IP Law Daily, TRADEMARK—TTAB: Does the doctrine of foreign equivalents apply to Lithuanian? A split Trademark Board says no, (May 13, 2024)

By Matthew Hersh, J.D.

The language was too uncommon in the United States for the doctrine to apply.

The Lithuanian word for “tea” could be registered as a trademark in the United States because there were few speakers of the language in the United States and therefore the doctrine of foreign equivalents did not apply, the Trademark Trial and Appeal Board has found. But a dissenting member of the Board argued that the majority’s decision confused the standard for likelihood of confusion analysis and validity of registration analysis—and threatened American interests in protecting English-language trademarks abroad (In re MJ Cobalt, LLC , No. 97673097 (TTAB May 9, 2024)).

The dispute arose when a Connecticut-based distributor named MJ Cobalt sought registration on the Principal Register of a proposed standard-character mark ARBATA for “tea” in International Class 30. The Examining Attorney refused registration of the proposed mark under Section 2(e)(1) of the Trademark Act (15 U.S.C. § 1052(e)) on the ground that ARBATA means tea in the Lithuanian language and thus “simply describes the applicant’s goods.” The distributor appealed to the Board, leading to this opinion.

Doctrine of foreign equivalents. The Board, in a non-precedential opinion, reversed the refusal to register. Under the so-called doctrine of foreign equivalents, the Board noted, “the foreign equivalent of a merely descriptive English word is no more registrable than the English word itself despite the fact that the foreign term may not be commonly known to the general public.” But the doctrine of foreign equivalents nonetheless did not apply here, the Board concluded.

The doctrine of foreign equivalents did not apply, the Board reasoned, because it did not apply to languages that were not “common” in the United States. Precedent teaches that the doctrine “is not an absolute rule” but rather one that “should be viewed merely as a guideline that applies when it is likely that the ordinary American purchaser would stop and translate the mark into its English equivalent,” the Board noted. Moreover, the Board noted, the Trademark Manual of Examining Procedure further instructs examining attorneys to apply the doctrine of foreign equivalents only when “the term comes from a common, modern language.” Thus, while foreign words are generally translated into English for purposes of determining descriptiveness, the Board noted, the manual teaches that “foreign words from dead or obscure languages may be so unfamiliar to the American buying public that they should not be translated into English for descriptiveness purposes.”

Under that standard, the Board found, the examiner did not establish that Lithuanian was a sufficiently common language in the United States. The Manual instructs examining attorneys to “provide evidence” that the foreign language is common—evidence that should include, to the extent available, evidence of the percentage or number of United States consumers who speak the language in question. But the examining attorney relied instead on documents enumerating the Lithuanian-American population in the United States, not the number of speakers of the language. “The mere fact that people identify themselves as having a particular ethnic heritage obviously does not establish that they speak any associated language,” the Board reasoned. “Indeed, with the exception of Native Americans, all persons in the United States necessarily have ancestry in one or more foreign countries, but that does not mean that all such persons speak any foreign language.”

Nor was the examining attorney’s argument that the Lithuanian-language term “ARBATA” was known even in English-speaking circles—his “fallback position,” the Board noted—based on sufficient evidence. The examining attorney identified 13 websites in English that, according to the examiner, “show that upon a Google or other Internet search the term ARBATA would be found and would be used in reference to tea.” But five of the those websites merely translated “arbata” from Lithuanian into English and were therefore “the functional equivalents of dictionaries,” the Board noted. Four others had the. “lt” country code for Lithuania (and of those only two were primarily in English). And while five English-language websites actually sold teas labeled “arbata,” they priced the goods in Euros or Hong Kong dollars, not U.S. dollars. On balance, the Board concluded, this internet evidence “falls short of showing that ARBATA has an independent meaning in English that makes it descriptive of tea if it is not translated into English.”

Dissenting opinion. Administrative Trademark Judge Angela Lykos partially dissented from the opinion. She agreed that ARBATA was not merely descriptive of “tea” if not translated into English. But she dissented strongly from the Board’s finding on the doctrine of foreign equivalents did not apply—for two reasons.

For one thing, Judge Lykos argued, the majority wrongly applied the doctrine of foreign equivalents as it has been interpreted in likelihood of confusion refusals—the wrong standard for applying the doctrine in mere descriptive and genericness refusals. “The underlying policy rationale is different and arguably stronger for applying the doctrine of foreign equivalents in the context of mere descriptive and genericness refusals as compared to likelihood of confusion refusals,” Judge Lykos argued. “Such refusals pertain to the validity of a trademark,” she noted, “as opposed to consumer confusion.”

Even more important, according to Judge Lykos, were the international ramification of the Board’s decision. Under an earlier Board precedent, she noted, “generic terms in foreign languages are treated no differently under our law than are their English language equivalents concerns the maintenance of fair competition in the international movement of goods in commerce.” Indeed, she noted, the United States has protested the registration in foreign countries of terms considered to be generic names in the English language of products sold in the United States and sold or intended to be sold in export trade. “The rationale of these protests is that registration of generic terms as trademarks would interfere with the free flow of international trade in products known by that generic term,” she noted. No statistical analysis balancing the number of Lithuanian speakers in the United States vis-à-vis speakers of other languages or the U.S. population as a whole should be necessary, she concluded.

The Case is No. 97673097.

Judge: Larkin, C.

Attorneys: Andy I. Corea (Murtha Cullina LLC) for MJ Cobalt, LLC. Rebecca Smith for the USPTO.

Companies: MJ Cobalt, LLC

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