S. Malhotra & Co. AG

Trademark Trial and Appeal Board

Sep 27, 2018

No. 79194076 (T.T.A.B. Sep. 27, 2018)

Mailed: September 27, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re S. Malhotra & Co. AG
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Serial Nos. 79194076 and 79194077
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Alexander S. Lazouski of Lazouski IP LLC,
for S. Malhotra & Co. AG.
Marc J. Leipzig, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Zervas, Hightower, and Pologeorgis,
Administrative Trademark Judges.
Opinion by Hightower, Administrative Trademark Judge:
On August 3, 2016, Applicant S. Malhotra & Co. AG filed two applications for
extension of protection of international registrations under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f(a) (Madrid Protocol), seeking registration on the
Principal Register of the marks GÁMOS, in standard characters,1 and
.2 The goods identified in each application are “precious metals and

1 Serial No. 79194076 (“’076 Application”).
2 Serial No. 79194077 (“’077 Application”). Color is not claimed as a feature of the mark.
This Opinion Is a
Precedent of the TTAB
Serial Nos. 79194076 and 79194077
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their alloys and goods made of these materials or coated therewith included in this
class, namely, jewelry and watches,” in International Class 14.
The application for the standard character mark contains the following
translation statement: “The English translation of the word ‘GÁMOS’ in the mark is
‘wedding, matrimony or marriage.’” Similarly, the application includes a
transliteration statement that the “non-Latin characters in the mark transliterate to
‘GÁMOS’ and this means ‘wedding, matrimony or marriage’ in English.”
The Examining Attorney refused registration under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the applied-for terms are
merely descriptive of a feature of Applicant’s goods.3 After the refusals were made
final for each application, Applicant appealed.
I. Appeals Consolidated
These appeals present common questions of law and fact and the records are
substantially similar. Therefore, in the interest of judicial economy, we consolidate
the cases and decide them in this single opinion. See In re Tapco Int’l Corp., 122
USPQ2d 1369, 1369 n.1 (TTAB 2017); Trademark Trial and Appeal Board Manual of
Procedure (TBMP) § 1214 (June 2018). We have considered all arguments and
evidence filed in each case. We affirm the refusal to register as to each application.

