Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE JOHANNA FARMS, INC.
Serial No. 542,343
June 30, 1988
Lerner, David, Littenberg, Krumbolz & Mentlik for applicant
Trademark Examining Attorney
Law Office V
(Paul Fahrenkopf, Managing Attorney)
Before Sams, Rice, Rooney, Simms, Krugman, Cissel, Seeherman and Hanak
Opinion by Krugman
An application has been filed by Johanna Farms, Inc. to register the term 'LA YOGURT' ('YOGURT' disclaimed) as a trademark on the Principal Register for yogurt. [FN1] Applicant seeks registration pursuant to Section 2(f) of the Trademark Act based on the claim that the designation sought to be registered has acquired distinctiveness.
Registration has been refused on two grounds. First, the Examining Attorney maintains that registration herein is barred under the doctrine of stare decisis in view of a final decision rendered by the Board in connection with a prior application to register 'LA YOGURT' for yogurt. [FN2] The Examining Attorney maintains that the relevant circumstances involved in the present case are identical to those considered in the prior application and that applicant is precluded from relitigating issues which have already been determined.
As a second ground for refusal, the Examining Attorney asserts that, even if it is determined that stare decisis does not bar registration herein, the phrase 'LA YOGURT' is a generic designation, incapable of distinguishing applicant's goods from those of others; that 'YOGURT' is the French generic name for the goods; that use of the French article 'LA' in combination with 'YOGURT' yields only an ungrammatical variation on the foreign generic term for the goods and that evidence of de facto secondary meaning cannot elevate the generic term sought to be registered to the status of a registrable trademark.
Applicant has appealed.
In view of the issues presented by this case, the oral hearing on November 17, 1987 was held before the eight members of the Trademark Trial and Appeal Board sitting, by designation of the Chairman of the Trademark Trial and Appeal Board, as an augmented panel.
Turning first to the issue of stare decisis, a brief review of the circumstances of the prior application and the Board's decision relating thereto are in order.
Applicant initially filed an application to register 'LA YOGURT' as a trademark for yogurt on the Principal Register. [FN3] After registration was refused on the ground that the term sought to be registered was 'merely the name of the goods,' applicant amended its application to one seeking registration on the Supplemental Register. Eventually, registration was finally refused on the Supplemental Register on the ground that 'LA YOGURT' was nothing more than the apt (generic) name of the goods and that said term, therefore, was unregistrable on the Supplemental Register. Applicant then appealed.
The Board, in deciding the appeal, noted that 'yogurt' was concededly the name of the goods and that the term 'la' had no significance by itself in relation to yogurt or any other product, other than as the French feminine article modifying the generic term. The Board then stated that the question to be decided was whether the entire term 'LA YOGURT' was generic. If it were, the Board stated, the term could not be registered on either the Principal or Supplemental Register. If, however, 'LA YOGURT' were not generic, it would be registrable on the Principal Register. In either case, the Board maintained, evidence of secondary meaning was irrelevant. The Board then concluded that, on the record presented, the Examining Attorney's conclusion that 'LA YOGURT' was the apt name of the goods was without error. The Board stated that the '. . . principal foundation of our conclusion is that to the segment of our purchasing public which is French in language and culture, the term LA YOGURT would be perceived as a variation or corruption of the generic name for 'yogurt' in the French language.' In re Johanna Farms, supra, at 610.
*2 In reaching its conclusion as to how French--American purchasers were likely to perceive the term 'LA YOGURT,' the Board pointed to two letters from consumers of applicant's yogurt who were purportedly knowledgeable in French. The Board stated that this evidence substantiated the Examining Attorney's conclusion that French-speaking consumers would perceive 'LA YOGURT' as a variation or corruption of the French generic term and the Board affirmed the refusal of registration, relying on the doctrine of foreign equivalents, and citing Weiss Noodle Co. v. Golden Cracknel and Specialty Company, 290 F.2d 845, 129 USPQ 411 (CCPA 1961).
