Category: Podcasts

Podcast 9: Trademark Doctrine of Foreign Equivalents – Infringing Trademarks in Different Languages

Trademark Doctrine of Foreign Equivalents –

Infringing Trademarks in Different Languages

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Trademark Doctrine of Foreign Equivalents.  This podcast summarizes the recent U.S. Trademark Trial and Appeal Board decision of In re Compass Automotive Inc., which featured the issue of the doctrine of foreign equivalents.

I. Background of In re Compass Automotive Inc.

  • Compass Automotive Inc. (the “Applicant”) sought U.S. trademark registration for the word mark GUEPARDO (which has an English translation of “Cheetah”) and design mark for “vehicle wheels.”
  • The Trademark Examining Attorney refused registration of Applicant’s marks under Section 2(d) of the Trademark Act on the ground that Applicant’s marks, when used in connection with vehicle wheels, are likely to cause consumer confusion with the registered word mark CHEETAH (in English) for:

tire bead seating equipment, namely, pneumatically powered tire changer machines for land vehicles; and

hand tools for tires, namely, tire irons, wheel pullers.

  • After the Examining Attorney issued final refusals on the ground Applicant’s marks are confusing similar to the cited registered mark, meaning there is a likelihood of confusion as to the source of the parties’ respective goods, the Applicant appealed the Examiner’s decisions to the Trademark Trial and Appeal Board – a/k/a TTAB.

Likelihood of Confusion Considerations – Legal Overview

In any likelihood of confusion analysis, key considerations include the:

  • similarities between the marks in terms of sight, sound, meaning and commercial impression;
  • similarities between the goods and/or services: are they identical or related?;
  • channels of trade in which the goods and/or services travel (i.e., B2C vs. B2B, same/different industries / class of buyers); and
  • sophistication level of buyers.

“Confusingly Similar” Trademarks Means “Source” Confusion

Test / Standard:

  • Likelihood of consumer confusion as to the source of the parties’ respective goods/services is the standard
  • It is not confusion as to what the consumer is buying
  • Rather, it is confusion as to the source of the goods/services

Inquiry:

  • Would the average consumer
  • reasonably believe that
  • the parties’ respective goods/services
  • are of the type that would
  • originate with the same source?

Example: running shoes vs. running pants

  • Source confusion is the crux of trademark law!

Listen to Podcast 5 for a full discussion on what constitutes “confusingly similar” marks

Doctrine of Foreign Equivalents - Trademarks

II. Goods and Channels of Trade Analysis 

General Principles to Consider

  • The Applicant’s and Registrant’s goods need not be identical or directly competitive to support a finding of likelihood of confusion as to the source of the goods.
  • “It is sufficient if the respective goods are related in some manner and/or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks used in connection therewith, give rise to the mistaken belief that they emanate from or are associated with a single source.”

Examining Attorney’s Arguments Included

  • The Examining Attorney argued that the goods are related because they are complementary goods.
  • To support that argument, the Examining Attorney relied on evidence showing that pneumatically powered tire changer machines are used to remove tires from vehicle wheels and wheel pullers are used to remove vehicle wheels from a vehicle.
  • The Examining Attorney also included examples showing that “vehicle wheels” and “tire irons” and “wheel pullers” are sold by the same party (or by the same source) under the same trademark.

Applicant’s Arguments Included

  • Applicant argued that the goods are not related because they are different goods.
  • However, the Board wisely pointed out that whether the goods are “different” is not the test. It is confusion as to the source of the goods.
  • Applicant also argued that the channels of trade for the parties’ respective goods are different and how consumers encounter the marks are sufficiently different, which obviates a likelihood of consumer confusion as to the “what”? Yes!  The source!
  • The Board again correctly pointed out that when a cited registration describes goods or services broadly, and there is no limitation as to their nature, type, channels of trade, or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all normal channels of trade, and that they are available to all classes of purchasers.
  • Doctrine of Foreign Equivalents - Trademarks
    How to “Thread the Needle”

    Tip: When possible, you may amend the goods/services in a filed application or file the application with goods/services with certain limitations or clarifications, including with respect to the nature of the goods/services, the channels of trade for the goods/services and/or buyers for the goods/services in an effort to “draft around” goods and services listed in third party filings to obviate citations at the Office.

Board’s Comments Included

  • Applicant’s vehicle wheels and Registrant’s tire irons and wheel pullers are sold in the same channels of trade and offered to the same consumers as shown by the Examiner’s evidence.
  • The channel of trade includes all ordinary customers in the general population for automotive products.
  • The record establishes that pneumatically powered tire changer machines for land vehicles, vehicle wheels, tire irons and wheel pullers are related and offered in the same channels of trade, whether to the general public or to the more narrowly defined mechanics and auto shops.
  • The Board found that the goods are related, travel in the same channels of trade and offered to the same customers.