3 The Examining Attorney also refused each registration based on a requirement to provide
accurate translation and transliteration statements as per Trademark Rule 2.32(a)(9)-(10),
37 C.F.R. § 2.32(a)(9)-(10). In its briefs, Applicant stated that it “agrees with the translation
statement suggested by the Board.” Appeal Brief, 4 TTABVUE 8 (both applications). The
statements were suggested by the Examining Attorney during examination, not by the Board,
but we find them appropriate and have entered them based on Applicant’s acceptance,
rendering the refusals moot.
Serial Nos. 79194076 and 79194077
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II. Refusal on the Basis of Mere Descriptiveness
In the absence of acquired distinctiveness, Section 2(e)(1) of the Trademark Act
precludes registration of a mark on the Principal Register that, when used in
connection with the applicant’s goods, is merely descriptive of them. “A term is merely
descriptive if it immediately conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is used.” In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012)
(quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831
(Fed. Cir. 2007)); see also DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695
F.3d 1247, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (stating that a proposed mark is
merely descriptive if it “conveys information regarding a function, or purpose, or use
of the goods” (quoting In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA
1978))). A term need not immediately convey an idea of each and every specific feature
of the applicant’s goods or services in order to be considered merely descriptive; it is
enough that the term describes one significant attribute, function or property of the
goods or services. Chamber of Commerce, 102 USPQ2d at 1219. Whether a mark is
merely descriptive is determined not in the abstract but in relation to the goods or
services for which registration is sought, the context in which the mark is used, and
the possible significance the term would have to the average consumer because of the
manner of its use or intended use. Id.
Serial Nos. 79194076 and 79194077
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A. Doctrine of Foreign Equivalents
Under the doctrine of foreign equivalents, foreign words from common languages
are translated into English to determine genericness, descriptiveness, and similarity
of connotation to ascertain similarity or dissimilarity with English word marks. Palm
Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1696 (Fed. Cir. 2005). In descriptiveness cases:
It is a well[-]established principle of trademark law in this
country that the foreign equivalent of a merely descriptive
English word is no more registrable than the English word
itself despite the fact that the foreign term may not be
commonly known to the general public. That is, normally
no distinction can be made between English terms and
their foreign equivalents with respect to registrability. In
re Optica Int’l, 196 USPQ 775, 777 (TTAB 1977). “Foreign
language words, not adopted into the English language,
which are descriptive of a product, are so considered in
registration proceedings despite the fact that the words
may be meaningless to the public generally.” Nestle’s Milk
Prods., Inc. v. Baker Importing Co., 182 F.2d 193, 86 USPQ
80, 82 (CCPA 1950).
In re Highlights for Children, Inc., 118 USPQ2d 1268, 1270 (TTAB 2016).
The doctrine of foreign equivalents applies only when it is likely that the ordinary
American purchaser would “stop and translate [the word] into its English
equivalent.” Palm Bay, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190
USPQ 109, 110 (TTAB 1976)). The “ordinary American purchaser” includes all
American purchasers, including those proficient in a non-English language who
would ordinarily be expected to translate words into English. Highlights for Children,
118 USPQ2d at 1271 (quoting In re Spirits Int’l N.V., 563 F.3d 1347, 90 USPQ2d
1489, 1492 (Fed. Cir. 2009)).
Serial Nos. 79194076 and 79194077
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The Examining Attorney maintains that is a Greek word that
transliterates to GÁMOS, defined in English as “marriage,” “matrimony,” or
“wedding.”4 The Examining Attorney did not introduce evidence to demonstrate that
Greek is a “common language” in the United States. Data released by the U.S. Census
Bureau in October 2015, however, states that 304,932 U.S. residents age five and
over speak Greek at home.5 Greek is a common, modern language, not one that is
dead or obscure. See Spirits Int’l, 90 USPQ2d at 1491; Trademark Manual of
Examining Procedure (TMEP) § 1209.03(g) (Oct. 2017) (“While foreign words are
generally translated into English for purposes of determining descriptiveness, foreign
words from dead or obscure languages may be so unfamiliar to the American buying
public that they should not be translated into English for descriptiveness purposes.”).
Applicant argues that the doctrine of foreign equivalents does not apply because
the terms it seeks to register do not have literal and direct translations, but rather
have well-established alternative meanings, including “union,” “small deer,” “buck,”
and “a sexual ritual that plays out a marriage between a god and a goddess.” Appeal
Brief at 5, 4 TTABVUE 6 (both applications). We agree with the Examining Attorney,

4 May 16, 2017, Response to Office Action at TSDR 7, ’076 Application; id. at TSDR 9, 13,
’077 Application; June 11, 2017, Final Office Action at TSDR 2 (both applications).
5 See “Detailed Languages Spoken at Home and Ability to Speak English for the Population
5 Years and Over for the United States: 2009-2013,” accessed at https://www.census.gov/data/
tables/2013/demo/2009-2013-lang-tables.html. Because the U.S. Census is a standard
reference, we may take judicial notice of information disclosed in census reports, and
regularly have done so. See In re Olin Corp., 124 USPQ2d 1327, 1331 n.12 (TTAB 2017); In
re Weiss Watch Co., 123 USPQ2d 1200, 1203 n.5 (TTAB 2017); Highlights for Children, 118
USPQ2d at 1271 n.7; In re Aquamar, Inc., 115 USPQ2d 1122, 1127 & n.6 (TTAB 2015). We
also do so here.
Serial Nos. 79194076 and 79194077
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however, that the alternative meanings of “small deer” and “buck” are for words
different from the Greek words at issue in this case. Specifically, the meanings “small
deer” and “buck” relate to the unaccented Spanish words “gamos” and “gamo,” in
plural and singular forms, respectively.6 Also, in the evidence, “union” is listed not as
a translation for either of the applied-for marks but as one of several “similar
phrases.”7 Finally, Applicant’s evidence shows that the sexual ritual it discusses has
a different name, “hieros gamos.”8
The relevant meanings, “marriage,” “matrimony,” and “wedding,” are not
contradictory of one another, but, rather, are highly related. Compare the overlapping
definitions of the three words from Merriam-Webster.com, of which we take judicial
notice:9

