Is there a Doctor of Equivalents in the house? The USPTO refused registration of the mark ELECTRIC JELLYFISH, finding a likelihood of confusion with the registered mark AGUAMALA, both marks in standard character form and both for beer. The cited registration includes a statement that the English translation of the word AGUAMALA is “jellyfish.” How do you think this came out? In re Pinthouse Pizza Holdings, LLC, Serial No. 87603131 (December 19, 2019) [not precedential] (Opinion by Judge Christen M. English).

Applicant Pinthouse Pizza argued that the doctrine of foreign equivalents should not be applied because “jellyfish” is not the literal or direct translation of the Spanish word AGUAMALA. It maintained that in Spanish “agua” means “water” and “mala” means “bad,” so the term AGUAMALA directly translates to “bad water.” Furthermore, “medusa” is the Spanish word for jellyfish, and “aquamala” is merely a regionalism; “the overwhelming majority of English speakers who know a smattering of Spanish would see the term ‘aguamala’ as ‘bad water.'”

Examining Attorney Janice L. McMorrow submitted dictionary definitions of “aquamala” (Spanish for “jellyfish”) and a statement prepared by the Translations Branch of the U.S. Patent and Trademark Office, as follows: “The original language of the non-English wording “AGUAMALA” is ‘Spanish.’ The English translation of the non-English wording in the mark is ‘jellyfish.'”

The Office’s translator, who is proficient in Spanish, acknowledges that “[a]s two words, AGUA MALA means ‘bad water,’” but explains that “[a]s one word, [AGUAMALA] would *only* be interpreted as meaning ‘jellyfish.’”

Both the examining attorney and applicant submitted Google translations supporting or partially supporting their respective positions. The Board found the USPTO’s translation statement and the corroborating dictionary definitions to be “more reliable than the Google translations because the record does not include the sources of the Google translations and the translations are not otherwise corroborated.”

[T]his evidence indicates that AGUAMALA is a term for “jellyfish” in a number of Spanish-speaking countries. A significant portion the U.S. Hispanic and Latino population comes from these countries. We take judicial notice of U.S. Census data from 2017 showing that nearly two-thirds of the Hispanic and Latino population in the United States (37 of 58 million) is composed of Mexicans and Colombians.

The Board therefore found that “the direct and literal translation of AGUAMALA, one word, is ‘jellyfish,’ and that a substantial portion of Spanish-speaking American purchasers would stop and translate AQUAMALA into its English equivalent ‘jellyfish.'” Accordingly, the Board applied the doctrine of foreign equivalents.

Turning to a comparison of the marks, the Board found them to be substantially similar in meaning and commercial impression. “The term ELECTRIC in Applicant’s mark merely modifies the term JELLYFISH and does not change the general commercial impression of the mark, which remains that of a jellyfish—the same as the cited AGUAMALA mark.” The “substantial similarity” in commercial impression outweighs the differences in appearance and sound. Furthermore, AGUAMALA is a conceptually strong trademark for beer.

The Board concluded that confusion is likely and it affirmed the refusal to register.

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Text Copyright John L. Welch 2019.