Spirits International N.V.

Trademark Trial and Appeal Board

Feb 11, 2008

No. 74382759 (T.T.A.B. Feb. 11, 2008)

Oral Hearing: July 10, 2007 Mailed: February 11, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Spirits International N.V.
________

Serial No. 74382759
_______

Bingham B. Leverich and Marie A. Lavalleye of Covington & Burling
LLP for Spirits International N.V.

Geoffrey Fosdick, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Holtzman, Rogers and Bergsman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Spirits International N.V. (applicant) has filed an
application to register the mark MOSKOVSKAYA (in standard
character form) for "vodka" in Class 33.1

1 Serial No. 74382759, filed April 22, 1993, based on an allegation of
a bona fide intention to use the mark in commerce. Applicant claims
ownership of Registration No. 0860268 for the mark MOSKOV (stylized)
for vodka. The application, originally filed by Monsieur Henri Wines,
Ltd, has been assigned to the present applicant, Spirits International
N.V.
THIS OPINION IS
A PRECEDENT OF
THE TTAB
Serial No. 74382759

2
The trademark examining attorney ultimately refused
registration on the ground that the mark is primarily
geographically deceptively misdescriptive of the goods under
Sections 2(a) and 2(e)(3) of the Trademark Act.
Applicant has appealed from this refusal. The appeal has
been briefed, and an oral hearing was held.
Before proceeding to the merits, we address a procedural
matter and clarify the proper statutory basis for the refusal.
This application was filed prior to the NAFTA implementation date
of December 8, 1993 and the corresponding amendment of the
Trademark Act to move the category of primarily geographically
deceptively misdescriptive marks from Section 2(e)(2) into the
newly created Section 2(e)(3). Compare Trademark Act § 2(e)(2),
15 U.S.C. § 1052(e)(2), 102 Stat. 3037 (Nov. 16, 1988), with 15
U.S.C. § 1052(e)(2)-(3), 107 Stat. 2057 (Dec. 8, 1994). Thus, on
August 31, 1993, when the application was first examined, the
examining attorney refused registration under Section 2(e)(2) of
the Trademark Act on the ground that the mark was either
primarily geographically descriptive or primarily geographically
deceptively misdescriptive, depending on the origin of the goods.
The application was then suspended on March 28, 1994 pending
disposition of a number of earlier-filed applications that were
potential citations under Section 2(d) of the Trademark Act
against the involved application. Proceedings were subsequently
Serial No. 74382759

3
resumed 12 years later on March 13, 2006, once the potential
citations had become abandoned, at which time the examining
attorney issued a final refusal to register on the ground that
the mark was either primarily geographically descriptive or
primarily geographically deceptively misdescriptive. However,
the examining attorney only cited Section 2(e)(2) as the basis
for the refusal, and also for the first time argued, in effect,
that the mark was geographically deceptive, a refusal which had
not been previously made. Applicant then filed a notice of
appeal, and concurrently therewith a request for reconsideration
on September 1, 2006 wherein applicant construed the final
refusal as one based on Section 2(e)(3) of the Act. The
examining attorney denied the request for reconsideration and
continued the final refusal "based upon Trademark Act Sections
2(a)/2(e)(3)."
First, although the examining attorney in the final refusal
did not cite the proper statutory authority for either geographic
deceptiveness under Section 2(a) or primary geographic deceptive
misdescriptiveness under Section 2(e)(3), he effectively applied
the proper substantive law for a refusal on those grounds.2
Furthermore, applicant, in its request for reconsideration,

2 See In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853,
1858 (Fed. Cir. 2003) ("...there are identical legal standards for
deception in each section..."). It is clear that the refusal is based
on the "deceptiveness" provision of Section 2(a) and that registration
is not being refused on the ground that the mark is a "geographical
indication" for spirits under Section 2(a).
Serial No. 74382759

4
viewed the examining attorney's omission of a reference to
Section 2(e)(3) as simply a "typographical error" (Req. for
Recon., p. 2, n. 1) and applicant acknowledged that the test
under Section 2(e)(3) in accordance with California Innovations
requires a showing of materiality. Under the circumstances, we
consider the proper refusal to be under Section 2(e)(3), as
further explained below.3
Second, because an appeal may only be taken after a final
refusal or a second refusal on the same ground (see Trademark
Rule 2.141), in view of the intervening statutory amendment and
the Federal Circuit's interpretation thereof in California
Innovations, the initial refusal to register on the ground of
primary geographical deceptive misdescriptiveness is deemed to be
based upon amended Section 2(e)(3) and thus the appeal of the
final refusal (issued over 12 years later) is not premature but
instead is clearly timely. There is no prejudice to applicant

3 Based on the Court's instructions in California Innovations, and its
construction of Sections 2(a) and 2(e)(3), the Board, in In re South
Park Cigar Inc., 82 USPQ2d 1507, 1509 (TTAB 2007), determined that the
appropriate refusal involving "an allegedly geographically deceptive
mark" falls exclusively under Section 2(e)(3). The only residual
effect of pre-NAFTA law lies in Section 2(f) of the Act. See In re
Beaverton Foods Inc., 84 USPQ2d 1253 (TTAB 2007). As amended by NAFTA,
Section 2(f) contains a grandfather clause that permits registration
under Section 2(f) of geographically deceptively misdescriptive marks
"which became distinctive of the applicant's goods in commerce before
[December 8, 1993]." This application was filed under the intent-to-
use provision of the Trademark Act and applicant has not yet filed an
allegation of use of the mark. In any event, applicant is not seeking
registration under Section 2(f). Thus, this amendment to the Trademark
Act has no bearing on this case.
Serial No. 74382759

