Thursday, December 13, 2018

TTAB Finds SEAHORSE JAPANESE CUISINE, in Chinese Characters, Confusable With SEAHORSE for Restaurant/Bar Services

The Board affirmed Section 2(d) refusals to register the two Chinese character marks shown below, for "restaurant services," finding a likelihood of confusion with the registered mark SEAHORSE for "bar, lounge services." Each application provided a statement that the characters in the mark "transliterate to 'Haima rìben liàoli,'" which means "seahorse Japanese cuisine" in English. Applicant Crystal Cruises argued that, even if consumers would stop and translate the marks, the visual and phonetic differences arising from the appearance of the marks and the transliterated pronunciations change the commercial impressions and outweigh the similarity in meaning. The Board disagreed. In re Crystal Cruises, LLC, Serial Nos. 86950812 & 869508411 (December 6, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English to determine whether they are confusingly similar to English word marks. The Board found, based on U.S. Census data, that Chinese qualifies as a common, modern language. Among foreign languages, it is the second most common primary language in U.S. homes, after Spanish.

The doctrine of equivalents is not an absolute rule, but merely a guideline, and it is applied "only when it is likely that the ordinary purchaser would 'stop and translate' [the word] into its English equivalent." Here, because the English translation is "unambiguously literal and direct," the Board found it appropriate to apply the doctrine. There was no evidence that the relevant consumer would not stop and translate the mark.

Applying the doctrine of equivalents, the Board found that SEAHORSE is the dominant element of applicant's marks. Applicant argued that "the visual and phonetic differences arising from the appearance of its marks in Chinese characters and the transliterated pronunciation change the commercial impression and outweigh the similarity in meaning." The Board noted, however, that "this argument could be made in any foreign equivalents case, almost all of which by definition involve comparing marks in different languages that typically look and sound different."

The Board concluded that the differences in sound and appearance are outweighed by the significant similarity in connotation and commercial impression.

As to the services, third-party registration and use evidence established that "restaurant services," on the one hand, and "bar and lounge services," on the other hand, are related.

The Board therefore found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How do you say WYHA? in Chinese?

Text Copyright John L. Welch 2018.


At 11:53 AM, Anonymous Anonymous said...

I really struggle to understand the logic behind the Doctrine of Foreign Equivalents in all but obvious cases. Here, the applicant did not seek registration of SEAHORSE JAPANESE CUISINE. It sought registration for six Chinese characters, which transliterate to "haima rìben liàoli," which in turn, translate to "seahorse Japanese cuisine." Surely consumers, even those who speak and read Chinese, would draw a different impression from six Chinese characters—used in connection with a restaurant—than they would from the word SEAHORSE—used in connection with an aquatic-themed cocktail lounge in Caesers Palace, Las Vegas.

At 7:15 AM, Anonymous Anonymous said...

No context - Board is opining in a vacuum. Those bilingual in Chinese and English would not assume that services offered under the Chinese character mark are related to services offered under the English mark of the same meaning; because, those types of consumers are aware that businesses with English marks do not operate only with a Chinese mark. In other words, if only the Chinese mark is presented alone, the assumption is that it is not related to English mark of the same meaning. Instead, if a business has an English mark, and presents a Chinese translation, it will also always have the English mark alone side. So therefore, the Chinese mark alone can never be the basis for confusion.

At 11:58 AM, Blogger Mike said...

@ Anonymous - not sure exactly how to parse your argument. Are you saying that if the translation involves a non-latin language, the doctrine of equivalents doesn't apply? Or that if it involves a non-phonetic language the doctrine of equivalents doesn't apply? Is this any different from attempting to register, for example, the thirty latin alphabetical characters which transliterate to "cocina japonesa de caballito de mar" and also translate to "Seahorse Japanese Cuisine"

At 6:16 AM, Blogger John L. Welch said...

Mike: I'm not saying anything. I'm setting out what the Board said.


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