Wednesday, April 15, 2015

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 In re Christopher A. Fahey, DBA Gravity Guitar Picks, Serial No. 86250337 (April 13, 2015) [not precedential].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.

Read comments and post your comment here

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.


At 11:27 AM, Anonymous Anonymous said...

What a waste of time and money for the Applicant to have to appeal such a poorly reasoned Final Refusal. Congrats to their lawyer Paul Reidl for overcoming what is truly an asinine Refusal.

At 12:18 PM, Anonymous Anonymous said...

What is the cutoff for the number of speakers needed to apply the DFE?

At 12:19 PM, Anonymous Anonymous said...

Admittedly an oversimplification but the Board is saying that there is no LOC because 25k Hawaiian speakers is a tiny number. How do we square that with the surname issues, for instance LEARDI, where the evidence showed 62 people with that surname.

The Board was correct in this SUNRISE decision and similar logic should apply to surname refusals.

At 12:49 PM, Anonymous Anonymous said...

At 1:59 PM, Anonymous Anonymous said...

One more much needed "clarification" on the Doctrine of Foreign Equivalents. Does this clarify it, or how do we determine a bright line between common and obscure languages?

I feel like Pickney needs to add to their treatise on what goods/services are considered related which languages are considered common and which are obscure.

At 5:26 PM, Anonymous Joe Dreitler said...

Anonymous was correct. As I have moaned for 36 years, it would be most helpful for examiners to think about the real world consequences when making refusals, especially based on geographic, surnames and foreign equivalents. There are a lot of refusals that wouldn't pass the red face test in a civil suit (and yes I know that until recently the findings by the Board and Article III courts were different) and, more importantly, that no one would bring such as this one. While registration and use should be 2 different things, that should have some realistic connection given the reason stated for encouraging registration.
Congratulations Paul and thank you Board.

At 9:18 PM, Anonymous Paul Reidl said...

OK, I am the lawyer on the file so take this for what it is worth. For reasons I did not know, the office was unusually aggressive about this. When the Examining Attorney hit this with a final I told the client that I would do the appeal pro bono. I did this because while I have a great deal of respect for the Examining Attorneys,this was over the top.

At 5:41 PM, Anonymous Anonymous said...

Did the design of the registered mark (showing a sunrise) help the Examiner's case at all?

At 4:46 PM, Anonymous Anonymous said...

While I agree entirely that this was a questionable refusal, I would also say that the statements by Anonymous-1 regarding a "waste of time and money," "poorly reasoned" and "asinine" apply also to nearly every WYHA out there as well, which I would say outnumbers the WYHR by 10-1. It goes both ways.. filing a dead end application and appealing a WYHA Final is a waste of client's money and certainly a waste of time and money at the USPTO. So, I would settle down with the hyperbole. This refusal was based on what is currently grey area practice at the PTO, so a refusal was not entirely unreasonable, and, if anything, it was at least helpful to the bar, as Anonymous-5 noted. - Anonymous-7


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