| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77447666 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Applicant has applied to register the word mark Midnight for lingerie and sleepwear. The examining attorney has refused registration under Section 2(d) of the Lanham Act on the basis of U.S. Registration No. 3,210,989 for MINUIT as applied to briefs; ladies underwear; underwear; women's underwear, essentially, lingerie. The examining attorney has asserted that MINUIT is the French word for Midnight, and has asserted that under the doctrine of foreign equivalents "marks with foreign words are translated into English to determine similarity of connotation with English word marks," citing Palm Bay Imps. Inc. v. Veuve Cliquot Ponsondin Maison Fondee 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 196 (Fed. Cir. 2005). The examining attorney has refused registration of Applicant's mark for sleepwear as well as for lingerie, stating that sleepwear flows in the same channels of commerce as lingerie. On the subject of the doctrine of foreign equivalents, the examining attorney asserted that the test enunciated in Palm Bay was whether an ordinary American purchaser would "stop and translate" the foreign term into its English equivalent. It was also asserted that the "ordinary American purchaser" is one who is knowledgeable in the foreign language, citing In re Thomas, 79 USPQ2d 1021 (TTAB 2006). In the Thomas case the Board relied upon a secondary source, J. Michael McCarthy, McCarthy on Trademarks and Unfair Competition § 23.26(4th ed. 2006)("McCarthy's on Trademarks") for this principle. However, this is not the test that was enunciated by the Court of Appeals for the Federal Circuit, the primary reviewing court for the TTAB. The Federal Circuit in Palm Bay, the latest case appearing before that Court involving the doctrine of foreign equivalents stated that the applicable consumer is the "ordinary American consumer," not the average consumer knowledgeable in the particular foreign language at hand. The language the Court used was that the "doctrine [of foreign equivalents] should be applied only when it is likely that the ordinary American consumer would 'stop and translate [the word] into its English equivalent.'" Palm Bay, 396 F.3d at 1377. The Palm Bay case has been followed for this proposition by at least one District Court. See Habeeba's Dance of the Arts, Ltd. vs. Susan Knolauch and YWCA Columbus, 430 F. Supp.2d 709, 80 USPQ 2d 1311 (S.D. Ohio 2006). The authority relied upon by the examining attorney for the principle that the "ordinary American purchaser" stopping and translating a foreign word into its English equivalent is a purchaser knowledgeable in the foreign language is contrary to the holding in the Palm Bay case. But the Board and the trademark examining corps are obliged to apply the law promulgated by the Court of Appeals for the Federal Circuit, which has stated in Palm Bay that the purchaser making the translation is the average American consumer, not one knowledgeable in the applicable foreign language. The Board argued at length in In re Spirits International N.V., 86 USPQ1078 (TTAB 2008) that the language in Palm Bay quoted above was taken out of context and at variance with the Lanham Act. Nevertheless, the Court is the primary reviewing Court for the Board, is presumed to be familiar with the Lanham Act and its language was clear and unequivocal. It should be followed and the refusal based upon the Thomas case withdrawn.
The Average Consumer is Unlikely to Translate Minuit The holding that Vueve would not be translated into Widow was stated by the Board in the Spirits International case to be independent of the applicable legal standard enunciated in Palm Bay and thus true under either standard. The fact that French is a common foreign language in the United States and that Minuit is translatable into English as Midnight does not answer the question whether the an average consumer, whether or not knowledgeable in French, is likely to "stop and translate" it into English. Applicant asserts that the word Minuit does not alert any American consumer, whether or not knowledgeable in French, to stop and translate the word from French into English. The most likely connotation that the average American consumer, even a French speaking one, would give to Minuit is that it is derived from Peter Minuit, the Dutch governor of the Colony of New Netherlands who purchased the island of Manhattan in 1626 from the local native Americans for $24 worth of trinkets. See the attached Google search of Minuit and the attached article. The Google pages indicate that the primary meaning of Minuit is to identify Peter Minuit and the article describes the famed purchase of Manhattan Island for $24. This transaction is one of the most famous events of American colonial history and is taught to virtually every American student in grammar school. Thus, most American consumers would never reach the English translation of the word Minuit, even if they were knowledgeable in French. In addition, Applicant submits that the popularity of the particular foreign word's general usage is a relevant, if not controlling, factor and that this factor is generally reflected in the decisional law. Viewed through this lens, "minuit" is unlikely to be translated by consumers into "midnight." For example, looking at the particulars of the Palm