Marimekko Oyj

Trademark Trial and Appeal Board

Jul 10, 2012

No. 85320832 (T.T.A.B. Jul. 10, 2012)

Mailed:
July 10, 2012
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Marimekko Oyj
________

Serial No. 85320832
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Andrew Roppel of Holland & Hart LLP for Marimekko Oyj.

Charles L. Jenkins, Jr., Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______

Before Bucher, Wolfson and Kuczma, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Marimekko Oyj, a Finnish corporation, seeks
registration on the Principal Register of the mark OIVA (in
standard character format) for goods identified as follows:
“cutlery” in International Class 8; and
“household or kitchen utensils, namely,
graters, sieves, spatulas, strainers,
turners, skimmers and kitchen tongs;
containers for household or kitchen use;
glass bulbs being containers for household
use; decorative glass not for building;
figures of glass; boxes of glass; works of
art of glass; drinking glasses; food
preserving jars of glass; glass dishes;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85320832
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porcelain mugs; earthenware dinnerware and
dishes” in International Class 21.1
The Trademark Examining Attorney refused registration
on the ground that the term is merely descriptive under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1). After the Trademark Examining Attorney made
the refusal final, applicant appealed to this Board. We
affirm the refusal to register.
According to the evidence that the Trademark Examining
Attorney submitted with his Office action of January 9, 2012,
“oiva” is a Finnish-language word meaning “excellent.”
Consistent with the Trademark Examining Attorney’s evidence,
we take judicial notice of a hard-copy reference entry
showing the words “oiva” / “oivallinen” as synonyms meaning
“excellent” or “very good.”2
Based on his evidence, the Trademark Examining Attorney
makes the following argument:
The word “oiva” is descriptive, because it
means excellent in English. The foreign
equivalent of a merely descriptive English
word or term is also merely descriptive.
In re N. Paper Mills, 64 F.2d 998, 17 USPQ

1 Application Serial No. 85320832 was filed on May 13, 2011,
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce. The application contains the following
statement: “The English translation of OIVA in the mark is
excellent, and OIVA is a Finnish first name for a woman.”
2 FINNISH-ENGLISH GENERAL DICTIONARY, by Raja Hurme et al., (Werner
Söderström 1988) at 781. ISBN951014944-6.

Serial No. 85320832
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492, 493 (CCPA 1933). Under the doctrine of
foreign equivalents, marks with foreign words
from modern languages are translated into
English to determine descriptiveness.

A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products it identifies.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). Laudatory terms that attribute excellence to goods
are merely descriptive under § 2(e)(1). In re Phillips-Van
Heusen Corp., 63 USPQ2d 1047, 1052 (TTAB 2002). Whether a
particular term is merely descriptive is determined in
relation to the goods for which registration is sought and
the context in which the term is used. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In
other words, the question is not whether someone presented
only with the mark could guess the products listed in the
description of goods. Rather, the question is whether
someone who knows what the products are will understand the
mark immediately to convey information about them. In re
MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003).
The evidence of record shows that “oiva” is a Finnish
term. Under the doctrine of foreign equivalents, we must
Serial No. 85320832
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consider the English meaning of a term in the Finnish
language if the ordinary purchaser in the United States
proficient in Finnish would “stop and translate” the term
into its English-language equivalent. Palm Bay Imps., Inc.
v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005); and In re
Spirits International N.V., 91 USPQ2d 1489, 1491 (TTAB
2009). Hence, the determinative question before us in this
appeal under Section 2(e)(1) is whether Finnish speakers
would translate the term “oiva” into “excellent,” and
understand immediately the laudatory nature of the term
without the need for thought or reflection.
We note that applicant’s original application papers,
which were filed under oath, contain the statement “The
English translation of OIVA in the mark is excellent, and
OIVA is a Finnish first name for a woman.”3 Nonetheless,
during subsequent prosecution, citing to what appear to be
wiki-style4 websites, applicant has repeatedly argued that

3 According to the TRAM database, applicant had also included
the first clause of this statement in Application Serial No.
79092991 (its earlier extension of protection to the United States
of its Madrid registration, which application is now abandoned),
namely, that “The English translation of OIVA in the mark is
excellent.”
4 For a discussion of the Board’s approach to wiki-style
evidence, see In re IP Carrier Consulting Group, 84 USPQ2d 1028,
1032-33 (TTAB 2007).

