Trademark Doctrine of Foreign Equivalents –
Infringing Trademarks in Different Languages
Podcast Episode Begins as :45s
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
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...