5
from such as it clearly construed the final refusal as being
pursuant to amended Section 2(e)(3) in any event.
We turn then to the merits of this case. We note that the
examining attorney, having made alternative refusals under
Section 2(e)(2) and 2(e)(3), inquired in his final action about
the origin of applicant's goods. Applicant responded, in its
request for reconsideration, that the goods will not originate in
Moscow. Applicant submitted the declaration of Beatrice
Sfondylia, attorney and head of the IP Department of S.P.I. TM
Services SA (applicant's sister company), wherein Ms. Sfondylia
states that applicant's vodka "will not be manufactured, produced
or sold in Moscow and will not have any other connection with
Moscow." The examining attorney then maintained the final
refusal solely on the ground that the mark is primarily
geographically deceptively misdescriptive of the goods.
It is the examining attorney's burden to establish the prima
facie case in support of the refusal of registration. A prima
facie case for refusal under Section 2(e)(3) that the mark is
primarily geographically deceptively misdescriptive of the goods
requires a showing that (1) the mark's primary significance is a
generally known geographic location; (2) the relevant public
would be likely to believe that the goods originate in the place
named in the mark (i.e., that a goods/place association exists)
when in fact the goods do not come from that place; and (3) the
Serial No. 74382759

6
misrepresentation is a material factor in the consumer's
decision. See In re California Innovations Inc., supra at 1858;
and In re South Park Cigar Inc., supra at 1509.
The examining attorney argues, based on entries from The
Oxford Russian-English Dictionary (1972), that MOSKOVSKAYA is the
adjectival form of the word "Moscow," in Russian, meaning "of or
from Moscow." The examining attorney essentially contends that
under the doctrine of foreign equivalents, the ordinary American
purchaser, which as stated in In re Thomas, 79 USPQ2d 1021, 1024
(TTAB 2006) refers to the "ordinary American purchaser who is
knowledgeable in the foreign language,"4 will translate the mark
into its English equivalent. Pointing to The American Heritage
Dictionary of the English Language (Third Edition 1992) wherein
Moscow is described as "The capital and largest city of Russia,"
with a population of 8,368,200,5 the examining attorney argues
that Moscow is a generally known location, and as the adjectival
form of Moscow, the primary meaning of the mark as a whole is
geographic. In addition, the examining attorney submitted
printouts from various websites which he contends show that

4 The "ordinary American purchaser" is the "relevant public" for the
goods involved in this case.

5 The examining attorney identified the source for this entry but did
not supply a copy of the entry. Nevertheless, we have located this
resource and we take judicial notice of its content. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002) (the
Board may take judicial notice of standard reference works, including
online reference works which exist in printed format).
Serial No. 74382759

7
Moscow is known for its production of vodka. The examining
attorney concludes that because Moscow is known for vodka, the
misrepresentation of origin is material to the consumer's
purchasing decision.
There is no dispute as to the meaning of MOSKOVSKAYA in
English. Indeed, Ms. Sfondylia states in her declaration that
"the geographic location named in the mark is Moscow, since
MOSKOVSKAYA means 'of or from Moscow' in the Russian language."
Nor is there any dispute that "Moscow," the root of MOSKOVSKAYA,
is a generally known geographic location or that "Moscow" has no
significance other than its geographic significance.6
Furthermore, applicant specifically states that the vodka will
not originate in Moscow.
Applicant argues, however, that the primary meaning of
MOSKOVSKAYA is not geographic. Applicant contends, based on its
interpretation of Palm Bay Import, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689
(Fed. Cir. 2005), that the examining attorney has erroneously
applied the doctrine of foreign equivalents in this case. In
addition, applicant commissioned a survey which, in applicant's
view, "demonstrates conclusively" that the doctrine does not

6 Applicant's present attorneys specifically state that they do not
subscribe to the position taken by applicant's former counsel in this
case, namely that MOSKOVSKAYA is derived from the surname MOSKOVITZ.
(Reply Brief, n. 3.)
Serial No. 74382759

8
apply. (Brief, p. 24.) The survey also shows, according to
applicant, that none of the three elements necessary to show that
a mark is primarily geographically deceptively misdescriptive
exists in this case. Applicant concludes that the meaning of the
mark is arbitrary because the term would not be translated into
English by consumers, and that its geographic meaning would be
lost on the public.
We turn first to applicant's arguments regarding Palm Bay
which, in applicant's view, compels a finding in this case that
the doctrine of foreign equivalents does not apply.
Under the doctrine of foreign equivalents, foreign words
from common, modern languages are translated into English to
determine genericness and descriptiveness, as well as similarity
of connotation in order to ascertain confusing similarity with
English word marks. See Palm Bay, supra. Cf. Enrique Bernat F.
S.A. v. Guadalajara Inc., 210 F.3d 439, 54 USPQ2d 1497, 1499 (5th
Cir. 2000) ("courts need not concern themselves with words from
obsolete, dead, or obscure languages").
Although the doctrine most often arises in cases involving
likelihood of confusion and marks that are generic or merely
descriptive, the doctrine also applies to issues concerning
geographic marks. See, e.g., In re Joint-Stock Co. “Baik”, 80
USPQ2d 1305 (TTAB 2006) (BAIKALSKAYA, translated as "from
Serial No. 74382759

9
Baikal," is primarily geographically descriptive of vodka from
Lake Baikal).
According to the test enunciated in Palm Bay, the doctrine
should be applied "when it is likely that the ordinary American
purchaser would 'stop and translate [the term] into its English
equivalent.'" Palm Bay, supra at 1696, quoting In re Pan Tex
Hotel Corp., 190 USPQ 109, 110 (TTAB 1976).7 The "ordinary
American purchaser" in this case refers to the ordinary American
purchaser of vodka who is knowledgeable in Russian. As discussed
more fully below, because the mark is in Russian, a common,
modern foreign language, we must consider that an appreciable
segment of the buying public will speak or understand this
language, and we must therefore determine whether the mark is
primarily geographically deceptively misdescriptive from the
perspective of those consumers. See In re Thomas, supra at 1024
(the "ordinary American purchaser" in a case involving a foreign
language mark refers to the ordinary American purchaser who is
knowledgeable in the pertinent foreign language).
Applicant argues that the Board's decision in Thomas is
inconsistent with the holding in Palm Bay "to the extent that the
Board interpreted the Court's reference to the 'ordinary American

