You say “Hair,” I say “Cheveux!” TTAB Decision Suggests an “Idiom Defense” to a Likelihood of Confusion Refusal Based on the Doctrine of Foreign EquivalentsFriday, December 12th, 2008
In re Innovative Technologies Corp. of America, Inc., Serial No. 78691831 (September 15, 2008)
In this recent decision, the Board held that the mark HAIR OF THE DOG for clothing was not likely to be confused with the registered mark LES CHEVEUX DU CHIEN for “custom manufacture of clothing, personal accessories in the nature of jewelry, stoles, scarves, linens, and home décor items.”
The Board found that, while the cited mark, LES CHEVEUX DU CHIEN, translated to “hair of the dog” in English, the marks were “clearly different in appearance and pronunciation,” and did not have “the same idiomatic meaning.” Indeed, the idiom “hair of the dog” in English refers to a hangover cure. This idiomatic meaning, the Board found, was the “predominant meaning” and the “most likely commercial impression” of applicant’s mark HAIR OF THE DOG. On the other hand, the Board noted, a French speaker would “likely see the mark LES CHEVEUX DU CHIEN and perceive it literally as a statement about a dog’s hair.”
The marks, considered as a whole, did not mean the same thing, and, therefore, were not foreign equivalents. The Board further noted that, unlike MARCHE NOIR and BLACK MARKET, the marks HAIR OF THE DOG and its “literal” translation in French LES CHEVEUX DU CHIEN did not have the same idiomatic meaning in both languages. Accordingly, the Board reversed the refusal to register HAIR OF THE DOG.
This author is a native French speaker. While in agreement that these two marks are not likely to be confused (if only because of the distinctions between the goods, channels of trade and consumers), she has a très petit bone to pick with the TTAB.
Yes, the marks have different meanings; but not (just) because “hair of the dog” is an idiom and “les cheveux du chien” is not. While the French word “chien” does mean “dog,” the word “cheveux” in LES CHEVEUX DU CHIEN simply does not translate to dog hair in French–or any animal hair for that matter; it means human hair (as in the hair growing on a person’s head). So, when seeing the mark LES CHEVEUX DU CHIEN, a French speaker would not, as the Board stated, “perceive it literally as a statement about a dog’s hair;” a French speaker may, however, perceive it as a statement about a dog wearing a wig (the correct literal French translation for “hair of the dog,” by the way, is “les poils du chien”). Who knew the French had two words for “hair”? Not the applicant apparently; they did not raise this argument in their appeal brief.
Would the Board’s analysis have been different if applicant had presented expert testimony that “les cheveux du chien” did not mean “hair of the dog,” not only idiomatically, but literally? It’s hard to tell. For example, in the recent TTAB decision applying the doctrine of foreign equivalents, In re La Peregrina Limited, 86 USPQ2d 1645 (TTAB 2008) the Board held that the mark LA PEREGRINA was confusingly similar with PILGRIM for jewelry and found that declarations from bilingual individuals, asserting that they would not translate LA PEREGRINA into its English equivalent, were insufficient to rebut the PTO’s evidence.
When responding to a likelihood of confusion refusal based on the doctrine of foreign equivalents, this case reminds us that: 1) if applicant’s mark has any idiomatic meaning, this defense should be raised; and 2) that applicant or applicant’s attorney should try to check with a native speaker whether the marks really mean the same thing in both languages. Dictionaries are helpful, but as this case illustrates, they are not foolproof. While a bilingual expert may or may not sway the Board, knowing whether the words are literal equivalents may at least be helpful in mounting additional arguments against the refusal.