Doctrine of foreign equivalents not always necessary

In Palm Bay Imports Inc v Veuve Clicquot Ponsardin Maison Fondée en 1772, the US Court of Appeals for the Federal Circuit has ruled that, where a mark contains foreign words, the doctrine of foreign equivalents will not apply when it is likely that a US buyer would simply take the mark at face value and not translate the foreign words. The doctrine is typically used to translate foreign words from common languages into English to determine factors such as genericness and descriptiveness, as well as similarity of connotation in order to ascertain whether there is any confusing similarity with existing word marks in English.

In the case at hand, Palm Bay Imports Inc appealed a decision of the US Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB) affirming the refusal to register the mark VEUVE ROYALE for sparkling wine. The TTAB ruled that the mark was likely to cause confusion pursuant to Section 2(d) of the Lanham Act with French champagne producer Veuve Clicquot Ponsardin Maison Fondée en 1772's (VCP) family of registered trademarks, namely:

  • VEUVE CLICQUOT PONSARDIN;

  • VEUVE CLICQUOT PONSARDIN (design);

  • VEUVE CLICQUOT; and

  • THE WIDOW.

With reference to the mark THE WIDOW, the TTAB said, in part, that confusion was likely because, applying the doctrine of foreign equivalents, an appreciable number of purchasers in the United States speak and/or understand French, and would translate Palm Bay's mark VEUVE ROYALE into English as 'royal widow'. However, with regards to the other VEUVE CLICQUOT marks it held that "an appreciable number of purchasers are unlikely to be aware that VEUVE means 'widow' and are unlikely to translate the marks into English". Palm Bay appealed on a number of grounds.

The Federal Circuit upheld the TTAB's likelihood of confusion analysis and holding with regard to all of the VEUVE CLICQUOT marks. It concluded that VEUVE is distinctive as to champagne and prominent in the commercial impression created by VCP's marks. It also constituted "the dominant feature" in the commercial impression created by Palm Bay's mark VEUVE ROYALE.

However, substantial evidence in the record did not support the TTAB's finding regarding its application of the doctrine of foreign equivalents to THE WIDOW. The court agreed with the TTAB's application of the doctrine in relation to the VEUVE CLICQUOT marks and held that it was improbable that the average US purchaser would stop and translate VEUVE into 'widow'. In reversing the TTAB's judgment on the mark THE WIDOW, the court said that the TTAB was inconsistent in its application of the doctrine of foreign equivalents.

Brian E Banner, Banner & Witcoff Ltd, Washington DC

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