The doctrine is applicable when it is likely that an ordinary American purchaser would “stop and translate” the foreign term into its English equivalent. The support for this refusal is below the jump.
Equivalence in meaning and connotation can be sufficient to find such marks confusingly similar. Therefore, marks comprised of foreign words are translated into English to determine similarity in meaning and connotation with English word marks. Under the doctrine of foreign equivalents, a mark in a foreign language and a mark that is its English equivalent may be held to be confusingly similar. This is how the Examining Attorney at the USPTO initially refused registration of KAKATOO for clothing, based on a prior registration for DELICIOUS for shoes:Īpplicant’s mark KAKATOO is confusingly similar to the registered mark DELICIOUS because KAKATOO is the foreign equivalent of “delicious.” It also reinforces the power of federal trademark registrations. Obviously, I don’t believe the USPTO is a trademark bully, but asking the question, and discussing some recent likelihood of confusion refusals issued by Examining Attorneys at the USPTO, I believe, helps put in perspective the recent flurry of discussion and concern of trademark bullying. If you had started selling shirts, pants, and under the trademark and brand KAKATOO, and you received a cease and desist letter from someone selling shoes under the trademark and brand DELICIOUS, would you not be crying foul and/or applying the ever-popular label “trademark bully”?
In fact, the USPTO has extended the period for comments by a month with a new deadline of February 7, 2011. Seems as though any trademark owner who sends a cease and desist letter is bound to be called a trademark bully by someone.
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