Paolo Doino

Trademark Trial and Appeal Board

Apr 2, 2009

No. 77077462 (T.T.A.B. Apr. 2, 2009)

Mailed: April 2, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Paolo Doino
________

Serial No. 77077462
_______

Jed R. Friedman of Jed R. Friedman, P.A. for Paolo Doino.

Heather Biddulph, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Quinn, Kuhlke and Bergsman, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Paolo Doino, applicant, has filed an application to
register the mark FIOR DI GRANO (in standard character
form) for “pasta; alimentary paste; rolls; cakes; bread;
bread sticks; refrigerated pasta; crackers; corn meal
flour; tomato sauce; pasta sauces” in International Class
30.1

1 Serial No. 77077462, filed January 6, 2007, under Trademark Act
Section 1(a), 15 U.S.C. §1051(a), alleging September 26, 2005 as
the date of first use and first use in commerce.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77077462
2
Registration has been refused based on applicant’s
failure to comply with the requirement to submit a specific
English translation for the phrase FIOR DI GRANO.
Trademark Rule 2.61(b); TMEP §809 (5th ed. 2007).
When the refusal was made final, applicant appealed
and the appeal is fully briefed. We reverse the refusal.
During prosecution, the examining attorney, inter
alia, required a translation for applicant’s mark FIOR DI
GRANO and a disclaimer of the word GRANO. In the refusal
she suggested the English equivalent of applicant’s mark is
“corn marigold.” Applicant responded by submitting the
following translation: “flower of grain.” In addition,
applicant disclaimed the word “grano” apart from the mark
as shown. The examining attorney entered the disclaimer
but did not accept applicant’s translation and maintained
the refusal to register based on this requirement.
The examining attorney argues:
The foreign wording in the mark accurately
translates to “corn marigold” because this
translation is the English equivalent of the
foreign phrase in the mark. An application to
register a mark that includes non-English wording
must include a statement translating the wording.
See 37 C.F.R. §2.32(a) and TMEP § 809. The
translation that should be relied upon in
examination is the English meaning that has
significance in the United States as the
equivalent of the meaning in the non-English
language. In re Societe Des Parfums
Schiaparelli, S.A., 122 USPQ 349 (TTAB 1959)
Ser No. 77077462
3
(holding that a satisfactory translation of “mais
oui” must be some normal English expression that
will be the equivalent in meaning of the term
“mais oui” in French); TMEP §809.01. Thus, the
ultimate goal is to provide a translation that
reflects the true English meaning of the non-
English wording in the mark and indicates the
actual commercial impression made by the mark.
TMEP § 809.01...

While an Italian speaker may find the individual
elements suggestive of flowers and grain, the
speaker would understand the entire phrase to
identify a “corn marigold.” ... Thus, here, the
literal translation of the mark is not a clear
and exact equivalent and obviates the actual
commercial impression and meaning of the mark...

Applicant has failed to provide evidence that the
combination of words “flower of grain” is a
normal English expression with any real
significance in the United States, while the
Internet evidence shows that the phrase “corn
marigold” is a normal English expression used to
identify a flower. Further, although “flower of
grain” may be “suggestive and symbolic of many
aspects and qualities of Applicant’s goods,” the
phrase “flower of grain” fails to provide a clear
meaning to English speakers because it is not a
normal English expression. Thus, printing
translation of the phrase FIOR DI GRANO to the
normal English phrase “corn marigold” is more
appropriate than a translation to the curious
English phrase “flower of grain” because “corn
marigold” is a clear and exact translation of the
foreign wording in the mark.

Br. pp. 3-6.
In support of her argument the examining attorney has
submitted the following “declaration” from the USPTO’s
Technical Translator:
I, Steven M. Spar, declare that I am fluent in
the Italian language, that I am a Technical
Ser No. 77077462
4
Translator at the United States Patent and
Trademark Office, and that the wording fior di
grano means “corn marigold.” In my belief, the
above translation is accurate and true.

Attached to June 5, 2008 Office Action.
In addition, she submitted a definition for the
English phrase “corn marigold,” its synonym and its
translation into English:
Corn Marigold 1. European herb with bright
yellow flowers, a common weed in grain fields.
Synonym: Field marigold.
Modern Translation (alternative meanings in
parentheses): Italian fior de grano (yellow ox-
eye daisy).

Webster’s Online Dictionary, attached to June 5, 2008
Office Action.2
In traversing the refusal, applicant submitted the
declaration of Alessandro Rubinacci, a certified
English/Italian translator. He declares, inter alia, as
follows:
5. The literal translation of “FIOR DI GRANO” is
“FLOWER OF GRAIN.”
6. “FLOWER OF GRAIN” is the ordinary meaning of
“FIOR DI GRANO” in Italian.
7. A common speaker of Italian would readily
understand “FIOR DI GRANO” to mean “FLOWER OF
GRAIN.”

