TTAB Test: Is SUNRISE for Guitar Picks Confusable With PUKANA LA for Guitars?
The USPTO refused registration of the mark SUNRISE for guitar picks, finding the mark likely to cause confusion with the registered mark PUKANA LA & Design for guitars (shown below). The English translation of the Hawaiian term "pukana la" provided in the registration is "sunshine, sunrise." The examining attorney contended that the marks have the same connotation under the doctrine of foreign equivalents. Applicant argued that the doctrine should not be applied because Hawaiian is not a "common, modern" language. How do you think this came out? In re Christopher A. Fahey, DBA Gravity Guitar Picks, Serial No. 86250337 (April 13, 2015) [not precedential].
Both applicant and the examining attorney argued that the similarity or dissimilarity of the marks was dispositive. As to the doctrine of foreign equivalents, the Board observed:
Under the first du Pont factor, we focus on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Yet, when focusing on the perceptions of ordinary American consumers who are multilingual, we are tasked with calibrating a bewildering balance – namely weighing (1) the closeness with which the non-English-language term denotes the putative equivalent term in the English-language, against (2) the quite obvious and inevitable differences of sight and sound involved in comparison.
The Board found that Hawaiian is clearly a modern language. Despite colonial attempts to eradicate the language, Hawaiian remains viable and important to the Hawaiian people. It cannot be equated with a dead language like Ancient Greek.
However, the doctrine of equivalents will not be applied when the language is obscure - when it is "not spoken by an appreciable number of individuals sufficient to sustain a finding of a likelihood of
confusion." The Board agreed with applicant that Hawaiian does not fit the bill:
The record herein shows that approximately eighteen thousand Hawaiian language speakers live in the state of Hawaii and seven thousand more Hawaiian speakers live elsewhere in the United States. Moreover, there is substantially no population of Hawaiian speakers elsewhere around the globe.
Therefore, since the doctrine of equivalents is not applicable, the Board found the marks to be "totally dissimilar" and it reversed the refusal to register.
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TTABlog note: How do you say "congratulations" in Hawaiian to FOB Paul Reidl for this victory? The entire opinion is three-pages long but right on target.
Text Copyright John L. Welch 2015.