Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA876870 Filing date: 02/12/2018 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 79194077 Applicant S. MALHOTRA & CO. AG Correspondence Alexander Lazouski Address Lazouski IP LLC 14726 Bowfin Terrace, Suite 1 Lakewood Ranch, FL 34202 UNITED STATES Email: [email protected], [email protected] Submission Appeal Brief Attachments GAMOS SN 79194077 Appeal.pdf(324330 bytes ) Exhibit A.pdf(1802905 bytes ) Exhibit B.pdf(384875 bytes ) Filer's Name Alexander Lazouski Filer's email [email protected] Signature /asl/ Date 02/12/2018 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Applicant: S. MALHOTRA & CO. AG Trademak: Serial No. 79194077 APPLICANT’S BRIEF ON APPEAL This is an appeal from a FINAL refusal dated July 11, 2017 to register the mark , Serial No. 79194077 (“Applicant’s Mark” or “ Mark”) arguing that is merely descriptive in regards to “Precious metals and their alloys and goods made of these materials or coated therewith included in this class, namely, jewelry and watches” (“Applicant’s Goods”). The question presented in this appeal is whether Mark is merely descriptive in connection with Applicant’s Goods within the meaning of Trademark Act Section 2(e). As set forth more fully below, Applicant respectfully requests that the Trademark Trial and Appeal Board (the “Board”) reverse the final refusal on the basis that “ ” is not merely descriptive. I. DESCRIPTION OF RECORD 1. On October 20, 2016, Applicant filed an application for the Mark. 2. On November 19, 2016, an Official Action issued wherein the Examining Attorney, among other requirements, alleged that “ ” translates to “wedding” in English and is merely descriptive in connection with Applicant’s Goods. 3. Applicant filed a timely response on May 16, 2017 stating that “ ” has various non-descriptive meaning, or that a doctrine of foreign equivalents has no applicability. Therefore, Applicant argued, is not merely descriptive within the meaning of Trademark Act Section 2(e). 4. On July 11, 2017, a final Official Action issued wherein the Examining Attorney maintained a descriptiveness refusal and suggested the following translation statement: The English translation of the word “ ” in the mark is “wedding, matrimony or marriage.” 5. Applicant timely filed a Notice of Appeal on December 12, 2017. II. EVIDENCE ON RECORD IN SUPPORT OF APPLICANT’S APPEAL 1. Translations of “gamos” from Greek and Spanish (Exhibit A). 2. Definition of “Hieros Gamos” Wikipedia (Exhibit B). III. LEGAL ARGUMENTS A. Generla Standards for Mere Descriptiveness The Examining Attorney has the burden of establishing a prima facie case of mere descriptiveness. In re Gyulay, 3 USPQ 2d 1009 (Fed. Cir. 1987). The Board has noted on a number of occasions that “there is a thin line between a suggestive and a merely descriptive designation, and where reasonable men may differ, it is the Board’s practice to resolve the doubt in applicant’s favor and publish the mark for opposition.” In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981); In re Bel Paese Sales Co., 1 USPQ 2d 1233 (TTAB 1986); In re American Standard Inc., 223 USPQ 353, 355 (TTAB 1984); In re The Rank Organisation Limited, 222 USPQ 324, 325 (TTAB 1984). A mark or term is merely descriptive if it imparts or conveys an immediate idea as to the ingredients, qualities or characteristics of the goods with which it is used. In re Abcor Development Corporation, 200 USPQ 215 (CCPA 1978). Further, not only must the wording immediately impart information about the goods, but it must do so with a “degree of 2 particularity.” In re Intelligent Medical Systems, Inc., 5 USPQ 2d 1674 (TTAB 1987); see also, Holiday Inns, Inc. v. Monolith Enter., 212 USPQ 949 (TTAB 1981). In other words, in requiring a disclaimer on the basis of mere descriptiveness, the Examining Attorney must find more than simply some connection between the arguably-descriptive terms and the goods. The relationship must be such that the wording conveys a readily understood meaning of the goods to the average purchaser. That is, the mark must literally, and with particularity, “describe” the goods. As noted in In re Colonial Stores, Inc., 157 USPQ 382 (CCPA 1968) and In re Quik-Print Copy Shops, Inc., 205 USPQ 505, n.7 (CCPA 1980), “merely” in “merely descriptive” means “only.” The Board has consistently reversed the decisions of examining attorneys who refuse registration on the basis of mere descriptiveness in the absence of actual evidence linking the recognized meaning of the mark sought to be registered to the goods of the Applicant. See, e.g., In re Intelligent Medical Systems Inc., 5 USPQ 2d 1674 (TTAB 1987) (reversing examining attorney’s refusal to register “INTELLIGENT MEDICAL SYSTEMS”). Unlike merely descriptive marks, suggestive marks do