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 In re Shanghai Leather, Inc., Serial No. 77846384 (December 12, 2011) [not precedential].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.