Trademark Doctrine of Foreign Equivalents: Prosecution, Clearances, Infringing Marks in Different Languages Today’s faculty features: 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 1. TUESDAY, SEPTEMBER 14, 2021 Presenting a live 90-minute webinar with interactive Q&A B. Brett Heavner, Partner, Finnegan Henderson Farabow Garrett & Dunner, LLP, Washington, D.C. Yinfei Wu, Attorney, Finnegan Henderson Farabow Garrett & Dunner, LLP, Washington, D.C. Yan Zhang, Partner, Beijing East IP LTD., Beijing, China
64
Embed
Trademark Doctrine of Foreign Equivalents: Prosecution ...
This document is posted to help you gain knowledge. Please leave a comment to let me know what you think about it! Share it to your friends and learn new things together.
– Wording is exact translation from English To Spanish
– Product is Spanish language version of English publication, so consumers would pause to translate
– Applicant had previously admitted that English wording “hidden pictures” is merely descriptive and only obtained a registration after showing secondary meaning.
– IMÁGENES ESCONDIDAS is not identical to HIDDEN PICTURES, so secondary meaning does not transfer to Spanish version
– No evidence that IMÁGENES ESCONDIDAS had been promoted sufficiently to obtain secondary meaning
– Refusal affirmed
1515
Descriptiveness
Borinquen Biscuit Corp. v. M.V. Trading Corp.,
443 F.3d 112 (1st Cir. 2006)
Mark: GALLETAS RICA SUNLAND
Language: Spanish
Translation: “rich” or “tasty
Goods: Cookies and crackers
Holding: Not Descriptive
1616
Descriptiveness
Borinquen Biscuit Corp. v. M.V. Trading Corp.,
443 F.3d 112 (1st Cir. 2006)
– When viewed in the context of the mark as a whole “RICA” would not be viewed by consumers as descriptive term “tasty.”
– Not grammatically correct usage in Spanish
– Unlikely consumers would translate the term into English
1717
Likelihood of Confusion
In Re Aquamar, Inc.
App. No. 85861533 (TTAB 2015)
Applicant’s Mark: MARAZUL
Language: Spanish
Translation: “blue sea”
Goods: Fish and seafood products, namely frozen and fresh processed fish and imitation crab
1818
Likelihood of Confusion
In Re Aquamar, Inc.
App. No. 85861533 (TTAB 2015)
Registrant’s Mark:
BLUE SEA
(standard character)
Goods: Non-live fish and frozen fish
1919
Likelihood of Confusion
In Re Aquamar, Inc.
App. No. 85861533 (TTAB 2015)
– ISSUE A: Failure to Translate
– Applicant declined to provide English translation on the ground that the mark is unitary, so it was not “mar azul” but was a single word MARAZUL
– Examining attorney found other evidence of establishing translation from Spanish as “blue sea.”
– Applicant’s packaging was bilingual in both English and Spanish.
– Applicant presented no evidence that consumers would fail to translate mark due to absence of space between “mar” and “azul.”
– Refusal for failure to translate was affirmed
2020
Likelihood of Confusion
In Re Aquamar, Inc.
App. No. 85861533 (TTAB 2015)
– ISSUE B: Likelihood of Confusion
– Applicant admitted that its target audience were Hispanic consumers
– Applicant’s packaging was bilingual in both English and Spanish.
– Therefore, consumers would stop to translate MARAZULinto BLUE SEA
– Refusal of application affirmed.
2121
Likelihood of Confusion
In Re A.F. Djurberg AB
App. No. 87677215 (TTAB 2019)
Applicant’s Mark:
CRUCIBLE COOKWARE
Language: English
Disclaimer: “cookware”
Goods: Various cooking utensils including frying pans, cast iron skillets
2222
Likelihood of Confusion
In Re A.F. Djurberg AB
App. No. 87677215 (TTAB 2019)
Registrant’s Mark:
LE CREUSET
Language: French
Translation: “the crucible” or “the melting pot”
Goods: wide range of kitchen items including pots and pans
2323
Likelihood of Confusion
In Re A.F. Djurberg AB
App. No. 87677215 (TTAB 2019)
– Doctrine of Foreign Equivalents works both ways. English mark can be refused based on prior registration with foreign term
– The fact that registrant’s mark is famous in the cooking community does not mean that consumers would fail to translate LE CREUSET into “crucible.”
– The additional word “cookware” has been disclaimed, and so carries less weight in comparison
– Refusal to register CRUCIBLE COOKWARE is affirmed
2424
Likelihood of Confusion
In Re Hop Daddy LLC
App. No. 88175921 (TTAB 2020)
Applicant’s Mark:
SALTY BULL BREWING
Language: English
Services: Restaurant and bar services; taproom services featuring beer brewed on the premises
2525
Likelihood of Confusion
In Re Hop Daddy LLC, App. No. 88175921 (TTAB 2020)
Registrant’s Mark:
TORO SALAO
(standard characters)
Language: Spanish
Translation: “toro” means “bull” and “salao” means?
Goods: Restaurant services, including sit down service and take out
2626
Likelihood of Confusion
In Re Hop Daddy LLC, App. No. 88175921 (TTAB 2020)
– While the examining attorney found good evidence that “toro” means “bull” in Spanish, she had less evidence that “salao” means “salty.”
– The examiner did not have dictionary evidence of the translation of “salao,” but only had a blog entry where two individuals discussed its possible relationship to “salado” which means “salty” or “cute” or “charming.”
– The TTAB found that the blog evidence was insufficient to find that “salao” as spelled in the registration means “salty.”
– The doctrine should only apply to direct and literal translations where there is no evidence to the contrary.
– Refusal to register SALTY BULL is reversed
2727
Closing Thoughts on Translations
and the Doctrine of Foreign
Equivalents
2828
Closing Thoughts
Beware Translation Issues
– Do not refuse to translate. Can only hurt you (see “mar azul”).
– Do not rely on examining attorney to find translation (seeproblems with “salao”).
– If there are multiple meanings in translation, it may make sense to include several. Multilayered or multi-meaning translations can help you.
– Do not submit false translations. You will get caught and it could be considered fraud on the trademark office.
– Check on translations in multiple languages. The same term can have different connotations in each language. Some could be helpful.