Wednesday, April 02, 2014

Test Your TTAB Judge-Ability: Is "ÓGRA" (Irish Gaelic) Merely Descriptive of Beauty Care Services?

The PTO refused registration of the mark ÓGRA for "hygienic and beauty care for human beings" (Class 44), deeming the mark to be merely descriptive under Section 2(e)(1). The Examining Attorney applied the doctrine of foreign equivalents, maintaining that the Irish Gaelic word ÓGRA means "youth/young people." But that doctrine applies only to common, modern languages. Does Irish Gaelic qualify as a common, modern language in this country? In re Dunville Peat and Herbal Products Limited, Serial No. 79111854 (March 24, 2014) [not precedential].

The Examining Attorney has the burden to establish a prima facie case in support of a refusal to register. Under the doctrine of foreign equivalents, a foreign word and the English language equivalent may be considered descriptive - provided the foreign word is in a modern language familiar to an appreciable segment of American consumers. The doctrine, however, is a guideline not a rigid rule: it is applied only when it is likely that "the ordinary American consumer would 'stop and translate' [the term] into its English equivalent. If the consumer will take the term "as is," then the doctrine does not apply. [E.g., TIA MARIA for a Mexican restaurant not likely to be translated to AUNT MARY'S].

Irish or Irish Gaelic is "the Gaelic language of the Celts of Ireland, now spoken mainly along the west coast, an official language of the Republic of Ireland since 1921." There was no dispute that "ógra" is an Irish word meaning "young people; youths." The threshold question here was whether Irish is a common, modern language.

The Examining Attorney did not provide any of the usual evidence that addresses this issue: census data showing the percentage or number of U.S. consumers who speak the language, or evidence that the foreign country where the language is spoken is a prominent trading partner of this country, or evidence that the language is spoken by a sizeable world population. Instead, the record contained little of probative value: a retail website that offers "Irish (Gaelic) language learning materials" and a website concerned with learning the Irish language.

The evidence failed to establish that any number of ordinary American purchasers is knowledgeable in the Irish language: i.e., the number of such purchasers who would stop and translate the Irish word. Nor did it even disclose the number of people who speak Irish in Ireland.

In short, although Irish may be a common, modern foreign language, the Examining Attorney failed to introduced the type of probative evidence that would serve as a basis for the Board to make such a finding in this case.

And so the Board refused to apply the doctrine of foreign equivalents, and it reversed the refusal.

Read comments and post your comment here.

TTABlog note:  If a person fluent in Irish saw the word "ógra" in connection with the subject services, would that person "stop and translate" the term into English, or would he or she just understand the Irish term without translating it into English?

Text Copyright John L. Welch 2014.


At 7:13 AM, Anonymous Anonymous said...

Am I the only woman out here that would stop and say to herself, why I would I want to look like an "ogre?"

At 9:39 AM, Anonymous Anonymous said...

Níl mórán daoine a labhraíonn an teanga traidisiúnta na hÉireann, sa tír sin nó in aon áit eile.

At 10:20 AM, Anonymous Freiburger said...

The question whether someone would "stop and translate" the mark into English makes no sense, because a person fluent in the foreign language will have no reason to translate the foreign term, as they already understand it. It's a doctrinal mess.

At 10:20 AM, Anonymous Anonymous said...

I fail to see how the meaning upon which the Examiner relied for the Irish term is 2(e)(1) descriptive of the claimed services. I think there's a several-step analytical process that has to occur, making the mark suggestive at most.

The doctrine of foreign equivalents really needs some serious overhaul

At 11:07 AM, Blogger John L. Welch said...

So you think that even if the doctrine of foreign equivalents did apply, the mark is not merely descriptive of the services? Applicant argued that point, but the Board never got to it. I think "young" may be descriptive of beauty services - should't any beauty salon or spa be able to say "Look Young" (for example) without fear of a tm infringement suit?

At 11:19 AM, Anonymous Carole Barrett said...

I agree that the doctrine of foreign equivalents really needs some serious overhaul. It always seemed to me that if the person seeing the mark does not understand the foreign language (or even know that the language is) but upon seeing the mark understands the English meaning, then the foreign language mark is equivalent to its English meaning. Radical thought...but I agree that if a language is native to you, you have no reason to "stop and translate" it into English - you just understand it.


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