Last weekend I was out at a fancy art event, and saw a beautiful Maserati Quattroporte, and that got me thinking, as often happens, about trademarks. I wondered if Maserati had registered a trademark for QUATTROPORTE, and if so, what register it was on, the Supplemental or the Principal? Why was I pondering all this? Well, let me explain.
Recall that “merely descriptive” words can’t function as trademarks unless they have acquired “distinctiveness.” Remember that the point of a trademark is to distinguish your goods from everyone else’s goods. Words that are descriptive in nature don’t serve to distinguish the source of the goods, they merely describe some use or quality of the goods, and so they are not about the source of the goods, but the goods themselves. Descriptive terms that are commonly used in real life aren’t considered distinctive enough to serve as trademarks unless the applicant can show that the proposed mark has acquired distinctiveness among consumers.
Moreover, if we allow “merely descriptive” terms like “big” or “fast” or “green” to serve as trademarks, it would then grant the exclusive right to use that term with those goods to a particular entity, and perhaps prevent others from fairly describing their goods. After all, shouldn’t all manufacturers be able to claim that their goods are the “best” or that their services are the “fastest?”
So, back to that shiny red Maserati…It had a badge on the back that read “Quattroporte,” which means “four-door” in English. As applied to cars, “four-door” is “merely descriptive,” because it describes a quality of the goods (this car did indeed have four doors) and so the doctrine of foreign equivalents requires us to translate that foreign word into English when we apply to register it as a trademark.
When I went into the record, I expected to see that the QUATTROPORTE mark had been registered on the Supplemental Register, and sure enough, that is exactly what I found. I quick look at the correspondence between the trademark examiner and attorneys for Maserati revealed the reason: “Quattroporte means “four ports.” Thus the term describes a characteristic of applicant’s engineering, e.g. four port fuel injection of the Ferrari automobiles.”
Well, kinda. “Porta” actually means “door” in Italian, with “porte” being the plural form. So the right answer, but the wrong reason; the “porte” being referred to are the doors on the car, not the “ports” in the engine, which was the examiner’s assumption. Mistranslation notwithstanding, yes, the term is descriptive of a four-door car, which is exactly what the Quattroporte is.
Recall that the Supplemental Register is a sort of “trademark sandbox” where marks that aren’t quite distinctive enough to serve as trademarks go to play for 5 years while they become distinctive in the marketplace. If, in the five years, the mark acquires distinctiveness, the mark owner may apply to move the mark to the Principal Register.
The moral of the story is that you can’t “fool” the trademark examiner by trying to register a descriptive word in another language. If you don’t translate it in the application, be assured that the examiner will herself go get a translation of the word. Tempted to mistranslate the word? Remember that it’s very bad to lie on your trademark application, and it may come back to haunt you later if there is ever litigation surrounding your trademark. .
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