7 In Pan Tex, the Board found it unlikely that purchasers "would stop
and translate" LA POSADA into its English equivalent "the inn" and
accordingly held that the mark was capable of distinguishing the source
of applicant's lodging and restaurant services and entitled to register
on the Supplemental Register.
Serial No. 74382759

10
purchaser' to mean 'the ordinary American purchaser who is
knowledgeable in the foreign language,'" and that the Thomas case
along with the authorities cited for this proposition "are no
longer good law." (Brief, p. 23, n. 12.) Applicant contends
that the Board's interpretation in Thomas "simply can not be
squared" with the holding in Palm Bay which, according to
applicant, found that "it was 'error' for the Board to have based
its decision on the fact that 'an appreciable number of
purchasers in the U. S. speak and/or understand French.'" In
particular, applicant argues:
The Court of Appeals was ... consistent [throughout
the decision] in describing the relevant purchaser to
whom its test should be applied as (1) 'an American
buyer', (2) 'the ordinary American purchaser', and
(3) 'the average American purchaser' --
characterizations that all have the same essential
meaning. Nowhere in the Palm Bay decision is there
any suggestion that the relevant purchaser is, as the
Board held in Thomas, 'the ordinary American
purchaser who is knowledgeable in the foreign
language.' To the contrary, the court of Appeals
specifically rejected as 'error' the Board's attempt
to so define the relevant purchaser in Palm Bay...
(Reply Brief, p. 10, emphasis in original.)

We disagree with applicant's interpretation of the Palm Bay
case. Applicant has improperly taken the Court's references to
the "ordinary American purchaser" out of context and has missed
the import of the decision. In the Board decision reviewed by
the Federal Circuit, the Board had determined that Palm Bay's
mark VEUVE ROYALE for sparkling wine was confusingly similar to
Serial No. 74382759

11
VCP's marks VEUVE CLICQUOT PONSARDIN, VEUVE CLICQUOT and THE
WIDOW for champagne. Applicant points to the following language
by the Court referring to the error in the Board's decision:
The Board held that Palm Bay's VEUVE ROYALE was
confusingly similar to VCP's mark THE WIDOW, in part
because under the doctrine of foreign equivalents, an
appreciable number of purchasers in the U.S. speak
and/or understand French, and they "will translate"
applicant's mark into English as “Royal Widow.” Veuve
Clicquot Ponsardin, slip op. at 36. The Board erred
in so finding.

However, after stating that the Board erred in its finding
as to the marks VEUVE ROYALE and THE WIDOW, the Court went on to
explain why the Board finding was in error. The Court noted that
the Board, in comparing VEUVE ROYALE with VEUVE CLICQUOT
PONSARDIN and VEUVE CLICQUOT, "found that 'an appreciable number
of purchasers are unlikely to be aware that VEUVE means 'widow'
and are unlikely to translate the marks into English,'" but at
the same time the Board found, in comparing VEUVE ROYALE with THE
WIDOW that "'[A]n appreciable number of purchasers in the United
States speak and/or understand French, and they will translate
applicant's mark into English as ROYAL WIDOW.'" (Emphasis in
original.) Because the Board found that an appreciable number of
U.S. consumers "either will or will not translate VEUVE into
'widow'" the Court stated that the Board "was inconsistent in its
application of the doctrine of foreign equivalents."
Contrary to applicant's contention, the Court did not hold
Serial No. 74382759

12
that it was "error" for the Board to have based its decision on
the fact that "an appreciable number of purchasers in the U.S.
speak and/or understand French," or that the Board erred in
defining this "appreciable number of purchasers" as the relevant
group for analysis under the doctrine of foreign equivalents.
Rather, the Board's error was in finding that such purchasers
"will translate" applicant's VEUVE ROYALE mark into English.8 In
view of the Board's own finding, on the one hand, that purchasers
would be "unlikely to translate" applicant's VEUVE ROYALE mark
and two of opposer's three marks, and its contradictory finding,
when comparing applicant's mark with opposer's third mark (THE
WIDOW), that purchasers would translate applicant's mark, the
Court merely decided which of the contradictory findings was
correct and which was in error. Thus, when the Court agreed with
the Board that the average American purchaser was unlikely to
translate the VEUVE ROYALE mark and disagreed with the Board's
contradictory finding, it did not address the definition of the
"ordinary American purchaser."

8 This view of Palm Bay is supported by Sutter Home Winery, Inc. v.
Madrona Vineyards, L.P., 2005 WL 701599 (N.D. Cal. 2005) (unpublished).
The Court observed that reliance on the doctrine of foreign equivalents
"is merely an application of the general rule that two marks are
confusingly similar only when their use 'would cause confusion of any
appreciable number of ordinary prudent purchasers as to source of the
goods' [citation omitted]." Continuing, the Court noted, citing Palm
Bay ("396 F.3d at 1377"), that this inquiry "in turn depends on whether
an 'appreciable number of purchasers in the United States,' who courts
presume to speak English as well as the pertinent foreign language,
will understand the meaning of the foreign word mark at issue and
translate that mark into its English equivalent."
Serial No. 74382759

