Tuesday, March 24, 2009

TTAB Reverses 2(d) Refusal: PTO Failed to Show "HEART" and "KOKORO" Confusingly Similar for Restaurant Services

The PTO unsuccessfully invoked the doctrine of foreign equivalents in claiming that Applicant's mark HEART for "cocktail lounges; restaurant and bar services" is likely to cause confusion with the registered mark KOKORO, in standard character and design form (below), for restaurant services. Although the cited registration stated that "[t]he English translation of 'KOKORO' is 'heart,'" the Board found the PTO's evidence of that English meaning to be insufficient to support the refusal. In re OpBiz, LLC, Serial No. 77055011 (March 20, 2009) [not precedential].

The Examining Attorney attached four items of evidence to her appeal brief, and Applicant objected on the ground of untimeliness. See Rule 2.142(d) and TBMP Section 1207.01. The Examining Attorney then asked the Board to take judicial notice of the evidence. However, three third-party registrations were inadmissible because the Board does not take judicial notice of prior registrations. Listings from on-line Japanese-American dictionaries were inadmissible because they were not available in printed format, nor did they have regular, fixed editions. Wikipedia evidence inherently lacked the trustworthiness to merit judicial notice; in any case, Applicant did not have an opportunity to rebut the evidence. Finally, however, an excerpt from the Columbia Encyclopedia regarding Japan's business dealings in the USA was admissible.

The PTO maintained that Japanese is a common and modern language and that American buyers familiar with Japanese will translate "kokoro" to the English term "heart." Applicant argued that "kokoro" has multiple English meanings besides "heart," including "mind," "spirit," "mentality," "thought," "will" and "intention." Applicant further argued that HEART and KOKORO differ in sound, appearance, and overall commercial impression.

The Board observed that, under the doctrine of foreign equivalents, terms from common, modern languages are translated into English in the Section 2(d) likelihood of confusion analysis. However, similarity in meaning is only one factor in the overall evaluation.

The Board found (without any evidence from the parties) that Japanese is a common and modern language that will be spoken and understood by an appreciable number of Americans. Moreover, the ordinary American purchaser who is knowledgeable in both English and Japanese will stop and translate the term.

The question, then, concerned the proper translation of KOKORO into English. The dictionary evidence showed that, as Applicant asserted, "kokoro" has other meanings besides "heart." Furthermore, a scholarly article pointed out that "[f]or language pairs that do not share the same cultural traditions, the notion of one-to-one equivalents is likely to become less and less reliable." [Emphasis by the Board].

"In the case of English and Japanese, the cultural conventions that govern communication differ to such an extent that English learners would be led into error if they only sought semantic equivalents because Japanese do not use the same expressions as we do to communicate the same messages in similar situations."

In sum, the Board concluded that "kokoro" has multiple English translations, and that HEART and KOKORO are not foreign equivalents. Because the marks also differ in sound, appearance, and commercial impression, the Board was convinced that confusion is not likely. And so it reversed the refusal.

Text Copyright John L. Welch 2009.


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