In re Spirits Intern., N.V.

• Citation: 563 F.3d 1347
• Decision Date: 29 April 2009
• Docket Number: No. 2008-1369.,2008-1369.
• Parties: In re SPIRITS INTERNATIONAL, N.V.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

563 F.3d 1347

In re SPIRITS INTERNATIONAL, N.V.

No. 2008-1369.

United States Court of Appeals, Federal Circuit.

April 29, 2009.

Bingham B. Leverich, Covington & Burling LLP, of Washington, DC, argued for appellant. With him on the brief were Marie A. Lavalleye and Hope Hamilton.

Thomas V. Shaw, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, VA, argued for the Director of the United States Patent and Trademark Office. Of counsel was Raymond T. Chen, Solicitor. On the brief was Shannon M. Hansen, Associate Solicitor.

Before RADER, LINN, and DYK, Circuit Judges.

DYK, Circuit Judge.

Spirits International B.V. (formerly Spirits International N.V.) ("Spirits"), appeals a decision of the Trademark Trial and Appeal Board ("Board"). The Board affirmed a decision by an examining attorney at the U.S. Patent and Trademark Office ("PTO") refusing to register Spirits' mark—MOSKOVSKAYA—for vodka. In re Spirits Int'l N.V., 86 U.S.P.Q.2d 1078 (TTAB 2008). The Board concluded that the mark was primarily geographically deceptively misdescriptive under 15 U.S.C. § 1052(e)(3). Because the Board applied an incorrect test for materiality in determining that the mark was geographically deceptive, we vacate and remand.

BACKGROUND

Spirits filed an application for use of the mark MOSKOVSKAYA for vodka on April 22, 1993, based on an allegation of bona fide intention to use the mark in commerce. Spirits admitted that the vodka "will not be manufactured, produced or sold in Moscow and will not have any other connection with Moscow." Id. at 1081. On August 31, 1993, the examining attorney refused registration. On March 28, 1994, further action on the application was suspended while dispositions of three similar applications filed before April 22, 1993, were pending. On March 13, 2006, after each of these prior applications was abandoned, the Final Office Action issued, refusing registration on the ground that MOSKOVSKAYA is primarily geographically deceptively misdescriptive.

Applying the doctrine of foreign equivalents (discussed below), the examining attorney translated the mark from Russian and found that the primary significance of the mark thus translated was "of or from Moscow." The examining attorney then found that Moscow was a generally known geographic location and that the public would likely believe the goods were from Moscow because there was a goods/place association between vodka and Moscow. Finally, the examining attorney found that this belief would likely be material to consumers because Russian vodka is highly regarded.

On September 1, 2006, Spirits filed a response and motion for reconsideration. Spirits contended that the rejection was inappropriate. In that connection it relied on a mall-intercept survey sponsored by Spirits. On November 2, 2006, the examining attorney denied the motion for reconsideration. Spirits sought review by the Board, and on February 11, 2008, the Board affirmed.

The Board analyzed the mark under 15 U.S.C. § 1052(e)(3), which prohibits the registration of marks that are primarily geographically deceptively misdescriptive of the goods. Citing our decision In re California Innovations, Inc., 329 F.3d 1334 (Fed.Cir.2003), the Board noted that the analysis of whether a mark should be rejected under subsection (e)(3) had recently changed to include a requirement that the mark materially deceive the public. The Board stated the following requirements for establishing a prima facie case that a mark is primarily geographically deceptively misdescriptive of the goods:

(1) the mark's primary significance is a generally known geographic location; (2) the relevant public would be likely to believe that the goods originate in the place named in the mark (i.e., that a goods/place association exists) when in fact the goods do not come from that place; and (3) the misrepresentation is a material factor in the consumer's decision.

Spirits, 86 U.S.P.Q.2d at 1081. Like the examining attorney, the Board, under the doctrine of foreign equivalents, translated the mark into English and found that the primary significance of the mark was a generally known geographic location, establishing the first element of the prima facie case. The Board also found that Moscow is well known for vodka, and that this established the second element. Id. at 1086.

