Tuesday, October 02, 2018

Precedential No. 31: Applying Equivalents, TTAB Finds Greek Word "GÁMOS" Merely Descriptive of Jewelry

The Board affirmed Section 2e)(1) refusals of the mark GÁMOS, in standard character form, and the stylized mark shown below, finding the marks to be merely descriptive of "precious metals and their alloys and goods made of those materials or coated therewith included in this class, namely, jewelry and watches." The Board concluded that consumers familiar with the Greek language would immediately understand that the marks "convey information about a feature of the goods, namely, that they may be used in association with weddings." In re S. Malhotra & Co. AG, 128 USPQ2d 1100 (TTAB 2018) [precedential] (Opinion by Judge Susan J. Hightower).

The application for the standard character mark states that the English translation of GÁMOS is "wedding, matrimony or marriage." The stylized mark application states that the non-Latin characters in the mark transliterate to GÁMOS, which means "wedding, matrimony or marriage."

Doctrine of Foreign Equivalents: Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine, inter alia, descriptiveness. Palm Bay, 73 USPQ2d 1696. The doctrine applies only when the ordinary American purchaser would "stop and translate [the word] into its English equivalent." Palm Bay, 73 USPQ2d 1796. The "ordinary American purchaser" includes those proficient in a non-English language who would be expected to translate words into English. Highlights for Children, 118 USPQ2d at 1271 (quoting In re Spirits Int’l N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009)).

The Board took judicial notice of U.S. Census data, indicating that more than 300,000 individuals over 5 years old speak Greek at home, to establish that Greek is a common, modern language, and is not dead or obscure.

Applicant argued that the doctrine is inapplicable because the applied-for marks do not have literal and direct translations, but instead have "well-establish alternative meanings," including "union," "small deer," "buck" and "a sexual ritual that plays out a marriage between a god and a goddess." The Board, however, agreed with Examining Attorney Marc J. Leipzig that the "small deer" and "buck" translations relate to the unaccented Spanish words "gamos" and "gamo," that "union" is not listed as a translation of either of the marks, but merely as one of several "similar phrases," and that the referenced sexual ritual is actually called "hieros gamos."

Dictionary definitions of "marriage," "matrimony," and "wedding" demonstrated that these words are not contradictory but highly related. The Board found that the applied-for marks have definite English translations and that ordinary Americans will stop and translate the marks.

Mere Descriptiveness: The Examining Attorney introduced extensive evidence of use of the word "wedding" to describe jewelry specifically intended for weddings. Applicant, as mentioned, asserted that the word GÁMOS has no single meaning in connection with its goods and therefore cannot be merely descriptive of them. The Board disagreed:

We have found that “marriage,” “matrimony,” and “wedding” have highly related meanings, and the evidence shows that “wedding” has descriptive significance in association with jewelry. Specifically, “wedding” is merely descriptive of a type of jewelry worn for weddings, a feature or characteristic of the goods. Moreover, “[i]t is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984); see also In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1034 (TTAB 2007); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).

Double Entendre: Finally, applicant feebly argued that the applied-for marks are double entendres, since they may suggest "that Applicant's jewelry and watches have a combination of multiple parts or [involve a] marriage of metals' technique." The Board said no-no. For a term to avoid Section 2(e)(1) as a double entendre, the second, non-descriptive meaning of the term must be apparent from the mark itself. There was no evidence that consumers would understand the applied-for marks to have the meanings that applicant proposed, nor are those meanings evident from the marks themselves when considered in the context of applicant's goods.

Conclusion: The Board concluded that consumers familiar with Greek will immediately understand applicant's marks to convey information about a feature of its goods, namely, that they may be used in association with weddings. Therefore the marks are merely descriptive under Section 2(e)(1).

Read comments and post your comment here.

TTABlog comment: What's a wedding watch? I thought "hieros gamos" was a drinking game, like "devil's triangle."

Text Copyright John L. Welch 2018.


At 11:54 AM, Anonymous Anonymous said...

Considering the infrequency of Greek speakers in the US, this might make a good case for the Federal Circuit to resolve the disparity between its and the TTAB's application of the "ordinary American consumer" rule.

At 12:57 PM, Anonymous Jon said...

With each new ruling on the doctrine of foreign equivalents, the rule makes less sense. The glaring flaw with the doctrine is that it assumes that people who speak two languages are unable to distinguish between them. It is the exact type of academic rule that confounds anyone with common sense. Here, for instance, the Examining Attorney did not submit evidence that anyone, much less people who speak Greek, would understand GAMOS as a descriptive term for jewelry. They assumed it without personally being able to speak the language, or having any understanding of the cultural experience of someone who does. Moreover, the Board's analysis reads like a description of suggestiveness.

Regretfully, I am ignorant as to the frequency of usage for the Greek alphabet. A few simple Google searches produced nothing conclusive. In the U.S., I rarely see the Greek alphabet outside the context of: (1) math, science, and engineering; or (2) the occasional reference to a sorority or fraternity. The opinion does not indicate how widespread the usage of the alphabet is in the United States, nor does the Board justify the finding that consumers, even those who speak and read Greek, would make the series of mental leaps it requires to understand ΓΑΜΟΣ as descriptive of "jewelry."

Yet another misguided ruling on foreign equivalents. Hopefully, this goes to an appeal, as it seems at odds with the realities of the U.S. marketplace.


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