Innovative Technologies Corporation of America, Inc.

Trademark Trial and Appeal Board

Sep 15, 2008

No. 78691831 (T.T.A.B. Sep. 15, 2008)

Mailed: September 15, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Innovative Technologies
Corporation of America, Inc.
________

Serial No. 78691831
_______

Peter M. de Jonge of Thorpe North & Western LLP for
applicant.

Scott Sisun, Trademark Examining Attorney, Chris A.F.
Pedersen, Managing Attorney, Law Office 110.
_______

Before Holtzman, Mermelstein, and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Innovative Technologies Corporation of America, Inc.,
seeks registration of the mark HAIR OF THE DOG (standard
characters) for “clothing, namely, shirts, t-shirts, pants,
shorts, headwear, hats, socks, sleepwear and dresses” in
International Class 25. Registration has been finally
refused pursuant to Trademark Act § 2(d), 15 U.S.C.
§ 1052(d), on the ground that applicant’s mark so resembles
the mark in Registration No. 2986486,1 LES CHEVEUX DU CHIEN

1 Registered August 16, 2005, based on an application filed
February 14, 2004. The registration file includes the following
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78691831
2
(standard characters), for “custom manufacture of clothing,
personal accessories in the nature of jewelry, stoles,
scarves, linens, and home décor items,” as to be likely, if
used on or in connection with the identified goods, to
cause confusion, to cause mistake, or to deceive.
After careful consideration of the record, we reverse.
I. Applicable Law
Our determination under Trademark Act § 2(d) is based
on an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.” Federated

statement: “The foreign wording in the mark translates into
English as the hair of the dog.”
Serial No. 78691831
3
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999), and cases
cited therein.
II. Discussion
We review the relevant du Pont factors as they apply
to this case.
A. The Similarity Or Dissimilarity of the Marks in
Their Entireties as to Appearance, Sound,
Connotation and Commercial Impression.

Applicant argues – and the examining attorney does not
disagree – that the marks at issue differ visually and
aurally. The examining attorney nonetheless argues that
the marks are similar “in meaning and commercial
impression; the doctrine of foreign equivalents is
applicable based on the unequivocal translation of the
registered mark to mean ‘hair of the dog’....” Ex. Att.
Br. at 3.
Under the doctrine of foreign equivalents,
foreign words from common, modern languages are
translated into English to determine similarity
of connotation with English words in a likelihood
of confusion analysis. See Palm Bay Import, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En
1772, [396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed.
Cir. 2005).] The doctrine is applied when it is
likely that “the ordinary American purchaser
would ‘stop and translate [the term] into its
English equivalent.[’]” Id., quoting In re Pan
Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976).
See generally, J.T. McCarthy, MCCARTHY ON TRADEMARKS
Serial No. 78691831
4
AND UNFAIR COMPETITION, § 23:36 (4th ed. 2006). The
Board has determined that the “ordinary American
purchaser” in a case involving a foreign language
mark refers to the ordinary American purchaser
who is knowledgeable in English as well as the
pertinent foreign language. In re Thomas, 79
USPQ2d 1021, 1025 (TTAB 2006).

In re La Peregrina Ltd., 86 USPQ2d 1645, 1647-48 (TTAB
2008).
1. Does the Doctrine of Foreign Equivalents
Apply to Marks in French?

Applicant argues that the French Language is not
widely recognized in the U.S., and has provided data from
the U.S. Census Bureau,2 indicating that in the 2000 U.S.
Census, only 2,097,206 people, or “less than 1%,” of the
population spoke French or French Creole in the home.3
Applicant concludes that “[t]he typical American consumer
is likely to take the [cited] foreign word mark as it is
and will not even be aware of its English language
counterpart.” Appl. Br. at 3.
We disagree with applicant’s assertion that the
doctrine of foreign equivalents cannot apply to marks in

