trademark doctrine of foreign equivalents: prosecution

Trademark Doctrine of Foreign Equivalents:

Prosecution, Clearances, Infringing Marks in

Different Languages

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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

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Yan Zhang

[email protected]

Trademark Doctrine of Foreign Equivalents:

Prosecution, Clearances, Infringing Marks

in Different Languages

Prosecution

Clearances

Trademark Doctrine of Foreign Equivalents

Infringement

Typical Cases

Trademark Doctrine of Foreign Equivalents: Prosecution

Combination of

literal translation

and transliteration 星巴克乐扣乐扣

Transliteration

希尔顿阿玛尼

Literal translation

苹果微软


Beijing High Court

Guidelines for the Trial of

Trademark Right Granting

and Verification Cases

The ability of Chinese consumers to recognize the foreign language

trademark

The relevance or correspondence between the foreign language

trademark and the Chinese language trademark

The distinctiveness, popularity and ways of use of the cited trademark

The actual use of the trademark in dispute

≠

Brand owner

Foreign

language trademarkChinese equivalent

Squatter

Distributor

Consumer


✓ Frequency of use of the foreign word

01 The ability of Chinese consumers to recognize the foreign language trademark

✓ Type of foreign language

Little Black Dress in Chinese

Crown in Chinese

La Petite Robe Noire (French)


The relevance or correspondence between the foreign language trademark and the Chinese

language trademark

Forever Mark in Chinese

FOREVERMARK

Scissors in Chinese


Substantial Examination Refusal Appeal Opposition and Invalidation

Literal meaning of foreign

language trademark

General understanding of Chinese

consumers

Correspondence in meaning between

foreign language trademark and

Chinese language trademark

Similarity of trademarks

Distinctiveness and reputation of the

cited trademark

Relatedness of goods/services

Bad faith of the applicant

Trademark Doctrine of Foreign Equivalents: Clearances

Literal translation

Transliteration

Combination of literal

translation and transliteration

Clearances

highly recommended

First to file

Early application date triumphs

Limited protection on prior use

Unique subclass system

Clearance on the CNIPA

official database

Supplementary online search

Shoes subclass 2507

Clothing subclass 2501

✓

Trademark Doctrine of Foreign Equivalents: Clearances

Use of unregistered

trademark

not recommended

Modify the trademark design

Not use in a prominent way

Used with other registered trademark or corporate name

File trademark application as soon as possible

Clear prior obstacles through opposition,

invalidation, non-use cancellation and negotiation

Trademark Doctrine of Foreign Equivalents: Infringing Marks in Different Languages

Substantial evidence:

The foreign language trademark, together with its Chinese equivalent, enjoys high reputation after being used for quite a long time.

Corresponding relationship between the foreign language trademark and its Chinese equivalent has been known to the relevant public.

Corresponding

relationship

Stable

Not “sole”

Likelihood of confusion

Infringement

Trademark dispute


Modify the

design of trademark

Scenario 1

Not use in

a prominent way

VS

Brand owner Distributor Consumer Media

Active use Passive use

Corresponding relationship between the foreign language

trademark and its Chinese equivalent established?


Modify the

design of trademark

Scenario 1

China Supreme Court’s considerations on similarity of trademarks:

• The Chinese characters “FANG DI MEI in Chinese,” as the commonly used Chinese translation of “FREDDIE MAC,”

have been widely used by media reports to refer to Freddie Mac.

• “FANG DI MEI in Chinese” has established a corresponding association with “FREDDIE MAC.”

• The trademark “FREDDIE MAC” has enjoyed certain reputation in the field of financial services.

App Date: February 14, 2008

Applicant: Henan Qi Du

Real Estate Broker Co., Ltd.

Designated Services: insurance

brokerage; etc. in Class 36

FANG DI MEI in Chinese

Reg. Date: June 21, 1999

Registrant: Federal Home Loan

Mortgage Corporation

Designated Services: mortgage loan

related financial services in Class 36

Corresponding

relationship


Scenario 1

Modify the

design of trademark

VS

App Date: November 29, 2010

Applicant: Hangzhou CanVTech

Co., Ltd.