13
Furthermore, the Court at no point said, or even suggested,
that in determining the registrability of a mark in a foreign
language, the "ordinary American purchaser" who speaks or
understands the foreign language can, in effect, be ignored.
Applicant argues that the Thomas decision "cannot be squared"
with the Court's holding in Palm Bay. The fact is, however, that
applicant's position "cannot be squared" with the underlying
principles of the Trademark Act.
The purpose of the Trademark Act is two-fold: to protect
business and to protect the consumer. See Nitro Leisure Products
L.L.C. v. Acushnet Co., 341 F.3d 1356, 67 USPQ2d 1814, 1818 (Fed.
Cir. 2003) ("In passing the Lanham Act, Congress noted that the
purpose was 'to protect legitimate business and consumers of the
country.'" [Citation omitted]); and In re Owens-Corning Fiberglas
Corporation, 774 F.2d 1116, 227 USPQ 417, 418 (Fed. Cir. 1985).
The doctrine of foreign equivalents is fundamental to this
protection. It extends the protection of the Act to those
consumers in this country who speak other languages in addition
to English. As explained in Otokoyama Co. v. Wine of Japan
Import Inc., 175 F.3d 266, 50 USPQ2d 1626, 1629 (2d Cir. 1999),
"This extension rests on the assumption that there are (or
someday will be) customers in the United States who speak that
foreign language." The Court noted "the diversity of the
population of the United States, coupled with temporary visitors,
Serial No. 74382759

14
all of whom are part of the United States marketplace." All U.S.
consumers, including those consumers who speak or understand both
English and a foreign language, are entitled to be protected
under Section 2(e)(3) from being deceived as to the geographic
source of a product.
Thus, to adopt applicant's position would undermine the
principle on which the doctrine of foreign equivalents is based
and the interests the doctrine is designed to protect. In the
context of Section 2(e)(3), it would permit or even encourage
registration of foreign terms which have the potential to deceive
an appreciable segment of the relevant consumers in the United
States.
In addition, applicant's interpretation of Palm Bay
conflicts with long established case law involving the doctrine
of foreign equivalents which has consistently focused on the
relevant consumer who speaks or understands the foreign language.
Indeed, the Court of Customs and Patent Appeals (a predecessor to
the Federal Circuit), the Fourth Circuit and the Board, have
rejected the type of argument applicant is making here.9 See

9 To the extent that applicant argued at the oral hearing that only a
certain type or category of foreign words or phrases would be
translated, such as those terms that are familiar to even those
Americans who do not speak or understand the foreign language,
applicant is mistaken. It may be true in some cases that foreign words
or phrases are so familiar to the American public that they would not
even require translation or, therefore, application of the doctrine of
foreign equivalents. See Bourjois, Inc. v. Parfums Schiaparelli, Inc.,
72 USPQ 32, 33 (Com'r Pats. 1946) ("knowledge of any foreign tongue" is
Serial No. 74382759

15
Nestle's Milk Products, Inc. v. Baker Importing Company, Inc., 86
USPQ 80, 82 (CCPA 1950) ("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."); In
re Northern Paper Mills, 64 F.2d 998, 17 USPQ 492, 493 (CCPA
1933) (GASA, Spanish for gauze, is merely descriptive of toilet
paper; rejecting applicant's argument that the foreign word is
not "necessarily descriptive in this country, where the English
language is the language of the people."); Pizzeria Uno
Corporation v. Temple, 747 F.2d 1522, 224 USPQ 185, 191 (4th Cir.
1984) ("Under this doctrine, 'foreign words are translated into
English and then tested for descriptiveness or genericness,' 'by
seeing whether that foreign word would be descriptive [of the
product] to that segment of the purchasing public which is
familiar with that language,' McCarthy, Trademarks and Unfair
Competition, § 11.14, p. 464-65 (2d ed. 1984 Lawyers Coop.");
Enrique Bernat, supra, 54 USPQ2d at 1500 ("explanation for
denying trademark protection to generic foreign words is that
Spanish-speakers in the U.S. will understand 'chupa' to be
generic [for lollipop]"); Joint-Stock Co. “Baik,” supra, 80

not essential in the case of marks such as "Si.Si..Si..." and "Mai Oui"
which are words that "have been so widely popularized that they are
virtually a part of our language."). At the same time, however, the
law is clear that merely because the terms would not be familiar to
those Americans who do not speak the foreign language is not a reason,
in itself, to disregard the doctrine.
Serial No. 74382759

16
USPQ2d at 1310 ("There is no question that Russian speakers
living in the United States, according to the record
approximately 706,000 in number, would immediately know that
BAIKALSKAYA means 'from Baikal.'"); In re Oriental Daily News,
Inc., 230 USPQ 637, 638 (TTAB 1986) (refusing registration of a
Chinese-language mark on the ground that a sizable number of
American consumers who are familiar with both the Chinese and
English languages would be likely to perceive the mark as merely
descriptive); In re Optica International, 196 USPQ 775, 777 (TTAB
1977) ("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"); and In re ZAZZARA, 156 USPQ 348, 348
(TTAB 1967) (PIZZE FRITTE, Italian for "fried buns," "would be
recognized as such by that segment of the purchasing public which
is familiar with the Italian language.").
Furthermore, as a general matter, it is never necessary to
show that all, or even most, of the relevant consumers would be
deceived. All that is required is a showing that some portion of
relevant consumers will be deceived.10 See, e.g., Singer

10 Applicant relies on ConAgra Inc. v. Saavedra, 4 USPQ2d 1245, 1249
(TTAB 1987) wherein the Board states, "While respondent may presently
market its meatless hot sauce [under the mark TAPATIO] to Spanish-
speaking consumers in this country, there is nothing in the recitation
of goods limiting the sale of the product to such a narrow class of
Serial No. 74382759

