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By Joseph Marks
May 24— A company that offers personal directories for Iranian Americans can’t assert trademark protections over a hodgepodge English-and-Farsi phrase that translates to “Iranian Yellow Pages,” a federal district judge has ruled ( Ketab Corp. v. Mesriani Law Grp. , 2016 BL 160435, C.D. Cal., No. CV 14-07241-RSWL-MRWx, 5/18/16 ).
Ketab Corp. claimed the name of its directories, “Yellow Page-e Iranian,” is “arbitrary and fanciful” rather than merely descriptive because the phrase “yellow pages” doesn’t exist in Farsi and the name of its directories mixes English and Farsi. The “-e” at the end of “yellow pages” makes the word “Iranian” possessive in Farsi.
Judge Ronald S.W. Lew of the U.S. District Court for the Central District of California said the company's mixed-language name can't escape the doctrine of foreign equivalents, which holds that simply translating a generic English word into a foreign language doesn’t make it distinctive enough to be trademarked.
The name’s mix of Farsi and English doesn’t make it any more distinctive than if it was wholly in one language or the other, Lew wrote.
Ketab never sought a trademark registration for “Yellow Page-e Iranian.”
It sued a competitor, Melli Yellow Pages Inc., which offers a directory called “Yellow Page-e Melli” and has used the phrase “Yellow Page-e Iranian” in its advertisements in phrases that roughly translate to “the most complete Iranian Yellow Pages abroad” and “the yellow pages of successful Iranians abroad.”
The companies both offer directory services in print, by phone and online for the Iranian community in southern California.
Lew ruled against Ketab as a matter of law. Because Ketab had not registered a trademark for “Yellow Page-e Iranian,” the burden was on Ketab to prove the mark was valid.
The judge noted that companies in New York and Texas also offer directories titled “Yellow Page-e Iranian.” A Canadian company offers a “Yellow Page-e Iranian” that advertises in Ketab’s publication, he wrote.
The term “yellow pages” was specifically found to be generic by the U.S. Court of Appeals for the Ninth Circuit in a 1999 case. Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143, 53 U.S.P.Q.2d 1001 (9th Cir. 1999).
Ketab also claimed trademark rights over the phrase “markaz-e etelaate Iranian,” which roughly translates to “Iranian information center” and which Melli also uses to describe its services. Lew also found that term was generic.
“`Iranian Information Center’ describes what plaintiff’s service is: an information center for Iranians,” he wrote.Source Material:
Ketab Corp. v. Mesriani & Assocs.
Complaint: Sept. 16, 2014
Adli Law Group P.C. represented Ketab Corp. Davidson Law Group represented Melli Yellow Pages Inc.
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The ruling is available at: http://src.bna.com/fiI
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