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The Doctrine Of Foreign Equivalents Is Alive And Well

The Trademark Trial and Appeal Board (the “Board”) issued a decision two days ago that reaffirmed to trademark practitioners that the doctrine of foreign equivalents must be seriously considered when conducting trademark clearances and rendering trademark clearance opinions to clients. See In re S Squared Ventures, LLC, Serial No. 86813357 (August 16, 2017) [not precedential]. In this recent case, S Squared Ventures, LLC (“Applicant”) filed to register the mark UHAI in standard characters for hair products in international class 3. Among the products identified in the application were shampoo, conditioner, oil, foam, gel, etc. The Examining Attorney refused the application citing a likelihood of confusion with the registered mark for LIFE FOR HAIR (stylized) for hair care products.

Applicant appealed the refusal and requested reconsideration. The request for reconsideration was denied and the appeal proceeded. Marks are compared for sight, sound, meaning and commercial impression. It is well settled law that any one of these factors could be enough to find a likelihood of confusion. The interesting aspect of this case is that on their face, the two marks do not appear to be similar in appearance and sound. If you were not familiar with the doctrine of foreign equivalents, you could have been surprised by the refusal.

Applicant’s mark UHAI is a term in Swahili that directly translates into English and it means “Life”. Applicant did not deny that the term had a direct translation. Under the principle of foreign equivalents a trademark that has a meaning in a foreign language and a equivalent meaning or direct translation in English can be found to be confusingly similar. See our web page entitled, The Trademark Doctrine Of Foreign Equivalents for the fundamental elements that comprise this doctrine.

The test to determine if this doctrine should apply is will American buyers familiar with the foreign language know that the word will denote the English equivalent. Another way to articulate this test is will the ordinary American consumer familiar with the language stop and translate the mark to its English meaning. The doctrine will be applied for purposes of determining if a mark is generic, descriptive, or likely to cause confusion in the marketplace. The doctrine will also be applied when the translation is a literal and exact translation of the foreign term or phrase. An example of this application can be seen in In re Ithaca Indus. Inc., 230 USPQ 702 (TTAB 1986), where the Board held that LUPO for men’s and boys’ underwear was likely to be confused with the registered mark for WOLF & design for sportswear. The rationale for this finding was that LUPO is the direct translation of the English word “wolf”.

Applicant argued that the doctrine of foreign equivalents should not apply because the language of Swahili is not a common modern language in the United States. The Trademark Manual of Examining Procedure (“TMEP”) provides guidance on this issue. It states that the doctrine applies to words of modern languages “which encompasses all but dead, obscure, or unusual languages”. If possible, the TMEP provides that the Examining Attorney should present evidence of the percentage or number of U.S. consumers speaking the language in question. The Examiner provided evidence that Swahili is the primary or secondary language of approximately 80-100 million individuals. Further, he demonstrated that Swahili is spoken in numerous African countries. In addition, the Examining Attorney showed that Swahili speaking people are found in other parts of the world, including the U.S. Lastly, evidence was presented that top ranked universities across the U.S. provided programs teaching the language of Swahili.

The Board determined that the Swahili language is not dead, obscure or unusual. It is in use in the U.S. in universities, cultural organizations, and in broadcast media. Thus, it was decided that the doctrine should apply. When comparing the marks for appearance, sound, connotation and commercial impression, the similarities weigh in favor of confusion. The goods are partly identical and are related. The goods are marketed to the same consumers in similar trade channels as well. The Board concluded that confusion is likely between Applicant’s mark UHAI and Registrant’s mark LIFE FOR HAIR. If you have questions pertaining to the doctrine of foreign equivalents or other trademark matters, please feel free to contact our firm for a courtesy consultation.