17
Manufacturing Co. v. Birginal-Bigsley Corp., 319 F.2d 273, 138
USPQ 63, 65 (CCPA 1963) (AMERICAN BEAUTY for sewing machines of
Japanese manufacturer geographically deceptively misdescriptive
to that segment of the American public that prefers sewing
machines of American manufacture to Japanese machines; "That
segment is entitled to buy according to its prejudices and
preferences without the danger of being deceived or confused by
geographically misdescriptive marks. We suppose that recognition
of that right is the reason for section 2(e)(2)."). See also,
e.g., Mushroom Makers, Incorporated v. R.G. Barry Corporation,
580 F.2d 44, 199 USPQ 65, 66 (2d Cir. 1978) (the issue is whether
"there is any likelihood that an appreciable number of ordinarily
prudent purchasers are likely to be...confused, as to the source
of the goods in question"); and United States ex rel. Federal
Bureau of Investigation v. Societe Anonyme Francaise M. Bril and
Co., 187 USPQ 685, 687 (D.D.C. 1975) (the relevant standard under
Section 2(d) is whether it is likely that "a sizeable number of
normally intelligent persons exercising due care, would be
confused.")
The standard is the same when the mark involves a foreign
language term. That is, in determining whether a mark in a

consumer." However, the decision in that case was based at least in
part on the fact that there was no evidence "that even a significant
portion of the Spanish-speaking consuming public recognizes 'tapatio'
as a primarily geographical designation."
Serial No. 74382759

18
foreign language is deceptive as to geographic origin, the
question is whether an appreciable number of consumers for the
goods or services at issue will be deceived. At least one
significant group of "ordinary American purchasers" is the
purchaser who is knowledgeable in English as well as the
pertinent foreign language.
With the above principles in mind, we presume that a word in
one of the common, modern languages of the world will be spoken
or understood by an appreciable number of U.S. consumers for the
product or service at issue. See In re Northern Paper Mills,
supra, 17 USPQ at 493 ("a descriptive word, used in one of the
modern languages of the principal nations of the world cannot be
properly registered as a trade mark [in the United States].").
As for the present case, there is no question that Russian
is a common, modern language. Indeed, according to the U.S.
Census 2000, the Russian language is spoken by 706,000 people in
the United States.11 See also Joint-Stock Co. “Baik,” supra. The
question is whether those who understand the language "will stop
and translate the word into its English equivalent." Palm Bay,
supra at 1696. This question in turn necessarily depends upon

11 We take judicial notice of this information obtained from the United
States Census Bureau, Census 2000 (www.census.gov). See U.S. v.
Bailey, 97 F.3d 982, 985 (7th Cir. 1996) (judicial notice taken of facts
from Census Bureau's Statistical Abstract of the United States); Knox
v. Butler, 884 F.2d 849, 852 n. 7 (5th Cir. 1989) (judicial notice
appropriately taken of census data); and Citizens Financial Group Inc.
v. Citizens National Bank of Evans City, 383 F.3d 110, 72 USPQ2d 1389
(3d Cir. 2004).
Serial No. 74382759

19
the particular facts and circumstances of the case. While there
are exceptions to the rule, and circumstances where translation
is unlikely, none of those circumstances exist here.
The term MOSKOVSKAYA and its translation, "of or from
Moscow," are essentially equivalent in meaning. Compare, e.g.,
In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 112 (Fed. Cir.
1983) ("None of these [dictionary] definitions makes 'second
chance' the exact translation of [the French word]
'repechage.'"); and In re Pan Tex Hotel Corporation, 190 USPQ 109
(TTAB 1976) (finding that while LA POSADA may be literally
translated as "the inn," the various dictionary definitions
showing that the term "carries the added implication of a home or
dwelling" made it clear that the designation had a "connotative
flavor" which was slightly different from that of the words "the
inn"). Compare also Pizzeria Uno, supra, 224 USPQ at 192
(PIZZERIA UNO is not descriptive of restaurant services as "the
term 'Uno' is not to be translated as equivalent to our
colloquial term 'Number One' in the sense of the 'best'; but the
translation is merely 'one,' no more and no less.").
There is nothing in the record to indicate the mark would
not be translated because of marketplace circumstances or the
commercial setting in which the mark is used. Compare In re Pan
Tex Hotel Corporation, supra (finding that because of the setting
in which applicant uses LA POSADA, that is, on a sign mounted in
Serial No. 74382759

20
front of its motor hotel where the words "motor hotel" appear
directly under the notation LA POSADA, it is unlikely that
purchasers would stop and translate LA POSADA into its equivalent
"the inn"); and In re Tia Maria, Inc., 188 USPQ 524 (TTAB 1984)
(finding it unlikely that a person who had purchased AUNT MARY'S
canned fruits and vegetables from a supermarket would, upon
dining at the TIA MARIA restaurant surrounded by Mexican décor
and serving Mexican food, translate TIA MARIA into AUNT MARY and
then mistakenly assume that both goods and services originated
from the same source.)
There is also no question that the translated meaning of
MOSKOVSKAYA is not obscure. Cf., e.g., In re Isabella Fiore LLC,
75 USPQ2d 1564 (TTAB 2005) citing In re Advanced Spine Fixation
Systems, Inc., 25 USPQ2d 1367, 1369 (TTAB 1992) ("Many surnames
of foreign origin have obscure meanings which lose out to the
primary surname significance.").
Thus, applying the doctrine of foreign equivalents in this
case, we find that the primary meaning of MOSKOVSKAYA, meaning
"of or from Moscow," is geographic. The common, adjectival form
of the term does not detract from the geographic meaning of the
mark as a whole. See In re Joint-Stock Co. "Baik," supra
(BAIKALSKAYA, meaning "from Baikal" in English, is primarily
geographically descriptive of vodka from that area); and In re
Jacks Hi-Grade Foods, Inc., 226 USPQ 1028 (TTAB 1985) (NEAPOLITAN
Serial No. 74382759

21
held primarily geographically deceptively misdescriptive as
applied to sausage emanating from the United States). Indeed,
the adjectival meaning, "from Moscow" actually emphasizes the
geographical significance.
In addition, as shown by the website evidence submitted by
the examining attorney, Moscow is known for the production of
vodka.12 For example:
If you want to drink vodka as it was meant to be
drunk you have to head for Moscow - the capital of
vodka production in the country, where most native
brands such as Stolichnaya and Smirnoff are made.
"This is Travel" website.

