The use of a foreign word to avoid a likelihood of confusion with the English equivalent will generally not work. The doctrine of foreign equivalents is not an absolute rule, but a guide and applies when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. The doctrine of foreign equivalents is used to determine similarity of meaning and connotation, and the Trademark Trial and Appeal Board recently addressed the doctrine in In re California Faucets, Inc.
California Faucets sought to register the mark GAVIOTA in connection with luxury bathroom faucets, shower heads, tub spouts, and other plumbing fixtures and fittings. The United States Patent and Trademark Office refused registration of California Faucets GAVIOTA mark on the ground that it was likely to cause confusion with the prior registered mark SEAGULL for “water purification units and parts therefor.”
Turning to the relatedness of goods factor first. The Trademark Trial and Appeal Board found that “water purification units and parts therefor” are related to various bathroom fixtures. The evidence showed that the Registrant’s water purification units were installed for drinking water purposes. But because this limitation was not present in the description of goods for the SEAGULL mark, the TTAB found that the water purification units could be installed in any part of a home including the bathroom.
The Trademark Trial and Appeal Board needs to stop being willfully blind to the realities of the marketplace. No consumer installs water purification units in their bathrooms, nor are these units sold in the same areas of a big box retailer like Home Depot or Lowe’s. But it again highlights the importance of including the relatedness of goods factor in your trademark search process.
With respect to the marks, GAVIOTA means “seagull” in Spanish. It has no definition English. Because the record showed an appreciable number of Americans speak Spanish, the TTAB found it was appropriate to apply the doctrine of foreign equivalents. And while the doctrine of foreign equivalents applies only to the meaning of the mark, the TTAB found it was so strong that it outweighed the dissimilarity of the marks in terms of sight and sound.
As a trademark searcher you should pay attention to foreign words. However, because the foreign equivalent doctrine applies only to prevalent languages spoken in the United States, do not get bogged down searching every possible foreign language. One good resource to use is Google Translate. If you find a foreign word or words for the mark you are trying to register, you can easily incorporate them into your trademark search process by using BOB’s multi-name search functionality.