Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE ATAVIO INC.
Serial No. 74/055,292
November 25, 1992
Peter J. Manso of the firm of Wood, Herron & Evans for applicant.
Charles Weigell
Trademark Examining Attorney
Law Office 15
(Paul E. Fahrenkopf, Managing Attorney)
Before Sams, Rice and Rooney
Members
Opinion by Rooney
An application was filed to register the term ATAVIO for fashion jewelry. Applicant has alleged a bona fide intent to use the term for the identified goods in interstate commerce. Registration has been finally refused under Section 2(e)(1) of the Trademark Act of 1946 on the ground that the term ATAVIO is merely descriptive of the goods, inasmuch as it is a Spanish word which, in translation, is merely descriptive of applicant's identified goods.
It is well settled that "no distinction can be made between English terms and their foreign equivalents with respect to registrability and that the foreign equivalent of a merely descriptive English term is no more registrable than the English term itself, despite the fact that the foreign term may not be commonly known to members of the general public in the United States". See In re Geo. A. Hormel & Co., 227 USPQ 813 (TTAB 1985); In re Jos. Schlitz Brewing Co., 223 USPQ 45 (TTAB 1983) and cases cited therein; and In re E. Martinoni Company, 189 USPQ 589 (TTAB 1975).
In this case, it is asserted that ATAVIO translates from Spanish to English as "ornament, finery, dress, decoration and adornment" (Cassell's Spanish-English English-Spanish Dictionary 1978) and that "jewelry" is defined as "ornamental pieces (as rings, necklaces, bracelets) made of materials that may or may not be precious (gold, silver, glass, plastic) often set with genuine or imitation gems and worn for personal adornment". (Webster's New International Dictionary, 3d ed.1986) Besides providing the dictionary definitions to support the refusal, the Examining Attorney has submitted copies of excerpted articles from the Lexis/Nexis data base, of which the following are examples:
... Far East. Carved horns are prized as dagger handles by men in the Middle East. Elephant tusks are carved into jewelry and other ornaments.
***
... "Jewelry in Charleston: Two Centuries of Adornment" is on display at the Charleston Museum ...
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... And much new costume jewelry has become better and better, a far cry from the discount-store adornments also available.
***
The tax on jewelry applies to articles worn on the person or apparel for adornment, including watches, custom-made jewelry, and jewelry made from gems and other material supplies by the customer, ...
Applicant has submitted several translations from Spanish-English or Spanish dictionaries. For example, from Vox New College Spanish and English Dictionary, "atavio m. dress, adornment. 2 pl. finery, adornments"; from The American Heritage Larousse Spanish Dictionary, "a-ta-vi-o m. (adorno) decoration; (vestido) attire/pl. finery, trappings"; from A New Pronouncing Dictionary of the Spanish and English Languages 1973, "Atavio m. The dress and ornament of a person, accoutrement, finery, gear"; and from the Dictionary of the Spanish Language 1970, "atavio m adorno; atavios mpl objetos para adorno". The latter translates to "adornment; objects of adornment". In addition to the foregoing, The Concise American Heritage Larousse Spanish Dictionary 1989 defines "atavio" as "m. (adorno) decoration; (vestido) attire pl. finery, trappings".
*2 A merely descriptive term is one which, when seen on the goods, immediately informs one of a characteristic, ingredient, quality, or attribute of the goods. One which is only suggestive requires some imagination, thought or perception to determine its meaning in relation to the goods. It has long been acknowledged that there is a very narrow line between terms which are merely descriptive and those which are only suggestive. See re TMS Corporation of America, 200 USPQ 57 (TTAB 1978).
The question to be decided here is whether the mark is merely descriptive as applied to the goods identified in the application. In this case, the mark is a Spanish word. Therefore, in translation that Spanish word must merely describe the applicant's goods.
Considering all of the foregoing translations, it appears to the Board that the basic meaning of the word "atavio" is summed up in the definition which reads: "The dress and ornament of a person", that is, "the accoutrement, finery, gear". (A New Pronouncing Dictionary of the Spanish and English Languages 1973) This is confirmed by the definition from The American Heritage Larousse Spanish Dictionary, which also refers to attire, finery and trappings. Thus, it appears to be an inclusive term for the overall attire of an individual rather than a reference to a particular item of attire. We do not think that it is accurate to conclude, solely on the basis of these definitions, which we find ambiguous, that ATAVIO is the precise equivalent of "ornament" and/or "adornment" and that ATAVIO is, therefore, merely descriptive of fashion jewelry (assuming, arguendo, that the English words "ornament" and "adornment" are merely descriptive of applicant's goods).
It would no doubt be helpful to have an example of the context in which the word "atavio" might be used by a Spanish speaking individual, but we do not have such evidence of the use of that Spanish word. Nor could we reasonably expect the Examining Attorney to supply such evidence. However, we find it difficult to conclude on the basis of the definitions given in these dictionaries that "atavio" in translation does nothing more than merely describe applicant's goods.
In the case of In re Sarkli, 220 USPQ 111 (Fed.Cir.1983), wherein registration of the foreign word mark REPECHAGE had been refused under Section 2(d) of the Act in view of a registration for the mark SECOND CHANCE, the court cautioned that the "test to be applied to a foreign word vis-a-vis an English word with respect to equivalency is not less stringent than that applicable to two English words". While the dictionary meanings of the French word involved in that case, "repechage", had a broad connotation of "giving a second chance", the court said that that is not the same as saying that "repechage" is the equivalent of "second chance". Although the Sarkli case involved a question of likelihood of confusion, we do not believe that there is any reason to apply a lesser standard of equivalency when the question is whether the term, as translated, is merely descriptive.
*3 It is the Board's opinion that, as applied to the applicant's goods, the term ATAVIO, while highly suggestive, is not merely descriptive of the identified goods. Any doubt that we may have in reaching this conclusion, and we frankly admit that doubt exists, is resolved in favor of the applicant, that is to say, in favor of publication for opposition.
Accordingly, the refusal to register is reversed.
J.E. Rice
L.E. Rooney
Member, Trademark Trial and Appeal Board