Tokutake Industry Co., Ltd.

Trademark Trial and Appeal Board

May 14, 2008

No. 79018656 (T.T.A.B. May. 14, 2008)

Mailed:
14 May 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tokutake Industry Co., Ltd.
________

Serial No. 79018656
_______

Diane Michelle Sobo of Westerman, Hattori, Daniels & Adrian
LLP for Tokutake Industry Co., Ltd.

Laura Gorman Kovalsky, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Walters, Bucher, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On October 6, 2005, applicant’s (Tokutake Industry
Co., Ltd.) request for extension of protection
(application) under the provision of Section 66(a) of the
Trademark Act (15 U.S.C. § 1144f(a)) was received by the
U.S. Patent and Trademark Office to register the mark shown
below for goods ultimately amended to read “footwear” in
Class 25. Serial No. 79018656.

THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser. No. 79018656
2
The application supplies a translation of the mark as
“Walking, a step.” Applicant’s priority date is September
2, 2005.
The examining attorney refused registration under
Section 2(e)(1) on the ground that applicant’s mark
is merely descriptive of footwear. 15 U.S.C. § 1052(e)(1).
When the examining attorney made the refusal to register
final, applicant filed a notice of appeal.
The examining attorney argues that the “proposed mark
is descriptive of the goods because consumers of footwear
bearing the word AYUMI and Japanese-character equivalent
will be told – on the actual goods or packaging therefor –
that the footwear is meant for walking because AYUMI
translates into English as ‘walking.’” Brief at 3.
“However, in providing its own translation – apparently
attempting to contradict the translation already provided
in its International Registration – applicant cited to the
New College Japanese to English Dictionary, ‘a popular
dictionary in Japan’ which also identifies ‘walking’ as the
first entry.” Brief at 5.
In response, applicant argues that:
[T]he term “ayumi” has multiple meanings in the
Japanese language, and that the one meaning found and
relied on by the Examining Attorney was taken out of
context, and misapplied to the analysis in this case.
Ser. No. 79018656
3
Applicant further submits that these US consumers
familiar with the Japanese language would not interpret
“ayumi” to mean “walking” as in “walking shoes,” nor
would [they] translate the English word “walking” to
“ayumi” in the Japanese language. In fact, in the
Japanese language it is not correct to use “ayumi” to
refer to walking shoes. The term “ayumi” has multiple
meanings and where a mark has a variety of meanings,
the mark can be suggestive rather than descriptive.

Brief at 4-5.

A mark is merely descriptive if it immediately conveys
information concerning a quality or characteristic of
the product or service. The perception of the relevant
purchasing public sets the standard for determining
descriptiveness. Thus, a mark is merely descriptive if
the ultimate consumers immediately associate it with a
quality or characteristic of the product or service.
On the other hand, if a mark requires imagination,
thought, and perception to arrive at the qualities or
characteristics of the goods or services, then the mark
is suggestive.

In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d
1778, 1780 (Fed. Cir. 2003) (citations and internal
quotation marks omitted). See also In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978) and In
re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001). It is clear that when we are analyzing a mark
to determine if it is merely descriptive, we must consider
the mark in the context of the identified goods or services
and not in the abstract. Abcor, 200 USPQ at 218
(“Appellant’s abstract test is deficient – not only in
denying consideration of evidence of the advertising
materials directed to its goods, but in failing to require
Ser. No. 79018656
4
consideration of its mark ‘when applied to the goods’ as
required by statute”).
We begin by looking at applicant’s goods because, as
we indicated above, we do not look at the mark in the
abstract. Here, applicant’s goods are defined simply as
footwear. Footwear obviously includes shoes, and the
examining attorney has submitted several printouts from the
internet (emphasis added) that show that the term “walking”
is frequently used to refer to a type of shoe.
The Best Shoes for Walking
Walking shoes are your most important item of gear.
Our walking shoe gear guide will help you decide which
to buy, where to buy, and reader reviews of shoes.
http://walking.about.com

Selecting Walking Shoes
… But there are a few basics for selecting walking
shoes
www.thewalkingsite.com

Walking shoes: Features and fit can keep you on the
move.
Walking shoes have a few features other shoes don’t.
Find out what to look for and how to get the best fit.
www.mayoclinic.com

Walking shoes may sound like a marketing conspiracy
hatched by shoe-industry executives. After all, it’s
only walking – won’t any pair of sneakers suffice?
Actually, the concept of a walking shoe is valid.
http://dietvillage.com

American Academy of Podiatric Sports Medicine
Walking Shoes
Selected by the AAPSM Shoe Committee
www.aapsm.org

