Trademark Doctrine of Foreign Equivalents: Prosecution, Clearances, Infringing Marks in Different Languages

Description

Under U.S. trademark law, the doctrine of foreign equivalents requires both the USPTO and the courts to translate foreign words into English to determine if the marks can be registered or if they would cause a likelihood of confusion with an existing mark. Recent Trademark Trial and Appeal Board (TTAB) decisions reaffirmed to trademark counsel that the doctrine of foreign equivalents must be considered when conducting trademark clearances and rendering trademark clearance opinions to clients.

In the recent decision In re Hop Daddy L.L.C., the TTAB reexamined the doctrine of foreign equivalents. In ruling the foreign doctrine equivalents inapplicable, the TTAB stated, "Although we have routinely applied the doctrine of foreign equivalents to Spanish language marks, … the absence of any actual dictionary translation from a recognized source for this common language raises some doubt as to whether "salty" is a direct and literal translation of SALAO. Moreover, according to the Cambridge and Collins dictionaries, the direct translation of "salty" from English to Spanish and vice-versa is "salado." The TTAB determined that the differences in overall appearance, sound, connotation, and commercial impression supported finding no likelihood of confusion between the marks.

Listen as our authoritative panel of IP attorneys examines the doctrine of foreign equivalents in the context of trademark prosecution and clearances, as well as trademark infringement in different languages. The panel will review recent cases and discuss their lessons.