Recent Reversals by the TTAB

While it is quite rare for the TTAB to reverse a registration refusal by a USPTO Examiner, the beginning of May saw back-to-back reversals—one reversal on likelihood of confusion and a second on descriptiveness vis-à-vis the doctrine of foreign equivalents.

In re Dileep Essentials Pvt. Ltd., Serial No. 90978154 (May 8, 2024) [Not Precedential].

In a recent reversal by the Trademark Trial and Appeal Board (the “Board”), the Board overturned an Examiner’s 2(d) refusal of the mark ELEMENTARY for goods and services in eight classes, including flatware, table lamps, desk sets, pillows, dishes, bath linens, rugs, and retail store services featuring household goods on the basis that the mark was likely to cause confusion with the mark  in use in connection with “non-medicated skin cleansing and exfoliating preparations; pads for cleaning impregnated with cosmetics; non-medicated soaps; perfumes; essential oils; cosmetics; make-up; make-up removing preparations; lipstick; beauty masks.”

Likelihood of Confusion Analysis

Although the Board found the marks to be “highly similar” based on their sight and sound such that the overall commercial impression of the two marks was “very similar.”  Next, the Board looked to the evidence of the purported relatedness of the goods and services, including webpages from online retailers like Anthropologie and Urban Outfitters and even luxury fashion brands Gucci, Versace, and Aerin. With regard to the retailers, the Board held the evidence “does not support a finding of relatedness under DuPont factor two. None of the soap, fragrance or cosmetic/makeup products are offered under the Anthropologie or Urban Outfitter marks but are third-party products offered under third-party marks. Thus, the webpages were more akin to a department store, offering a wide variety of differently branded goods by a single retailer.  As for the luxury brands, the Board expressly noted that “[o]utside of the designer mark context, there is no inherent relatedness between soap, perfume, and cosmetics on the one hand, and cutlery, furniture, flatware, dishes and plates, photo frames, vases, candlesticks, on the other hand….”

And while the Board agreed that the Applicant’s goods are offered “in at least one common channel of trade, that is, the websites operated by the third-party specialty retailers,” it concluded that the second DuPont factor was dispositive and reversed the refusal. Of particular interest here—particularly for use in responding to office actions going forward—is the Examiner’s attempt to rely on a screenshot of an online “shopping cart” as a means of demonstrating that the goods and services could purportedly come from a single source. The Board concluded that a printout of an online shopping cart is “not probative of how the consumer encounters the goods on the online marketplace web pages where a listing of goods is shown, and we do not consider it.” In a time when Examiner refusals for likelihood of confusion have grown increasingly broad in their “relatedness of goods” analysis, this decision provides a much needed return to common sense in analyzing the extent to which products are sufficiently related that they are likely to cause confusion as to the source of goods.

In re MJ Cobalt, LLC, Serial No. 97673097 (May 9, 2024) [Not Precedential].

The very next day, the Board reversed the Examining Attorney’s refusal to register ARBATA for tea as merely descriptive based on the doctrine of foreign equivalents (“arbata” is “tea” in Lithuanian).

Doctrine of Foreign Equivalents

The Board first explained the doctrine of foreign equivalents:  “[u]nder the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English to determine . . . descriptiveness. . . . When it is unlikely that an American buyer will translate the foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). The “ordinary American purchaser” includes purchasers knowledgeable in English as well as the pertinent foreign language. In re Taverna Izakaya LLC, 2021 USPQ2d 1134, at *2-3 (TTAB 2021). In response to the Examiner’s refusal, the Applicant maintained that the doctrine of foreign equivalents should not apply because Lithuanian is not a “common” language in the United States.

Despite it being the Examiner’s burden to present evidence supporting application of the doctrine of foreign equivalents, i.e., the number of American consumers who speak Lithuanian (TMEP § 1207.01(b)(vu)(B)), it was Applicant who demonstrated that from 2009 to 2013, less than 40,000 persons in the U.S. spoke Lithuanian at home. Ultimately, the panel majority agreed with the Applicant:

The number of Lithuanian speakers in the U.S. population is at least one order of magnitude smaller than the percentages of speakers of Spanish, French, and Russian in the United States in the cases discussed in TMEP Section 1207.01(b)(vi)(B), and it is many times smaller than the number of speakers of modern languages found to be “common” in other cases.

Board’s Decision

Accordingly, the Board determined that Lithuanian is not a common language in the U.S., thereby “making it very unlikely that the ordinary American consumer of tea would ‘stop and translate [ARBATA] into its English equivalent.’” Malhotra, 128 USPQ2d at 1102 (quoting Palm Bay Imps., 73 USPQ2d at 1696). It is far more likely that such a consumer will simply "take [ARBATA] as it is . . . ." Palm Bay Imps., 73 USPQ2d at 1696.”

The Examining Attorney then asserted that even without application of the doctrine of foreign equivalents, the term “arbata” has come to be known to mean “tea” in the U.S. such that the mark is merely descriptive. Once again, the panel majority disagreed, holding that the evidence provided by the Examiner consisted mainly of foreign websites and that “[t]he Examining Attorney has not shown why U.S. consumers of tea, a staple beverage in the United States, are likely to search for and be exposed to websites of tea companies located in Lithuania and Hong Kong.”  The Examiner’s refusal was, then, reversed, and the mark allowed to proceed to publication.

The dissenting judge decried the majority’s reliance on a statistical analysis, maintaining that the doctrine should apply to mere descriptiveness and genericness refusals for common foreign languages even if the general public is unfamiliar with the language. As noted by the dissent, the Board’s reversal can be seen as “a departure from [Board] precedent governing the application of the doctrine of foreign equivalents in the context of mere descriptiveness and genericness refusals.” It remains to be seen whether this decision will invoke a more consistent, statistical approach to application of the doctrine of foreign equivalents in the context of descriptiveness or genericness.

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