A viewer asked me today, “If there is a trademark listed with the translation of the English name I want, but the service is different, i.e. beer and I want a service based mark. Would this be an issue?”
Well, let’s talk about that now. We translate all trademarks into English before we start doing the “confusingly similar” analysis. We translate the the mark into English because under the doctrine of foreign equivalents, the equivalent term in a different language would still violate an English-language trademark. Let’s say that the senior trademark was OSO NEGRO, and BLACK BEAR was the mark that you wanted to register. We would translate OSO NEGRO into BLACK BEAR, and then we would do the “confusingly similar” analysis.
Once we translate it into English, then we ask, are these marks similar? And if so, are they for goods that are related? If the goods are related and the marks are similar, then it may be found that the junior mark, the one that’s being applied for, is not allowable to register because it would create confusion in the mind of the consumer. So we translate first into English and then we look at the similarity of the goods.
So if the goods for the senior mark are beer, and a proposed trademark for services, then we have to look at the services. Are those services somehow related to beer? Let’s say, for example, that we had a senior trademark for beer and the services that the junior trademark applicant wanted to register were restaurant services. Now, those would be very likely considered “confusingly similar” because a lot of restaurants have their own branded beer that they sell. So if a trademark registrant already has the mark for beer and I want to use the mark for my restaurant services, then people might be confused and think that the beer came from the same company that runs my restaurant.
That is an example of consumer confusion, the type of consumer confusion that we are trying to avoid with this confusingly similar analysis. So in that case, if they were for restaurant services, the junior trademark application would likely be rejected for being confusingly similar to the beer trademark.
But what if the services were completely unrelated to any hospitality goods and services at all? Suppose the junior trademark was for cosmetics. We don’t often find beer companies making cosmetics. It’s not something that we as consumers are used to seeing. So when confronted with a trademark for beer and a trademark for cosmetics, we don’t see them in the same aisle at the grocery store, and we don’t typically see cosmetics in the same stores that sell beer. Total Wine doesn’t sell cosmetics. When you go into the Ulta store, they’re not selling beer. So these two things, these two sets of goods don’t tend to exist in the same stream of commerce unless you’re talking about a big store like Walmart or something like that. And even then, they’re not on the same shelf or even on the same aisle.
If the goods are dissimilar like beer and cosmetics, there probably wouldn’t be a likelihood that consumers would be confused by that. So the junior trademark would be allowed to issue.
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