Friday, April 17, 2009

TTAB Referees PTO Translator Tussle, Accepts Applicant's Translation of "FIOR DI GRANO"

Applicant Paolo Doino's attempt to register the mark FIOR DI GRANO for pasta, tomato sauce, pasta sauce, and related goods, turned into a battle of the translators. The PTO claimed that Doino failed to comply with a Rule 2.61(b) requirement that he translate the phrase into English as "corn marigold" but Doino argued that the phrase also means "flower of grain." The Board found Doino's evidence that the Italian phrase has two ordinary meanings "stands unrebutted," and it reversed the refusal to register. In re Paolo Doino, Serial No. 77077462 (April 2, 2009) [not precedential].

corn marigold

The Examining Attorney relied on a translation provided by the PTO's Technical Translator, Steven M. Spar, stating that "the wording fior di grano means 'corn marigold.'" She also submitted a definition of "corn marigold" from Webster's Online Dictionary:

Corn Marigold 1. European herb with bright yellow flowers, a common weed in grain fields. Synonym: Field marigold.
Modern Translation (alternative meanings in parentheses): Italian fior de grano (yellow oxeye daisy).

Applicant Doino countered with the declaration of Alessandro Rubinacci, a certified English/Italian translator:

5. The literal translation of “FIOR DI GRANO” is “FLOWER OF GRAIN.”

6. “FLOWER OF GRAIN” is the ordinary meaning of “FIOR DI GRANO” in Italian.

7. A common speaker of Italian would readily understand “FIOR DI GRANO” to mean “FLOWER OF GRAIN.”

8. “FIOR DI GRANO” is also the Italian name for the weed known in English as corn marigold.

9. The phrase “fior di grano” appears to be suggestive of the weed’s flower-like appearance.

Applicant asserted that his translation is undisputed by the PTO's Declaration. Doino suggested that "both translations appear, as both have significance."

glebionis segetum

Rule 2.32(a)(9) states that if the mark in an application includes non-English wording, an English translation of that wording must be included in the application. The TMEP says that the translation should be the one "that has significance in the United States as the equivalent of the meaning in the non-English language." Section 809.01. It should be "the clear and exact equivalent," which "normally, means only one translation." Section 809.02.

The Examining Attorney insisted that FIOR DI GRANO has only one English equivalent: corn marigold. The Board pointed out that such assertion indicates that FIOR DI GRANO is a unitary phrase, but the PTO required a disclaimer of GRANO because it means "grain." The Board seized on that contradiction:

Either “fior di grano” is a unitary phrase and has only one translation, and, therefore, no disclaimer is required, or it has an ordinary meaning and a disclaimer is required. Of course the third possibility is that it has both meanings, and the connotation would depend on the context. In this case, it is more likely that applicant seeks to evoke the idea that the pasta is the “flower of grain” rather than a weed. In any event, as applicant points out, the declaration of this translator indicating the phrase has both meanings to “a common speaker of Italian,” stands unrebutted.

The Board noted the TMEP's statement that normally one translation is appropriate, thus contemplating the possibility of more than one.

Therefore, based on the record where there is a dispute, applicant's evidence of two ordinary meanings stand unrebutted, and applicant's translation makes more sense in the context of the goods, we defer to applicant's translation.

And so the Board ruled that Doina's submission of "flower of grain" as the translation for FIOR DE GRANO satisfied the PTO's Rule 2.61(b) request.

TTABlog comment: Mamma Mia! What a waste of time! What difference does it make which translation is accepted? Several readers have suggested that it may make a difference with regard to potential 2(d) issues raised by, for example, an opposer.

Text Copyright John L. Welch 2009.


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