New trademark applications are compared against prior registrations and prior-pending trademark applications, of course, to determine whether there is a likelihood of confusion that would result in refusal pursuant to §2(d) of the Lanham Act.  Among other factors, that analysis usually involves consideration of the marks’ similarities in sight, sound, and meaning. However, as a general rule under the so-called “doctrine of foreign equivalents,” the U.S. Patent and Trademark Office (“USPTO”) deems a foreign-language equivalent to an English-language mark to be identical for purposes of comparison, regardless of differences in appearance and pronunciation.  As such, and as a representative example, an application for the Spanish-language mark “TORO ROJO” likely will be evaluated by a USPTO Examining Attorney as essentially identical to and, thus, in conflict with a prior registration for “RED BULL” (other factors, such as the similarity of the goods and/or services offered under each mark, could affect the analysis).

In some recent decisions, the USPTO’s Trademark Trial and Appeal Board (“TTAB”) has determined that the doctrine of foreign equivalents can be applied in comparisons where neither mark consists of an English-language term.  Specifically, equivalents of two foreign-language marks – in one case, the Spanish truncation “L’MAR” and the French term “LE MER,” both meaning “the sea” – have been found to be confusingly similar. See In re Giraldo, 2023 TTAB LEXIS 394 (TTAB 2023). In so doing, the TTAB confirmed “that the doctrine of foreign equivalents is not barred from application where… the respective marks consist of terms from different foreign languages.” This re-affirmation of the expansion of the doctrine injects a much wider range of foreign translations into the USPTO examination process.  Moreover, because TTAB case law is highly persuasive in the U.S. Courts, this broader view of the doctrine very likely will extend to trademark infringement litigation, which is adjudicated outside of the USPTO.