On January 26, 2023, Sharoni Finkelstein was quoted in Law360 on the Trademark Trial and Appeal Board's (TTAB) recent precedent rejecting an Alibaba subsidiary's bid to register "Zhima" to cover a range of goods and services for failing to provide a translation statement because zhima is a Chinese word that means "sesame."
According to the article, the proceeding isn't a typical case before the board, partly because the mark itself is a transliteration of a non-English, non-Latin character word. Under the doctrine of foreign equivalents, a trademark in a foreign language will be examined in the same way as its direct English equivalent to determine whether the mark is descriptive. An applicant's refusal to provide an English translation or transliteration of the foreign word mark, however, will lead to the application being rejected.
In rejecting Advanced New Technologies Co. Ltd.'s (ANT) application, the TTAB pointed out that ANT also filed a co-pending application for the Chinese characters pronounced as "zhima." In that filing, ANT had stated that the non-Latin characters translated to "zhima" and meant "sesame" in English.
ANT’s position may have been a "strategic attempt" to avoid a refusal based on a likelihood of confusion or third-party challenges, according to Finkelstein. She notes that ANT's co-pending applications had been opposed by other companies on the grounds of a likelihood of confusion. But ANT's argument failed when the TTAB cited a number of instances where the word zhima was used and recognized as the Chinese translation for sesame—including that Alibaba's website marketed sesame powder as "zhima powder" and that multiple news reports said Alibaba's social credit system Sesame Credit was also known as Zhima.
"The decision is also a reminder to clients that the [U.S. Patent and Trademark Office] regularly looks beyond the application itself—e.g., at the applicant's website—when considering issues like foreign equivalents or descriptiveness, and will not take at face value an applicant's statement which is contradicted by their use of a mark," Finkelstein told Law360.
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