In a recent decision reached by the US Patent and Trademark Office’s (USPTO’S) Trademark Trial and Appeal Board, it was established that the application of the “doctrine of foreign equivalents” to trademarks is not an absolute rule. This could set a significant precedent for corporations nationwide dealing with patent and trademark issues. Specific cases involving trademarks that combine English and foreign words were identified as potentially not be eligible for this doctrine.
The decision came forth during the hearing for In re DBMG, LLC, Application No. 90185762, whereby DBMG pursued the registration of the brand name “Sunset Sushi” to categorise “Bar services; Japanese restaurant services; Restaurant services featuring omakase; Sushi Serial No. 90185762. More information about this case and decision can be found here.
For the unfamiliar, the “doctrine of foreign equivalents” is a trademark law protocol typically applied in the evaluation of marks composed of foreign words. Within this framework, a foreign word (from a language familiar to an ‘average American purchaser’) and its English equivalent can be deemed as likely to cause confusion, and thus, could be refused registration.
This precedent, however, indicates that marks incorporating a combination of English and non-English words may not fall under the same judgement within the doctrine. Legal professionals specializing in corporate law, intellectual property, and brand protection should be aware of this distinction, as it could potentially have substantial implications on future cases.