The Board, in the alternative, maintained that even if 'LA YOGURT' were not incapable of distinguishing source to French--American purchasers under the doctrine of foreign equivalents, the refusal of registration would nevertheless be affirmed under the rationale that the addition of the article 'la' to the English generic term 'yogurt' was insufficient to convey any impression to ordinary American consumers other than the apt name for the goods. To the vast majority of those persons, the Board reasoned, the presence of 'la', together with applicant's emphasis in advertising on a French theme, would only signify the 'Frenchifying' of the term. The Board stated that '. . . the nub of the issue under this analysis is whether 'Frenchifying' the American--English generic term 'yogurt' by the mere addition of an article (whether it be 'le' or 'la' makes no difference) can alter the commercial impression of the generic term so that it is capable of distinguishing the source of such product. . . .' In re Johanna Farms, supra, at 614. The Board concluded that it could not.
In concluding that 'LA YOGURT' was incapable of distinguishing applicant's goods, the Board criticized the evidentiary showing submitted by applicant as failing to address directly the question of how the ultimate purchasers actually perceive the term under consideration in the marketplace.
In the foregoing decision, one member of the three-Board-member panel dissented. The dissenting member indicated that she was not persuaded that the French speaking segment of the American purchasing public would perceive 'LA YOGURT' as a corruption of the generic name for 'yogurt' in the French language; that the term 'yogurt,' which the majority stated would likely be perceived as a misspelling of the French word for 'yogurt,' was, in fact, the common generic term for that product in English and that, as to the second basis for the majority ruling, namely, its belief that the presence of 'la' did not transform the English generic term 'yogurt' into a term capable of functioning as a trademark. She would allow 'LA YOGURT' to be registered on the Principal Register with a disclaimer of 'yogurt' under the rationale articulated in In re Universal Package Corporation, 222 USPQ 344 (TTAB 1984). In that case the mark 'LE CASE' was held registrable on the Principal Register for jewelry cases and gift boxes (with a disclaimer of 'CASE'). The Board reasoned that the combination of the French article 'LE' with the English word 'CASE' created a commercial impression different from that created by 'THE CASE' and that competitors would have no need to use the term 'LE CASE' to describe their goods.
*3 Applicant thereafter requested reconsideration of the Board's decision. Reconsideration was denied in a two-to-one decision, with the dissenting member remaining of the opinion set forth in her dissent in the initial decision.
The doctrine of stare decisis may be defined as the policy of courts to stand by precedent and not to disturb a settled point. See: Black's Law Dictionary, 5th ed. (1979). Essentially, this doctrine provides that, when a court has once laid down a principle of law as applicable to a certain set of facts, it will adhere to that principle, and apply it to all future cases, where the facts are substantially the same, regardless of whether the parties and properties are the same. Id. It is clear, however, that this doctrine is one of policy and whether a previous holding of the court shall be adhered to, modified, or overruled is within the court's discretion under the circumstances of the case before it. Id.
In the Examining Attorney's opinion, stare decisis precludes applicant from resubmitting the issue of genericness to the Board since the factual issue to be determined herein, namely, whether the phrase 'LA YOGURT' is a common name for yogurt, is identical to the factual issue already determined in the prior action. While noting that certain distinctions exist in the record presented herein compared with the record in the prior case, the Examining Attorney maintains that they do not represent changes in fact, law, or circumstances that would alter the outcome of the previous case.
Applicant, on the other hand, contends that changes in circumstances exist herein which preclude the applicability of stare decisis; that the Board's decision in the prior case was based on the factual record before it at that time; that the Board stated that the pivotal issue in the case was a factual one to be resolved on the evidence, namely, whether the relevant purchasing public regards the term as a common descriptive name; and that to overcome what was believed to have been an inadequate factual record, applicant has now introduced extensive factual evidence herein which was not of record in the prior case and which came into existence and was accumulated subsequent to the prior appeal, based on the Board's indication of what evidence was lacking in the prior case. Applicant, as further evidence that changed circumstances exist herein, points to the fact that its application herein is one for registration on the Principal Register under Section 2(f) with a disclaimer of 'yogurt', while the prior case involved an application on the Supplemental Register with no disclaimer; that the Universal Package case, supra, was on appeal at the same time as applicant's case; that the Universal Package case is on point with the present case and applicant was unable to discuss the ramifications of that decision in the prior case. Finally, applicant argues that in refusing registration in the prior case, the Examining Attorney was of the opinion that no amount of evidence submitted could result in registration of 'LA YOGURT' since said term was generic as a matter of law; that the Board, in its prior decision, believed the record was lacking in factual evidence to show the mark was distinctive; that applicant then unsuccessfully attempted to address these issues raised by the Board by requesting the Board to remand the application to the Examining Attorney for the purpose of allowing applicant to submit additional evidence, such as a survey; that when this request was denied, applicant filed a petition to the Commissioner to reopen prosecution to allow applicant to supplement the record; that this petition was denied and that applicant, thereafter, refiled this application in order to submit all the evidence the Board had suggested was lacking. Applicant concludes that to preclude registrability of the mark now, based on the application of the doctrine of stare decisis, is inequitable under the circumstances discussed above.
