Shanghai Leather, Inc.

Trademark Trial and Appeal Board

Dec 12, 2011

No. 77846384 (T.T.A.B. Dec. 12, 2011)

Mailed:
December 12, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Shanghai Leather, Inc.
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Serial No. 77846384
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Howard A. MacCord, Jr. of MacCord Mason PLLC for Shanghai
Leather, Inc.

Ronald E. DelGizzi, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Kuhlke, Bergsman and Ritchie,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Shanghai Leather, Inc. (“applicant”) filed an intent-
to-use application on the Principal Register for the mark
LAPELLE, in standard character form, for “leather for
furniture,” in Class 18. The Trademark Examining Attorney
refused to register applicant’s mark under Section 2(e)(1)
of the Trademark Act of 1946, 15 U.S.C. § 1052(e)(1), on
the ground that applicant’s mark is merely descriptive of
applicant’s goods. According to the Examining Attorney,
LAPELLE is Italian for “the leather” and, thus, it
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77846384
2
describes applicant’s products. Specifically, the
examining attorney makes the following argument:
In this case, both the individual
components and the composite result are
descriptive of the applicant’s goods
and do not create a unique, incongruous
or nondescriptive meaning in relation
to the goods. The applicant’s merging
of the terms “LA” and “PELLE” into the
same term does not alter the commercial
impression of the mark.1

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). 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, not in
the abstract or on the basis of guesswork. 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 to convey information about them. In re Tower Tech,

1 Examining Attorney’s Brief, unnumbered page 11.
Serial No. 77846384
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Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998);
In re Home Builders Association of Greenville, 18 USPQ2d
1313, 1317 (TTAB 1990); In re American Greetings Corp., 226
USPQ 365, 366 (TTAB 1985).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc.,
199 USPQ 496, 497 (TTAB 1978); see also, In re Shutts,
217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water
Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).
We must also account for whether the mark sought to be
registered is an Italian term. The doctrine of foreign
equivalents generally requires considering the meaning of a
mark in a non-English language to the speakers of that
language. In re Spirits International N.V., 91 USPQ2d
1489, 1491 (TTAB 2009). “Under the doctrine of foreign
equivalents, foreign words from common languages are
translated into English … .” Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1696 (Fed. Cir. 2005). The doctrine has been
summarized in a leading trademark treatise in the context
Serial No. 77846384
4
of determining whether a mark is descriptive under Section
2(e)(1) of the Trademark Act:
Under the “doctrine of foreign
equivalents,” foreign words are
translated into English … . However,
the “doctrine of foreign equivalents”
is not an absolute rule, for it does
not mean that words from dead or
obscure languages are to be literally
translated into English for descriptive
purposes.

J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition §11:34 (4th ed. 2011) (footnotes omitted).
The Examining Attorney submitted the following
evidence with his January 20, 2010 Office action.
1. The word “Pelle” is Italian for “skin,
hide, pelt, felt, leather, rind.” Babylon.com
website.
2. “La” is an Italian article meaning
“the.”2 Allwords.com website.

2 An “article” is “any member of a small class of words … that
are linked to nouns and that typically have a grammatical
function identifying the noun as a noun rather than describing
it. In English the definite article is the, the indefinite
article is a or an, and their force is generally to impart
specificity to the noun or to single out the referent from the
class named by the noun.” The Random House Dictionary of the
English Language (Unabridged), p. 118 (2nd ed. 1987). The Board
may take judicial notice of dictionary evidence. University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
Serial No. 77846384
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In his September 25, 2010 Office action, the examining
attorney asserted that the Translation Branch of the USPTO
found an additional dictionary definition of the Italian
word “Pelle” as meaning "leather." Although the examining
attorney provided a citation for the source of the
translation, he failed to attach a copy of it to the
Office action. The better practice is to attach copies of
the information for which the examining attorney wants the
Board to take judicial notice. Nevertheless, we note that
Cassell’s Italian Dictionary, p. 366 (1967) also defines
the Italian word “pelle” as “skin; hide, leather; peel,
rind.”
“Although words from modern languages are generally
translated into English … The doctrine of foreign
equivalents should be applied only when it is likely that
the ordinary American purchaser would ‘stop and translate
[the word] into its English equivalent.’” Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 73
USPQ2d at 1696. Italian is a modern language and that fact
is not in dispute. See In re Ithaca Indus., Inc., 230 USPQ
702, 704-705 (TTAB 1986) (Italian is a common, major
language spoken by many people in the United States).3

