be burdened with a trademark registration. Seems like one legal fiction stacked on another until the house collapses.

At 4:30 PM, Anonymous Anonymous said...

@ Robert: I am in agreement on the many practical problems in applying the doctrine of foreign equivalents. I just gave my two cents as native Italian speaker and IP professional on what struck me as a clear-cut case of purely descriptive mark. On a side note , I also checked the ‘wordreferece.com’ translations and I confirm that Italian “pelle”, without anything else (not “pellame” or “pelle” + some other words) can only be translated as skin or leather in English - no wonder applying the doctrine becomes so problematic with translations as such which might seem in principle correct but are actually inaccurate - Francesca

At 10:23 AM, Anonymous Mitch Stabbe said...

Assuming that the Board was correct, i.e., that consumers would understand the mark to be THE LEATHER, why was it deemed descriptive and not generic for "leather for furniture"?


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