The USPTO refused registration of the mark UHAI for "Hair care products, namely, shampoo, conditioner, oil, gel, foam, spray, styling custard, hair regrowth kits comprised primarily non-medicated exfoliating scrub, scalp serum and temple balm for promoting hair growth," finding the mark likely to cause confusion with the registered mark LIFE FOR HAIR & Design (shown below), for "hair care product, namely, shampoo used to strengthen the hair [HAIR disclaimed]." Applicant contended that the Examining Attorney failed to prove that Swahili is a "common modern" language in this country, and thus failed to show that customers are likely to be confused as to the source of Applicant’s goods under Section 2(d). How do you think this came out? In re S Squared Ventures, LLC, Serial No. 86813357 (August 16, 2017) [not precedential] (Opinion by Judge Linda A. Kuczma).
Since the goods overlap, the Board presumed that they travel through the same, normal channels of trade to the same classes of customers.
Turning to the marks, Applicant translated its mark from the Swahili to English as the word "life." Under the doctrine of foreign equivalents, a mark in a foreign language may be found confusingly similar to a mark that is its English equivalent. The doctrine applies when an ordinary American purchaser would "stop and translate" the foreign term into its English equivalent. The ordinary American purchaser includes all purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.
Applicant did not dispute that the Swahili language is spoken by people in the United States, but it argued that the USPTO's evidence did not show that Swahili is a "common modern" language in this country such that consumers are likely to be confused.
The Examining Attorney relied on evidence that Swahili, also called Kiswahili, is a "lingua france" and is the primary or secondary language of approximately 80-100 million people around the world. Major universities in this United States offer classes and programs covering the Swahili language, and several have student Swahili clubs. Numerous media excerpts referred to Swahili broadcasts, religious gatherings, cultural awareness, and education.
Nonetheless, applicant, pointing to a survey showing that 88,685 individuals speak Swahili at home, contended that it is unlikely that purchasers would stop and translate the mark. [Seems like a nonsequitur to me - ed.. The Board pointed out, however, that people may speak English at home but still may have studied another language in school; others may immigrate to a home where English is spoken. None of these people would be included in applicant's data.
The Board concluded that Swahili is not dead, obscure, or unusual. It is a common modern language for purposes of applying the doctrine of equivalents.
Because UHAI directly translates to the word "life" in English, it is similar to Registrant's mark, and this factor favors a likelihood of confusion.
The absence of "FOR HAIR" in applicant's mark does not create a separate and distinguishable commercial impression from Registrant's mark, since that phrase is descriptive of the goods. Moreover, that wording is displayed in smaller and less stylized letters.
The Board noted that applicant's standard character mark could be displayed in the same manner as the registered mark. The leaf design in the registrant mark is minimal and does not distinguish the marks.
And so the Board affirmed the refusal to register.