2 The Census Bureau data was attached to applicant’s brief.
While such evidence would usually be considered untimely,
Trademark Rule 2.142(d), we may – and do – take judicial notice
of Census Bureau data. In re Spirits Int’l N.V., 86 USPQ2d 1078,
1085 n. 11 (TTAB 2008).
3 The number of U.S. residents who speak French in the home
considerably understates the size of the relevant population. As
with other modern foreign languages, many people speak or
understand French in varying degrees, even though it may not be
their first language or the one spoken at home.
Serial No. 78691831
5
the French language because it is not spoken by enough
people in the U.S. marketplace. While the doctrine of
foreign equivalents is not an absolute rule, “words from
modern languages are generally translated into English.”
Palm Bay, 73 USPQ2d at 1696. According to applicant’s
Census data, French is spoken in the home by more than two
million people, second only to Spanish. Indeed, our
precedent and that of our primary reviewing court shows
application of the doctrine to French, e.g., Palm Bay, as
well as other languages even less common in the U.S.
(according to applicant’s census data) than French. E.g.,
In re Ithaca Industries, Inc., 230 USPQ 702 (TTAB 1986)
(Italian); In re Accumulatorenfabrik Sonnenschein G.M.B.H.,
160 USPQ 341 (TTAB 1968)(German). “[W]e 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.” In re
Spirits Int'l, 86 USPQ2d at 1085 (applying doctrine to mark
in Russian). Applicant offers no reason to deviate from
this presumption here.
As noted, we have made clear that the relevant
consumer for doctrine of foreign equivalents purposes is
“the ordinary American purchaser who is knowledgeable in
English as well as the pertinent foreign language.” La
Serial No. 78691831
6
Peregrina, 86 USPQ2d at 1648 (citation omitted). French is
a common, modern language, spoken by a significant number
of people in the United States. Thus, rather than
excluding French-speaking American consumers, proper
application of the test instead focuses on them.4
2. Is HAIR OF THE DOG the equivalent of LES
CHEVEUX DU CHIEN?

Although the doctrine of foreign equivalents generally
applies to marks in French, the question is whether those
who understand French “will stop and translate the word
into its English equivalent.” Palm Bay Import, Inc., 73
USPQ2d at 1696. This question in turn necessarily depends
upon the particular facts and circumstances of the case.
Unfortunately, neither the examining attorney nor the
applicant squarely addresses this question.
As noted, the cited registration includes a
translation of the mark, stating that LES CHEVEUX DU CHIEN
means “the hair of the dog.” The examining attorney
submitted various translations from web-based automated
translation services consistently agreeing with the
translation in the registration, and the applicant does not
contend otherwise.

4 We note that this is not a case dealing with an obscure
language understood by only a very small number of consumers in
this country.
Serial No. 78691831
7
Nonetheless, the examining attorney’s evidence does
not clearly demonstrate that applicant’s mark is equivalent
in meaning to the in the cited registration. While it is
true that a mechanical translation of the registered mark
yields the same English words in the same order (but for
the definite article), it is far from clear that the
resulting phrase has the same meaning in French as it does
in English.
As applicant noted in response to an Office Action,
“the phrase ‘hair of the dog’ has been used for many years
to refer to an alcoholic beverage ... consumed for the
purpose of relieving a hangover.” Response at (Dec. 5,
2006). This meaning is consistent with evidence proffered
by applicant5 and not disputed by the examining attorney.
This idiomatic meaning differs substantially from the
literal meaning of the words – far afield from a discussion
of the keratinous epidermal filaments of the canine
species. In light of the evidence of record, we find that
the most likely commercial impression of THE HAIR OF THE
DOG (in English) is a reference to the hangover cure.6

5 See Hair of the Dog, http://urbanlegends.about.com/od/medical/-
a/hair_of_the_dog.htm; Hair of the Dog, http://en.wikipedia.-
org/wiki/Hair_of_the_dog. Response to Office Action (Dec. 7,
2006).
6 Much depends on context, of course, and the connotation of the
mark might well be different if applicant were, for instance, in
the pet grooming business. But there is nothing in this record
Serial No. 78691831
8
The problem with the examining attorney’s position is
that nothing in the evidence of record indicates that this
idiom has the same meaning in French. Thus, while the mark
primarily refers to a hangover cure in English, a French
speaker will likely see the mark LES CHEVEUX DU CHIEN and
perceive it literally as a statement about a dog’s hair.
While the French undoubtedly have their own solutions to
hangover relief, there is nothing to indicate that they
would call such a cure LES CHEVEUX DU CHIEN.
Neither applicant nor the examining attorney have
submitted particularly useful translations of applicant’s
mark. The translations of the phrase submitted by the
examining attorney7 do not offer any explanation or context,
and we cannot simply assume that an idiom mechanically
translated word-for-word into another language, will retain
its idiomatic meaning. The cited registration contains a
translation indicating that LES CHEVEUX DU CHIEN means
“hair of the dog” in English, and there is no reason to
doubt that this is correct. Yet, “hair of the dog” in
English has two meanings, one literal and one idiomatic.

