I often talk to business owners who either filed a trademark application on their own or put together a client contract themselves, and ultimately ran into some trouble with the trademark office or their clients. In the bargain, they’ve lost some valuable resources like time, money and sometimes assets.
Last week, I got a call from a client telling me that their trademark application was rejected by the United States Patent and Trademark Office (USPTO). He had applied for the trademark himself about a year ago and he recently received the rejection because of a likelihood of confusion with another registered trademark.
Upon review, the client noticed that his mark and the registered mark were different – the client’s trademark application was for “El Gallo” for restaurant services, while the registered mark was “The Rooster” for restaurant services. But the USPTO was refusing registration because even though they look and sound different, the meaning of both marks are the same in different languages. If the applied-for term is in a foreign language, the USPTO requires the applicant to provide a translation of the applied-for term.
When applying for a term as a trademark in a foreign language, a search for the term in that foreign language is not sufficient to determine if it conflicts with another mark in sound and appearance. An additional step of identifying the English meaning of the term as would be perceived by U.S. consumers should also be considered. The meaning of the proposed trademark is considered under the so-called doctrine of foreign equivalents, wherein foreign words are translated into their English equivalents and evaluated by the USPTO.
In refusing registration to a spanish term, “El Gallo”, the USPTO compared it to “The Rooster”, its English equivalent. Given that they are both in the restaurant business, the USPTO determined that customers were likely to get confused between the two marks and the source of the marks.
In order to avoid a refusal to register from the USPTO, trademark applicants should seek help from attorneys who are experts in the area of trademark law.