The Board also found that Moscow is reputed for high quality vodka, and thus that the public would likely be materially influenced by the mark in the purchasing decision. Id. In analyzing the materiality element, the Board stated that "an appreciable number of consumers for the goods or services at issue" must be deceived. Id. at 1085. But the Board concluded that "it is never necessary to show that all, or even most, of the relevant consumers would be deceived. All that is required is a showing that some portion of relevant consumers will be deceived." Id. at 1084 (emphasis added). The Board found that the mark met the materiality requirement because of its deception to Russian speakers.

The Board concluded that there is a "presum[ption] that a word in one of the common, modern languages of the world will be spoken or understood by an appreciable number of U.S. consumers for the product or service at issue." Id. at 1085. The Board also took judicial notice of the fact that, according to the 2000 U.S. Census, Russian is spoken by 706,000 people in the United States. Id. The Board then appears to have found that 706,000 people is an "appreciable number" in an absolute sense. The Board found that "[a]t least one significant group of `ordinary American purchasers' is the purchaser who is knowledgeable in English as well as the pertinent foreign language." Id. The Board therefore concluded that this established a prima facie showing of deception under subsection (e)(3). Id. at 1086.

The Board then discussed the survey offered by the applicant, and found that it did not rebut this prima facie showing. The Board found that the survey was "not persuasive or probative of any issue in this case" for a variety of reasons, but principally because it did not include Russian speakers. Id. at 1088. As a result, the Board affirmed the decision of the examining attorney. Spirits timely appealed to this court, and we have jurisdiction pursuant to 15 U.S.C. § 1071.

DISCUSSION

One aspect of the doctrine of foreign equivalents generally requires considering the meaning of a mark in a non-English language to the speakers of that language. As we stated in Palm Bay, "[u]nder the doctrine of foreign equivalents, foreign words from common languages are translated into English...." Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377 (Fed.Cir.2005); In re N. Paper Mills, 20 C.C.P.A. 1109, 64 F.2d 998, 998-99 (CCPA 1933). The doctrine has been summarized in a leading trademark treatise in the context of determining whether a mark is descriptive (or geographically descriptive) under subsections (e)(1) and (e)(2) of the statutory section governing registration:

Under the "doctrine of foreign equivalents," foreign words are translated into English.... However, the "doctrine of foreign equivalents" is not an absolute rule, for it does not mean that words from dead or obscure languages are to be literally translated into English for descriptive purposes.

2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:34 (4th ed.2009) (hereinafter "McCarthy") (footnotes omitted). The parties do not dispute this general requirement of translation under the doctrine of foreign equivalents. Nor do we.

We also note that there is a threshold limitation on the application of the doctrine of foreign equivalents, as discussed in Palm Bay, 396 F.3d at 1377. In Palm Bay, we noted that the doctrine of foreign equivalents applies only in those situations where the ordinary American consumer would stop and translate the mark into English:

Although words from modern languages are generally translated into English, the doctrine of foreign equivalents is not an absolute rule and should be viewed merely as a guideline. The doctrine should be applied only when it is likely that the ordinary American purchaser would stop and translate the word into its English equivalent.

Id. (emphases added, citations, quotation marks, and alteration omitted). The "ordinary American purchaser" is not limited to only those consumers unfamiliar with non-English languages; rather, the term includes all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.

As Palm Bay makes clear, there are situations in which the doctrine does not require translation even with respect to foreign language speakers. The ordinary American consumer would not translate VEUVE CLICQUOT because its literal translation would be irrelevant to even those ordinary American consumers who speak French. Palm Bay, 396 F.3d at 1377. Similarly, CORDON BLEU has such a well established alternative meaning that the literal translation is irrelevant because even French speakers would not translate the mark. Cont'l Nut Co. v. Cordon Bleu, 494 F.2d 1397, 1398 (CCPA 1974). Additionally, some marks would not be translated because of the particular context in which they occur. See In re Tia Maria, Inc., 188 U.S.P.Q. 524, 525-26 (TTAB 1975). There may be many non-English marks that will not be translated in context but instead accepted at face value by the ordinary American consumer, including those familiar with the literal meaning of the mark in the non-English language. As the Board stated in Tia Maria:

[T]here are foreign expressions that even those familiar with the language will not translate, accepting the term as it is, and situations arise in the marketplace which make it unfeasible or even unlikely that purchasers will translate the brand names or labels appearing...