2 The origin and relevance of the other two website excerpts
submitted by the examining attorney are unclear and their
probative value on the question of translation for purposes of
this trademark application is minimal at best. One may be a
translation website wherein “fior di grano” is translated into
English as “corn marigold” and the other a French website that
lists seed names.
Ser No. 77077462
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8. “FIOR DI GRANO” is also the Italian name for
the weed known in English as corn marigold.
9. The phrase “fior di grano” appears to be
suggestive of the weed’s flower-like appearance
and the fact that it appears in grain fields.

Applicant argues that:
In this case, “flower of grain” has significance
in the United States as the equivalent of “fior
di grano.” Indeed, Dr. Rubinacci stated –
without rebuttal – that “flower of grain” is both
the “literal translation” and “ordinary meaning’
of “fior di grano.” While acknowledging that the
weed known in English as “corn marigold” is
another possible reference, he stated, in
paragraph 9, that the phrase “fior di grano
appears to be suggestive of the weed’s flower-
like appearance and the fact that it appears in
grain fields.” ...
Here, however, a literal translation would convey
the primary and true meaning of “fior di grano.”
The point that “flower of grain” “has no meaning
in English” is inaccurate. It can be suggestive
or symbolic of many aspects and qualities of the
goods. Even if “flower of grain” were to have
“no meaning in English” such a “Meaningless”
trademark would have good company among the most
prominent and valuable arbitrary and fanciful
trademarks in the world.

Br. pp. 3-4.
Applicant further argues that the translation he
provided is “undisputed by the Declaration submitted in
support of the Trademark Examining Attorney’s position.”
Br. p. 2.
Finally, in response to the first Office Action,
applicant stated in the alternative that “both the
Examiner’s suggested translation and the Applicant’s should
Ser No. 77077462
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appear, as both have significance.” April 25, 2008
Response.
Trademark Rule 2.32(a)(9), 37 C.F.R. §2.32(a),
provides, “The application must be in English and include
the following: If the mark includes non-English wording,
an English translation of that wording.” In addition, an
examining attorney “may require the applicant to furnish
such information and exhibits as may be reasonably
necessary to the proper examination of the application.”
Trademark Rule 2.61(b), 37 C.F.R. §2.61(b). The purpose of
this requirement is that “[k]nowledge of the meaning of
non-English words in marks is necessary for proper
examination, because a non-English term is regarded in the
same way as its English equivalent in determining
descriptiveness, requiring disclaimer, and citing marks
under §2(d) of the Act.” TMEP § 809. “The translation
that should be relied upon in examination is the English
meaning that has significance in the United States as the
equivalent of the meaning in the non-English language.”
TMEP §809.01. “Sometimes translations that are not
precise, or that give a variety of meanings, are placed in
the record. While all possible translations, and
discussions relative to meaning, are useful for
informational purposes, not all such matter is appropriate
Ser No. 77077462
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for printing in the Official Gazette or on the certificate
of registration. Only a translation that is the clear and
exact equivalent should be printed. This normally means
only one translation, because the existence of a variety of
alternative translations or general explanations usually
indicates a lack of a clearly recognized equivalent
meaning. If an applicant submits a translation that is too
verbose or vague to be appropriate for printing in the
Official Gazette and on the registration certificate, the
examining attorney must require a clear, concise
translation.” TMEP §809.02.
The examining attorney insists that the phrase “fior
di grano” has only one English equivalent, “corn marigold.”
This conclusion would indicate that “fior di grano” is a
unitary phrase.3 However, she also insists on a disclaimer
of the word “grano” from the literal translation of
“grain.” Either “fior di grano” is a unitary phrase and
has only one translation, and, therefore, no disclaimer is
required, or it has an ordinary meaning and a disclaimer is
required. Of course the third possibility is that it has
both meanings, and the connotation would depend on the
context. In this case, it is more likely that applicant

3 A mark is unitary if the whole is something more than the sum
of its parts. TMEP §1213.05.
Ser No. 77077462
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seeks to evoke the idea that the pasta is the “flower of
grain” rather than a weed. In any event, as applicant
points out, the declaration of this translator indicating
the phrase has both meanings to “a common speaker of
Italian,” stands unrebutted.
The TMEP indicates that only a clear and exact
equivalent translation should be printed and normally this
means only one translation. This language contemplates
circumstances where it may be appropriate to include more
than one; however, the examining attorney insists on only
one. Therefore, based on this record where there is a
dispute, applicant’s evidence of two ordinary meanings
stands unrebutted, and applicant’s translation makes more
sense in the context of the goods, we defer to applicant’s
translation.4
In view of the above, applicant’s submission “flower
of grain” satisfied the requirement under Trademark Rule
2.61(b).
Decision: The refusal based on the requirement
for a translation is reversed.

4 We note further that the underlying purpose of the translation
requirement is to facilitate substantive examination for
likelihood of confusion and descriptiveness. As discussed above,
the examining attorney relied on the ordinary meaning in making
the disclaimer requirement. We add that more relevant citations
under Section 2(d) may be found based on the translation “flower
of grain” than “corn marigold” in the context of these goods.