trademark law

Trademark Series: The Doctrine of Foreign Equivalents

From time to time, we run into proposed trademarks that are in another language. This generally starts a conversation about the doctrine of foreign equivalents. The doctrine of foreign equivalents requires that foreign words be translated into English to determine if there is a likelihood of consumer confusion with a mark already registered or to determine if the applied-for mark is descriptive or generic. When applicants apply for a mark in a different language, they are expected to provide the translation of the mark or else the examining attorney will seek the relevance of the applied-for mark.

There is often question about when the doctrine is applied.  It’s applied when the “ordinary American purchaser” would “stop and translate” the foreign wording in a mark. That isn’t terribly helpful on its own.  It has been clarified that the “ordinary American purchaser” isn’t the average American, but rather is […]

By |April 18th, 2014|Blog|0 Comments

The Geographically Descriptive Trademark

I was recently in Boston and had some great beer. Something I saw on that trip and then a discussion I had with David Minsky of the Broward/Palm Beach New Times inspired this article. David and I spoke about the recent trend of cease-and-desist letters in the brewing industry and whether it may soon affect South Florida’s breweries that are seeking to trademark names like Miami Pale Ale and Miami Brewing Company. As I drove through a few towns north of Boston, I passed Boston Beer Works and thought people might assume that Boston Beer Company, the company behind Sam Adams and Angry Orchard, was also behind Boston Beer Works. Boston Beer didn’t want people thinking that was the case. It sued Boston Beer Works twenty years ago for trademark infringement. I’ll get to that. First, some background on the relevant law.

Trademarks may fall within four categories with respect […]

By |January 3rd, 2014|Blog|0 Comments