Bay case, the French word at issue was Veuve, the French word for Widow. The English word Midnight is about as common as the word Widow. See www.wordcorrect.org/main.php where "Widow" is ranked the 5142nd most used English word and "Midnight" is ranked the 4510th most used word, roughly the same. Neither word is a commonly used word in English and it is assumed the same is true in French. Thus, the average American consumer of the Palm Bay case would be just as unlikely to stop and translate the word Minuit into English as he/she was to translate Veuve into English. Other cases, including those relied upon by the PTO in the Office Action, suggest that a word ranking in the 5,000 range of popularity is unlikely to be translated. For example, the Board found that "good (rank 116) morning (rank 445)"[1]; "black (rank 356) market (rank 286)"[2] and "sun (rank 869)"[3] were likely to be translated but that "aunt (rank 3126) Mary (rank 1441)"[4] and "goodness (rank 5323)"[5] were not likely to be translated. It should be noted that even Parnico, LLC, the owner of the cited registration did not attach any significance to the word Minuit. Parnico did not claim it was a translation of a foreign word in the application. There was no intent to suggest an English meaning to the word mark Minuit. It was only after the examining attorney inquired as to whether Minuit was a translation of a foreign word that Parnico stated that Minuit was the French word for Midnight. The test, as asserted by the examining attorney, is whether a consumer knowledgeable in French would stop and translate a word in a foreign language into English and recognize the connotation thereof. In this case, Parnico, LLC, the applicant itself, did not stop and think to translate its own mark into English. Why then would the average consumer, even one knowledgeable in French, make this connection? Applicant's Goods are not Related to Registrant's Goods Applicant has amended the description of goods to limit the description to only "sleepwear". Lingerie and sleepwear do not flow in the same channels of commerce. See the attached web pages from the Macy's and Bloomindgales sites, in which lingerie and sleepwear are separate categories. They are also found in different departments in the brick and mortar stores. In addition, it is well recognized in the apparel industry that the buyers for lingerie and the buyers for sleepwear at the wholesale level are different and that the goods appear in different departments in department stores. It is not correct to assume, as the examining attorney suggests, that if two classes of goods can be found anywhere in a department store they are related and flow in the same channels of commerce. For example, power tools and furniture are also sold in department stores and these goods are clearly not related to sleepwear or to lingerie.
The applicable test, the relatedness of the goods, depends on the strength of the senior mark MINUIT, translated in to English as MIDNIGHT as asserted by the examining attorney. This word is suggestive is applied to lingerie, and is a weaker mark on the spectrum of fanciful, arbitrary, suggestive descriptive, generic Lever Bros. Co. v. American Bakeries Co., 693 F.2d 251, 216 USPQ 177 (2d Cir. 1982). Weak marks are entitled only to a narrow scope of protection. Freedom Sav. & Loan Assn. v. Way, 757 F.2d 1176, 226 USPQ 123 (11th Cir. 1985). Parnico's protection should be limited to its claimed recitation of goods -lingerie- and not be expanded to a different type of product-sleepwear. There is no Likelihood of Confusion Under the Doctrine of Foreign Equivalents Returning to the doctrine of foreign equivalents, the doctrine, even as asserted by the examining attorney, is not absolute and under the facts at issue there is no likelihood of confusion. The Court of Appeals stated in the Palm Bay case that the doctrine is "not an absolute rule and should be viewed merely as a guideline." Palm Bay at P. 1377, citing In re N. Paper Mills, 64 F.2d 998, 999 (CCPA 1933) and McCarthy's on Trademarks, at § 11.34. It is noted in McCarthy's on Trademarks § 23.37 that meaning and connotation is only one prong of the sight, sound and meaning trilogy and that similarity in meaning sight, sound and other foundational factors must be considered. Several cases have held that a translation of a foreign word or words into English is not determinative. See In re Ness & Co., 18 USPQ 2d 1825 (TTAB 1991), which held GOODNESS not confusingly similar to LABONTE, where sight and sound were different and In re L'Oreal S.A., 222 USPQ 925 (TTAB 1984) where HI-FASHION SAMPLER for fingernail polish and HAUTE MONDE for hair coloring shampoo were found not to be confusingly similar due to the difference in the appearance of the marks and the difference in the goods. Both of these cases have application here. MIDNIGHT and MINUIT are difference in sound and appearance and the goods (sleepwear and lingerie) are as different as the goods in the L'Oreal case (nail polish vs. hair coloring shampoo). Thus, even under the law cited by the examining attorney, for the reasons discussed above - the identification of the word Minuit with Peter Minuit, the relative rarity of the French word Minuit (comparable to Veuve), the difference in the goods and the applicability of the Ness and L'Oreal cases - there is no likelihood of confusion between Applicant's Mark and MINUIT.
