In In re La Peregrina Limited (Case 78/676199, March 14 2008), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has provided an analysis which may prove useful in considering the registrability of foreign language equivalents of English-language registrations.
La Peregrina Limited applied to register the trademark LA PEREGRINA. Peregrina described the goods with the specific term 'jewellery', as well as the more particular recitation "precious stones; pearls in loose pieces, pairs and strands; pearl jewellery". The examiner asked Peregrina to provide an English translation of the mark. The definition provided was 'the pilgrim'. The examiner refused registration of the mark on the basis of a prior registration of the mark PILGRIM for jewellery in Class 14 of the Nice Classification and "brooches and hair clips" in Class 26, finding that there was a likelihood of confusion between LA PEREGRINA and PILGRIM.
The examiner relied on evidence that the Spanish-speaking portion of the US population is sizeable, Spanish being the second most common language spoken in the United States. She concluded that the average consumer would be likely to translate the mark LA PEREGRINA as ‘pilgrim’. The examiner also relied on dictionary listings, material from Peregrina's website, a Wikipedia
excerpt and material gleaned from third-party websites. The examiner also found that the goods described in the application were related, citing third-party registrations illustrating a variety of entities using the same mark for or in connection with goods similar to those described in the application and registration (namely, jewellery and pearls).
Peregrina argued that the respective designations create different commercial impressions and that US purchasers were unlikely to translate the foreign mark. It also argued that the US Spanish-speaking population is not necessarily fluent in English, and even those who are would not translate LA PEREGRINA into English. Four declarations of bilingual individuals were offered by Peregrina, stating that they would not translate LA PEREGRINA into English, but rather would treat it as a separate name. As for the products, Peregrina argued that they were not related, relying on the website of the owner of the PILGRIM mark to illustrate differences in the goods and arguing that purchases of the goods at issue involved careful consideration.
The TTAB sided with the examiner and refused registration. It first looked at the goods and recited the well-accepted principle that the appropriate analysis under Paragraph 2(d) of the Lanham Act
is to compare the goods described in the application with the goods identified in the cited registration. It noted that in the absence of a limitation as to the nature or type of goods, or as to the channels of trade or class of purchasers, it is presumed, as a matter of law, that the goods encompass all goods of that type and all channels of trade and potential buyers that would be normal for such goods.
Given that both the application and the registration expressly identified jewellery, the TTAB found that the respective products were identical for the purposes of a likelihood of confusion analysis. Any specific differences in the goods were not relevant in light of TTAB precedents.
With respect to the similarity between the marks, the TTAB observed that because the goods were - in part - legally identical, the degree of similarity necessary to support a Paragraph 2(d) refusal to register declined. The TTAB cited the decision in Palm Bay Import Inc v Veuve Clicquot Ponsardin Maison Fondée en 1772
(73 USPQ 2d 1689) for the proposition that the doctrine of foreign equivalents applies where the ordinary US purchaser would ‘stop and translate’ the foreign term into English. An ordinary American, in the context of the doctrine of foreign equivalents, is one who is knowledgeable in English, as well as the pertinent language.
The TTAB considered Peregrina's arguments that:
- much of the Spanish-speaking population is not fluent in English;
- only 14 to 15 million would truly qualify as bilingual;
- Spanish-speaking populations in the United States were highly localized; and
- the overwhelming majority of Americans are not bilingual in English and Spanish.
Noting that Spanish is a modern, common language, the TTAB differed, concluding that "by any standard, the Spanish language is spoken or understood by an appreciable number of US consumers who also speak or understand English".
As to whether bilingual Americans would translate the mark LA PEREGRINA, the TTAB found that the meanings of the two marks were identical. It also observed that nothing compelling in the record in terms of marketplace conditions or commercial realities would establish that LA PEREGRINA would not be translated. In that regard, the TTAB considered the four declarations by bilingual Americans to the effect that they would not stop and translate the mark LA PEREGRINA. However, the TTAB was not persuaded. One declarant stated that the mark referred to a type of pearl and meant ‘the wanderer’. Another declarant, also noting the association of the mark with a certain pearl, stated that the mark meant "a warbler, a wandering female or a wild concept". The TTAB found that the alternative translations lacked probative value, since they contradicted Peregrina's own translation of LA PEREGRINA.
As for the pearl references, the TTAB agreed that if the "relevant purchasing public" viewed the mark "as the name of a pearl, this would be a situation where purchasers would not translate the name". However, the TTAB noted that one declarant had stated that most educated people would know of the pearl, as opposed to ordinary consumers. It also noted that only one internet reference mentioned such a pearl and that there was nothing in the record as to:
- publicity for such pearls;
- the number of people aware thereof; or
- any other data from which the TTAB could conclude that ordinary consumers would view LA PEREGRINA as a name in its own right.
As for the remaining two declarations, the TTAB noted that they gave no reason why the declarants would not stop and translate the Spanish term.
In light of the record, the TTAB thus affirmed the refusal to register the mark.
Russell H Falconer, Baker Botts LLP, New York