One of the most common things that trips up trademark applicants and inexperienced attorneys alike is the rule that says that all foreign words contained in a trademark must be translated into English language so that they can be compared with any existing trademarks in the trademark registry. This rule is called the “Doctrine of Foreign Equivalents.” Once translated, the words are then evaluated in light of the trademark record, to see if they are “confusingly similar” to any existing trademarks, and are therefore unregisterable.
If you go with one of those cheapie filing services, it’s very likely that any foreign equivalents to your proposed trademark will not be discovered, because the “budget” filing services only do what is called an “exact match” search. This means that they will do a search on your exact mark by typing it into the search box in the Trademark Electronic Search System (also known as TESS) and if your exact mark does not bring up any results, they will file your trademark application.
This sloppy searching usually results in a rejection being handed down to the trademark applicant about 4 months later, along with the loss of the filing fee, since the “confusingly similar” objection cannot be overcome; the trademark application had zero chance of issuance, because it never should have been filed in the first place. And the poor applicant has spent the last 4 months investing and promoting in a brand that now must be abandoned due to the conflict with the existing registered trademark.
For example, let’s suppose that there is a registered mark for TACO CASA for “restaurant services” in International Class 043. A new restaurant is proposed, named “Taco House,” and the owner works out the branding and applies to register the trademark. He is short on funds, so he uses a cheap filing service. “After all,” he thinks, “how hard can filing this paperwork be?” The filing service performs an “exact match” search, and, finding nothing, files the trademark application.
Four months later, an Office Action is received, denying the mark on the basis of a previous registration for TACO CASA, which was registered 13 years prior to the date that the current application was filed. TACO CASA, while not well-known, does business in Kansas City, Missouri, and pulls in business from across the border in Kansas as well, hence they are eligible for a trademark based on their interstate use of the mark in commerce.
The Applicant, now worried because he has a lot invested in his brand, goes to see a trademark attorney, Office Action in hand. She gives him the bad news: The Doctrine of Foreign Equivalents means that his mark is considered EXACTLY the same as the current registration, so there is no way to argue against the Examiner’s rejection. He’ll have to abandon his use, because the owners of the TACO CASA brand have nationwide rights due their prior registration.
Frustrated but not defeated, he vows to “do it right” next time, and hire one of those expensive attorneys; for now, though, he has to come up with about $10,000 for a rebrand of his business: New signage, new business cards, new uniforms, new graphic design, new printed napkins, and new social media accounts. He wishes he had known better, but live and learn.
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