3 The examining attorney requested that we take judicial notice
of the 2000 U.S. census reporting that over 1 million Americans
Serial No. 77846384
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“The ‘ordinary American purchaser’ is not limited to
only those consumers unfamiliar with non-English languages;
rather, the term includes all American purchasers,
including those proficient in a non-English language who
would ordinarily be expected to translate words into
English.” In re Spirits International N.V., 91 USPQ2d at
1491. Applicant’s reliance on Spirits International is
misplaced. Applicant argues that the examining attorney
has not shown that the number of people who speak Italian
is great enough to constitute a “substantial portion” of
the intended audience.4 However, Spirits International,
involved a refusal under Section 2(e)(3) of the Trademark
Act based on the ground the mark was primarily
geographically deceptively misdescriptive. The court
explained that in view of the third element that the
misdescription be material in determining whether the mark
MOSKOVSKAYA for vodka was primarily geographically
deceptively misdescriptive, “foreign language marks must

speak Italian. Applicant provided a link to the census, rather
than the census document itself. A link is not a proper way to
introduce evidence because the underlying data identified by a
link is subject to change. Nevertheless, because the U.S. census
is a standard reference, we may take judicial notice of the
information. See In re Broyhill Furniture Industries Inc., 60
USPQ2d 1511, 1514 n.4 (TTAB 2001); In re 3Com Corp., 56 USPQ2d
1060, 1061 n.3 (TTAB 2000); Sprague Electric Co. v. Electrical
Utilities Co., 209 USPQ 88 (TTAB 1980).
4 Applicant’s Brief, pp. 9-10.
Serial No. 77846384
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meet the requirement that ‘an appreciable number of
consumers for the goods or services at issue will be
deceived.’” In re Spirits International N.V., 91 USPQ2d at
1495. The court held that in determining whether the mark
MOSKOVSKAYA for vodka was deceptive, the Board “failed to
consider whether Russian speakers were a ‘substantial
portion of the intended audience.’” In re Spirits
International N.V., 91 USPQ2d at 1495. In this case,
applicant has conflated the elements of proving that a mark
is deceptive with the elements of proving that a mark is
merely descriptive. The essential question before us in
this application is whether Italian speakers would
translate the mark or take the mark at face value; not
whether Italian speakers would find the mark deceptive.
We agree with applicant that consumers who do not
speak Italian will perceive LAPELLE to be an arbitrary term
without any meaning associated with leather for furniture.
However, Italian speakers would understand LAPELLE to mean
“the leather.” Without the space, LAPELLE is equivalent in
sound, meaning and commercial impression to LA PELLE which
means “the leather” and, therefore, it is merely
descriptive of leather for furniture identified in the
description of goods. Cf. In re Cox Enterprises Inc., 82
USPQ2d 1040, 1043 (TTAB 2007). Numerous cases have held
Serial No. 77846384
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that compressing two words, which when separate are merely
descriptive, into a single term does not avoid a finding of
mere descriptiveness for the combined term. In re Cox
Enterprises Inc., 82 USPQ2d at 1044; In re Omaha National,
819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) (FIRSTIER,
the equivalent of “first tier,” is merely descriptive of
banking services); In re A La Vieille Russie Inc., 60
USPQ2d 1895, 1897 n. 2 (TTAB 2001) (“the compound term
RUSSIANART is as merely descriptive as its constituent
words, ‘Russian art.’”); In re U.S. Steel Corp., 225 USPQ
750 (TTAB 1985) (SUPEROPE merely descriptive of wire rope);
In re Gagliardi Bros., Ind., 218 USPQ 181 (TTAB 1983)
(BEEFLAKES is merely descriptive of thinly sliced beef);
and In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977)
(BREADSPRED is merely descriptive of jellies and jams).
Our finding that LAPELLE would be perceived as the
combination of the Italian words “LA” and “PELLE” is
further supported because applicant’s mark is presented in
standard character form; therefore, it is not limited to
any special form or style as displayed on or in connection
with leather for furniture. When a mark is presented in
standard character form, the Board must consider all
manners in which applicant could depict the mark. For
example, applicant’s mark could be depicted as LaPelle or
Serial No. 77846384
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laPELLE, thereby creating a visual separation between the
two words.5 In re Cox Enterprises Inc., 82 USPQ2d at 1044,
citing Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d
1376, 170 USPQ 35, 36 (CCPA 1971) (“we must not be misled
by considering [applicant’s] mark only in its printed or
typewritten form, with all the characters being of equal
height.”).
Applicant argues that the doctrine of foreign
equivalents should not apply because LAPELLE has multiple
meanings. According to applicant, “foreign and English
marks are only considered equivalents where they are exact,
unambiguous equivalents of each other: that is, “words are
not foreign equivalents where a foreign word has multiple
English meanings.”6 Applicant cites In re Buckner, 6 USPQ2d
1316, 1317 (TTAB 1987) as authority. However, Buckner is
inapposite because it involved likelihood of confusion
between applicant’s mark DOVE for solid fuel burning stoves
and furnaces and the mark PALOMA for gas heating apparatus.
The word “Paloma” is Spanish for dove and pigeon. The
Board found that PALOMA and dove were not exact synonyms