It is quite symbolic that the museum is now situated
in Moscow, which is the historical place this famous
drink originates from, 15th century being the starting
point of its history.
...
It is not surprising then that in 1953 the "Moscow
Special" was awarded a gold medal at an international
exhibition in Switzerland. ...
...
"The Vodka Museum" website
We also take judicial notice of an entry from the
Encyclopædia Britannica (2007) describing Moscow as follows:13

12 The website addresses do not appear on the excerpt printouts; nor did
the examining attorney provide this information. However, because
applicant has not objected to the authenticity of this evidence we have
considered it properly of record.

13 From the Encyclopædia Britannica Online at www.eb.com. Applicant
attempts to discredit the information on the "This is Travel" website
above arguing that the statement that Moscow is "where most brands such
as Stolichnaya and Smirnoff are made" is "flatly incorrect"; that
applicant "can attest to the fact that [Stolichnaya] is made in
Kaliningrad, not Moscow"; and that "as plainly stated on the [Smirnoff]
label," the vodka is "produced in the USA" by a U.S. company. (Brief,
Serial No. 74382759

22
... [Moscow's] most important products include
processed meat and dairy items, confectionery, and
alcoholic beverages. Among the city's most
successful firms is the Kristall Distillery, which
produces the renowned Stolichnaya vodka.

We find that the evidence is sufficient to show, prima
facie, that there is a goods/place association of Moscow with
vodka, and moreover that Moscow is noted for vodka production, or
that alcoholic beverages, which would include vodka, are
principal products of Moscow. Thus, we may infer, in view of the
strong connection between vodka and Moscow, that purchasers are
likely to be deceived into believing that applicant's vodka will
come from Moscow when in fact it will not. See In re House of
Windsor, Incorporated, 221 USPQ 53, 57 (TTAB 1983) ("if the
record contains a reliable gazetteer entry (or the like) to the
effect that applicant's goods (or sufficiently related goods) are
a principal product of the geographical area named by the mark,
such evidence is sufficient to establish the materiality of the
deception"). See also California Innovations, supra, citing pre-
NAFTA cases meeting the "new NAFTA standards" for materiality
such as In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865,

p. 21, n. 10.) However, applicant has not "attested" to these facts,
as it claims; nor has applicant otherwise supported them. Moreover,
the encyclopedic reference specifically states that Stolichnaya vodka
is (or at least was at the time of publication of this entry) produced
in Moscow, and the evidence as a whole shows that vodka, in general, if
not a particular brand of vodka, is a principal product of Moscow.
Finally, whether or not the statements in the websites or the
encyclopedia as to the origins of specific brands are true, they show
that the authors associate Moscow and vodka.
Serial No. 74382759

23
868 n.6 (Fed. Cir. 1985), wherein the Court explained "if the
place is noted for the particular goods, a mark for such goods
which do not originate there is likely to be deceptive under
§2(a) and not registrable under any circumstances."); and In re
South Park Cigar Inc., supra at 1516 (TTAB 2007) (a showing that
the goods are "a principal product" of the place named in the
mark, that the place is "noted for" the goods, or that the goods
are, or are related to, the "traditional" products of the place
named in the mark supports a finding of materiality).
We turn next to applicant's survey which, according to
applicant, establishes that MOSKOVSKAYA would not be translated
into English by consumers, and also that none of the elements of
the Section 2(e)(3) test exists.
This was a mall intercept survey designed by Dr. Jerry
(Yoram) Wind, president of Wind Associates, Inc. and a professor
of marketing at the Wharton School of the University of
Pennsylvania. The survey was conducted at shopping malls located
in 12 markets (3 in each of the four census regions) by Guideline
Research of New York under Dr. Wind's direction. Dr. Wind
prepared a report describing the survey and discussing the
results. The verbatim responses were recorded and included with
the report.
The stated objective of the survey was to show whether:
Serial No. 74382759

24
(1) the consuming public is likely to believe the
place allegedly identified by the mark (Moscow)
indicates the origin of goods bearing the mark, when
in fact the goods do not come from that place, and

(2) the alleged misrepresentation is a material
factor in the consumer's decision.

The universe for the survey, as defined by Dr. Wind,
consisted of U.S. consumers at least 21 years of age and over
"who have bought vodka in the past year or who would consider
buying vodka in the next 3 months either in a store or
bar/restaurant and who make the buying decision." (Report, p.
3.)
The sample for the survey consisted of a total of 454
respondents, 231 of whom were placed in the test group and 223 in
the control group. Respondents in the test group were shown a
card with the name MOSKOVSKAYA and those in the control group
were shown the fictitious name VOSKOVSKAYA. The two groups were
asked the following questions:
1. Do you have any idea where this vodka is made?

Yes__ No__ DK__

2. (a) (if yes) Where do you think this vodka is made?
(b) And what makes you think so?

3. (a) Assuming you were considering buying a bottle of this
vodka or ordering a drink made with it, would your decision
be affected or not be affected if we told you that it is
made in a Russian city named Kaliningrad?

Yes__ No__ DK__

(b) (If yes) Why?
Serial No. 74382759

25
(c) (If yes) If we told you that it is made in a Russian
city named Kaliningrad would you be:

(1) More likely to buy it?
(2) Less likely to buy it?
(3) Neither?
(4) Or don't you know?

As indicated in Dr. Wind's report, of the 231 respondents in
the test group, 137 respondents (59.3%) answered "Russia" in
response to question 2(a),14 and 6 respondents (2.6%) answered
"Moscow" in response to that question. Of the 137 respondents
who gave the answer "Russia" in response to 2(a), 18 respondents
(7.8%) answered "Moscow" (or some variation of that name such as
Mosko, Mosco, Moscov) in response to question 2(b) as a reason
for their belief that the vodka is made in Russia.15 Nineteen of
the 24 respondents who answered "Moscow" in response to either
2(a) or 2(b), answered in response to question 3(a) that their
decision to buy the vodka would not be affected if they were told
it was made in the Russian city of Kaliningrad; and none of these
24 respondents said in response to question 3(c) that they would
be less likely to purchase the vodka if they were told it is made
in the Russian city of Kaliningrad.

