## Facts

- Otokoyama Co., a Japanese sake brewer, sold sake in Japan under “Hokkai Otokoyama” and marketed sake in the United States since 1984 using the “Otokoyama” brand.
- Otokoyama owned four federal trademark registrations covering the word “Otokoyama” (English transliteration) and Japanese characters signifying the same word.
- Wine of Japan Import, Inc., a New York importer, began importing and selling sake in the United States labeled “Mutsu Otokoyama” around 1997.
- Otokoyama sued under the Lanham Act for infringement and related claims and sought a preliminary injunction to stop use of “Mutsu Otokoyama.”
- Wine of Japan counterclaimed seeking cancellation of Otokoyama’s registrations, alleging (1) “otokoyama” is generic for a type/style of sake and (2) the registrations were obtained by fraud.
- In the preliminary-injunction proceedings, Wine of Japan offered evidence about Japanese meaning and usage of “otokoyama” and the Japanese trademark office’s refusal to register the term as generic.
- The district court granted a preliminary injunction but refused to consider the proffered Japanese usage evidence and the Japanese office decision.
- Wine of Japan appealed.

## Issues

1. Whether the district court erred by refusing to consider evidence of the meaning and usage of “otokoyama” in Japan, including the Japanese trademark office’s determination that the term was generic.
2. Whether consideration of the excluded foreign evidence created sufficient doubt about the validity of Otokoyama’s registered marks to defeat Otokoyama’s showing of likelihood of success required for preliminary injunctive relief.

## Decision

- The Second Circuit held the district court erred by categorically excluding evidence of Japanese usage and the Japanese trademark office decision.
- Considering that foreign evidence as relevant to genericness and validity, the court concluded Wine of Japan raised sufficient doubt about the validity of Otokoyama’s marks to overcome Otokoyama’s showing of likelihood of success.
- The court vacated the preliminary injunction and remanded for further proceedings.
- The court did not finally decide whether the marks were generic or fraudulently procured, limiting its ruling to the preliminary-injunction record and standard.

## Legal Principles

- In evaluating genericness or descriptiveness of a foreign-language term used for a foreign-associated product, a court may consider evidence of meaning and usage in foreign markets.
- Foreign trademark office decisions are not binding in U.S. litigation, but may be probative on whether a term functions as a source identifier or as a common product designation.
- A federal registration supports validity, but a substantiated challenge to validity (including evidence suggesting genericness) can defeat a trademark owner’s ability to show likelihood of success on the merits at the preliminary-injunction stage.
- Preliminary injunctive relief is improper where unresolved validity questions materially weaken the movant’s showing on the merits.

## Conclusion

The Second Circuit vacated preliminary injunctive relief because the district court improperly excluded foreign evidence relevant to whether “Otokoyama” was generic; once considered, that evidence raised sufficient doubt about trademark validity to prevent the trademark owner from establishing the likelihood of success required for an injunction.


Otokoyama Co. v. Wine of Japan Import, Inc., 175 F.3d 266 (2d Cir. 1999)