Doctrine of Foreign Equivalents

The Federal Circuit recently reversed a Trademark Trial and Appeal Board (TTAB) decision affirming an Examining Attorney’s refusal to register the mark MOSCOVSKAYA as primarily geographically deceptively misdescriptive. In Russian, MOSCOVSKAYA means “from Moscow.” The Examining Attorney relied on the Doctrine of Foreign Equivalents which is a guideline providing that foreign words from modern languages be translated into English when it is likely that the ordinary American purchaser would stop and translate the foreign word into English. The third prong of the test for primarily geographically deceptively misdescriptive is that the misrepresentation is a material factor in the consumer’s decision. Joining the Doctrine of Foreign Equivalents and the 3rd prong of the test, the TTAB found that Russian speakers are an appreciable number of consumers and found that the mark met the materiality test of the 3rd prong based on the deception to Russian speakers. The Fed. Cir. ruled that the materiality test requires that a substantial portion of the relevant consumers is likely to be deceived, not whether any particular segment (Russian speakers) is likely to be deceived. The Fed. Cir. went on to state that Russian speakers may in fact be a substantial portion of the intended audience, but this needs to be considered by the TTAB on remand. We will have to wait and see if this decision will expand to other trademark principles (likelihood of confusion, descriptiveness, surnames, etc.) or be limited to primarily geographically deceptively misdescriptive refusals? In re Spirits International, N.V., Appeal No. 2008-1369 (Fed. Cir. April 29, 2009).