Declining to Apply the Doctrine of Foreign Equivalents, TTAB Reverses Section 2(d) Refusal of "EVERYDAY HEROES" Over "HEROES COTIDIANOS"
The Board tossed out a Section 2(d) refusal of the mark EVERYDAY HEROES for musical recordings and for musical production and entertainment services," finding no likelihood of confusion with the registered mark HEROES COTIDIANOS for downloadable television programs and television entertainment services. Applicant provided the English translation of HEROES COTIDIANOS as "Everyday Heroes." The Board observed that, "perhaps not surprisingly, this case turns in part on the Doctrine of Foreign Equivalents." Stardust Music Productions, LLC, Serial No. 90804879 (December 13, 2023) [not precedential] (Opinion by Judge Michael B. Adlin).
The Goods and Services: The Examining Attorney relied on third-party websites in attempting to show a relationship between the involved goods and services. After reviewing those websites, the Board was not much impressed.
While some of the websites introduced by the Examining Attorney establish that there is a modest relationship between Applicant’s music-related goods in Class 9 and Registrant’s television series-related goods and services, that relationship is tenuous. *** As for Applicant’s Class 41 services, there is only one piece of evidence that would support finding a relationship between them and Registrant’s goods and services, and this is quantitatively and qualitatively insufficient to establish a relationship.
The Doctrine of Foreign Equivalents: There was no dispute that the Spanish word "cotidianos" translates to the English word "everyday." And, of course, Spanish is a "common language" in the United States.
Where we part with the Examining Attorney is her finding that “the ordinary American purchaser would likely stop and translate the mark. *** We do not agree that Spanish being spoken by American consumers is enough in and of itself to invoke the doctrine. Indeed, if it was, the doctrine of foreign equivalents would cease to be a mere "guideline," as Palm Bay tells us it must be, and would instead become an "absolute rule," at least with respect to marks in Spanish and other "common" languages.
The Board pointed to In re Taverna Izakaya LLC , 2021 USPQ2d 1134 (TTAB 2021), involving the reversal of a descriptiveness refusal of TAVERNA COSTERA for restaurant services that was based on the doctrine of foreign equivalents, because the words in the mark were in different languages. The Board there found that consumers would not stop and translate the mark.
Here we find similarly that consumers would not translate just one of the words in Registrant’s two word mark but would instead take it 'as it is.'" *** In fact, it is not clear from either the cited mark itself, or from the mark’s use in connection with television programs, that one or both of the mark’s constituent terms are supposed to be translated, much less to which language.
Comparing the Marks: The Board found the marks to be more dissimilar than similar in appearance and sound. As to meaning and commercial impression, applicant’s mark "conveys a musical group made up of 'everyday heroes,' perhaps a group of ordinary but admirable or courageous musicians." The cited mark "conveys a television show about heroes of some type, but would be unlikely to convey a more specific meaning or give a commercial impression beyond that, because the mark’s somewhat incongruous combination of “HEROES” with the Spanish language term “COTIDIANOS” leaves its intended meaning mysterious." The Board observed that "there is a significant difference between “heroes” that perform in a musical group and “heroes” that are the subject of a television show."
And so, the Board reversed the refusal to register.
Read comments and post your comment here.
TTABlogger comment: Suppose an American consumer knows both English and Spanish. That individual wouldn't have to "stop and translate" either mark to realize that the words "everyday" and "cotidianos" have the same meaning. Would she?
Text Copyright John L. Welch 2023.
posted by John L. Welch @ 12/15/2023
4 comments
4 Comments:
If the DOFE was not applied then why did the Board compare the meanings of the marks? I do like the nuanced discussion of the meanings of the word HEROES in the context of the respective services. In the vast majority of cases, the Board would not do that. Let's get real, "heroes" has the same meaning whether it refers to a rock band or a TV show and that argument would never fly in a case where the Board wanted a different outcome. They intermingled the factors so much in this case that it is just another one of those balls of confusion (to cite The Temptations for the old folk out there)
With no Doctrine of Pidgin Equivalents (whether for Spanglish, Chinglish, etc.), incongruity of hybrid language seems to be presumed.
If this opinion does anything to hasten the demise of the DOFE, it can't come soon enough to suit me.
It makes no sense whatsoever that the inclusion of both an English and Spanish word in the mark would cause a consumer to NOT stop and translate the mark. We literally have a situation in which including the same English word "Heroes" actually leads to a finding of no likelihood of confusion. Ridiculous.
But as others commented, the DOFE is a terrible doctrine to start with, especially in instances where the foreign language is really obscure. This decision obviously includes a result-driven analysis, and just maybe it pushes the DOFE one tiny step closer to death.
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