The USPTO refused to register the proposed mark COMPOSTA for compostable containers made of kraft paper or plastic for use in the food service industry, finding the mark to be merely descriptive of the goods under Section 2(e)(1). Examining Attorney Sahar Nasserghodsi relied on the doctrine of foreign equivalents, maintaining that “composta” is an Italian word meaning “compost,” “mixture,” or “compound.” Applicant provided other definitions, including “composed” and “compote,” and also pointed to the issuance of registrations for COMPOSTABOX and COMPOST-A-PAK without disclaimer of COMPOST. Cosa è successo? In re Elkay Plastics Co., Inc., Serial No. 88573025 (January 8, 2021) [not precedential] (Opinion by Judge Mark Lebow).

Contrary to Applicant Elkay’s position, application of the doctrine of equivalents is not precluded when a term has multiple meanings.
 

“The doctrine is applicable in this case because the record shows that the relevant English translation is literal and direct, the word comes from a common, modern language, and there is no contradictory evidence of another relevant meaning.” Sadoru Grp., 105 USPQ2d at 1485. Many words have multiple meanings. Hence, the applicable definition of a word depends on the context of its use.

Seefor exampleS. Malhotra, 128 USPQ2d 1100, 1105 (affirming refusal to register , Greek equivalent of English words “marriage, “matrimony,” and “wedding,” as merely descriptive of applicant’s jewelry and watches despite alternate meanings, including “small deer,” “buck,” and “a sexual ritual that plays out a marriage between a god and a goddess”).

The Board found that the proposed mark COMPOSTA has definite English translations as “compost,” “mixture,” or “compound.”

There was no dispute that Italian is a common, major language. The Board concluded that “the ordinary American purchaser would ‘stop and translate [COMPOSTA] into its English equivalent.'” Palm Bay, 73 USPQ2d at 1696.

Third-party internet evidence showed that “the term COMPOST, and its use in adjective form as COMPOSTABLE, is descriptive of goods with the feature and characteristic of being used for compost and/or is compostable.” For example, Eco Products, a provider of compostable liners and bags made with renewable resources, stated: “These compostable plastic bags are made with renewable resources, BPI certified compostable and compliant.” 

Elkay pointed to the USPTO’s issuance of registrations for COMPOST-A-PAK and COMPOSTABOX for similar goods, without disclaimers of COMPOST, but the Board noted that because those are unitary marks, disclaimer was not required. In any event, the issuance of those registration is not conclusive as to the examination of the instant mark. “In a final analysis, we are not so much concerned with what has been registered, but rather what should or should not be registered.”

 

Based on the record in its entirety, we find that consumers of Applicant’s compostable pouches, containers and films who are familiar with the Italian language would immediately understand COMPOSTA to convey information about a feature or characteristic of those goods, namely, that they may be used as compost and/or are compostable. Because the proposed mark immediately conveys knowledge about Applicant’s goods, it is merely descriptive under Trademark Act Section 2(e)(1).

 

And so the Board affirmed the refusal.

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Text Copyright John L. Welch 2021.