*4 The Board agrees with applicant that the Board's prior decision does not preclude registration of 'LA YOGURT' herein under the doctrine of stare decisis. As we stated in the case of In re Multivox Corp. of America, 209 USPQ 627, 630 (TTAB 1981), while stare decisis, which is based on adherence to precedents, is necessary to provide for uniform guidelines and principles so as to eliminate uncertainty and unnecessary litigation, the doctrine must be judiciously applied and applied not in so inflexible a manner as to ignore changes in fact situations and/or give rise to an inequitable situation or result.
Applicant, in the present case, has demonstrated that the factual situation herein is different from that presented in the prior proceeding. Applicant has submitted evidence in the nature of a survey and consumer letters dealing with the question of how purchasers perceive the designation 'LA YOGURT'. This evidence is clearly responsive to the suggestion in the prior Board decision that such evidence was lacking in the case and that such evidence was relevant. Johanna Farms, supra, at 615. Accordingly, we believe that, under the circumstances described herein, application of the doctrine of stare decisis would be inappropriate in view of the prima facie showing by applicant of changed facts and/or circumstances and would work an inequitable result.
More importantly, even if the doctrine of stare decisis would ordinarily be applicable in this situation to preclude registration of 'LA YOGURT', this augmented panel concludes that the prior Board decision was incorrect and is overruled. We find 'LA YOGURT' not to be a generic term and that said mark is registrable with a disclaimer of 'YOGURT'.
Our reasons for overruling the prior Board decision essentially are embodied in the dissenting opinion in the Johanna case, supra, at 617, 618. The first basis for the majority's conclusion that 'LA YOGURT' was a generic designation was its finding that, to members of the purchasing public who are French in language and culture, 'LA YOGURT' would be perceived as a variation or corruption of the generic name of 'yogurt' in the French language and that said term, therefore, was unregistrable under the doctrine of foreign equivalents. We do not believe that the French speaking segment of the purchasing public in the United States would perceive the mark as a corruption of the French generic term for 'yogurt' and we do not believe the record herein supports such a finding. [FN4] Rather, we agree with the dissent in the prior case that the difference between the situation presented herein and that in the 'misspelled foreign generic term' cases cited in the majority opinion in the prior case, namely, Weiss Noodle Co., supra; In re The Coney Island Bredzel Co., 199 USPQ 45 (TTAB 1978); In re Jacqueline Cochran, 196 USPQ 715 (TTAB 1977); In re Zazzara, 156 USPQ 348 (TTAB 1967); In re Hag Aktiengesellschaft, 155 USPQ 598 (TTAB 1967); In re Monarch Wire Co. of Georgia, 117 USPQ 454 (Com'r 1958); Coty v. Lancome S.A., 88 USPQ 300 (Pat. Off. Ex'r-in-Chief, 1951); Otard, Inc. v. Italian Swiss Colony, 141 F.2d 706, 61 USPQ 131 (CCPA 1944), is that the word 'yogurt', supposedly perceived as a corruption or misspelling of the French word for yogurt, is the common English generic term for the goods. Compare: In re Bonni Keller Collections, 6 USPQ 2d. 1224 (TTAB 1987) ('LA LINGERIE' found to be a generic term in the French language and unregistrable for clothing, namely, undergarments and for retail store services in the field of clothing).
*5 Our conclusion is supported by the record in this ex parte proceeding, which demonstrates that the primary significance of LA YOGURT to most of the relevant public is that of a brand name and not a generic term. There is no dispute that 'the burden of showing that a proposed trademark is generic remains with the Patent and Trademark Office,' and that this burden of proof must be satisfied with 'clear evidence of generic use.' In re Merrill Lynch, 828 F.2d 1567, 4 USPQ2d 1141, 1143 (CAFC 1987). Not only has the Examining Attorney failed to carry this burden, but the applicant has submitted numerous consumer letters and a survey showing that most members of the relevant public do not 'primarily use or understand the term [LA YOGURT] to refer to the genus of goods [yogurt] . . ..' H. Marvin Ginn Corp. v. International Association of Fire Chiefs Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986).
