TTAB Ruling Raises Foreign-Language Mark Questions

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP


Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is a law firm dedicated to advancing ideas, discoveries, and innovations that drive businesses around the world. From offices in the United States, Europe, and Asia, Finnegan works with leading innovators to protect, advocate, and leverage their most important intellectual property (IP) assets.
The champagne house was founded in 1772 by Phillipe Clicquot, a fabric merchant from Reims. After the unexpected death of Phillippe's son François in 1805, François' 27-year-old widow...
United States Intellectual Property
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Veuve Clicquot Ponsardin is one of France's oldest champagne houses and one of the largest in the world.

The champagne house was founded in 1772 by Phillipe Clicquot, a fabric merchant from Reims. After the unexpected death of Phillippe's son François in 1805, François' 27-year-old widow, Barbe Nicole Ponsardin Clicquot, took over the family business and sold its products under the name "Veuve Clicquot" — literally, "widow clicquot" in French.

Over the next 250 years, Veuve Clicquot — now owned by an entity called MHCS — expanded its reach around the world to become one of the preeminent champagne businesses in the minds of consumers. Consistent with its long history of selling Veuve Clicquot champagne in the U.S., MHCS has amassed an arsenal of trademark registrations containing the term "veuve."

In January 2015, Les Grands Chais de France, a French wine producer, applied to register the mark "Veuve Olivier" for "wines and sparkling wines" at the U.S. Patent and Trademark Office.

The application faced no refusals from the USPTO or opposition from third parties, and it eventually matured into a registration in September 2016.

The Trademark Trial and Appeal Board's March 8 decision in MHCS v. Les Grands Chais de France to cancel the Veuve Olivier registration raises questions about the registrability of foreign-language marks.

The TTAB Proceeding

In 2020, MHCS brought an action at the TTAB seeking to cancel Les Grands Chais de France's registered Veuve Olivier mark for "sparkling wines," arguing that it created a likelihood of confusion with, and diluted, MHCS' Veuve Clicquot mark for "champagne."

Although MHCS asserted numerous registrations in its petition for cancellation, all for champagne or sparkling wines — including Veuve Clicquot Ponsardin, Veuve Clicquot, La Veuve, The Widow and La Viuda, which means "the widow" in Spanish — the TTAB focused on Veuve Clicquot only.

Given the strength of MHCS' mark, the overlap of "veuve" and the legally identical goods, the TTAB found that Veuve Olivier creates a likelihood of confusion with Veuve Clicquot, and therefore granted MHCS' petition for cancellation. Having canceled the registration on likelihood of confusion grounds, the TTAB did not reach MHCS' dilution claim.

In analyzing the so-called DuPont factors, the TTAB first considered the similarity of the parties' goods — "champagne" for MHCS and "sparkling wines" for Les Grands Chais de France. The registrant had deleted "wines" in conjunction with a post-registration maintenance filing.

While the descriptions were not precisely the same, the TTAB noted that champagne is a type of sparkling wine, specifically, a "sparkling white wine made from a blend of grapes, especially Chardonnay and Pinot, produced in Champagne."

Because Les Grands Chais de France's identification of "sparkling wine" in its "Veuve Olivier" registration was unrestricted, the TTAB presumed that it encompassed all types of sparkling wine, including champagne.

The TTAB thus concluded that the goods were legally identical. And having found the goods legally identical, the TTAB also found that the channels of trade and classes of purchasers were the same. These factors all weighed heavily in favor of a likelihood of confusion.

Looking next to the strength of MHCS' Veuve Clicquot mark, the TTAB considered both its conceptual strength, or distinctiveness, and its marketplace strength — its secondary meaning or public recognition as a mark. Veuve Clicquot is registered without a claim of acquired distinctiveness, so the TTAB presumed it to be inherently distinctive.

Further, it found that the term "veuve," which means "widow" in French, is arbitrary as applied to champagne, thus making it conceptually strong.

Although the TTAB faulted MHCS for failing to identify how much of the total sales or advertising amounts it presented were attributable to champagne sold under the Veuve Clicquot mark, the TTAB was nonetheless persuaded by MHCS' considerable evidence of commercial strength, which included:

  • The brand's over-250-year history, since its founding in 1772;
  • Its considerable sales of a wide array of champagne products in the U.S. — with the Veuve Clicquot mark prominently displayed on the bottles, as shown in the examples below — for almost 175 years;
  • Its extensive advertising both in print and on the internet; and
  • Its high-profile events attracting celebrities and press attention, such as the Veuve Clicquot Polo Classic.

