(Nothing yet, but we think we’re on to something.)
Ken’s Mojo Dojo Casa House is redundancy in its sublime form, a landmark human achievement. It also embodies a concept in recent USPTO rulings involving the registrability of trademarks that include multiple languages.
Typically, the USPTO will follow what is known as the “doctrine of foreign equivalents,” meaning that the USPTO treats trademarks in foreign languages as equivalent to their English translations–unless the language would be obscure to the intended market. For instance, “Black Belt” and “Kuro-Obi” (Japanese) were considered as equivalents in connection with restaurant service marks. In re Samjen of Tampa, Inc., 2023 TTAB LEXIS 266 (Trademark Trial & App. Bd. July 11, 2023).
This translation issue is significant when considering whether USPTO registration can be secured. Application refusals occur because the USPTO acts as a gatekeeper against the registration of trademarks that threaten a “likelihood of confusion” in the marketplace or that should not otherwise qualify as trademarks. If the USPTO considers a proposed mark to be too similar to an existing registration or a prior pending application, then registration will be refused. The issue of foreign equivalents can also arise when the proposed trademark is rejected because its English translation is too literally descriptive of the goods or services.
So, when are foreign equivalents not so equivalent? That’s when the Mojo Dojo Casa House Effect can be felt. Specifically, USPTO rulings have carved out an exception to the doctrine of foreign equivalents when multiple languages are used in a single trademark. In these cases, the foreign words will be considered as distinct and not as mere equivalents of their English translations.
Take, for example, the recent case of “Sunset Sushi” and “Banshoo Sushi Bar.” Even though “banshoo” in Japanese translates as “sunset” in English, the Mojo Dojo Casa House Effect stepped in because of the presence of the English words “sushi bar,” stopping the USPTO from applying the law of foreign equivalents, and saving the application. In re DBMG, LLC, Serial No. 90185762 (Trademark Trial & App. Bd. August 3, 2023).
In the precedential decision approving the registration of “Taverna Costa” for a restaurant serving “coastal cuisine,” the Mojo Dojo Casa House Effect saved the application from being rejected as literally descriptive. Even though the service mark could technically be translated as “coastal tavern” or “coastal house,” it contained words from both Spanish and Italian and was not deemed equivalent to its English translation. In re Taverna Izakaya LLC, 2021 TTAB LEXIS 427, (Trademark Trial & App. Bd. November 17, 2021).
Depending on potential descriptiveness issues and possible conflicts that are uncovered in a trademark clearance search, the Mojo Dojo Casa House Effect could be a game-changer for registering a non-English trademark.
An attorney is recommended to fully channel the Mojo Dojo Casa House Effect.
