The Board affirmed a refusal to register the mark shown below (Persian, in Arabic script) for "classified advertising services," the panel majority finding the mark merely descriptive and lacking in acquired distinctiveness. Judge Adlin dissented in part. He would have affirmed on the ground of genericness. In re Yousef Saleh Alreshidi, Serial No. 86457267 (November 9, 2016) [not precedential].
The mark is described as consisting of "Arabic script which transliterates to HARAJ." The English translation of HARAJ is "Auction" or "Sale."
Doctrine of Equivalents: Applicant argued that the doctrine of foreign equivalents does not apply because Persian is "an obscure language and therefor not likely to be translated by the ordinary American purchaser." He pointed to a Census Bureau publication indicating that of the 60.6 million people who speak a non-English language at home, only 0.7% speak Persian.
The Board pointed to a TMR article saying that languages once thought to be obscure, such as Farsi (Persian) and Arabic, are now in common use in this country. More importantly, applicant's specimen of use showed that his services are advertised in Arabic characters, indicating that his own customers include people who read Persian and his services are directed to such customers.
Therefore the Board found that, with respect to applicant's services, Persian is not an obscure language. Accordingly the Board deemed the mark equivalent to "sale" or "auction" in English.
Genericness: The Board reviewed the Examining Attorney's evidence in detail but found very few instances in which "sales" or "auction" could be considered generic terms for classified advertising services. "The limited amount of evidence that AUCTION or SALES has been used as category names for classified ads is simply insufficient for us to find that the Office has demonstrated that SALE or AUCTION is understood by the consuming public to primarily refer to classified advertising services."
Mere Descriptiveness: The evidence showed that SALE describes a major characteristic of classified advertising services. Someone who can read Persian will immediately so understand the meaning of the mark. Therefore, the mark is merely descriptive of the services.
Acquired Distinctiveness: Applicant's claim under Section 2(f) was based solely on a declaration of at least five years of continuous and substantially exclusive use, with no further evidence being offered. The Board, however, found that for this "highly descriptive mark," a mere statement of five years of use is not sufficient to support a finding of acquired distinctiveness.
And so the Board affirmed the Section 2(e)(1) refusal.
Judge Adlin opined that the record evidence left no doubt that classified advertising services encompass sales and auctions, or that sales and auctions are among the most prominent and popular classifications of the advertisements that applicant and his competitors provide. The Board has held that a term that names the "central focus" of "key aspect" of a service is generic for the service itself. [E.g., HOTELS.COM for reservation services, RUSSIANART for fine are dealership services, CHURRASCOS for restaurant services]. Moreover, applicant's competitors need to use "sale" and "auction" in their classified advertising services.
Judge Adlin concluded that "[b]ecause the record established that the relevant public understands 'sales' and 'auctions' to refer to sub-groups, and in fact 'key aspects' of 'classified advertising services,' his mark is generic ...."