The US Patent and Trademark Office’s (USPTO’S) Trademark Trial and Appeal Board has ruled that the “doctrine of foreign equivalents” is a guideline rather than an absolute rule and may not apply to trademarks that combine English and foreign words.
In In re DBMG, LLC, Application No. 90185762 (T.T.A.B. August 3, 2023), DBMG sought registration for the mark “Sunset Sushi” for “Bar services; Japanese restaurant services; Restaurant services featuring omakase; Sushi Serial No. 90185762 – 2 – restaurant services; Ramen restaurant services; Udon and soba restaurant services” in International Class 43.
The application disclaimed the word “Sushi.”
The mark was described in the application as
a circle containing the words ‘SUNSET SUSHI’ stacked in an uppercase stylized font with a stylized depiction of an island to the right with three palm trees and a seagull flying overhead, all over a background gradually transitioning from being lighter at the top to darker on the bottom.
The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on the prior registration of a mark for “Banshoo Sushi Bar” (with “Sushi Bar” disclaimed) which also incorporated a sunset.
Also, an English translation of “Banshoo” is “sunset.”
(However, a native Japanese speaker submitted a declaration that the modern term for “sunset” is “nichibotsu,” not “banshoo.”)
As the Board explained,
Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine similarity of connotation with English word marks. See Palm Bay Imps., 73 USPQ2d at 1696. The doctrine of foreign equivalents is a “guideline and not an absolute rule.” Id. The doctrine is applied when it is likely that “the ordinary American purchaser would ‘stop and translate [the term] into its English equivalent.’”
According to the Board,
The Examining Attorney argues that the doctrine of foreign equivalent applies because BANSHOO translates as “sunset” from Japanese, and the average purchaser would stop and translate.
The Board noted that Section 2(d) of the Trademark Act prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, or to cause mistake, or to deceive. Trademark Act 15 U.S.C. § 1052(d).
In a Section 2(d) case, two key factors are the similarity or dissimilarity of the marks and the goods or services each is used with.
In this case, the Board found that the services are identical or legally identical. Although one restaurant was a high-end omakase experience, and the other was in a convention hotel, the Board didn’t find this highly relevant.
The Board noted that the doctrine of foreign equivalents generally has been applied when the wording in one mark is entirely in English and the wording in the other mark is entirely in a foreign language.
In this case, the cited registration is for a combination of a Japanese transliteration BANSHOO and the English words SUSHI BAR.
The Board found that the doctrine of foreign equivalents didn’t apply in this case:
Consumers will not stop and translate the portion of Registrant’s mark that contains a Japanese transliteration, but will take the literal portion of Registrant’s mark BANSHOO SUSHI BAR in its entirety as it is.
The Board also concluded that
The dominant literal portions of Applicant’s and Registrant’s marks are dissimilar in sound, appearance, connotation and commercial impression. BANSHOO, when not translated, appears coined, giving Asian flair to Registrant’s mark, while SUNSET in Applicant’s mark is arbitrary in connection with restaurant and bar services. When considering the literal portions of Applicant’s and Registrant’s marks, we find that the dissimilarities outweigh any similarities resulting from the shared disclaimed term SUSHI, and find the literal portions SUNSET SUSHI and BANSHOO SUSHI BAR are different in sound, appearance, connotation, and commercial impression.
The takeaway here is that it may be possible to avoid the doctrine of foreign equivalents if a mark combines English and foreign words, especially if the design elements of the marks are significantly different.
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