The National Shipping Company of Saudi Arabia

Trademark Trial and Appeal Board

Aug 19, 2013

No. 85301086 (T.T.A.B. Aug. 19, 2013)

Mailed: August 19, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The National Shipping Company of Saudi Arabia
________

Serial No. 85301086
_______

Andrew D. Dorisio of King & Schickli for The National Shipping Company of Saudi
Arabia.

David H. Stine, Trademark Examining Attorney, Law Office 114 (K. Margaret Le,
Managing Attorney).
_______

Before Bucher, Lykos and Adlin, Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

The National Shipping Company of Saudi Arabia (“applicant”) filed an
application to register the mark displayed below,

for, as amended, the following goods and services:
Ships; tankers; vessels in International Class 12;

Business and commercial management of shipping and transportation
companies; business and commercial administration of shipping and
transportation companies; public relations, promotion, marketing and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85301086
2
advertising in relation to shipping and transportation services;
business management of offices; inventory management services;
business management of transportation fleet; stock inventory control
services; import-export agencies; customs clearance services; business
management supervision of port and terminal operations; advisory,
information and consultancy services in relation to: business and
commercial management of shipping and transportation companies;
business and commercial administration of shipping and
transportation companies; public relations, promotion, marketing and
advertising in relation to shipping and transportation services;
business management of offices; inventory management services;
business management of transportation fleet; stock inventory control
services; import-export agencies; customs clearance services; business
management supervision of port and terminal operations in
International Class 35;

Customs brokerage services; customs bonding; insurance underwriting
in the fields of property and casualty insurance for goods in transit;
collection of customs duties; financing services pertaining to the
shipment of goods in International Class 36;

Building, repair, cleaning and maintenance of ships; ship conversion;
provision of shipyard facilities; cleaning, maintenance and repair of
shipping containers; advisory, information and consultancy services in
relation to Building, repair, cleaning and maintenance of ships; ship
conversion; provision of shipyard facilities; cleaning, maintenance and
repair of shipping containers in International Class 37; and

Transportation of goods by air, land and sea; packaging and storage of
goods; travel arrangement; freight brokerage; freight forwarding;
freight shipping; cargo handling; cargo forwarding; cargo
transportation; information services relating to the movement of cargo;
loading and unloading of cargo; storage of goods; warehousing;
arranging the shipping of goods; chartering of shipping; container
leasing for the shipping industry; logistics services, namely, storage of
goods, transportation and delivery of goods for others by air, rail, ship
or truck; rental of ships; rental of tankers; advisory, information and
consultancy services in relation to: packaging and storage of goods;
transportation of crude oil, gas and chemicals by air, land and sea;
travel arrangement; freight brokerage; freight forwarding; freight
shipping; cargo handling; cargo forwarding; cargo transportation;
information services relating to the movement of cargo; loading and
unloading of cargo; warehousing; arranging the shipping of goods;
chartering of shipping; container leasing for the shipping industry;
Serial No. 85301086
3
logistics services, namely, storage, transportation and delivery of goods
for others by air, rail, ship or truck; rental of ships; rental of tankers in
International Class 39.1

The application includes the following translation statement:
The term “BAHRI” is a transliteration of an Arabic word which
means “marine,” “maritime,” “naval” or “of the sea.”2

Based on the doctrine of foreign equivalents, registration has been finally
refused in light of the applicant's failure to comply with the examining attorney’s
requirement for a disclaimer of the term “Bahri” pursuant to Trademark Act § 6(a),
15 U.S.C. § 1056(a), on the ground that the term is merely descriptive of a feature of
the identified goods and services.
Upon final refusal of registration, applicant filed a timely appeal. Both
applicant and the examining attorney filed briefs. For the reasons discussed herein,
we affirm the refusal to register.
An examining attorney may require an applicant to disclaim an unregistrable
component of a mark otherwise registrable. Trademark Act Section 6(a). Merely
descriptive terms are unregistrable, under Trademark Act Section 2(e)(1), 15 U.S.C.
§ 1052(e)(1) and, therefore, are subject to disclaimer if the mark is otherwise
registrable. The foreign equivalent of a merely descriptive English word is no more
registrable than the English word itself. “[A] word taken from a well-known foreign