not directly describe the characteristics of the goods, but rather evoke them by requiring a consumer to use his imagination to draw conclusions about the nature and features of the goods. In re Colonial Refining and Chemical Co., 196 USPQ 46 (TTAB 1977); Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 217 USPQ 988 (5th Cir. 1983). Granted, “[t]here must be some description in almost any suggestion or the suggesting process will not take place.” Q-tips, Inc. v Johnson & Johnson, 98 USPQ 86, 88 (3d Cir. 1953); In re Reynolds Metals Co., 178 USPQ 296, 297 (CCPA 1973) (“…one may be informed by suggestion as well as by description.”). However, this fact alone does not preclude a finding that the mark itself is suggestive. Application of Colonial Stores, Inc., 157 USPQ 382 (CCPA 1968). 3 B. The Doctrine Of Foreign Equivalents Has No Applicability TMEP §1207.01(b)(vi)(A) states that …[T]he doctrine of foreign equivalents has evolved into a guideline, not an absolute rule, and is applied only when the “ordinary American purchaser” would “stop and translate” the foreign wording in a mark into its English equivalent… (citation omitted, emphasis added) Despite this directive, the Examining Attorney has refused to register Applicant’s mark based on a rigid application of the doctrine of foreign equivalents in order to find that GÁMOS is a descriptive term. Applicant respectfully suggests, however, that such doctrine should not be applied in this examination of Applicant’s mark since the doctrine only applies “when it is likely that the ordinary American purchaser would stop and translate [the word] into its English equivalent.” Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005). In this instance, the term “ordinary American purchaser” refers to one who is knowledgeable in Greek and Spanish. See In re Thomas, 79 U.S.P.Q.2d 1021, 1024 (TTAB 2006) (“ordinary American purchaser . refers to the ordinary American purchaser who is knowledgeable in the foreign language”). There is no basis even to presume, let alone to deem it “likely”, that the ordinary American purchaser who is knowledgeable in Greek and Spanish “would stop and translate” the GÁMOS mark – which is registered in connection with wines – into any “English equivalent”, particularly the word “wedding”, as presumed by the Examining Attorney. Indeed, it is recognized that “there are foreign expressions that even those familiar with the language will not translate, accepting the term as it is.” In re Tia Maria, Inc., 188 U.S.P.Q. 524, 525 (TTAB 1975) (finding that consumers will not translate TIA MARIA as the name of a Mexican restaurant because the marketplace makes it unfeasible for them to do so). See also In re Pan Tex Hotel Corp., 190 U.S.P.Q. 109, 110 (TTAB 1976) (finding that consumers are unlikely to translate LA POSADA when used as the name of a motor hotel into its English equivalent of “the inn,” 4 because “la posada” creates a different commercial impression in English than it does in Spanish). Further, in terms of the translation of the mark for the purposes of applying the doctrine of foreign equivalents, TMEP §1207.01(b)(vi)(B) states that ...[W]here the evidence shows that the English translation is not exact, literal, or direct, the doctrine of foreign equivalents has generally not been applied to find the marks confusingly similar. See In re Buckner Enters., 6 USPQ2d 1316 (TTAB 1987) (holding DOVE (with design) for stoves and furnaces, and PALOMA for various forms of gas heating apparatus, not likely to cause confusion, because, inter alia, the Spanish word “paloma” and the English word “dove” are not exact synonyms in that “paloma” can be translated into either “dove” or “pigeon”). Thus, several translation dictionaries showing variations in the English meaning constitute evidence that the foreign word or term may not have a literal and direct translation, and the doctrine should not be applied. (citation omitted, emphasis added) The Applicant respectfully informs the Examining Attorney that in addition to translation provided by the Examining Attorney, specifically, “wedding”, the word “GÁMOS” or “ ” has the following meanings/translations: (1) matrimony; (2) marriage; (3) a sexual ritual that plays out a marriage between a god and a goddess, especially when enacted in a symbolic ritual where human participants represent the deities; (4) union; (5) small deer; (6) buck. Thus, based on the attached evidence, the word “ ” has well-established alternative meanings, which constitutes evidence that may not have a literal and direct translation, and the doctrine of foreign equivalents should not be applied. Even to consider (purely for argument’s sake) that the doctrine of foreign equivalents applies, these many definitions of “ ” remove this term from the merely descriptive category.