Designated Services: networking

services in Class 45

Reg. Date: July 16, 2010

Registrant: Facebook, Inc.

Designated Services:

establishment of social

relationship services in Class 45

Beijing High Court’s considerations on similarity of trademarks:

• The Chinese characters “LIAN PU in Chinese” have established a corresponding association with “FACEBOOK” when used

on networking services.

• Although the Chinese mark “LIAN PU in Chinese” has its fixed meaning in Chinese, when used on networking services, it

refers to Facebook.

Corresponding

relationship

LIAN PU in Chinese


Modify the

design of trademark

Scenario 2

Distribution relationship

YI WO LONG in Chinese

Nanjing Pippin Textile Technology

Co., Ltd.Carl Freudenberg KG


Scenario 3

Modify the

design of trademark

Against the will

of brand owner

＝

＝

≠

≠

伟哥（WEI GE in Chinese）

索爱（SUO AI in Chinese）

索尼爱立信(SUO NI AI LI XIN in Chinese)

Pfizer attorney’s statement

Sony Ericsson is a joint venture

between Sony Group and Ericsson

Group...We are not SUO AI in

Chinese...; I request all of you to call

us Sony Ericsson or Sony Ericsson in

Chinese, not SUO AI in Chinese.

VP of Sony Ericsson

万艾可(WAN AI KE in Chinese)

The drug VIAGRA was developed

and produced by Pfizer, and WAN

AI KE in Chinese is the official

name of the drug.

Corresponding relationship denied


First instance: around $15 million

Second instance: around $770,000

First instance: appeal denied

Second instance: appeal deniedUse Chinese

equivalent in 2003

Damages

Trademark

Infringement Litigation

Invalidation

App. Date: August 25, 1994

Reg. Date: August 21, 1996

Designated Goods:

footwear, etc. in Class 25

App. Date: June 4, 2004

Reg. Date: January 7, 2008

Designated Goods:

footwear, etc. in Class 25

新百伦

Trademark

Administrative litigation

Mr. Zhou

Scenario 4

App. Date: September 9, 1994

Reg. Date: August 7, 1996

Designated Goods: wine in Class 33

Treasury Wine Estates (TWE) Mr. Li

App. Date: October 16, 2006

Reg. Date: July 28, 2009

Designated Goods: wine, alcoholic

beverages etc. in Class 33

2012-9: non-use

cancellation

2014-6: invalidation

2014-12: non-use

cancellation appeal

2015-12: first instance

court appeal for

non-use cancellation

2016-12: second

instance court appeal for

non-use cancellation

2019-6: first instance

court appeal for

invalidation

2021-1: second

instance court appeal

for invalidation


Scenario 5


Huai’an Huaxia Manor Brewing Co., Ltd. (manufacturer)

Hangzhou Zhengsheng Trade Co., Ltd. (distributor)

Nanjing Intermediate Court’s considerations on determination of infringement:

• The Chinese mark “BEN FU in Chinese” has established a corresponding relationship with the English mark “PENFOLDS” in wine

industry.

• Sufficient evidence is provided to prove the Chinese mark “BEN FU in Chinese” has achieved well-known status in China.

• The accused Chinese mark “BEN FU in Chinese” is identical with the unregistered well-known mark “BEN FU in Chinese,” and the

accused English mark “Penfunils” is similar to the registered mark “PENFOLDS.”

Court’s rulings:

• Cease infringing acts upon “PENFOLDS” and

“BEN FU in Chinese” trademarks

• Pay damages of around $155,000

Scenario 5

Create Chinese equivalents before entering China market.

File applications for Chinese equivalents as soon as possible.

Chinese equivalents formed by the media and public should be considered

and applied as trademarks for defense purposes.

Regularly monitoring similar marks in key classes helps to discover

questionable marks and address squatting problems in a timely manner.

Evidence collection is crucial, and sufficiency of evidence is

always a core factor affecting chances of success.

Take-Aways

Yan Zhang

[email protected]

Thanks

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Don’t Get Lost in

Translation!