Applicant submitted 305 letters from consumers in which the mark LA YOGURT appears. In the overwhelming majority of these letters, LA YOGURT is used by the authors in a trademark manner and is distinguished from the generic term 'yogurt.' It is significant to note that the 305 letters received by the applicant were unsolicited, and that these 305 letters comprise all, not just selected portions of, the consumer correspondence received by applicant during calendar year 1984 in which mention was made of LA YOGURT.
Applicant also submitted the results of a Teflon style survey [FN5] conducted among 400 adults 18 and over who had eaten or purchased yogurt during the preceding six months. Using the examples of 'TROPICANA--orange juice' and 'COCA-COLA--cola,' the interviewer first explained the difference between a brand and a product category, and then asked whether each of seven terms, including LA YOGURT, was a brand or product category. The results were that 88 percent of the respondents identified LA YOGURT as a brand and 10 percent as a product category. Furthermore, 59 of the 400 respondents stated that they spoke French fluently or had studied it for three or more years in school. Among these 59 respondents, 97 percent identified LA YOGURT as a brand and 3 percent as a product category. [FN6]
While certain aspects of applicant's particular Teflon style survey can be criticized, its results (even if discounted somewhat) coupled with the aforementioned consumer correspondence demonstrate that most users and purchasers of yogurt view LA YOGURT as identifying a brand and not a product category.
With respect to the second basis on which the majority in the prior Board decision concluded that 'LA YOGURT' was generic, namely, its finding that the addition of the French article 'la' to the English generic 'yogurt' cannot transform the English word 'yogurt' into a registrable mark, we reach a contrary decision under the rationale expressed in the Universal Package case, supra. We believe, as did the Board in the Universal Package case, that the use of the French article combined with the English generic changes the commercial impression of the mark as a whole. As the Board stated in Universal Package, citing In re Abcor Development Corp., 577 F.2d 811, 200 USPQ 215 (CCPA 1978), the need for competitors to use a term is a critical aspect of an analysis of registrability of a designation. Competitors in the yogurt field obviously have every right to use the generic term for the goods. Applicant itself concedes as much by virtue of its disclaimer of the generic term 'yogurt' apart from the mark as a whole. We conclude, however, that competitors have no need to use applicant's 'LA YOGURT' mark as a whole other than to trade on applicant's goodwill.
J. D. Sams
J. E. Rice
L. E. Rooney
G. D. Krugman
R. F. Cissel
E. J. Seeherman
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 542,343 filed June 11, 1985.
FN2. In re Johanna Farms, Inc., 222 USPQ 607 (TTAB 1984), reconsideration denied, 223 USPQ 459 (TTAB 1984).
FN3. Application Ser. No. 171,952 filed May 25, 1978.
FN5. Survey B discussed in E.I. du Pont de Nemours & Co. v. Yoshida, Inc., 393 F. Supp 502, 185 USPQ 597, 615-616 (E.D.N.Y. 1975).
FN6. The dissenting member states that in his view 'the proper universe of respondents should include only those with fluency in the French language [12 of the 400 respondents] and not those who have taken only three or more years of French [47 of the 400 respondents].' The concern is that those who have simply taken three or more years of French would not be aware of any French word for 'yogurt.' We are of the view that most individuals who studied French for three or more years would be aware of a French generic term for the English word 'yogurt.' Moreover, even assuming, arguendo, that of the 59 respondents who either spoke French fluently or studied it for three or more years, the 2 (i.e. 3 percent) who said LA YOGURT was a product category were also among the 12 of the 59 who spoke French fluently, this would nevertheless mean that 83 percent of the respondents who spoke French fluently (10 of 12) viewed LA YOGURT as a brand and not as a product category. While in most situations, as noted by the dissent, 12 may well be too small a number to constitute a meaningful sample, it must be remembered that this is an ex parte proceeding where the burden is not on the applicant to establish that its mark is not generic, but rather is on the Examining Attorney to establish that the mark is generic.