to suggest that applicant’s business has anything to do with
dogs.
7 The examining attorney offers translations from Google
translate, Babel Fish Translation, Dictionary.com, and Applied
Language Solutions, each indicating that the translation of LES
CHEVEUX DU CHIEN into English is “hair of the dog” or “the hair
of the dog.”
Serial No. 78691831
9
Having found that the latter is the predominant meaning and
the one most applicable to applicant’s mark, it is clear
that a mechanical, word-for-word translation does not
answer the question at hand: do the marks at issue –
considered as a whole – mean the same thing?
A more traditional source for translation dispels the
notion that these marks are foreign equivalents. Under the
entry for “hair,” the LAROUSSE FRENCH-ENGLISH/ENGLISH-FRENCH
DICTIONARY 375 (unabridged 1998)8 provides the following
translation of “hair of the dog”:
phr: ... to have a [hair] of the dog (that bit
you) reprendre un verre (pour faire passer sa
guele de bois); here, a [hair] of the dog is what
you need bois ça, il faut guérir le mal par le
mal....

As can be seen, the phrase “hair of the dog” does not
translate into “les cheveux du chien” in French. See In re
Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 112 (Fed. Cir.
1983) (“None of these definitions makes ‘second chance’ the
exact translation of ‘repechage.’”).
The facts in this case are significantly different
from those in In re Thomas, 79 USPQ2d 1021 (TTAB 2006),
cited by the examining attorney. In Thomas, we found the

8 The Board may take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213
USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983). We note that there was no entry in this source for
Serial No. 78691831
10
terms MARCHE NOIR (French) and BLACK MARKET to be
equivalent precisely because the evidence showed that the
marks have the same idiomatic meaning in both languages.
Thomas, 79 USPQ2d at 1025. There is no such evidence in
this case.
We find that the marks at issue are clearly different
in their appearance and pronunciation. Further, it does
not appear that the marks would be understood as having the
same idiomatic meaning. At best, the marks carry the same
meaning only when the context refers to dog hair, and not
to the predominant idiomatic meaning of the phrase in
English.
B. The Similarity or Dissimilarity and Nature of the
Goods or Services

Applicant’s goods are identified as “clothing, namely,
shirts, t-shirts, pants, shorts, headwear, hats, socks,
sleepwear and dresses,” while the services in the cited
registration are the “custom manufacture of clothing,
personal accessories in the nature of jewelry, stoles,
scarves, linens, and home décor items.”
We agree with the examining attorney that these goods
and services are commercially related. The prior
registrant manufactures some of the same clothing items as

the phrase “cheveux du chien,” or a reference under “cheveux”
Serial No. 78691831
11
applicant sells, and the third-party registrations
submitted by the examining attorney covering, in each
instance, both clothing and custom clothing manufacture
serve to suggest that the goods and services are of a type
that may emanate from the same source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1469 (TTAB 1988), aff'd
(unpublished) No. 88-1444 (Fed. Cir. Nov. 14, 1988).
However, there are differences between these goods and
services, and these differences must be considered along
with the differences in the marks in determining whether
there is a likelihood of confusion.
III. Conclusion
Considering “the cumulative effect of differences in
the essential characteristics of the goods [and services]
and differences in the marks,” Federated Foods 192 USPQ at
29, we find that it has not been demonstrated that
registration of applicant’s mark would give rise to a
likelihood of confusion in view of the cited registration.9

which translates into English as a reference to a hangover cure.
9 In making this determination we have given little weight to
applicant's argument that its mark has coexisted with that of
the cited registrant “for nearly four (4) years,” and that it is
“unaware of any facts which would give rise to an issue of
existence of actual customer confusion.” App. Br. at 6. Without
evidence of the nature and extent of use by applicant and
registrant, we cannot determine whether a meaningful opportunity
Serial No. 78691831
12
Decision: The refusal to register under Trademark Act
§ 2(d) is reversed.

for actual confusion ever existed. In re Kangaroos U.S.A., 223
USPQ 1025, 1026-1027 (TTAB 1984) (citations omitted).