B. Brett Heavner

22

Trademarks In Translation

33

The U.S. Melting Pot of Languages

44

U.S. Trademark Policy

Extends protection of trademark law to U.S.

consumers who speak languages other than

English

This Photo by Unknown Author is licensed under

CC BY-ND

https://theconversation.com/is-it-a-case-of-the-younger-the-better-for-children-learning-a-new-language-44751

https://creativecommons.org/licenses/by-nd/3.0/

55

What is the Doctrine of Foreign

Equivalents?

66

What is the Doctrine of Foreign Equivalents?

Foreign words found in trademarks are

translated into English to determine:

• Descriptiveness and mis-descriptiveness

• Genericness

• Deceptiveness

• Likelihood of confusion

77


Not an absolute rule, more of a guideline….

The Federal Circuit indicates that the doctrine

should only apply when an ordinary

purchaser would stop and translate the word

into English.

88


Does not apply when the word is from an

obscure or dead language:• Classical Greek

• Ancient Egyptian

• Hottentot

• Taino Indians of the Dominican Republic

• Native American Miwok Tribe

99


Will nearly always apply to modern

languages:• Spanish

• French

• German

• Hungarian

• Italian

• Swedish

• Polish

• Serbian

1010


Including languages with non-Latin

Alphabets:• Chinese

• Japanese

• Korean

• Arabic

• Russian

• Greek

• Thai “Oriental Daily News”

1111


Applicants Cannot Hide the Meaning Of A

Foreign Term:

• An application to register a mark that includes non-English

wording must include an English translation of that

wording. 37 C.F.R. §2.32(a)(9).

• If the Applicant does not provide a translation, the

examiner may obtain the meaning of non-English wording

through sources such as foreign language dictionaries and

search engines. TMEP § 809.01.

https://tmep.uspto.gov/RDMS/TFSR/current#/current/r-e8786759-4013-4958-beb8-52f8477670f5.html

1212

How To Apply The Doctrine of

Foreign Equivalents

1313

Descriptiveness

In Re Highlights For Children

App. No. 85838981 (TTAB 2016)

Mark: IMÁGENES ESCONDIDAS

Language: Spanish

Translation: “hidden pictures”

Goods: books and magazines for children

Holding: Merely Descriptive

1414

Descriptiveness

In Re Highlights For Children

App. No. 85838981 (TTAB 2016

– 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


In Re Aquamar, Inc.

App. No. 85861533 (TTAB 2015)

Registrant’s Mark:

BLUE SEA

(standard character)

Goods: Non-live fish and frozen fish

1919


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


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


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



App. No. 87677215 (TTAB 2019)


LE CREUSET

Language: French

Translation: “the crucible” or “the melting pot”

Goods: wide range of kitchen items including pots and pans

2323



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


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


In Re Hop Daddy LLC, App. No. 88175921 (TTAB 2020)


TORO SALAO

(standard characters)

Language: Spanish

Translation: “toro” means “bull” and “salao” means?

Goods: Restaurant services, including sit down service and take out

2626


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.

2929

Questions

Thank You!

B. Brett Heavner

[email protected]

phone: 202-408-4073

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

THE DOCTRINE OF FOREIGN EQUIVALENTS IN CHINA AND IN THE U.S.

Yinfei Wu

22

The Equivalent

33

The Relevant Purchaser

44

The “Foreign” Equivalent

• Does it have to be “foreign”?

55


• Which Foreign Equivalent?

Translation

66



Transliteration OLD MAN HEADGUI GE

77

The Foreign Equivalent


Coined/Combination

88

The Old Country Little Inn

99

Take-Aways

• Consider including translations of mark in major foreign languages in your clearance searching

• Before entering translation statements with the application, make certain that they are not too similar to prior registrations

• Register all translations that you are using or are likely to use.

• Consider include translations from major languages in watch service

1010

Questions?

Thank you!

谢谢！

Contact Information

B. Brett Heavner

[email protected]

Yinfei Wu

[email protected]

Yan Zhang

[email protected]

trademark doctrine of foreign equivalents: prosecution

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