TMEP 1207.01(b)(vi): Doctrine of Foreign Equivalents

October 2017 Edition of the TMEP

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1207.01(b)(vi)    Doctrine of Foreign Equivalents

Under the doctrine of foreign equivalents, 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. See, e.g., In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (holding MARCHE NOIR for jewelry, and BLACK MARKET MINERALS for retail jewelry and mineral store services, likely to cause confusion); In re Am. Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987) (holding BUENOS DIAS for soap, and GOOD MORNING and design for latherless shaving cream, likely to cause confusion); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983) (holding EL SOL for clothing and footwear, and SUN and design for footwear, likely to cause confusion).

Whether an examining attorney should apply the doctrine of foreign equivalents turns upon the significance of the foreign mark to the relevant purchasers, which is based on an analysis of the evidence of record, including, for example, dictionary, Internet, and LexisNexis® evidence. If the evidence shows that the relevant English translation is literal and direct, and no contradictory evidence of shades of meaning or other relevant meanings exists, the doctrine generally should be applied by the examining attorney. See, e.g., In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (holding LUPO for men’s and boys’ underwear, and WOLF and design for various clothing items, likely to cause confusion, because, inter alia, "LUPO" is clearly the foreign equivalent of the English word "wolf").

If an examining attorney determines that the doctrine is applicable, the examining attorney must also consider all other relevant du Pont factors in assessing whether there is a likelihood of confusion. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); In re L’Oreal S.A., 222 USPQ 925, 926 (TTAB 1984) (noting that "similarity [of the marks] in connotation must be viewed as but a single factor in the overall evaluation of likelihood of confusion").