The application should be approved for publication. [1] In re American Safety Razor Co., 2 U.S.P.Q.2d 1459 (T.T.A.B. 1987). [2] In re Mark Thomas [79 U.S.P.Q. 2d 1021 (T.T.A.B. 2006). [3] In re Hub Distrib., Inc., 218 U.S.P.Q. (T.T.A.B. 1983). [4] In re Tia Maria, Inc., 188 U.S.P.Q. 524 (T.T.A.B. 1975). [5] In re Ness & Co., 18 U.S.P.Q.2d 1825 (T.T.A.B. 1991) |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_122935146-165440671_._Peter_Minuit_Bio.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT4\IMAGEOUT4\774\476\77447666\xml2\ROA0002.JPG |
| \\TICRS\EXPORT4\IMAGEOUT4\774\476\77447666\xml2\ROA0003.JPG | |
| \\TICRS\EXPORT4\IMAGEOUT4\774\476\77447666\xml2\ROA0004.JPG | |
| \\TICRS\EXPORT4\IMAGEOUT4\774\476\77447666\xml2\ROA0005.JPG | |
| ORIGINAL PDF FILE | evi_122935146-165440671_._MIDNIGHT-_Evidence_for_Response_to_Office_Action.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT4\IMAGEOUT4\774\476\77447666\xml2\ROA0006.JPG |
| \\TICRS\EXPORT4\IMAGEOUT4\774\476\77447666\xml2\ROA0007.JPG | |
| ORIGINAL PDF FILE | evi_122935146-165440671_._MIDNIGHT_Response_to_Office_Action_-_Evidence_30001.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT4\IMAGEOUT4\774\476\77447666\xml2\ROA0008.JPG |
| \\TICRS\EXPORT4\IMAGEOUT4\774\476\77447666\xml2\ROA0009.JPG | |
| DESCRIPTION OF EVIDENCE FILE | A digital copy of an online Encyclopedia printout; A digitial copy of a printout of a web page (2) |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 025 |
| DESCRIPTION | Lingerie; Sleepwear |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 08/13/2007 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/13/2007 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 025 |
| DESCRIPTION | Sleepwear |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 08/13/2007 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/13/2007 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
| RESPONSE SIGNATURE | /BARRY H. FISHKIN/ |
| SIGNATORY'S NAME | Barry H. Fishkin |
| SIGNATORY'S POSITION | Attorney of Record |
| DATE SIGNED | 12/04/2008 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Dec 04 17:15:35 EST 2008 |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.XXX-20 081204171535718926-774476 66-430644ef22f379ce29c3aa ad4ba3a90eb-N/A-N/A-20081 204165440671866 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Applicant has applied to register the word mark Midnight for lingerie and sleepwear. The examining attorney has refused registration under Section 2(d) of the Lanham Act on the basis of U.S. Registration No. 3,210,989 for MINUIT as applied to briefs; ladies underwear; underwear; women's underwear, essentially, lingerie.
The examining attorney has asserted that MINUIT is the French word for Midnight, and has asserted that under the doctrine of foreign equivalents "marks with foreign words are translated into English to determine similarity of connotation with English word marks," citing Palm Bay Imps. Inc. v. Veuve Cliquot Ponsondin Maison Fondee 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 196 (Fed. Cir. 2005). The examining attorney has refused registration of Applicant's mark for sleepwear as well as for lingerie, stating that sleepwear flows in the same channels of commerce as lingerie.
On the subject of the doctrine of foreign equivalents, the examining attorney asserted that the test enunciated in Palm Bay was whether an ordinary American purchaser would "stop and translate" the foreign term into its English equivalent. It was also asserted that the "ordinary American purchaser" is one who is knowledgeable in the foreign language, citing In re Thomas, 79 USPQ2d 1021 (TTAB 2006). In the Thomas case the Board relied upon a secondary source, J. Michael McCarthy, McCarthy on Trademarks and Unfair Competition § 23.26(4th ed. 2006)("McCarthy's on Trademarks") for this principle.
