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

Recording of a 90-minute premium CLE video webinar with Q&A


Conducted on Tuesday, September 14, 2021

Recorded event now available

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Course Materials

This CLE course will guide trademark counsel on the doctrine of foreign equivalents. The panel will examine the doctrine in the context of trademark prosecution and clearances and trademark infringement in different languages. The panel will also review recent cases and discuss the lessons from those decisions.

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.

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Outline

  1. Prosecution
    1. Likelihood of confusion considerations
    2. Confusingly similar marks
  2. Clearances
    1. Conducting trademark clearances
    2. Rendering trademark clearance opinions
  3. Infringing marks in different languages
  4. Recent decisions and their lessons

Benefits

The panel will review these and other key issues:

  • What are the considerations related to foreign equivalents for trademark counsel when prosecuting a trademark application?
  • What lessons can be learned from recent decisions regarding the application of the doctrine of foreign equivalents?
  • What best practices should counsel employ when conducting trademark clearances in light of the doctrine of foreign equivalents?

Faculty

Heavner, B. Brett
B. Brett Heavner

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Heavner's practice covers all aspects of trademark and unfair competition law, with a particular focus on...  |  Read More

Wu, Yinfei
Yinfei Wu

Attorney
Finnegan Henderson Farabow Garrett & Dunner

Ms. Wu has significant experience in both United States and China trademark and copyright law. She advises clients and...  |  Read More

Zhang, Yan
Yan Zhang

Partner
Beijing East IP

Ms. Zhang’s key practices focus on trademark prosecution, enforcement and litigation, copyright, anti-unfair...  |  Read More

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