Otokoyama Co. v. Wine of Japan Import, Inc.
United States Court of Appeals for the Second Circuit
175 F.3d 266 (1999)
Otokoyama Co. (plaintiff) registered U.S. trademarks for "otokoyama" and its Japanese-language equivalents for its sake, despite being unable to register the same term in Japan because it was commonly used there across many different sake brands; when Wine of Japan Import (defendant) began importing a competing sake called "Mutsu Otokoyama" in 1997, Otokoyama sued for trademark infringement and sought a preliminary injunction, and Wine of Japan counterclaimed to cancel the marks, arguing "otokoyama" was a generic sake term in Japanese that Otokoyama had misrepresented when registering. The district court granted the preliminary injunction without considering evidence about the term's meaning or registrability in Japan, and Wine of Japan appealed.
Whether evidence that a trademarked term is generic in its original foreign language, including a foreign court's denial of trademark protection for that term, is admissible to determine the term's eligibility for trademark protection in the United States.