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Covington Secures Trademark Victory for Spirits International

5/1/2009

WASHINGTON, DC, May 1, 2009 — The U.S. Court of Appeals for the Federal Circuit has issued an important decision in favor of Spirits International B.V. (SPI), the owner of the STOLICHNAYA vodka brand, in a trademark case involving its MOSKOVSKAYA vodka brand. Covington & Burling LLP represented SPI in the appeal.

The Court vacated a decision by the Trademark Trial & Appeal Board that had denied registration of MOSKOVSKAYA on the ground that the mark is primarily geographically deceptively misdescriptive because the vodka sold under the mark is not made in Moscow but in another Russian city. The Court’s decision is important because it clarifies at least two significant trademark law issues.

First, the Court held that the doctrine of foreign equivalents applies only when it is likely that the ordinary American purchaser would translate the foreign word into its English equivalent, and that the term “ordinary American purchaser” includes all American purchasers, not just those who speak the foreign language in question, as the Board had erroneously held.

Second, the Court held that, in applying the materiality prong of the three-part test for determining whether a mark is primarily geographically deceptively misdescriptive, the Board must determine whether the geographic misrepresentation allegedly conveyed by the mark is likely to deceive a substantial portion of the relevant consumers of the product, “not whether any absolute number or particular segment of the relevant consumers (such as foreign language speakers) is likely to be deceived,” as the Board had erroneously held.

The Court remanded the case to the Board for a determination of whether there is a prima facie case of material deception under the correct legal test established in the Court’s opinion. The Court also noted that the Board’s rejection of SPI’s consumer survey results “was heavily influenced by its incorrect view of materiality.”

The Covington trademark team was led by Bing Leverich, who argued the appeal, with assistance from special counsel Marie Lavalleye and associate Hope Hamilton. All are based in the firm’s Washington office.

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