14 The report shows that 54.7% of those in the control group answered
"Russia" in response to question 2(a). Dr. Wind found no significant
difference between those mentioning Russia in the test group in
response to 2(a) and those mentioning Russia in response to the
fictional control name. (Report, p. 10 n*[sic]).

15 Only one respondent in the control group answered "Moscow" to
question 2(a) and no one in that group gave the answer "Moscow" in
response to 2(b).

Serial No. 74382759

26
Dr. Wind concluded from these results that "1. ... The
consuming public thus is not likely to believe that the place
allegedly identified by the MOSKOVSKAYA mark (Moscow) is the
origin of the vodka bearing that mark"; and further that "2. ...
The fact that MOSKOVSKAYA vodka is not made in Moscow is not a
material factor in consumers' decision whether to buy the
vodka."16 (Report, pp. 19-20.)
We have a number of problems with the survey and report.
The critical problem is the universe selected by Dr. Wind. As
discussed above, consumers who are knowledgeable in the Russian
language are deemed to constitute an appreciable segment of the
buying public. However, Dr. Wind did not screen for these
consumers. There is no way of knowing whether the views of this
significant subset of potential purchasers was properly
represented in the survey because Dr. Wind made no effort to
include them. Under the circumstances, the survey results cannot

16 Dr. Wind states in his conclusions that "A statistical analysis of
the data on which the above conclusions (1 and 2) are based shows that
the difference between the test group...and the control group...are not
statistically significant." (Report, p. 20.) He also states that "the
overlap between the 95% confidence intervals of the two groups is very
large" (Appendix H, "Statistical Analysis") and that "Given that the
control stimulus was a fictitious name, the statistical results further
strengthen our confidence in the [above conclusions]." Presumably, Dr.
Wind is taking the position that the 2.6% figure (those who answered
"Moscow" in response to question 2(a)) is not statistically
significant. However, from our review of Appendix H of the report, Dr.
Wind made no such finding with respect to the 7.8% figure (those 18 who
answered "Moscow" in response to question 2(b)). In fact, Dr. Wind
makes no separate findings as to this figure with respect to question
2(b), or as to its significance in relation to the control group.
Serial No. 74382759

27
be considered meaningful or probative. See McCarthy on
Trademarks and Unfair Competition §32:159 (4th ed. 2007) ("A
survey of the wrong 'universe' will be of little probative value
in litigation [citations omitted].").
Notwithstanding this deficiency in the survey universe, and
reviewing the survey on the assumption that the universe was
proper, we still find that the survey is not persuasive or
probative of any issue in this case.
First, as we mentioned earlier, applicant, although
acknowledging that the objective of the survey "was to determine
whether conditions two and three of the California Innovations
test are met as to the MOSKOVSKAYA mark" (Brief, p. 12), at the
same time insists that the results also "demonstrate
conclusively" that the doctrine of foreign equivalents does not
apply. (Brief, pp. 19, 24). However, the survey did not even
test for whether the mark would be translated. The question
asked by the survey was where respondents think MOSKOVSKAYA vodka
is made, not what they think MOSKOVSKAYA means. Those are two
very different concepts. We also note that Dr. Wind drew no such
conclusion from the survey, and the results do not support such
finding.
Second, the survey does not serve to rebut the examining
attorney's prima facie case. To begin with, we disagree with Dr.
Wind's assessment of the results. We note applicant's argument
Serial No. 74382759

28
that only 6 of the 231 respondents (2.6%) believe that
MOSKOVSKAYA vodka is made in Moscow, and that this level of
confusion as to the geographic origin of MOSKOVSKAYA vodka "is
far lower than the 25 - 50 percent survey percentages courts have
found sufficient to support a likelihood of confusion."17 (Brief,
p. 17.) Apart from the question of whether it is appropriate to
rely on the likelihood of confusion figures for a survey on
geographic deceptiveness, in our view, Dr. Wind improperly
calculated the results. For one thing, we believe it is
appropriate to combine the 6 respondents who answered "Moscow" in
response to 2(a) with the 18 (7.8%) who answered "Moscow" (or a
variant) in response to 2(b), raising the percentage to 10.4%.
It is clear that in both cases the respondents are identifying
the mark with "Moscow." This figure is not insignificant
considering the universe selected for the survey and the fact
that those who recognized the term as "Moscow" may not have even
been familiar with the Russian language. We also see, in
reviewing the verbatim answers, that Dr. Wind counted a
significant number of what we consider to be ambiguous responses

17 As support for this argument, applicant cites McCarthy on Trademarks
and Unfair Competition, supra at § 32:188 ("Generally, figures in the
range of 25 percent to 50 percent have been viewed as solid support for
a finding of a likelihood of confusion."). However, that section also
goes on to note that the percentage can vary from case to case and that
results showing confusion levels as low as 11% and even 8% have been
considered significant.
Serial No. 74382759

29
as among the favorable responses, unfairly skewing the results
towards applicant.18
But even if we accept Dr. Wind's figures at face value, the
results are not significant. A mall intercept survey, while
clearly admissible and a recognized survey method, is entitled to
limited probative weight because it is not based on a random
sample and the results cannot be projected to the entire universe
of relevant purchasers. See Frank Brunckhorst Co. v. G. Heileman
Brewing Co., 875 F.Supp. 966, 35 USPQ2d 1102 (E.D.N.Y. 1994) (a
random or probability sampling is entitled to more weight than a
face-to-face mall intercept, which is not random); Calvin Klein
Co. v. Farah Manufacturing Co., (not reported in F.Supp.), 229
USPQ 795 (S.D.N.Y. 1985) (intercept survey is less accurate than
a probability sampling survey because the results cannot be
statistically projected to the entire nationwide population); and
R. J. Reynolds Tobacco Co. v. Loew's Theatres, Inc., 511 F. Supp.
867, 210 USPQ 291, 297 (S.D.N.Y. 1980) (mall intercept study

