South of the border: U.S. Federal Court of Appeals says “nyet” to TTAB’s decision on MOSKOVSKAYA

Robert Lehrman of Bevlog brought to my attention a recent U.S. Federal Court of Appeals decision concerning the registrability of a vodka trade-mark, MOSKOVSKAYA, applied for by Spirits International, N.V. The case is interesting in that it shows that in the U.S., the relevant population for assessing a foreign language trade-mark is the relevant consuming population which may, depending on the facts, may be limited to consumers who understand the relevant non-English language. The test is slightly different from the Canadian test for trade-marks written in languages other than English and French.

Source: SPI Group, www.spi-group.com

Source: SPI Group, http://www.spi-group.com

Background

The MOSKOVSKAYA trade-mark application was refused during examination as the examiner thought the mark was geographically deceptive. The TTAB upheld the examiner’s decision, based on the doctrine of foreign equivalents – the translation of foreign words from common languages into English – and the U.S. test for a mark being primarily geographically deceptively descriptive, namely:

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); and

3. The misrepresentation is a material factor in the consumer’s purchasing decision.

Spirits admitted that the MOSKOVSKAYA vodka would not be manufactured, produced or sold in Moscow, nor would the vodka have any Moscow connection.

Applying the doctrine of foreign equivalents, both the examiner and the TTAB concluded that the MOSKOVSKAYA mark’s primary significance when translated into English was Moscow, a generally known geographic location. The TTAB found that Moscow is well known for vodka; thus consumers’ purchasing decisions would likely be materially influenced by the MOSKOVSKAYA mark.

In analyzing materiality, the TTAB stated that an appreciable number of consumers for the goods at issue must be deceived but it was unnecessary to show that all or even most of the relevant consumers would be deceived. It was sufficient that some portion of the relevant consumers will be deceived. The TTAB found the MOSKOVSKAYA mark met the materiality requirement because of its deception to Russian speakers. The TTAB concluded that there is a “presumption 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” of MOSKOVSKAYA vodka. The TTAB also took judicial notice of a 2000 U.S. Census statistic that Russian is spoken by 706,000 people in the U.S.  The TTAB appears to have found that 706,000 people is an appreciable number and that “[a]t least one significant group of ‘ordinary American purchasers’ is the purchaser who is knowledgeable in English as well as [Russian]”.  The TTAB concluded that this established that the MOSKOVSKAYA mark is deceptive.

The Federal Court of Appeal’s decision

The Federal Court of Appeal remanded the case back to the TTAB based on the TTAB’s erroneous determination of the consuming population that must be materiality deceived. The Court found that generally, the test is that a significant portion of the relevant consuming population must be deceived.  In the absence of evidence showing that a product associated with a non-English mark is targeted to a community who understands the relevant language, the consuming population is the entire U.S. population interested in purchasing a product or service – not just consumers who understand the relevant non-English language. The TTAB applied the incorrect test by failing to consider whether Russian speakers in the U.S. were a significant portion of the target mark for MOSKOVSKAYA vodka.  Consequently, the Court remanded the application back to the TTAB to decide, under the correct test, whether the MOSKOVSKAYA mark is materially deceptive.

Differences and similarity to the Canadian test

The test applied in the appellate MOSKOVSKAYA ruling is partly different from the Canada Federal Court’s ruling in Cheung Kong (Holdings) Ltd. v. Living Realty Inc. on the material population for assessing confusion of Chinese trade-marks.  Cheung Kong was an appeal of an unsuccessful opposition concerning a Chinese character trade-mark. The Canadian Opposition Board had found that the appropriate test was whether the average Canadian would be confused. The Court held that confusion was to be assessed by looking to the average consumer of the services associated with the opposed mark – in this case, the Toronto Chinese community – not  the average Canadian. This was partly because the applicant’s evidence was that it targeted its services to the Toronto Chinese community.

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