On July 7, 2022, in In re Lana Grossa mode mit Wolle Handels-und Vertriebs GmbH, the Trademark Trial & Appeal Board (the “Board”) held that a mark utilizing the Italian word for yarn, Filati, could not be registered because the mark is generic and thus incapable of registration.
The opinion is instructive because it covers several matters pertinent to trademark registration that often take a backseat to the far more common likelihood-of-confusion registration issues. This blog summarizes the take home points from Lana Grossa wherein the Applicant sought registration of the mark FILATI on the Supplement Register as a generic mark.
- Some Background on the Supplemental Register.
The Supplemental Register (“SR”) offers legal protections to a lesser extent than the Principal Register. SR can thus be a viable alternative to registration on the Principal Register if an applied-for mark is rejected on merely descriptive/generic grounds providing the proposed mark passes a likelihood of confusion analysis by the examining attorney. Indeed, examining attorneys may recommend that the original application be amended to a “Supplemental Registration” application if the applied-for mark is not rejected on likelihood of confusion grounds. One can also initially apply for registration on the Supplemental Register as did the FILATI mark Applicant but such an application will nevertheless be examined to see if it qualifies for such registration. Additionally, a “Supplemental Registered” mark may later qualify for registration on the Principal Register if the registrant can establish that the mark has become distinctive in the minds of consumers.
2. A Mark Comprising a Foreign Word Will Not Overcome Potential Registration Issues.
Over the years, the commentator has encountered clients who mistakenly believe that using a foreign word as a mark for service(s) or good(s) provided in the U.S will eliminate registration problems. This assumption is a fallacy. First, trademark applications require the applicant to provide a translation of the foreign word.
Second, under the doctrine of equivalents, the foreign equivalent of a registered arbitrary English word mark may result in a finding of likelihood of confusion. For example, a proposed mark for MANZANA (Spanish for apple) as an arbitrary mark for computers would clearly not be registrable in today’s “Apple Brand” world.
Moreover, a merely descriptive or generic foreign word mark is no more registrable than its English counter-part. As the Lana Grossa opinion states: “[A] word taken from a well-known foreign modern language, which is, itself, merely descriptive of a product or service will be so considered when it is attempted to be registered as a trademark in the United States for the same product.” The doctrine is, however, to be applied only when it is likely that the ordinary American purchaser who is knowledgeable in the foreign language would stop and translate the foreign word into its English equivalent. The FILATI mark applicant had argued that the mark was merely descriptive and eligible for registration on the SR.
As a result of various websites and publications accessible in the U.S. promoting a premier international Italian yarn (as “Filati”) event, the Board concluded that the relevant U.S. consumers, particularly those with knowledge of Italian, will translate the word “Filati” into “yarn.” As such, the word “Filati” is a generic term for yarn and cannot be registered on the Supplemental Register.
As discussed above, a merely descriptive foreign word may be registered on the Supplemental Register. A merely descriptive mark is one which describes a desirable characteristic of the specified good/service. For example, In In re Geo. A. Hormel & Co., 227 USPQ 813 (TTAB 1985), the Board held that the applied-for mark SAPORITO, an Italian word meaning “tasty,” was merely descriptive and ineligible for registration on the Principal Register. Interestingly the SAPORITO mark was originally registered in 1973 on the Supplemental Register by a company other than Hormel. Reg. no. 952,895. In 1989, that same company was able to achieve registration on the Principal Registration by showing that the mark had acquired distinctiveness and recognition by the buying public. Reg. no. 1573637 obtained under Section 2(F) of the Lanham Act.
- The Stylized Lettering in FILATI Is Insufficient for Creating a Distinct Commercial Impression Separate and Apart from the Generic Word Itself.
Having found that the mark FILATI is generic, the Board next determined if the Applicant’s stylized drawing of the word mark is so distinctive that it is possible to disclaim the unregistrable components and still have a registrable mark as a whole. Generic matter within an applied-for mark, whether the mark is to be registered on the Principal Register or the Supplemental Register, must generally be disclaimed. Here, the entire mark itself (i.e. (“Filati”) would need to be disclaimed. Yet, an entire mark cannot be disclaimed. TMEP § 1213.06 (2022). The Board concluded that the FILATI mark does not create a distinct commercial impression separate and apart from the word itself. As such the mark was not registrable on the Supplemental Register. To understand the Board’s reasoning, compare the registered mark CONSTRUCT A CLOSET, where the stylistic rendering of the mark was found to be distinctive, with the unregistrable FILATI mark.
- Take Home Points.
Trademark law is not as simple as it may seem as this decision shows. This is why a trademark attorney should be consulted so that the registration risks can be understood and discussed. Why spend a lot of money on building brand where legal protection may well not even be available? Contact Susan Troy at 305-279-4740 for a complimentary consultation on your branding legal requirements.
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