1 Serial No. 85301086, filed April 21, 2011, pursuant to Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), alleging a bona fide intent to use in commerce. The description of the
mark reads as follows: The mark consists of a geometric design preceding the word “Bahri.”
2 Inasmuch as applicant’s involved mark does not contain any non-Latin characters, we find
for purposes of applying the doctrine of foreign equivalents to the case at bar that nothing
would change in our analysis if this statement had been proffered as a “translation” of the
word “Bahri.”
Serial No. 85301086
4
modern language, which is, itself, descriptive of a product, will be so considered
when it is attempted to be registered as a trade-mark in the United States for the
same product.” In re N. Paper Mills, 64 F.2d 998, 17 USPQ 492, 493 (CCPA 1933).
Failure to comply with a disclaimer requirement is grounds for refusal of
registration. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re
National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); and In re Pendleton
Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
The issues presented in this case are (1) whether the doctrine of foreign
equivalents applies to the term “Bahri,” and (2) if so, whether the examining
attorney has met the burden of establishing that the English translation of the term
“Bahri” as “marine” makes the involved mark merely descriptive of applicant’s
identified goods and/or services.3
Applicant argues that the doctrine of foreign equivalents does not apply because
prospective purchasers are unlikely to “stop and translate” the word “Bahri” into
Arabic because the English translation of “Bahri” is not “exact, literal, or direct.”
Applicant’s Brief, p. 5. More specifically, applicant maintains that because the
direct translation of “Bahri” is neither “boat” nor “ship” but rather has multiple
translations (such as “marine,” “naval,” or “of the sea”), the term is not merely

3 Applicant has offered four different possible translations of the term “Bahri.” For purposes
of our decision, we are focusing on the translations of the term “Bahri” as “marine” since
this is how the term is defined in the involved application’s translation statement. That is
not to imply that our decision would be different had we considered the other English
translations as well.
Serial No. 85301086
5
descriptive because the “genus” of these meanings does not describe the “species” of
applicant’s goods or services. Applicant further argues that it is unlikely that a U.S.
consumer will translate the term “Bahri” into any foreign language and recognize
the ascribed meaning. In support thereof, applicant has submitted an excerpt from
Wikipedia that “Bahri” is a masculine given Arabic name as well as a surname in
Punjabi Khatri families.
In addition, applicant contends that regardless of whether the doctrine of
foreign equivalents applies, none of the English language equivalents of the word
“Bahri” are merely descriptive. Applicant maintains that the terms “marine,”
“maritime,” “naval” and “of the sea” are broad, general terms that are suggestive,
not descriptive of the identified goods and services. In support thereof, applicant
relies on the following third-party registrations of foreign terms that are closely
related to but do not describe the identified goods and services: Registration No.
3392035 for the design mark VOLARE AIRLINES where “volare” means “to fly” for
airline related services and Registration No. 3327913 for the mark AMANZI
meaning “water” for goods identified as “boats.”4
Applicant’s arguments are unconvincing. “[A] word taken from a well-known
foreign modern language, which is, itself, descriptive of a product, will be so
considered when it is attempted to be registered as a trade-mark in the United
States for the same product.” In re N. Paper Mills, 17 USPQ at 493. The doctrine of
foreign equivalents is applied when the term is from a common modern language

