[E-trademarks] RFI/Meaning of Disclaimed Element?
Richard Straussman
rstraussman at weitzmanip.com
Thu May 22 12:52:29 EDT 2025
What confuses me is:
(1) What about words that were coined in English and were borrowed
by another language and has taken on a clearly different meaning in that
language? Do we have to provide a translation of that, or is it
sufficient that it appears in an English language dictionary?
OR
(2) Say a client is applying to register the mark "ROYAL FUDGEL"
for playing cards and, in English (yes it's a real word), it is a verb
that means "to cheat," but in Elbonian a word pronounced FUDGEL means a
movable stall where one would go to buy food. Do we need to translate
and why would the Trademark Office care?
*Richard Straussman**
* *Senior Counsel*
* Registered Patent Attorney
* Member NY, NJ & CT Bars
*. . . . . . . . . . . . . .*
*Weitzman Law Offices, LLC*
*Intellectual Property Law*
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On 5/22/2025 12:35 PM, Laura Geyer via E-trademarks wrote:
>
> This is seriously not a big deal. Loanwords often have a slightly
> different meaning in the languages that borrow them. Which makes it
> even less needful to translate it.
>
> Say if you take the English word Kindergarten and over time it
> develops a slightly different meaning then it is still an English word
> and I see even less reason you’d need to translate it. Or “Angst”
> which is now used to indicate anxiety but also we use “angtsy” to mean
> anxious, because that’s what you do.
>
> This is exactly how “regular” English words shift in or add meaning
> over time. “Dank” to me is the dark corner of the basement where it is
> slightly wet and musty. It came to mean “cool-awesome” a few years ago
> while steal retaining it’s original meaning. Similarly, “ripped” which
> used to mean drunk now also refers to someone in really good shape,
> abdominally speaking. And corn-holing means a game where you toss
> beanbags through holes in a board and wow, I still remember the day I
> learned that, because a flyer went out advertising there’d be
> “corn-holing” at the pool party and I was like … uh … this absolutely
> cannot mean what it mean to this Gen-Xer!
>
> So you should never have to say kindergarten is a German word meaning
> *****
>
> It’s not. It’s an English word.
>
> *Laura Talley Geyer*| *Of Counsel*
>
> **
>
> *ND Galli Law LLC*
>
> 1200 G Street, N.W., Ste 800
>
> Washington, DC 20005
>
> Tel: (202) 599-9019 (direct)
>
> https://ndgallilaw.com/laura-geyer/
>
> https://ndgallilaw.com/
>
> *From:*Katrin Lewertoff <klewertoff at liplg.com>
> *Sent:* Thursday, May 22, 2025 12:17 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Laura Geyer <lgeyer at ndgallilaw.com>
> *Subject:* RE: [E-trademarks] RFI/Meaning of Disclaimed Element?
>
> *EXTERNAL EMAIL*
>
> I completely agree, but what would you do when the meaning of the
> English term, like kindergarten, is not identical to the meaning of
> Kindergarten in German? In the U.S., kindergarten is the year before
> first grade in school, in German it means preschool (which is not part
> of the school system, usually ages 3-5.) The English meaning is not
> the same and, technically, there would be a translation. I would think
> that there are other words that are used in English, and the meaning
> in the original language differs from the meaning in English.
>
> Katrin
>
> Katrin Lewertoff
>
> Lewertoff IP Law Group, LLC
>
> 2 Park Avenue, 20^th Floor
>
> New York, NY 10016
>
> Phone: 203 851 2242
>
> klewertoff at liplg.com
>
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> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
> Behalf Of *Laura Geyer via E-trademarks
> *Sent:* Thursday, May 22, 2025 11:23 AM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Laura Geyer <lgeyer at ndgallilaw.com>
> *Subject:* Re: [E-trademarks] RFI/Meaning of Disclaimed Element?
>
> This is exactly the point I was making – the examiner I was speaking
> to last week said while he couldn’t comment on a specific OA that my
> example of espresso was “insane” because that’s the English word for
> espresso. In fact, I found that espresso is the word for espresso in
> at least 40 languages and then stopped counting.
>
> Same for sushi and karaoke.
>
> *Laura Talley Geyer*| *Of Counsel*
>
> **
>
> *ND Galli Law LLC*
>
> 1200 G Street, N.W., Ste 800
>
> Washington, DC 20005
>
> Tel: (202) 599-9019 (direct)
>
> https://ndgallilaw.com/laura-geyer/
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>
> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
> Behalf Of *Sam Castree via E-trademarks
> *Sent:* Thursday, May 22, 2025 11:07 AM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Sam Castree <sam at castreelaw.com>
> *Subject:* Re: [E-trademarks] RFI/Meaning of Disclaimed Element?
>
> *EXTERNAL EMAIL*
>
> Yes, I agree with Dale. Adding the "translation" (as silly as it
> sounds), along with an explanatory miscellaneous comment, is exactly
> what I would do in this case.
>
> Either that, or argue (assuming the evidence bears it out) that the
> word has /become/ an English word, as a loan word from whatever
> language - like, sushi and salsa /are/ English words at this point,
> despite their origin in Japanese and Spanish, respectively. But the
> quickest and easiest (and cheapest for the client) is probably just to
> add the translation, and I don't see any real negative repercussions
> from doing it.
>
> (At least, I would /hope/ that the PTO wouldn't require a translation
> of something like sushi.)
>
>
> Cheers,
>
> Sam Castree, III
>
> /Sam Castree Law, LLC/
>
> /3421 W. Elm St./
>
> /McHenry, IL 60050/
>
> /(815) 344-6300/
>
> On Thu, May 22, 2025 at 8:38 AM Dale Quisenberry via E-trademarks
> <e-trademarks at oppedahl-lists.com> wrote:
>
> Yes, I think that’s what I would do. And you might also add in a
> miscellaneous statement that explains it in a little bit more
> detail like you did in your email.
>
> Best regards,
>
> Dale
>
> C. Dale Quisenberry
>
> Quisenberry Law PLLC
>
> 832.680.1000
>
> Sent from my iPhone
>
> On May 22, 2025, at 8:21 AM, Greg William via E-trademarks
> <e-trademarks at oppedahl-lists.com> wrote:
>
>
>
> Somehow, this is a new one for me. Hypo: the applied-for mark
> contains a word in another language, which is descriptive of
> the goods and which is the name the "thing." There's no
> English translation/meaning (we'd call it the same thing in
> English).
>
> The Examiner required a disclaimer of the term due to the
> foregoing (and cited evidence), but also required a statement
> as to whether the term has any meaning in a foreign language.
> The office action indicates that, if there is no meaning, the
> proper statement is "the wording '____' has no meaning in a
> foreign language."
>
> Of course, this isn't correct - the term /does/ have a meaning
> in a foreign language, it's just that there's no
> English translation for it. So, do you respond by saying there
> is a meaning, but use circular language, /i.e.,/ "The English
> translation of 'TREE' in the mark is 'TREE'"?
>
> TIA,
>
> Greg
>
> Gregory S. William, Esq.*
> Danielson Legal LLC
> One Mifflin Place, Suite 400
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