Serge Krimnus, "The Doctrine of Foreign Equivalents at Death's Door"
Serge Krimnus, Adjunct Assistant Professor of Law at Brooklyn Law School, tries to make some sense of the doctrine of foreign equivalents in his recent article, "The Doctrine of Foreign Equivalents at Death's Door," North Carolina Journal of Law & Technology, Vol. 12, Issue 1: Fall 2010. He concludes that it should be abolished.
ABSTRACT: The Federal Circuit, the Patent Office, and several regional circuits apply the trademark law doctrine of foreign equivalents. Under the doctrine, marks in foreign languages are translated into English and tested for the statutory bars to registration, instead of being tested in their original form. The doctrine is applied even in cases where only a negligible percentage of the purchasing public would be able to translate the foreign mark.
I argue that the Federal Circuit should abolish the doctrine of foreign equivalents from trademark law for two reasons. First, the doctrine violates directly applicable Supreme Court precedent, which rejects the doctrine. Second, the doctrine makes little sense as a matter of policy. It contravenes the basic goal of trademark law - to protect a substantial portion of the public - by allowing courts to refuse registration of marks where only a minuscule portion of the public would be confused, deceived, or otherwise affected by a mark. Moreover, the doctrine is unworkable because it lacks reasoning, creates confusion and is inconsistently applied by the courts.
posted by John L. Welch @ 1/07/2011
6 comments
6 Comments:
the Patent Office?
I believe that people make too much of the doctrine of foreign equivalents. It is simply an additional factor to be applied connotation prong of the similarity/dissimilarity element in the analysis, as it falls within the catchall du pont factor. Although I have not read most of the paper, I have concluded that the basic premise that there has to be confusion amongst a substantial portion of the public dooms this paper from the very beginning -- not sure whether it is worth reading further.
I found the article worth reading.
I note that on the second page of the article Mr. Krimnus refers to the USPTO, so the reference to the "Patent Office" in the abstract is hardly significant.
As to the "substantial portion of the public" language isn't that essentially the same as the "substantial portion of the relevant consumers" that the Spirits decision talks about. When the subject matter is vodka, aren't the relevant consumers the general public?
My experience is that examining attorneys LOVE this doctrine and use it whenever the mark is a word in a foreign language and translates to anything either suggestive of the g/s or remotely similar to a previously registered mark. Saves them from having to actually use "judgment."
I share Anonymous's experience. Examiners rely heavily on this doctrine as a short cut when comparing marks. In most cases, they simply assume the threshold question, namely that consumers will "stop and translate" the mark for any modern foreign language. They also assume familiarity for any modern foreign language.
Also the doctrine creates a potential pitfall for the applicant and practitioner. An application for a foreign language must include an English translation of that wording according to the TMEP. Note that this requirement is not limited to a foreign applicant's native language. It means any modern language.
Combining the translation requirement with the doctrine can lead to results difficult to explain to an applicant. For example, I had a Spanish applicant ask for a search of a mark that was considered fanciful in Spain, but happened to be an Indonesian word for a common foodstuff. So I had to explain that there is a possibility that the PTO would refuse registration due to descriptiveness in addition to likelihood of confusion because of the doctrine's application.
Lest you think that is improbable or I'm being paranoid. I had an examiner apply the doctrine to refuse registration to a mark due to likelihood of confusion. The pending mark was the Indonesian word for "friend." There was a prior registration for FRIEND used on allegedly related goods.
As this example shows, we potentially do our clients a disservice if we rely on them solely for a translation. A foreign applicant is unlikely to be aware of potentially applicable translations in other languages. Yet an examiner may still apply doctrine based on a translation from yet another language to justify a refusal to register. This pitfall would not be an issue if there was no doctrine of foreign equivalents.
I agree with Robert. My Italian clients are left scratching their heads when I explain that their mark translates into something in Greek that may block their registration. I’ve also argued in vain with an Examiner that an Icelandic term shouldn’t be controlled by this doctrine (met many Icelandic speakers recently?). The whole process is fraught with inconsistencies and problems. Consider the registration for DINEH for clothes (Reg. No. 1380518, now cancelled), which included a very misleading translation in Navajo. The word is actually used by the Navajo people to refer to themselves. But if that nuance had been known by the examiner, would the mark have been allowed? I think not.
I’ve recently been doing some statistical research on U.S. applications that include foreign language terms. Interesting to note that the number of such marks tracks the growth rate in U.S. international trade since 1998 (see the post at http://www.wellsiplaw.com/?p=416), suggesting that dealing with—-fixing—-the doctrine of foreign equivalents will only become more important over time. Here’s hoping the Federal Circuit is up to the task.
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