However, this is not the test that was enunciated by the Court of Appeals for the Federal Circuit, the primary reviewing court for the TTAB. The Federal Circuit in Palm Bay, the latest case appearing before that Court involving the doctrine of foreign equivalents stated that the applicable consumer is the "ordinary American consumer," not the average consumer knowledgeable in the particular foreign language at hand. The language the Court used was that the "doctrine [of foreign equivalents] should be applied only when it is likely that the ordinary American consumer would 'stop and translate [the word] into its English equivalent.'" Palm Bay, 396 F.3d at 1377. The Palm Bay case has been followed for this proposition by at least one District Court. See Habeeba's Dance of the Arts, Ltd. vs. Susan Knolauch and YWCA Columbus, 430 F. Supp.2d 709, 80 USPQ 2d 1311 (S.D. Ohio 2006).
The authority relied upon by the examining attorney for the principle that the "ordinary American purchaser" stopping and translating a foreign word into its English equivalent is a purchaser knowledgeable in the foreign language is contrary to the holding in the Palm Bay case. But the Board and the trademark examining corps are obliged to apply the law promulgated by the Court of Appeals for the Federal Circuit, which has stated in Palm Bay that the purchaser making the translation is the average American consumer, not one knowledgeable in the applicable foreign language. The Board argued at length in In re Spirits International N.V., 86 USPQ1078 (TTAB 2008) that the language in Palm Bay quoted above was taken out of context and at variance with the Lanham Act. Nevertheless, the Court is the primary reviewing Court for the Board, is presumed to be familiar with the Lanham Act and its language was clear and unequivocal. It should be followed and the refusal based upon the Thomas case withdrawn.
The Average Consumer is Unlikely to Translate Minuit
The holding that Vueve would not be translated into Widow was stated by the Board in the Spirits International case to be independent of the applicable legal standard enunciated in Palm Bay and thus true under either standard. The fact that French is a common foreign language in the United States and that Minuit is translatable into English as Midnight does not answer the question whether the an average consumer, whether or not knowledgeable in French, is likely to "stop and translate" it into English.
Applicant asserts that the word Minuit does not alert any American consumer, whether or not knowledgeable in French, to stop and translate the word from French into English. The most likely connotation that the average American consumer, even a French speaking one, would give to Minuit is that it is derived from Peter Minuit, the Dutch governor of the Colony of New Netherlands who purchased the island of Manhattan in 1626 from the local native Americans for $24 worth of trinkets. See the attached Google search of Minuit and the attached article. The Google pages indicate that the primary meaning of Minuit is to identify Peter Minuit and the article describes the famed purchase of Manhattan Island for $24. This transaction is one of the most famous events of American colonial history and is taught to virtually every American student in grammar school. Thus, most American consumers would never reach the English translation of the word Minuit, even if they were knowledgeable in French.
In addition, Applicant submits that the popularity of the particular foreign word's general usage is a relevant, if not controlling, factor and that this factor is generally reflected in the decisional law. Viewed through this lens, "minuit" is unlikely to be translated by consumers into "midnight." For example, looking at the particulars of the Palm Bay case, the French word at issue was Veuve, the French word for Widow. The English word Midnight is about as common as the word Widow. See www.wordcorrect.org/main.php where "Widow" is ranked the 5142nd most used English word and "Midnight" is ranked the 4510th most used word, roughly the same. Neither word is a commonly used word in English and it is assumed the same is true in French. Thus, the average American consumer of the Palm Bay case would be just as unlikely to stop and translate the word Minuit into English as he/she was to translate Veuve into English. Other cases, including those relied upon by the PTO in the Office Action, suggest that a word ranking in the 5,000 range of popularity is unlikely to be translated. For example, the Board found that "good (rank 116) morning (rank 445)"[1]; "black (rank 356) market (rank 286)"[2] and "sun (rank 869)"[3] were likely to be translated but that "aunt (rank 3126) Mary (rank 1441)"[4] and "goodness (rank 5323)"[5] were not likely to be translated.