6 May 16, 2017, Response to Office Action at TSDR 8, 10, ’076 Application; id. at TSDR 7,
’077 Application.
7 “Union” is one of the terms under “Similar phrases in dictionary Greek English.” May 16,
2017, Response to Office Action at TSDR 7, ’076 Application; id. at TSDR 9, 13, ’077
Application.
Applicant submitted with its appeal briefs an entry from Wiktionary.com showing that
“γáμος” means “gámos” and is a noun defined in Greek as “1. marriage, wedding (ceremony)
2. marriage (social institution),” which undercuts its position that its mark evokes Spanish
meanings. 4 TTABVUE 15 (both applications). Although this evidence is untimely,
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), we have considered it because the Examining
Attorney did not object and discussed it in his appeal brief. See 6 TTABVUE 4 (both
applications); In re Litehouse Inc., 82 USPQ2d 1471, 1475 n.2 (TTAB 2007) (considering
evidence submitted with appeal brief because examining attorney did not object and
presented rebuttal arguments).
8 May 16, 2017, Response to Office Action at TSDR 13-15, ’076 Application; id. at TSDR 10-
12, ’077 Application. “Gamos” in “hieros gamos” in the Wikipedia entry also appears as
“γáμος,” with the accented “a,” which is in lower case. Id. In any event, the definition
of the phrase “hieros gamos” does not control the meaning of Applicant’s proposed marks, the
single words GÁMOS and .
9 The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format or have regular fixed editions. E.g., In re Inn at St. John’s, LLC,
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• marriage:
1. a: the state of being united as spouses in a consensual and
contractual relationship recognized by law
b: the mutual relation of married persons : WEDLOCK
c: the institution whereby individuals are joined in a marriage
2. an act of marrying or the rite by which the married status is effected;
especially : the wedding ceremony and attendant festivities or
formalities
3. an intimate or close union
• matrimony: the state of being married : MARRIAGE
• wedding:
1. a marriage ceremony usually with its accompanying festivities :
NUPTIALS
2. an act, process, or instance of joining in close association
3. a wedding anniversary or its celebration—usually used in
combination
“The English meanings of applicant’s mark are clear. That several related meanings
are also listed in the dictionary does not doom the refusal for lack of precision.” In re
Geo. A. Hormel & Co., 227 USPQ 813, 814 (TTAB 1985) (affirming refusal to register
, Italian equivalent of English term “tasty,” as merely descriptive and
laudatory of applicant’s dry sausage); see also In re Tokutake Indus., 87 USPQ2d 1697
(TTAB 2008) (affirming refusal to register AYUMI and Japanese-character
equivalent as merely descriptive of footwear despite evidence of multiple meanings of
“ayumi,” including “walking,” “a step,” and “one’s pace”).

126 USPQ2d 1742, 1747 n.15 (TTAB 2018); In re Mecca Grade Growers, LLC, 125 USPQ2d
1950, 1953 n.2 (TTAB 2018); Olin, 124 USPQ2d at 1337 n.25.
Serial Nos. 79194076 and 79194077
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We find that the proposed marks and GÁMOS have a definite English
translation as “marriage,” “matrimony,” or “wedding,” and that ordinary American
consumers familiar with Greek will stop and translate the proposed marks.
Therefore, we now consider whether they are merely descriptive of a feature of the
identified goods.
B. Whether and GÁMOS Are Merely Descriptive
The Examining Attorney introduced extensive evidence of use of “wedding” to
describe jewelry specifically for use in weddings.10 Examples include:
• “Now that you have the wedding dress, it’s time to find the perfect
wedding jewelry . . . .”;11
• “The Wedding Jewelry Trends That Are Taking Over Spring 2017”;12
13