FN7. While applicant is free to seek registration pursuant to Section 2(f) of the Act, we do not believe reference to Section 2(f) is necessary since we do not believe the expression 'LA YOGURT,' taken as a whole, is merely descriptive. Accordingly, this case will be held for thirty days from the mailing date of this decision to allow applicant time in which to file, if it so desires, an amendment deleting the claim of acquired distinctiveness pursuant to Section 2(f).
Rany L. Simms
I would affirm the Examining Attorney's refusal to register the term LA YOUGURT because our law prohibits registration of foreign equivalents of English generic terms and would hold that applicant's asserted mark is merely the incorrectly gendered French generic or a corruption of the French generic.
*7 As the Examining Attorney contends, a generic foreign word or phrase is no more registrable than its equivalent in English, regardless of the meaning of the foreign word or phrase to the general public. [FN1] This doctrine applies with equal force to misspellings, corruptions and variants of the foreign term. In this regard, the test is whether the misspelling, variant or corruption of the term is perceived as such by purchasers knowledgeable of the foreign language, irrespective of whether the language is sufficiently known so that others in the United States would have the same perception. Weiss Noodle Company v. Golden Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411, 413 (CCPA 1961) (registration of 'HA-LUSH-KA' for egg noodless and egg noodle products cancelled because term was nothing more than a hyphenated, phonetically spelled version of the Hungarian word 'haluska,' equivalent of 'galuska,' meaning 'noodless, dumplings'). This holding was made despite the finding that there was no such word as 'HA-LUSH-KA' in the Hungarian language. Nevertheless, the court refused registration of the Hungarian name for noodles ('haluska') or its phonetic equivalent in English, whether or not hyphenated. The court observed that merely to hypenate the phonetic version does not destroy the term's identity. Similarly, as more fully explained below, I do not believe that applicant's asserted mark with the incorrect article has trademark significance. See also In re The Coney Island Bredzel Co., 199 USPQ 45 (TTAB 1978) (BREDZEL, phonetic equivalent of German term 'brezel,' held not capable of distinguishing pretzels); In re Jacqueline Cochran, 196 USPQ 715 (TTAB 1977) (AIROMATIQUE, misspelling of French word 'aromatique,' not capable of distinguishing toilet water [FN2]; In re Hag Aktiengeselschaft, 155 USPQ 598 (TTAB 1967); (KABA, a corruption or misspelling of 'kava,' Serbian and Ukranian word for coffee, held incapable of distinguishing such goods); In re Monarch Wine Co. of Georgia, 117 USPQ 454 (Com'r of Pats. 1958); (VINKA held apt name for wine in that Polish word 'winka,' a diminutive of 'wino,' is pronounced 'vinka') and Coty v. Lancome S.A., 88 USPQ 300 (Pat. Off. Ex'r-in-Chief 1951) (KYPRE, corruption of 'chypre,' generic name of non-alcoholic mixture of oils and resins, used as perfume base, not registrable). See also Bureau National Interprofessionnel du Cognac v. International Better Drinks Corporation, ______ USPQ ______, Opp. No. 72,088, slip op. at 18 (TTAB March 17, 1988) (wherein the term COLAGNAC was held deceptive within the meaning of Section 2(a) because, among other things, purchasers who encounter applicant's cola liqueur bearing the mark are likely to believe that the mark is a misspelling of COGNAC) and Antillian Cigar Corp. v. Benedit Cigar Corp., 218 USPQ 187, 188 n. 1 (TTAB 1983) (ANTILAS considered mere misspelling of geographically descriptive name 'Antillas').
*8 The primary understanding of the term to the relevant purchasing public may be ascertained from any competent source, such as dictionaries and other publications. In re Abcor Development Corporation, 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978). While the Examining Attorney might have attempted to obtain evidence of the significance to French-speaking persons by seeking an affidavit from, for example, a professor of French at a local university, who might have been able to indicate the likely significance of the term to the average French-speaking person, I note that similar evidence was not required in many of the cases cited above.
