In a split decision on May 14th, 2009, the United States Trademark Trial and Appeal Board (TTAB) reversed a finding of likelihood of confusion based upon misapplication of the doctrine of foreign equivalents. In In re Helen Trimarch and Michael Merr, the TTAB concluded that the application for ALLEZ FILLES! & Design for certain clothing items would not cause confusion with the registration for GO GIRL, on identical clothing items, despite the literal translation of "allez filles" to "go girls."
The Examining Attorney originally refused registration of ALLEZ FILLES! & Design, in the name of Helen Trimarch and Michael Merr, based upon a 2(d) likelihood of confusion with Registration No. 2227005 for GO GIRL. Both marks cover clothing items in class 25. The Examining Attorney determined that "Allez Filles" was equivalent to "go girl" based upon an online translation, Applicant's submitted translation of the mark, and a message from the USPTO's translator stating that "Allez Filles" translates to "go girls."
Upon appeal, Applicant argued that "allez filles" is, technically, grammatically incorrect French, thus French-speaking consumers would not bother to directly translate the phrase. Applicant contended that, at most, French-speaking consumers may recognize the phrase, "allez filles," to mean "let's go girls," or "allez les filles." This interpretation differed from the phrase "go girl" which, Applicant argued, had a more "urban" connotation in the English language than the invitational "let's go girls."
Two of the three TTAB judges agreed that the doctrine of foreign equivalents would not apply, as French-speaking consumers would most likely ignore the phrase given its grammatical incorrectness. Moreover, while "allez" translates, literally, to "go" and "filles" to "girls," it does not necessarily hold that "allez filles" is equivalent to the meaning of English phrase "go girls," as online translations often do not consider phrasal meanings of words in combination. As the phrases were not, in the Board's opinion, equivalent, the doctrine of foreign equivalency would not apply. The Board reversed the refusal based upon the lack of foreign equivalency which added to the overall differences in sound, appearance, and overall commercial impression between "ALLEZ FILLES! & Design" and "Go Girl."
In his dissent, Judge Drost argued that the doctrine of foreign equivalents would apply in this situation, as "Allez Filles" was "the type of term that prospective purchasers would stop and translate." While "the line between foreign words that consumers would stop and translate is not always clear" Judge Drost argued that the TTAB should assume every individual with a familiarity of the foreign language would translate a foreign term. Moreover, in the present situation, the TTAB's decision allowed two marks covering identical goods to exist on the register, one reading "GO GIRL" and the other having a literal translation to "GO GIRLS," whether or not the literal translation was actually "equivalent." According to Judge Drost the refusal should have been maintained, as the meaning of the marks was similar enough to cause potential confusion in the marketplace.
In re Helen Trimarch and Michael Merr ultimately turned upon whether French-speaking consumers would or would not stop to translate the term "allez filles" and whether literal and equivalent translations are one in the same. This case illustrates the enduring difficulty in applying the doctrine of foreign equivalents, especially in cases where an equivalency would mean the difference between refusal and allowance. The Board's split opinion seems to call for greater clarification in the standards which determine the doctrine of foreign equivalents' application in a given situation. Such clarification may be difficult to accomplish, especially given the already subjective nature of the standard and its requirement to predict the mental decisions of everyday consumers.
Vol. 53, June 2010