Ser. No. 79018656
5
We offer boat shoes, boots, loafers/slip-ons, oxfords
and walking shoes for both men and women.
http://walking-shoes.com

Shira Women’s Classic Leather Walker Walking Shoes
Price $129.95
SoftSpots Women’s Marathon II Walking Shoes
Price $94.95
www.footsmart.com

Thus, the term “walking” is at least merely
descriptive of shoes that are specifically designed for
walking as opposed to other activities. Inasmuch as
applicant’s goods are identified simply as “footwear,” its
goods would include all types of footwear, including shoes
designed for walking.
Next, we look at applicant’s mark . Applicant
has acknowledged that the “design element of the subject
mark is comprised of foreign lettering, which is pronounced
‘ayumi’ … The portion ‘ ’ is a Japanese noun
expressed in ‘hiragana’ (the Japanese cursive syllabary),
and the word portion ‘AYUMI’ expresses the pronunciation of
the former by using the Latin character alphabet.”
Response dated October 10, 2006 at 1. Therefore, both the
Western and Japanese characters in the mark represent the
same term. Applicant’s request for extension of protection
provides the following translation of its mark: “Walking,
a step.”
Ser. No. 79018656
6
Inasmuch as the term “Walking” is at least a merely
descriptive term for the goods in English, the next
question is whether the doctrine of foreign equivalents
applies in this case. The Federal Circuit has discussed
the applicability of the doctrine of foreign equivalents in
trademark cases.
Under the doctrine of foreign equivalents, foreign
words from common languages are translated into
English to determine genericness, descriptiveness, as
well as similarity of connotation in order to
ascertain confusing similarity with English word
marks…

Although words from modern languages are generally
translated into English, the doctrine of foreign
equivalents is not an absolute rule and should be
viewed merely as a guideline…

The doctrine should be applied only when it is likely
that the ordinary American purchaser would “stop and
translate [the word] into its English equivalent.” In
re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976).

Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed.
Cir. 2005).
In the Pan Tex Hotel case referred to by the Federal
Circuit, the board held that “there can be no doubt that
the notation ‘LA POSADA’ and its English equivalent ‘the
inn’ create different commercial impressions. That is
because of the setting in which applicant uses ‘LA POSADA,’
it is not likely that purchasers would stop and translate
Ser. No. 79018656
7
said notation into its English equivalent.” 190 USPQ at
110. The board pointed out that the term had an “added
implication of a home or dwelling, and thus has a
connotative flavor which is slightly different from that of
the words, ‘the inn.’” Id. The doctrine of foreign
equivalents has been applied to marks with Asian
characters. In re Oriental Daily News, Inc., 230 USPQ 637,
638 (TTAB 1986) (“[W]e see no reason why descriptive words
represented by Chinese characters should be treated any
differently from descriptive words in other contemporary
languages”).
“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 Peregrina Limited, ___ USPQ2d ___, Serial
No. 78676199, slip op. at 3 (TTAB March 14, 2008). See
also In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006). In
this case, the foreign language is Japanese, which the
evidence shows is a modern language spoken by more than 100
million people worldwide and by hundreds of thousands of
people in the United States. See Final Office Action,
Ser. No. 79018656
8
attachment and Examining Attorney’s Brief, Attachment.1 For
footwear, the “‘ordinary American purchaser’ is the
‘relevant public.’” In re Spirits International N.V., 86
USPQ2d 1078, 1081 n.4 (TTAB 2008). We add that there is no
evidence that the relevant American purchaser who speaks
Japanese would not stop and translate the mark .
The examining attorney has attempted to meet her
burden of proof by submitting an entry from
www.freedict.com that translated the Japanese term “ayumi”
into English as “walking.” See First Office Action,
attachment. Applicant argues that “freedict.com is
imprecise.” Request for reconsideration at 2. Applicant
also argues that “it is common understanding among the
Japanese that the Japanese translation of ‘walking’ is not
‘ayumi.’” Brief at 3. Furthermore, applicant submits that
“the term ‘ayumi’ has multiple meanings in the Japanese
language, and that the one meaning found and relied on by
the Examining Attorney was taken out of context, and
misapplied to the analysis in this case.” Brief at 4.
We start by pointing out that “[a]ttorney argument is
no substitute for evidence.” Enzo Biochem Inc. v. Gen-