While there is little discussion in the majority opinion of the French word for 'yougurt,' this matter was discussed in Johanna Farms I and the Examining Attorney has introduced copies of pertinent pages from French and French-English dictionaries indicating the various French spellings of 'yogurt' ('yogourt,' 'yaourt', 'youghourt' and 'yahourt.') According to the record, there are even five different variations in the English language ('yougurt,' 'youghourt,' 'youghurt,' 'yaourt' and 'yourt'). All of these words, in both French and English, are recognizably similar and have, of course, the same meaning and common derivation. While the Examining Attorney has not introduced any French-English dictionary indicating that an alternative French spelling is 'yogurt,' evidence produced in Johanna Farms I (as reported in the Board's opinion at 611), and applicant's statements herein demonstrate that applicant itself has considered 'le yogurt' to be the French generic. For example, in response to a consumer letter stating that applicant's product name was an incorrect use of the French language ('It should be Le Yogurt.'), applicant's consumer affairs representatives responded, in part:
I'm not a linguist, but I'm sure you're right about the correct spelling of the masculine noun and its article in the French, Le yogurt. But the word 'yogurt' is an American word as well as the French word, and its roots extend to eastern Europe. In this country, as this food has become popular over the last forty years, the product has been spelled many different ways, including yagourt, yoghurt, and several other variations. The spelling of the word in the American language has evolved, as the consumption of the product has grown, until now almost everyone in this country uses the spelling, yoguart.
Also, with its application in this case, applicant filed a sixteen-page paper captioned 'Preliminary Communication', in which applicant again stated (at page 15) that 'le yogurt' is the French generic.
[I]f one of Applicant's competitors wished to address an advertisement to French-speaking people, it would still be free to make appropriate use of the true French translation of 'the yogurt', i.e., 'le yogurt' in their advertisements. Thus, if it were accurate, a competitor might say, 'DANNON c'est le yogurt le meilleur de la Louisianne'. [FN3]
*9 Assuming the correctness of the position expressed by applicant and its attorney both in this proceeding and in Johanna Farms I, it is difficult to understand how the use of the incorrect gender of the French article ('la') instead of 'le' could create trademark significance in the concededly French generic. Rather, it is believed that the use of the incorrect article would be considered simply a common grammatical mistake and would not alter the perception of French-speaking purchasers that the term is generic. Under such circumstances, the asserted mark is no more registrable than would be 'le bicyclette' (instead of 'la bicyclette') for 'bicycles' or 'le chemise' (instead of 'la chemise') for 'shirts.'
Indeed, it would not be surprising if the English word 'yogurt' were used as an acceptable variation in the French language in view of the relatively common practice for the same term to be adopted in more than one language. As pointed out by the majority in Johanna Farms I, there is considerable interchange between the English and French languages. Languages are not static and are constantly being affected by each other. For example, phrases such as 'le hamburger' have apparently become common expressions in the French language. One might expect that other terms, especially for food products, would be incorporated into the French language. Thus, I have no reason to doubt the conclusion of the majority in Johanna Farms I that the term LA YOGURT would be perceived as an incorrectly gendered generic name for yogurt in the French language, designating the nature of the product and not its source. Therefore, neither the incorrect gender nor the insignificant difference in spelling of the term is sufficient, in my view, to alter the perception by such purchasers that the term serves only to indicate the nature of the goods. This is especially so in view of the number of variations of this Turkish word.
However, even assuming that 'le yogurt' is not a proper spelling of the French generic, I would still affirm the refusal for the primary reason expressed by the Board majority in Johanna Farms I, that is, that LA YOGURT is a corruption or variation of the French generic. Had applicant tried to register the term 'le yogourt' (or even 'la yogourt'), this Board would have refused registration on the ground that registration is not permitted of a common descriptive term in a foreign language. What the Board has done here, however, is to permit registration of essentially a phonetic equivalent (LA YOGURT instead of 'le' or 'la yogourt') because it does not believe that the French-speaking segment of the purchasing public in the United States would perceive the mark as a corruption of the French generic. I cannot agree. In view of the number of spellings for 'yogurt' in the French language, I believe that French-speaking persons are likely to perceive the asserted mark, with one letter difference in spelling, as another variation of the generic word in French.
