TTAB Reverses 2(d) Refusal of "DARK HORSE" Over Japanese Character Marks, All for Distilled Spirits

The Board reversed Section 2(d) refusals of the marks DARK HORSE for distilled spirits and DARK HORSE DISTILLERY for "spirits distillery services," finding them not likely to cause confusion with four registered marks owned by the same entity, one for the mark KUROUMA in standard character form, two for the non-latin (hiragana) character marks shown to the right, and the fourth for the word-and-design mark shown immediately below. The Board deemed the involved goods and services to be identical or related, but it rejected the PTO's application of the doctrine of foreign equivalents and concluded that the marks differ in sound, appearance, and commercial impression. In re Dark Horse Distillery, LLC, Serial Nos. 85104448 and 85125674 (September 30, 2012) [not precedential].

The Examining Attorney relied on the doctrine of foreign equivalents in contending that the marks are equivalent in meaning and connotation. He urged that the Japanese-character marks transliterate to "Kurouma," which in turn translates to "dark horse" in English. For the latter proposition, the Examining Attorney relied solely on Registrant's statement in the cited registrations.

Hold your horses, said the Board. It agreed with Applicant's contention that the doctrine of foreign equivalents does not apply because there is no evidence that the "single literal and direct" translation of KUROUMA or of the Japanese characters is "dark horse."

If evidence shows that the English translation is unambiguously literal and direct, with no other relevant connotations or variations in meaning, the doctrine is applicable. *** However, where the evidence shows that the English translation is not exact, literal or direct, the doctrine of foreign equivalents has generally not been applied to find the marks confusingly similar.

Applicant established that other relevant translations of KUROUMA exist, such as black horse, black animal, evil horse, or evil animal. The Examining Attorney's reliance on the translation statements in the cited registrations was improper, because the statements are "not proof of the truth of the matter asserted." The Board noted that the translation statement "is not included in the presumptions listed under Section 7(b) of the Act."

And so the Board reversed the refusals.

Text Copyright John L. Welch 2012.