5 In view of the foregoing, we are not persuaded by applicant’s
argument that Italian speakers do not see the mark as “La Pelle.”
(Applicant’s Brief, p. 7). For the same reason, we are not
persuaded by applicant’s argument that there is no word “La” in
applicant’s mark. (Applicant’s Brief, p. 8).
6 Applicant’s Brief, p. 6.
Serial No. 77846384
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and that in view of the differences in appearance and
sound, the marks were not similar.
In this case, the issue is whether the mark is merely
descriptive and because the issue of descriptiveness is
determined in connection with the description of goods, an
Italian speaker will understand immediately without the
need for any thought or reflection that the goods are
leather. Consumers have no reason to associate the mark
LAPELLE with any other possible meaning such as a sport
coat collar. Likewise, these same Italian speakers upon
hearing the word LAPELLE used in connection with leather
for furniture will perceive the mark as describing the
material used for the furniture and not a part of a sport
coat.
Finally, applicant argues, in the alternative, that
LAPELLE is not merely descriptive because it creates a
double entendre: the descriptive Italian meaning and part
of a sport coat. A “double entendre” is a word or
expression capable of more than one interpretation. For
trademark purposes, a “double entendre” is an expression
that has a double connotation or significance as applied to
the goods or services. The mark that comprises the “double
entendre” will not be refused registration as merely
descriptive if one of its meanings is not merely
Serial No. 77846384
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descriptive in relation to the goods or services. TMEP
§1213.05(c) (8th ed. 2011). There is no double entendre
created by applicant’s mark. As indicated above, the issue
of descriptiveness must be determined in connection with
the description of goods and, therefore, there is no basis
upon which to find that a consumer would associate LAPELLE
with a lapel. Moreover, an Italian speaker who recognized
the mark LAPELLE as meaning “the leather” will not perceive
LAPELLE as meaning a lapel because in Italian a “lapel” is
translated as “risvolto.”7
In view of the foregoing, we find that the mark
LAPELLE for use in connection with leather for furniture is
merely descriptive.
Decision: The refusal to register is affirmed.

7 Cassell’s Italian Dictionary, p. 808.