June 9, 2009

When (Not) to Use the Doctrine of Foreign Equivalents and the Registration Symbol

By Elizabeth K. Brock, Principal

In Brown Shoe Co., Inc. v. Robbins, Opposition No. 91176273, (TTAB May 13, 2009), Opposer Brown Shoe, owner of two PALOMA registrations for clothing and shoes, successfully blocked Applicant Robbins’ registration of PALOMITA for clothing on likelihood of confusion grounds. The Trademark Trial and Appeal Board (“Board”) then dismissed Opposer’s claim that Applicant fraudulently used the registration symbol.

In its likelihood of confusion analysis, the Board first decided that the marks have a similar appearance and sound. The Board then considered the marks’ connotation and commercial impression, and whether it should apply the doctrine of foreign equivalents.

Under the doctrine, a foreign word (from a language familiar to an appreciable segment of American consumers) and the English equivalent may be held to be confusingly similar. TMEP 1207.01(b)(vi).

Opposer argued that the marks have similar meanings under the doctrine: PALOMA is Spanish for “dove” while “PALOMITA” is Spanish for “little dove.” Applicant argued that the Board should not apply the doctrine, but argued in the alternative that PALOMITA may also mean “checkmark” or “popcorn” in Spanish.

As both marks are words in the same foreign language (Spanish), the doctrine of foreign equivalents does not apply. The Board explained that the doctrine is “normally applied where one mark is in a foreign language, and the other mark is in English … [but not] in cases where both marks are non-English words from two different languages.” (p. 8). In sum:

Language of Mark 1

Language of Mark 2

Apply Doctrine of Foreign Equivalents?

English

Spanish

Yes

Japanese

Spanish

No

Spanish

Spanish

No

 

The Board held that overall, the substantial similarities in the marks’ appearance, sound, connotation and commercial impression, combined with use on nearly the same list of goods, supported a finding of likely confusion.

Reprinted with permission from INTA Bulletin, Vol. 64, No. 12 – July 1, 2009, Copyright © 2009 the International Trademark Association.