Tuesday, December 15, 2009

Applying Foreign Equivalents, TTAB Deems "AZUCAR MORENA" Generic for Brown Sugar

Applying the doctrine of foreign equivalents, the Board granted Petitioner Marquez Brothers International's motion for summary judgment, finding the registered mark AZUCAR MORENA to be generic for brown sugar. And so it ordered cancellation of Respondent Zucrum's registration for "unrefined sugar; brown sugar; molasses" [AZUCAR disclaimed]. Marquez Brothers International, Inc. v. Zucrum Foods, L.L.C., Cancellation No. 92048266 (December 11, 2009) [not precedential].

The Board began by finding the genus of goods at issue to be those stated in Respondent's identification of goods, i.e., "unrefined sugar; brown sugar; molasses." Applicant Zucrum argued at length that "the products sold under its registered mark are azứcar estandar, an unrefined sugar, which is not brown sugar, as commonly understood in the United States." The Board, however, pointed out that "registrability of a mark must be decided on the basis of the identification of goods set forth in the registration, regardless of what the record may reveal as to the particular nature of a respondent's goods." In short, Respondent's goods must be presumed to include all types of unrefined sugar, brown sugar, and molasses.

As to the public's understanding of AZUCAR MORENA, the Board first ruled that, since Spanish is a modern and ubiquitous language, the term would be translated into English by the ordinary American purchaser (who is defined to be knowledgeable in both English and Spanish). See In re La Peregrina Limited, 86 USPQ2d 1645 (TTAB 2008) [precedential] [TTABlogged here]. It found that Petitioner had made a prima facie showing"that there is no genuine issue of material fact that the Spanish term 'azứcar morena' directly translates to the English term "brown sugar," one of the products identified in respondent's involved registration."

Applicant contended that AZUCAR MORENA is not generic because "azứcar morena" or "morena" standing alone can, in another context, refer to a dark-skinned or brunette Latina. [The registration included a statement that "[t]he English translation of 'AZUCAR MORENA' is 'sugar beautiful dark complexioned brunette Latin girl.'"] The Board found that evidence insufficient to create a genuine issue of material fact "as to the genericness of 'azứcar morena' in the context of respondent’s goods."

Nor was the Board persuaded by Respondent's argument that its mark is not generic because there are other generic terms that translate to "brown sugar." "Even if we assume, as respondent argues, that the goods at issue could also be identified as "azucar terciado," "azucar rubio," "azucar negro," and other terms, a product may have more than one generic name, none of which is registrable."

Finding that there did not exist any genuine issue of fact as to genericness, the Board granted the motion for summary judgment.

TTABlog comment: With regard to the doctrine of equivalents, compare the approach taken here with In re Tia Maria Inc., 188 USPQ 524 (TTAB 1975), in which the Board found it unlikely that a purchaser would translate TIA MARIA into "Aunt Mary" when dining at the TIA MARIA restaurant "surrounded by Mexican decor and Mexican food."

Is there now any situation where a Spanish term won't be translated into English?

Text Copyright John L. Welch 2009.


At 9:53 AM, Anonymous Orrin A. Falby said...

Keep an eye on the UNIDOS appeals.

At 10:31 AM, Blogger Sanjiv Sarwate said...

Should there be such a situation? I mean, we aren't talking about an obscure language, but one of the primary languages of what may soon be the largest ethnic group in the country.

At 10:37 AM, Blogger John L. Welch said...

That leads to this question: is Spanish a foreign language?


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