Serial No. 85320832
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there is no Finnish-to-English translation for the word
“oiva.” In fact, applicant summed up the totality of the
evidence it placed into the record subsequent to the filing
of the application as follows:
The record in this case clearly shows that,
not only is the use of “oiva” in the
Finnish language as a term for “excellent”
both outdated and antiquated, having been
replaced by the Finnish term “oivallinen,”
the term “oiva” is primarily a given name,
and it also has surname and geographic
significance.

Applicant’s first argument is that “oiva is now simply
an antiquated, archaic or outdated usage for “excellent.”
However, except for noting the absence of a Finnish-to-
English translation in an online, wiki-type citation,
applicant has not presented any evidence documenting such a
change in meaning.
Rather, we conclude from this record that the Finnish
word “oiva” is an exact synonym for “oivallinen” (perhaps
“oiva” is an informal term in the vernacular compared with
the more formal wording, “oivallinen”). We find that “oiva”
is still correctly translated as “excellent,” and that it
would readily be recognized as such among contemporary
Finnish speakers.
Moreover, as to applicant’s second argument, if the
word “oiva” still has the connotation of “excellent,” the
Serial No. 85320832
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fact that this term may have different meanings in other
contexts is not controlling on the question of
descriptiveness. In re Chopper Indus., 222 USPQ 258, 259
(TTAB 1984). Yet, applicant also appears to argue that the
doctrine of foreign equivalents should not apply because
“oiva” will convey multiple meanings to prospective
consumers acquainted with the Finnish language.
In this vein, applicant argues that “Oiva” is an old
place name that appears to designate a rural area in remote
Northern Finland. The online reference from
http://en.wiktionary.org/wiki/ notes that since the 19th
century, the place name has also become a Finnish surname.
Finally, since at least the 1890s, “Ovia” has taken on
meaning as a given name. Although applicant’s secondary
explanation in its application papers was that “Oiva” is the
“first name for a woman,” according to the record, “Oiva” has
not been seen in female given names since 1930. Rather,
substantial evidence from multiple websites suggests that
for most of the past century, it has been given infrequently
as a name to males, but in those rare instances, usually as
a middle name – perhaps reflecting an earlier family name.5

5 http://www.nordicnames.de/
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Hence, balancing these several de minimis uses as a
name against established dictionary entries, we find that
Finnish speakers in the United States would translate the
word “oiva” as the laudatory word, “excellent.”
We find especially curious applicant’s arguments that
the Trademark Examining Attorney’s definition reflects
outdated usage inasmuch as his definition matches exactly the
primary definition provided by applicant with its application
papers. “Once an applicant provides a translation of a
foreign term that is a generic or descriptive term for the
goods in English, it has a more difficult burden to then show
that the term is not merely descriptive or generic.” In re
Tokutake Indus. Co., 87 USPQ2d 1697, 1700 (TTAB 2008) (
held merely descriptive for footwear where the evidence,
including applicant’s own statements, indicated that the
primary meaning of applicant’s mark is “walking”); see also,
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPQ 1281, 1283 (Fed. Cir. 1984)
(applicant’s earlier contrary position as to the meaning of
its mark illustrating the variety of meanings that may be
attributed to applicant’s mark may be relevant); see also,
TBMP §§ 704.03(b)(2) and 704.04 (3d ed. rev. 2012) and
authorities cited therein.
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In conclusion, the preponderance of the evidence
supports a simple translation. We have noted that applicant
initially translated its mark as “excellent,” and then
provided no additional admissible evidence to explain why
contemporary Finnish speakers would no longer translate its
mark as it originally specified. While not necessarily
determinative, we employ applicant’s statement in the
original application papers to “illumin[ate] the shade and
tone in the total picture confronting the decision maker.”
Interstate Brands Corp. v. Celestial Seasonings, Inc.,
576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978).
In view of the foregoing, we find that the term “oiva”
for use in connection with cutlery or kitchen utensils is
merely descriptive.
Decision: The Trademark Examining Attorney’s refusal
to register under Section 2(e)(1) of the Lanham Act is
hereby affirmed.