(CN) – The Federal Circuit revived a vodka maker’s bid to register the trademark “Moskovskaya,” which translates to “of or from Moscow,” even though the vodka has no connection to the Russian city. The court said the Trademark Trial and Appeal Board failed to consider whether Russian speakers make up a “substantial portion” of targeted buyers.
When Spirits International B.V. first applied for a trademark in 1993, it admitted that its Moskovskaya vodka would not be made or sold in Moscow.
An examining attorney at the U.S. Patent and Trademark Office concluded that the mark was “geographically deceptively misdescriptive” and denied the application. The appeal board affirmed, concluding that buyers would likely be deceived into thinking the vodka came from Moscow, a city well-known for making high-quality vodka.
In order for a foreign-language mark to be considered deceptive, it must meet the requirement that “an appreciable number of consumers for the goods or services at issue will be deceived.”
A three-judge panel of the Washington, D.C.-based federal appeals court said the board properly applied this test, but ignored a proportionality requirement.
“The problem with the Board’s decision is that it elsewhere rejected a requirement of proportionality, and discussed instead the fact that Russian is a ‘common, modern language of the world [that] will be spoken or understood by an appreciable number of U.S. consumers for the product or service at issue,’ such number being in this case 706,000 people, according to the 2000 Census,” Judge Dyk wrote.
“The Board, however, failed to consider whether Russian speakers were a ‘substantial portion of the intended audience.’ Because the Board applied an incorrect test, a remand is required.”