The TTAB thus found the Veuve Clicquot mark both conceptually and commercially strong, weighing in favor of likelihood of confusion.

Finally, as to the similarity of the marks themselves, the TTAB found that — taken as a whole — the terms "Veuve Olivier" and "Veuve Clicquot" look and sound different, and have two different meanings if translated from French. But the inquiry didn't end there.

The TTAB went on to find that, despite these differences, the word "veuve" is identical in both marks, and because it is the first word in both marks, it is the dominant term in each party's mark.

Moreover, the TTAB found that an "appreciable number of purchasers are unlikely to be aware that VEUVE means 'widow' and are unlikely to translate the marks into English."

As a result, the TTAB found that the differences in meaning between the marks would be lost on the purchasers and would therefore not aid them in distinguishing the marks. In the words of the TTAB, they "will perceive only that the same French-looking and French-sounding word, VEUVE, appears as the first term in both marks."

Having found that all of the DuPont factors weighed in favor of a likelihood of confusion, the TTAB granted MHCS' petition to cancel Les Grands Chais de France's Veuve Olivier registration.

Language as a Barrier to Registrability

The TTAB's decision to cancel the Veuve Olivier registration raises several questions concerning the registrability of foreign-language marks.

Specifically, the board's conclusion that the marks are similar in part because an "appreciable number of purchasers are unlikely to be aware that VEUVE means 'widow' and are unlikely to translate the marks into English" may create difficult line-drawing problems in future cases.

For instance, would a finding that an appreciable number of U.S. consumers do understand enough French to know the meaning of "veuve" have compelled a different conclusion?

Would the result have been different if the term at issue had been "viuda," the Spanish word for "widow," given the vast number of Spanish speakers living in this country?

Will future litigants dealing with the same issue have to introduce surveys or data to show that U.S. consumers should be deemed to have a certain degree of proficiency, or lack thereof, in the relevant language?

Relying on this language-based rationale to support a finding of similarity is complicated by the fact that demographics are constantly changing.

The Veuve Olivier decision also presents an interesting counterpoint to the long-standing doctrine of "foreign equivalents," under which a trademark that has a meaning in a common modern language should be translated into English for the purposes of determining genericness, descriptiveness and the similarity of meaning between two marks.

In the context of likelihood of confusion, the doctrine is most frequently invoked to support a finding of similarity between two marks when only one of them is in a foreign language — such as "marche noir" and "black market minerals" for jewelry, or "el sol" and "sun" for footwear.

Where both marks contain the same foreign word, its English translation may be less relevant to the question of confusion, because translation is not necessary to perceive the similarity of the words. This may explain why the TTAB's decision in the Veuve Olivier cancellation makes no reference to the doctrine of foreign equivalents.

Moreover, the U.S. Court of Appeals for the Federal Circuit has held — in its 2005 Palm Bay Imports Inc. v. Veuve Clicquot ruling — that the doctrine should be treated as a guideline, not a rigid requirement, and should only be applied "when it is likely that the ordinary American purchaser would 'stop and translate [the word] into its English equivalent.'"

In that case, the Federal Circuit upheld the board's finding that Veuve Royale was confusingly similar to Veuve Clicquot and Veuve Clicquot Ponsardin.

The practical result of decisions like the Veuve Olivier cancellation is that they may create a disparate treatment of trademarks in the U.S. relative to their countries of origin.

A simple search reveals that there are many "veuve" marks for sparkling wine coexisting on the European Union's trademark register — e.g., Veuve Durand for champagne, Veuve Duvernay for sparkling wine and Veuve Laperrière for sparkling wine — perhaps without actual confusion in the marketplace.

And yet, the proper inquiry in the U.S. is whether the average U.S. consumer — not some imagined polyglot or foreign consumer — would understand the meaning of "veuve," or bother looking it up, and in that light, the TTAB's conclusion is understandable.

If the marks at issue had been "Widow Clicquot," with the same history and market use, and "Widow Olivier" — a scenario more analogous to coexisting "veuve" marks in France — perhaps the result would have been different.

However, a foreign word with no commonly understood meaning in the U.S., such as "veuve," appears fanciful, and therefore may enjoy broader protection than an arbitrary English word.

At any rate, the TTAB's decision to cancel the Veuve Olivier registration brings new focus to the treatment of foreign terms and the doctrine of foreign equivalents.

Whether the TTAB's approach will shift as the demographic, and linguistic, makeup of the U.S. population continues to change remains to be seen.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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