Wednesday, November 13, 2019

TTABlog Test: Are CRUCIBLE COOKWARE and LE CREUSET Confusable under the Doctrine of Foreign Equivalents?

[This guest post was written by Amanda B. Slade, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. The USPTO refused registration of the mark CRUCIBLE COOKWARE (standard characters, COOKWARE disclaimed) for a variety of cooking utensils and kitchenware, including trivets, pot lids, whisks, frying pans, and cast iron skillets, on the ground of a likelihood of confusion with several registered LE CREUSET marks for, inter alia, kitchen utensils, trivets, whisks, pots, and frying pans. On appeal, the Board found that the goods, channels of trade, and classes of consumers were identical and that LE CREUSET is a famous mark. The pivotal issue was whether the marks are similar in meaning under the doctrine of foreign equivalents. The Board decided the issue unanimously. How do you think this came out? In re A.F. Djurberg AB, Serial No. 87/677,215 (Nov. 8, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

The cited registrations contain the translation statement: “The English translation of ‘LE CREUSET’ in the mark is ‘THE CRUCIBLE’,” triggering the doctrine of foreign equivalents inquiry. The doctrine may apply when assessing a mark’s “appearance, sound, connotation, and commercial impression.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).

Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine similarity of connotation with English word marks. The doctrine is applied when it is likely that “the ordinary American purchaser would ‘stop and translate [the term] into its English equivalent.” The “ordinary American purchaser” in this context refers to the ordinary American purchaser who is knowledgeable in the foreign language. 

In re Thomas, 79 U.S.P.Q.2d 1021, 1024 (TTAB 2006) (citing Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005)).

Preliminarily, the Board found that the doctrine of foreign equivalents may apply, since “more than 1.3 million people in the United States speak French at home.” The Examining Attorney’s data from the French Embassy’s Cultural Services section (based on U.S. Census data) was sufficient to support this conclusion. Therefore, because an “appreciable segment” of the U.S. population speaks French,  the applicability of the doctrine of foreign equivalents was critical to the likelihood of confusion analysis.

The Board then concluded that ordinary American purchasers who speak French would “stop and translate” LE CREUSET, which translates to “the crucible” or “the melting pot.” In English, “crucible” is defined as “a vessel of very refractory material (such as porcelain) used for melting and calcining a substance that requires a high degree of heat.” Accordingly, the Board stated that LE CREUSET’s “single, clear, specific, literal and direct meaning” and the mark’s correct French spelling weighed in favor of applying the doctrine.

Interestingly, the Board did not factor into its analysis the reverse translation of "crucible" (from  English to French) or the fact that “crucible” has multiple meanings. In In re Perez, the Board considered the Spanish translation of an English word in affirming a refusal to register EL GALLO in light of a prior registration for ROOSTER, both for produce. See U.S.P.Q.2d 1075, 1076 (TTAB 1991). The fact that “in the dictionary listing for ‘rooster’, only one Spanish word is given, namely ‘gallo’” supported the doctrine’s application. See id. Moreover, translation evidence showing a term’s varied meaning typically indicates the doctrine of foreign equivalents should not be applied. See generally T.M.E.P. § 1207.01(b)(vi)(B).

Here, Google translate provides a second French translation of “crucible” as “l' épreuve,” which can mean “test, trial, proof, examination, print, [or] crucible.” This translation ties to “crucible’s” alternative English definition: “a severe test.” See Crucible, MERRIAM-WEBSTER DICTIONARY (last visited Nov. 11, 2019), The Board’s failure to address these dual meanings is likely due to the fact that one of the definitions directly relates to the goods in question. Hence, the subject decision highlights that applying the doctrine of foreign equivalents is context dependent: demonstrating that a term has multiple meanings may not be sufficient to avoid the doctrine’s application where one of the definitions has a clear connection to the underlying goods or services.

Conclusion: “The marks’ identical connotation is likely to result in consumer confusion, notwithstanding the marks’ differences in appearance and sound . . . . The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act is affirmed.”

Read comments and post your comment here.

TTABlog comment: How did you do? [If you can't take the heat, get out of the crucible - ed.]

Text Copyright Amanda B. Slade 2019.


At 8:16 AM, Anonymous Eric said...

Probably correct under the doctrine, but it seems wrong to me. To be fair, the doctrine aligns with my personal perception of confusion only about half the time.

At 2:53 PM, Blogger Eddie said...

Of course, that's the right call. No need for marks to be all over each other. It just creates a mess. The more distance the better.

At 4:14 PM, Anonymous Anonymous said...

I understand the general idea and agree that this is in line with case law BUT are there any examples where companies actually translate their trademarks? I suppose it sometimes happens in Canada with the French language mandate but even there, registered trademarks don't need translating.

This doctrine just seems to grant rights broader than they really deserve to be.

At 5:11 PM, Anonymous Jenna L. said...

The doctrine of foreign equivalents continues to appear to be an outmoded doctrine. If a mark has achieved a certain level of fame, its recognition as a brand affect should significantly affect the analysis of whether a consumer would truly "stop and translate" its English equivalent. In this way, it leaves marks open for use to consumers who in reality have no idea that Le Creuset literally means "the crucible."

At 1:53 PM, Blogger Seth Gardenswartz said...

I was under the impression words were translated from foreign languages into English


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