Precedential No. 30: TTAB Reverses Descriptiveness Refusal of TAVERNA COSTERA, Declining to Apply Doctrine of Foreign Equivalents

Because the ordinary American purchaser would not stop and translate a mark comprising words from different languages, the TTAB reversed a Section 2(e)(1) mere descriptiveness refusal of TAVERNA COSTERA for “restaurant, cafe, and bar services.” The Board found that applicant’s mark, at most, suggests a “fusion of cuisines.” However, because TAVERNA is a recognized English language word referring to a type of restaurant, disclaimer of that word was required. In re Taverna Izakaya LLC, 2021 USPQ2d 1134 (TTAB 2021) [precedential] (Opinion by Judge Cynthia C. Lynch).

The examining attorney contended that TAVERNA COSTERA translates to “coastal tavern,” and applicant did not dispute the descriptiveness of that term for restaurant services. Instead, applicant maintained that the doctrine of foreign equivalents should not be applied because consumers would take the mark “as it is” rather than translating it. See Palm Bay, 73 USPQ2d at 1696 (“When it is unlikely that an American buyer will translate [a] foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied.”). Because the first word is understood in English, the applicant argued, it is “exceeding likely” that the average consumer would not stop to translate COSTERA, “particularly since the Spanish word COSTERA is pronounceable in English.” The Board agreed:

Given that ordinary consumers would recognize the first word in Applicant’s mark not only as an English word – but one that connotes a Greek café and Greek cuisine – those consumers would not be inclined to stop and translate the next word in the mark from Spanish.

The Board observed that courts and the TTAB have frequently ruled that consumers would not “stop and translate" marks comprised of terms in multiple languages, “often finding that the marks combine the different languages for suggestive purposes to create a certain commercial impression:” e.g., LE CASE for jewelry boxes; GLACÉ LITE for ice cream products. The Board therefore refused to apply the doctrine of foreign equivalents.

The Board noted that the subject application includes a statement in the Translation field that “[t]he English translation of TAVERNA COSTERA in the mark is COASTAL TAVERN”, as well as a Miscellaneous Statement that “the word TAVERNA is Greek and Italian, while the word COSTERA is Spanish.” Not to worry. “The record makes clear that the application’s 'translation' statement is not in fact a literal and direct 'translation,' as commonly understood, from a particular foreign language into English; rather, it is an attempt to fit the square peg of a multi-language mark into the round hole of the 'translation' in the application form.”

And so, the Board reversed the refusal to register but required that the applicant disclaim the descriptive English term TAVERNA.

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TTABlogger comment: So if you take the word "taverna" and slap on a foreign word, you've got a registrable mark for restaurant and bar services? 

Text Copyright John L. Welch 2021.