1 We take judicial notice of the Census data attached to the
examining attorney’s brief. Spirits International, 86 USPQ2d at
1085 n.11.
Ser. No. 79018656
9
Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir.
2005). Applicant has not included evidence to support its
argument concerning a “common understanding among the
Japanese” or that “the one meaning found and relied on by
the Examining Attorney was taken out of context.” We are
particularly perplexed by applicant’s argument regarding
“the one meaning found and relied on by the Examining
Attorney” being taken out of context inasmuch as that
meaning matches the one provided by applicant. Not only
did applicant offer “walking, a step” as the translation of
its mark but, in addition, it provided a definition from
another dictionary that similarly listed “walking; steps;
one’s pace” as its first definition for “ayumi.” Response
dated October 10, 2006 at 2. While we agree with applicant
that there are some elements of the www.freedict.com
dictionary that may not enhance its reliability, when the
meaning is consistent with applicant’s own translation and
applicant’s own submitted dictionary definition, it is at
least evidence that supports the examining attorney’s
position.
Once an applicant provides a translation of a foreign
term that is a generic or descriptive term for the goods in
English, it has a more difficult burden to then show that
the term is not merely descriptive or generic. An
Ser. No. 79018656
10
applicant is not likely to succeed in this challenge when
it relies primarily on the argument of its counsel.
Regarding applicant’s argument that the term has
multiple meanings in Japanese, the examining attorney has
pointed out that terms in English similarly have multiple
meanings. This fact hardly prevents common terms like
“shoe,” “muffler,” and “check” from being generic for more
than one item. See Final Office Action, second page. In
this case, applicant’s definition also indicates that the
term “ayumi” can also be translated as “progress; (an)
advance [or] the course of history.” Applicant has not
provided evidence that explains why consumers familiar with
the Japanese language who see the term AYUMI on a pair of
shoes for walking would conclude that the term means
“progress” as opposed to “walking.” Applicant did not even
provide this translation in its application. Moreover,
applicant itself has highlighted the definition of
“Walking” as the translation of the mark. Similarly, when
an applicant argued that the Chinese characters in its mark
translated “in only a very loose sense” into ORIENTAL DAILY
NEWS, the board relied on applicant’s own evidence to
conclude that the characters were merely descriptive under
the doctrine of foreign equivalents. Oriental Daily News,
230 USPQ at 637. Thus, we rely on the fact that applicant
Ser. No. 79018656
11
translated its mark as “walking” and submitted evidence
that the term is, in fact, defined as “walking.” We also
point out that applicant provided no admissible evidence to
explain why Japanese speakers would not translate its mark
as it originally specified.
In this case, the examining attorney has refused
registration on the ground that the term AYUMI and design
is merely descriptive, not generic. Therefore, the
examining attorney was not required to show that the term
AYUMI necessarily translates as “walking” shoes. See
Applicant’s Brief at 9 (“[T]his definition refers to
‘walking’ as a noun, rather than as an adjective as the
Examining Attorney had held in finding that ‘ayumi’ means
‘walking shoes’”). Nothing prevents the term “ayumi” from
being viewed as a noun that merely describes the activity
for which the shoes are particularly designed, such as
walking, running, soccer, basketball, etc.
We briefly add that while applicant alludes to the
action of other trademark offices, it has not submitted any
evidence to support its position. Moreover, the board has
recently commented that “Applicant's arguments concerning
the analysis used by the Japanese Trademark Office to
determine the similarity of marks are not relevant.”
Thomas, 79 USPQ2d at 1025 n.7.
Ser. No. 79018656
12
In this case, applicant has based its application on
the fact that the foreign characters in its mark
transliterate as AYUMI. Applicant has also submitted a
translation of the term AYUMI as “Walking, a step.” Its
goods are broadly identified as “footwear” and footwear
would include various types of shoes including walking
shoes or more generally, shoes that are particularly
suitable for walking. The dictionary definitions in the
record include definitions of the term “ayumi” as
“walking.” While there are apparently other definitions of
the term “ayumi,” the evidence including applicant’s own
admissions indicates that “walking” is the primary meaning
of applicant’s mark. Furthermore, the mark is designed in
such a way that those who read Japanese or English would
have a term that they could read (although the English
character word would have no apparent meaning to the
English-only reader). When the term is viewed in
association with the goods, the term “AYUMI” meaning
“walking” would immediately describe the goods as shoes
that are particularly suited for walking. While we resolve
doubts in descriptiveness cases in favor of the applicant,
we have no such doubts in this case, and we agree with the
Ser. No. 79018656
13
examining attorney that the term is merely
descriptive for applicant’s footwear.
Decision: The examining attorney’s refusal to
register applicant’s mark on the ground that it is
merely descriptive of the identified goods is affirmed.