18 While it is clear that a number of respondents answered "Russia," in
response to 2(a), perhaps even without any understanding of the meaning
of the mark as referring to Moscow (e.g., "There are a lot of
syllables" (1011); "Because you can hardly pronounce it" (1070)), at
least 20 other respondents gave answers that can only be characterized
as ambiguous. Those answers include "Because of the name," (given by a
number of respondents, including 1034, 1045, 1069, 1107); "The first
six letters" (1137); and "First two syllables are mos kov" (1232). It
cannot be determined what it is about the name or the spelling of
MOSKOVSKAYA that caused the respondents to believe the vodka is made in
Russia. For example, one respondent answered "Moscow" in response to
2(a) because "it's in the name of the vodka" (1003). It is possible
that those who answered "because of the name," or the like, were
thinking of the name "Moscow."
Serial No. 74382759

30
"fails to produce a nationally projectable statistical
percentage."). Thus, we cannot infer that the views allegedly
reflected in this survey represent the views of the relevant
public at large.19
On the other hand, the results of a mall intercept survey
can tell us about the opinions of those participating in the
survey. However, where as here, the number of participants is
rather small (231), the survey provides limited information about
consumer views, and the resulting 2.6% percentage value (even
assuming that figure is correct), is not particularly meaningful.
To use an extreme example, in a survey showing that 1 out of a
total of 4 participants is deceived, the resulting deception rate
of 25%, while impressive on its face, is in fact virtually
meaningless data considering the size of the sample.
More important, the survey did not adequately test for any
of the elements of the Section 2(e)(3) test. We note that Dr.
Wind does not explain in his report why the particular questions
were selected, and we believe the questions are improperly or
insufficiently focused. We also find that at least some of the

19 We also note that the report does not indicate the number of
participants from each mall, and the number of actual interviews could
have been primarily from one mall or from a single geographic region,
further impacting the results. See, e.g., Exxon Corp. v. Xoil Energy
Resources, Inc., 552 F.Supp. 1008, 216 USPQ 634, 646 (S.D. N.Y. 1981)
("Nor can it seriously be contended that a survey predicated upon
interviews with 194 persons chosen as the interviewees here were chosen
will support projection over a broad geographical base, or conclusions
predicated thereon").
Serial No. 74382759

31
questions were not designed to obtain unbiased results. To begin
with, question 2(a) ("Do you have any idea where this vodka is
made?") would not necessarily elicit the response "Moscow" even
if the respondents thought the mark meant Moscow or that the
vodka came from Moscow. In fact, in response to that question,
137 respondents (59.3%) correctly answered that the vodka was
made in Russia. The follow-up question in 2(b) ("What makes you
think so?") does not really clarify matters because, again, it
would not necessarily elicit "Moscow" even if the respondents
were thinking "Moscow." Once the respondents answered "Russia"
in response to 2(a), that answer could very well have set the
context for their answer to question 2(b). The respondents may
have thought the question was asking why they think the vodka
comes from Russia. This can be seen from some of the verbatim
responses to that question, for example, "Russians are known for
making good vodka" (1099); "That is what people associate vodka
with" (1102); and "Best vodkas in the world are made out of
Russia (1228)." The question should have in some way probed for
a more specific location.
Question 3, which purports to test for materiality, was not
actually designed to reveal this information.20 In particular,

20 For purposes of the examining attorney's prima facie case,
materiality is presumed from the evidence showing that Moscow is known
for vodka. However, in order to rebut the prima facie case, it is
applicant's burden to establish that the presumption of materiality is
not, in fact, valid. In order to show that the public is not deceived
Serial No. 74382759

32
Question 3(a) ("Assuming you were considering buying a bottle of
this vodka or ordering a drink made with it, would your decision
be affected or not be affected if we told you that it is made in
a Russian city named Kaliningrad") is a loaded question. The
country of Russia is widely known for vodka production. Further,
applicant itself points out that Kaliningrad was identified by
the Board in the Joint-Stock Co. “Baik” case (at 1311) as "among
the main exporters" of Russian vodka. So respondents were
essentially apprised by question 3(a) that the vodka actually
comes from a city known for vodka, within a country known for
vodka. It is not surprising, then, that most of the respondents
who answered "Moscow," in response to question 2(a) or 2(b), also
answered that their decision would not be affected if they were
told the vodka comes from this other city in Russia. It might
have been more useful to ask respondents whether their decision
would be affected if they were told the vodka came from, for
example, Dover, Delaware, or at least some geographic place that
is not known, or so obviously known, for vodka. In fact, we do

by a false geographic term for vodka, it is necessary to show that the
geographic origin of the vodka is not "material" to their purchasing
decision. For this factor to be material to a consumer, the consumer
first has to care about the geographic source of the vodka. If
purchasers of vodka do not care about where the vodka comes from to
begin with - for example, their purchasing decision is based on the
price of the vodka or their preference for a particular brand, or some
other factor which may have nothing to do with geographic origin - they
cannot possibly be deceived by the false geographic term. Therefore,
the survey should have ascertained, rather than assumed, that the
geographic source of vodka is an important consideration to purchasers
of vodka.
Serial No. 74382759

33
not understand why respondents were not simply asked whether
knowing that the vodka came from Moscow would affect their
decision to purchase the vodka. As it stands, question 3(a)
virtually guarantees a favorable response to question 3(c), i.e.,
that respondents would not be less likely to purchase the vodka
if they were told it is made in the Russian city of Kaliningrad.
Decision: In view of the foregoing, we find that the
evidence shows prima facie the mark MOSKOVSKAYA is primarily
geographically deceptively misdescriptive as applied to vodka,
and that applicant's evidence and arguments fail to rebut this
prima facie showing.
The refusal to register under Section 2(e)(3) is affirmed.