Trademark Applications-Registering Your Mark and the Doctrine of Foreign Equivalence

Many people know that the doctrine of foreign equivalence may prevent you from registering your mark, if the translation of the Foreign Term into English results in a direct literal equivalent English meaning for your mark.  Often times an application is filed without conducting a search for foreign equivalence and the Trademark Examiner will reject your application under a section 2 (d) objection.  In other words, your mark is likely to cause confusion with the owner of another similar mark.

Often times, the foreign mark that is registered with the United States Patent and Trademark Office (“USPTO”) actually does have the same meaning and the doctrine of foreign equivalence is appropriately applied to reject your trademark application.  However, this is not always the case.  Sometimes, although there may be a similar English translation of a Foreign Mark, it is one of a multiple potential equivalent English meanings for the mark.

For example, KURUOMA is a Japanese word that can mean Dark Horse, Black Horse, Evil Horse or Evil Spirit, as well as, four potentially other meanings. In these types of cases, you may still be able to register the mark DARK HORSE or BLACK HORSE, even if KURUOMA is registered as a trademark with the USPTO.  Thus, you may be able to overcome a potential objection to the registration of your mark despite an objection based on the doctrine of foreign equivalence.

In cases involving Chinese, Japanese, Indian and many other languages it is important to thoroughly consider potential English meanings for the foreign characters.  Otherwise, you may give up valuable trademark rights and goodwill that you have developed. Consequently, it is important to discuss the matter with a trademark attorney to make sure you protect your marks properly.

See:   Doctrine of Foreign Equivalence

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