Doctrine of Foreign Equivalents - TrademarksIII. Trademark Doctrine of Foreign Equivalents – Similarity or Dissimilarity of the Marks Analysis

  • The Board considered Applicant’s GUEPARDO marks and Registrant’s mark CHEETAH and compared them in terms of appearance, sound, connotation and commercial impression.
  • The Board correctly pointed out that when comparing the marks of the parties, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression such that consumer confusion as to the source of the parties’ respective goods offered under their respective marks is likely.
  • “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”
  • It is important to note that confusion between marks is based on the recollection of the average customer, a consumer who retains a general rather than specific impression of the marks.
  • Applicant’s marks are clearly different in appearance and sound from the Registrant’s mark.
  • The Board noted that the Examining Attorney relies on the doctrine of foreign equivalents in making the determination that the marks are similar in connotation and that the similarity in connotation is sufficient to find the marks confusingly similar.
  • Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine similarity of connotation with English word marks.
  • The doctrine is applied when it is likely that “the ordinary American purchaser would stop and translate [the word] into its English equivalent.”
  • Although the Applicant argued otherwise, the Board correctly stated that the percentage of the American population that makes up the subgroup that speaks both languages is not the test (and in any event, the Board pointed out that 12% of 328,830,848 people is not insubstantial). Rather, the measure is whether the language in question is a common modern language.
  • The Board further noted that GUEPARDO translates directly to CHEETAH. There is no other nuance or meaning for either term; they are exact equivalents.
  • And thus that factor outweighs the differences in appearance and pronunciation.
  • The Board also observed that it had not been shown that the term or mark CHEETAH is conceptually or commercially weak for the relevant goods, which might support the position that the marks CHEETAH and GUEPARDO may peacefully coexist in the marketplace, when used for different (but related goods), because the marks are weak or diluted in the marketplace.
  • Given the exact meaning between the parties’ marks (without any additional evidence in the record to show otherwise), the Board found that the marks are similar.

IV. TTAB’s Decision

Applying the doctrine of foreign equivalents, the Board held that:

  • Bilingual (English and Spanish) consumers familiar with Registrant’s pneumatically powered tire changer machines for land vehicles and associated hand tools sold under the mark CHEETAH would be confused into believing that the Spanish equivalent GUEPARDO mark for “vehicle wheels,” are goods that originate with or are somehow associated with or sponsored by the Registrant.

Decision: The refusals to register Applicant’s GUEPARDO marks are affirmed. 

Tip: Effect of a TTAB decision: TTAB decisions are aimed at registration rights only; not actual use of the mark in trade! See my post here regarding the effect of a TTAB decision vs. a court decision and why a court decision is necessary to stop a third party from using a confusingly similar trademark.

Music: Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.”  

Disclaimer: This podcast is not legal advice.  The information contained in this podcast is provided as general information and for educational and entertainment purposes only, and topics may or may not be updated subsequent to their initial posting.  Full Disclaimer details appear at TrademarkTitan.com.  

Podcast 8: Copyright Creation and Ownership – What You Need to Know

Copyright Creation and Ownership –

What You Need to Know

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Introduction – Copyright Creation and Ownership

Securing U.S. copyright registration for works that are integral to your business is a good business and intellectual property strategy – especially for works that give you or your business a competitive advantage. 

  • Those works may include product manuals, teaching guides, jewelry, poetry, novels, artwork, photographs, movies, music, puppets and software.

Eligibility for Copyright Protection

To be eligible for copyright protection, however, a work must (1) be fixed in a tangible medium, (2) be original to the creator and (3) comprise protectable expression (i.e., something more than simply stating an idea or fact).

  • Copyright law, therefore, protects your expression of a certain idea, concept and principle, but does not protect the underlying idea, concept or principle. In other words, your expression of your views or thoughts about an idea, concept or principle is what may be protected by copyrights.

The Bundle of Exclusive Rights Include the Right to:

  • Distribute;
  • Display;
  • Copy;
  • Perform; and
  • Create derivative works (new works based upon an original work)

How are Copyrights Created?

Copyrights are created the moment a work is fixed in a tangible medium; a registration is not necessary. 

Alert: If the work was commissioned from a third-party vendor (i.e., individual artist or brand agency), the party claiming copyright ownership must ensure that title to the copyright was transferred from the creator of the work because under copyright law, the general rule is that the author (or creator) of the work is the owner of the copyright, unless the work is assigned or the work was commissioned as a “work made for hire.”

  • If an employee created the work within the scope of employment, the employer is considered the “author” of the work and thus owns the copyright in the work.
  • A “work made for hire” must meet certain written and statutory requirements; many works do not fall within the legal category of a “work made for hire.” Thus an assignment would be necessary for the transfer of title to the commissioning party.

Tip: Check your agreements with vendors to see if the works were assigned or were commissioned under agreement as a legally recognized “work made for hire.” 

Copyright Creation and OwnershipAdvantages of Copyright Registration

Although copyrights are created immediately upon the creation of a work fixed in a tangible medium, copyright registration still provides extremely valuable rights, some of which are:

  • May entitle copyright owners to attorneys’ fees and statutory awards for third party infringements
  • Provides leverage in settlement discussions for infringement
  • Can add value to the company’s assets at the time of a business sale
  • Provides immediate access to the courts

Company Assets, Business Transaction & Copyright Creation and Ownership

Securing copyright (as well as trademark and patent) registration is a prudent business strategy for building stronger IP rights and a more valuable business.  In some instances, failure to secure registration protection for key intellectual property assets can present serious concerns during a sale of a company or company’s business assets, and may affect purchase price, since buyers expect sellers to adequately protect their intellectual property and are not eager to buy uncertainty. 

Copyright ownership issues may include:

  • Whether company has “good title” to all copyrightable materials / works
  • The need for a “Catch All” provision in a business transaction agreement for “all copyright protected works”
  • Co-authors — beware of co-authorship issues!
  • Software – beware of open source issues with software products

Conclusion

Due to the ease at which one can secure copyright registration (simply go to www.copyright.gov and fill out the online form – if you have good title to the work), the low cost of securing registration and the Supreme Court’s recent decision that copyright registration must be made prior to gaining access to the courts, seeking copyright registration protection is an obvious business and intellectual property strategy for protecting valuable copyright-eligible works.

Music: Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.”  

  • The music contained in this podcast is only a portion of the original; to hear the full version click here