4 Because Registration No. 3067973 was cancelled under Section 8, it is of no probative
value.
Serial No. 85301086
6
and it is likely that “the ordinary American purchaser would ‘stop and translate
[the term] into its English equivalent.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed.
Cir. 2005) (“Palm Bay Imports”), quoting In re Pan Tex Hotel Corp., 190 USPQ 109,
110 (TTAB 1976). See also In re Thomas, 79 USPQ2d 1021 (TTAB 2006). The term
“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 Int’l N.V., 563 F.3d 1347, 190
USPQ2d 1489, 1492 (Fed. Cir. 2009). See also In re Thomas, 79 USPQ2d at 1024.
Thus, the proper inquiry is not whether the “ordinary American purchaser” is
familiar with Arabic; rather, the correct inquiry is whether the ordinary American
consumer familiar with Arabic would “stop and translate” “Bahri” to the English
equivalent of “marine.” In addition, the doctrine has been applied in instances
where the foreign wording does not look or sound like the English language
equivalent but the English translation is a literal and exact translation of the
foreign wording. See e.g., In re Tokutake Indus. Co., 87 USPQ2d 1697 (TTAB 2008)
(AYUMI and its Japanese-character equivalent held merely descriptive for footwear
where the evidence, including applicant's own admissions, indicated that the
primary meaning of applicant's mark is “walking”).
In this case, there is no dispute that Arabic is a “common modern language.” In
addition, there is no dispute in the record regarding the translation of the literal
Serial No. 85301086
7
elements of applicant’s mark. The examining attorney, in applying the doctrine of
foreign equivalents, relies on these statements as well as the translation statement
provided by applicant. In light of this undisputed evidence, we must assume that
the ordinary U.S. consumer familiar with Arabic would “stop and translate” the
literal elements in applicant’s mark to “marine,” “maritime” “naval” or “of the sea”
and not the surname or given name meanings argued by applicant, at least when
considered in relation to the identified goods and services.
With regard to the issue of descriptiveness, applicant’s position reflects a
misunderstanding of the test for mere descriptiveness. The test for determining
whether a mark is merely descriptive is whether it immediately conveys
information concerning a significant quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection with which it is used, or
intended to be used. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986);
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not necessary, in order to
find a mark merely descriptive, that the mark describe each feature of the goods or
services, only that it describe a single, significant ingredient, quality, characteristic,
function, feature, purpose or use of the goods or services. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987). In addition, the mark need not describe all
the goods and services identified, as long as it merely describes one of them. See In
re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)
(“[T]he Trademark Office may require a disclaimer as a condition of registration if
Serial No. 85301086
8
the mark is merely descriptive for at least one of the products or services
involved.”).
Each of the proffered translations – “marine,” “maritime,” “naval” or “of the sea”
– satisfy the standard for mere descriptiveness as applied to the goods and services.
That being said, we focus our analysis on the translation of “Bahri” as “marine.”
The dictionary definition of the word “marine” is defined as “of or relating to the
sea, shipping, maritime affairs, sea navigation; nautical” and/or “used or adapted
for use at sea.” See definition of “marine” from the online versions of Yahoo
Education Dictionary and Collins English Dictionary (September 25, 2012 Office
Action). This term clearly describes the purpose, use and application of applicant’s
“ships; tankers; vessels” in Class 12; the services identified as “business and
commercial management of shipping and transportation companies; business and
commercial administration of shipping and transportation companies; public
relations, promotion, marketing and advertising in relation to shipping and
transportation services; … business and commercial administration of shipping and
transportation companies; public relations, promotion, marketing and advertising
in relation to shipping and transportation services; … ” in International Class 35;
“ … financing services pertaining to the shipment of goods” in International Class
36; as well as each of the ship building, repair, cleaning and maintenance services
listed in International Class 37; and transportation and ancillary services identified
in International Class 39.
Serial No. 85301086
9
The third-party registrations submitted by the examining attorney showing a
disclaimer of the term MARINE for either identical or similar goods and services
further support a finding that “Bahri” is merely descriptive. See March 7, 2012
Office Action. For example, we note that the word “Marine” is disclaimed in each of
the following registrations:
Registration No. 3062720 for the mark Pinnacle Marine Corporation for
“commercial vessels, ships, and boats” in International Class 12;

Registration No. 3903836 for the mark WEEKS MARINE for “marine
construction…” in International Class 37 and “ … marine towing, marine
transport” in International Class 39; and

Registration No. 4037484 for the mark BRADFORD MARINE for goods and
services including “yacht brokerage” in International Class 36; “maintenance
and/or repair of components, parts and systems in yachts and vessels” in
International Class 37; and “naval shipyard services” in International Class
39.

In addition, the two third-party registrations submitted by applicant including
the foreign words “volare” and “amanzi” are also distinguishable. In those cases, the
English equivalents of the foreign terms are suggestive rather than merely
descriptive when used in relation to the goods and services identified in each
respective registration. Finally, as the examining attorney points out, applicant’s
third-party registration evidence is not persuasive because “[t]he Board must decide
each case on its own merits” and “the PTO’s allowance of such prior registrations
does not bind the Board or this court.” In re Nett Designs, Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001).
Thus, based on the record evidence discussed above, we conclude that the
examining attorney has made a prima facie showing that pursuant to the doctrine
Serial No. 85301086
10
of foreign equivalents, the English translation of the word “Bahri” is merely
descriptive of applicant's goods and services.
Decision: The refusal to register in the absence of a disclaimer of “Bahri” is
therefore affirmed.
However, this decision will be set aside if, within two months of the mailing
date of this order, applicant submits to the Board a proper disclaimer of “Bahri.” See
Trademark Rule 2.142(g). The standardized disclaimer format is as follows: No
claim is made to the exclusive right to use the word “Bahri” apart from the mark as
shown.