It should be noted that even Parnico, LLC, the owner of the cited registration did not attach any significance to the word Minuit. Parnico did not claim it was a translation of a foreign word in the application. There was no intent to suggest an English meaning to the word mark Minuit. It was only after the examining attorney inquired as to whether Minuit was a translation of a foreign word that Parnico stated that Minuit was the French word for Midnight. The test, as asserted by the examining attorney, is whether a consumer knowledgeable in French would stop and translate a word in a foreign language into English and recognize the connotation thereof. In this case, Parnico, LLC, the applicant itself, did not stop and think to translate its own mark into English. Why then would the average consumer, even one knowledgeable in French, make this connection?
Applicant's Goods are not Related to Registrant's Goods
Applicant has amended the description of goods to limit the description to only "sleepwear". Lingerie and sleepwear do not flow in the same channels of commerce. See the attached web pages from the Macy's and Bloomindgales sites, in which lingerie and sleepwear are separate categories. They are also found in different departments in the brick and mortar stores. In addition, it is well recognized in the apparel industry that the buyers for lingerie and the buyers for sleepwear at the wholesale level are different and that the goods appear in different departments in department stores. It is not correct to assume, as the examining attorney suggests, that if two classes of goods can be found anywhere in a department store they are related and flow in the same channels of commerce. For example, power tools and furniture are also sold in department stores and these goods are clearly not related to sleepwear or to lingerie.
The applicable test, the relatedness of the goods, depends on the strength of the senior mark MINUIT, translated in to English as MIDNIGHT as asserted by the examining attorney. This word is suggestive is applied to lingerie, and is a weaker mark on the spectrum of fanciful, arbitrary, suggestive descriptive, generic Lever Bros. Co. v. American Bakeries Co., 693 F.2d 251, 216 USPQ 177 (2d Cir. 1982). Weak marks are entitled only to a narrow scope of protection. Freedom Sav. & Loan Assn. v. Way, 757 F.2d 1176, 226 USPQ 123 (11th Cir. 1985). Parnico's protection should be limited to its claimed recitation of goods -lingerie- and not be expanded to a different type of product-sleepwear.
There is no Likelihood of Confusion Under the Doctrine of Foreign Equivalents
Returning to the doctrine of foreign equivalents, the doctrine, even as asserted by the examining attorney, is not absolute and under the facts at issue there is no likelihood of confusion. The Court of Appeals stated in the Palm Bay case that the doctrine is "not an absolute rule and should be viewed merely as a guideline." Palm Bay at P. 1377, citing In re N. Paper Mills, 64 F.2d 998, 999 (CCPA 1933) and McCarthy's on Trademarks, at § 11.34. It is noted in McCarthy's on Trademarks § 23.37 that meaning and connotation is only one prong of the sight, sound and meaning trilogy and that similarity in meaning sight, sound and other foundational factors must be considered. Several cases have held that a translation of a foreign word or words into English is not determinative. See In re Ness & Co., 18 USPQ 2d 1825 (TTAB 1991), which held GOODNESS not confusingly similar to LABONTE, where sight and sound were different and In re L'Oreal S.A., 222 USPQ 925 (TTAB 1984) where HI-FASHION SAMPLER for fingernail polish and HAUTE MONDE for hair coloring shampoo were found not to be confusingly similar due to the difference in the appearance of the marks and the difference in the goods. Both of these cases have application here. MIDNIGHT and MINUIT are difference in sound and appearance and the goods (sleepwear and lingerie) are as different as the goods in the L'Oreal case (nail polish vs. hair coloring shampoo).
Thus, even under the law cited by the examining attorney, for the reasons discussed above - the identification of the word Minuit with Peter Minuit, the relative rarity of the French word Minuit (comparable to Veuve), the difference in the goods and the applicability of the Ness and L'Oreal cases - there is no likelihood of confusion between Applicant's Mark and MINUIT.
The application should be approved for publication.
[1] In re American Safety Razor Co., 2 U.S.P.Q.2d 1459 (T.T.A.B. 1987).
[2] In re Mark Thomas [79 U.S.P.Q. 2d 1021 (T.T.A.B. 2006).
[3] In re Hub Distrib., Inc., 218 U.S.P.Q. (T.T.A.B. 1983).
[4] In re Tia Maria, Inc., 188 U.S.P.Q. 524 (T.T.A.B. 1975).
[5] In re Ness & Co., 18 U.S.P.Q.2d 1825 (T.T.A.B. 1991)