10 June 11, 2017, Final Office Action at TSDR 3-95 (both applications).
11 Excerpt from Martha Stewart Weddings website (www.marthastewartweddings.com/
600311/wedding-jewelry). June 11, 2017, Final Office Action at TSDR 38, ’076 application;
id. at TSDR 44, ’077 application.
12 Excerpt from Brides website (www.brides.com/story/wedding-jewelry-trends-brides-
fashion). June 11, 2017 Final Office Action at TSDR 63, ’076 application; id. at TSDR 69, ’077
application.
13 Excerpt from Dillard’s website (www.dillards.com/accessories-jewelry-bridal-jewelry).
November 19, 2016, Office Action at TSDR 5, ’076 application; id. at TSDR 6, ’077 application.
Serial Nos. 79194076 and 79194077
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14
15

14 Excerpt from Sears website (www.sears.com/jewelry-wedding-engagement-jewelry/b-
132765954). June 11, 2017, Final Office Action at TSDR 85, ’076 application; id. at TSDR 91,
’077 application.
15 Excerpt from www.allureweddingjewelry.com. June 11, 2017, Final Office Action at TSDR
22, ’076 application; id. at TSDR 28, ’077 application.
Serial Nos. 79194076 and 79194077
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Applicant argues that, even if the doctrine of foreign equivalents applies, the
multiple definitions of the terms it seeks to register render them not descriptive
nonetheless: “Because ‘GÁMOS’ has no single meaning in connection with [the]
covered goods, this term cannot have the readily apparent, single meaning required
for the term to be merely descriptive, and removes the term from the merely
descriptive category.” Appeal Brief at 5-6, 4 TTABVUE 6-7 (both applications). We
disagree. We have found that “marriage,” “matrimony,” and “wedding” have highly
related meanings, and the evidence shows that “wedding” has descriptive significance
in association with jewelry. Specifically, “wedding” is merely descriptive of a type of
jewelry worn for weddings, a feature or characteristic of the goods. Moreover, “[i]t is
well settled that so long as any one of the meanings of a term is descriptive, the term
may be considered to be merely descriptive.” In re Chopper Indus., 222 USPQ 258,
259 (TTAB 1984); see also In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1034
(TTAB 2007); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
C. Double Entendre
Finally, Applicant argues that the terms it seeks to register “may just as well
suggest that Applicant’s jewelry and watches have a combination of multiple parts or
[involve a] ‘marriage of metals’ technique.” Appeal Brief at 6, 4 TTABVUE 7 (both
applications). Thus, Applicant contends, they are double entendres. Id.
A double entendre is registrable only if the second, non-descriptive meaning would
be readily apparent to the consumer from the mark itself. See, e.g., In re Colonial
Stores Inc., 394 F.2d 549, 157 USPQ 382, 385 (CCPA 1968) (holding SUGAR & SPICE
not merely descriptive for bakery products because it readily conjures a familiar
Serial Nos. 79194076 and 79194077
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phrase in a well-known nursery rhyme). There is no evidence that consumers are
likely to understand Applicant’s marks to mean a combination of multiple parts or
that the goods result from a “marriage of metals” technique; the statement of
Applicant’s counsel is “no substitute for evidence.” Cai v. Diamond Hong, Inc., 901
F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quotation omitted). Nor is such
a meaning readily apparent from the marks themselves when viewed in association
with the identified goods. See, e.g., In re RiseSmart Inc., 104 USPQ2d 1931, 1934
(TTAB 2012) (“We do not find TALENT ASSURANCE to present a double entendre
such that the merely descriptive significance of the term [TALENT] is lost in the
mark as a whole.”) (quotation omitted).
D. Conclusion
Based on the record in its entirety, we find that a consumer of Applicant’s jewelry
familiar with the Greek language would immediately understand and
GÁMOS to convey information about a feature of those goods, namely, that they may
be used in association with weddings. Because the proposed marks immediately
convey knowledge about Applicant’s goods, they are merely descriptive under
Trademark Act Section 2(e)(1).
Decision: The refusal to register under Trademark Act Section 2(e)(1) is affirmed
as to both applications.