*10 It is applicant's position, nevertheless, that whereas in Johanna Farms I, where the Board looked to two letters from persons, presumably conversant in French, to ascertain that to that segment of the purchasing public the term would be perceived as a variant or corruption of the generic, here the Examining Attorney cannot make a similar argument because of survey responses by persons who speak French fluently or who studied the language for at least three years. Among those respondents (59 out of 400), 97 percent considered the term a brand name and not a product category. However, in view of the specific term here sought to be registered, I believe that the proper universe of respondents should include only those with fluency in the French language and not those who had taken only three or more years of French. That is because it is questionable whether those who had taken only three years would be aware of the French generic for 'yogurt,' since this is not a word which I would expect that most students of French learn as a part of their French vocabulary, even after three years' study. According to the tally sheets of the survey results, only twelve respondents out of a total of 400 were fluent in the French language. Aside from the fact that this is too small a number to be a meaningful sample, it is impossible to tell from the survey responses included in the results submitted by applicant what percentage of those twelve respondents viewed the term as a brand name rather than as a product category. [FN4]
Underlying the rule prohibiting the registration of generic terms is the important goal that competition should not be restrained in the use of descriptive and common descriptive names to identify goods and services. Extending this rule to foreign equivalents preserves fair competition in international trade. [FN5] To put the shoe on the other foot, the consequences of registration in a foreign country of a corruption or phonetic equivalent of an English generic is distressing to merchants who are thereby hindered in their efforts to sell their products abroad. Those merchants would be harmed if foreign countries protected such corruptions or misspellings, exposing them to potential harassment and interference with the free use of English generic words. Indeed, through the efforts of the united States Trademark Association and its Generic Word Program, this office often contacts the appropriate U.S. embassy or foreign service post to intercede with local administrative offices in attempts to secure denial or rejection of applications that seek to register English generic words. For example, in a recent USTA bulletin, the following misspellings or corruptions of English words had been sought to be registered as trademarks in foreign countries: Colagen (instead of collagen), Decongestan, Skin Freshner, Medicall, Akne and Electrolit Solucion Oral (Vol. 37, No. 42, Nov. 17, 1982).
As a final point, I would emphasize that the registration which the majority is now allowing should not permit applicant to attempt to prevent others from using descriptive or generic words in English or any other language. That is to say, applicant has no right by virtue of this registration to stop competitors from describing or naming their products with descriptive or generic terms, in English or in any other language. (Nor, I might add, should this case be misread to stand for the proposition that registration will always be permitted where an applicant is attempting to register an English word with a French article. Obviously, we would not permit an applicant to register LE RESTAURANT for restaurant services or LA TABLE for tables. As always, each case must be decided on its own merits.)
*11 With respect to the argument that applicant should be able to register a mark which has acquired a secondary meaning, I would only state that evidence of acquired distinctiveness resulting from extensive advertising and promotion cannot elevate a common descriptive name to trademark status and would further point out what the court stated in Weiss Noodle, at 414:
While it is always distressing to contemplate a situation in which money has been invested in a promotion in the mistaken belief that trademark rights of value are being created, merchants act at their peril in attempting, by advertising, to convert common descriptive names, which belong to the public, to their own exclusive use. Even though they succeed in the creation of de facto secondary meaning, due to lack of competition or other happenstance, the law respecting registration will not give it any effect.
Moreover, there is nothing in the Trademark Clarification Act of 1984, which amended 15 USC 1064(c) by mandating use of the primary significance test in cancellation proceedings, which alters the rule in Weiss Noodle that secondary meaning cannot rescue a generic term. In re Le Sorbet, 228 USPQ 27, 32 (TTAB 1985).
FN1. A generic term is the common descriptive name of a class of goods or services and can never be registered as a trademark because it is incapable of acquiring de jure distinctiveness under Section 2(f) of the Act. H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986). Of course, if a term is incapable of distinguishing applicant's goods or services, then inquiry into acquired distinctiveness is unnecessary. In re Northland Aluminum Co., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1986).
FN2. In that case the Board stated, at 716:
[I]t is believed that purchasers, familiar with the French language, would recognize applicant's mark, 'AIROMATIQUE', as merely a misspelling and the phonetic equivalent of the word 'AROMATIQUE,' which is the French equivalent of the English word 'AROMATIC', which applicant concedes is merely descriptive of its goods . . .
FN3. In its reply brief, applicant contends that the Examining Attorney's reliance upon this statement in his appeal brief is unjustified and that 'Yogurt is not the French word for the same product.' (Reply brief, 12). It is not seen how the statement made in applicant's Preliminary Communication is taken 'out of context,' as applicant contends. Rather, applicant has obviously changed its position.
FN4. Without commenting upon the merits of applicant's assertion of rights, we note that applicant has apparently sought to stop the use by another of the term LE YOUGHURT.
FN5. It is noted that a higher percentage of the total survey respondents (ten percent) thought that LA YOGURT was a product category than any other of the brand names presented to the respondents.