John Welch at the TTABlog (nice to have met you in Seattle, John!) posted today a discussion of the TTAB’s recent decision in In re Helen Trimarchi and Michael Merr, where the Board took up once again the doctrine of foreign equivalents.
The issue here was whether a prior registration for GO GIRL for clothing could bar the registration of ALLEZ FILLES!, also for clothing. Heaven forbid the PTO should rely on an actual English-French Larousse to find a definition, or even on a French speaker – no, the examiner refused registration under 2(d) based on a Babel Fish translation of ALLEZ FILLES as “go girls.” Well, technically, yes, but in actual French? Non. Allez does mean go, and filles does mean girls, but if you asked an actual French person (or a French major such as yours truly), you would be met with a Gallic shrug of contempt for a stupid American product name that does not translate into anything that makes sense in French. Now, “allez les filles,” is a real phrase in French – one that I’d use, for example, in a cheery sing-song voice when attempting to herd my girls into the car in the morning, a la “Let’s go, you lazy slugabeds!” It does not, however, mean “go girl,” or even “you go girl,” which are used more to acknowledge accomplishment, as in “You just scaled that climbing wall at REI in 20 seconds – you go girl!”
So with my actual competence in the French language, I’m mystified at Judge Drost’s dissenting pronouncements in this case of the significance the mark ALLEZ FILLES purportedly conveys to people familiar with the French language:
It should be assumed that people familiar with a foreign language will
translate the words in that language unless there is a specific reason
for not translating the term, such as the term is the name of another
noteworthy object or it has another recognized meaning in the language.
How about the fact that the term has NO recognized meaning in the language? Thankfully, the majority opinion got this correct:
In view of the lack of equivalency based on the nonsensical translation
from a grammatically incorrect French phrase and the idiomatic meaning
of registrant’s mark, we find that any similarity due to the literal
translation does not outweigh the stark differences in sound and
appearance and does not create an overall commercial impression that is
confusingly similar to GO GIRL. Thus, taking into consideration the
vast differences in sound, appearance, and overall commercial
impression, and the lack of equivalency in meaning, we find the marks
to be dissimilar.
Where an arguable foreign language translation of a mark differs dramatically in sound, appearance, and commercial impression from the prior registration, as ALLEZ FILLES does here, I’m happy to live and let live. I’m more comfortable reserving the doctrine of foreign equivalents for preventing applicants from registering generic terms in a foreign language – the old Weiss Noodle precedent, or from preventing applicants from registering a phonetic equivalent of a competitor’s mark in another language. And I can see an arguable dilution angle as well, say, if a company sought to register MICROSUAVE for software.
But what I think is most important here is that the PTO should rely less on soulless computer software for its translations and more on real live people who speak the languages sought to be translated. Case in point: Babel Fish translated the title of this post as “this n’ is not a pipe.”
And everyone knows, it’s not a pipe – it’s just an image of a pipe.