Applying the doctrine of foreign equivalents before the Trademark Trial and Appeal Board (the “Board”) just got more complicated. In a recent precedential decision, the Board held that the doctrine of foreign equivalents did not apply as between the names “Richard” and “Ricardo” because consumers are “unlikely to ‘stop and translate’ personal name marks.”
Applicant Inventive Software LLC applied to register the mark RICHARD MAGAZINE (“magazine” disclaimed) for an e-commerce website in the fields of fashion and beauty and a lifestyle website featuring photographic, audio, and prose presentations. Opposer Ricardo Media, Inc opposed Applicant’s application, claiming RICHARD MAGAZINE was likely to cause confusion with its registration for RICARDO covering, in relevant part, “magazines and books in the culinary field.”
The Board’s likelihood of confusion analysis focused on the “two key considerations”—similarity between the marks and similarity between the goods. Because the decision centered on a comparison between an English name (Richard) and its Spanish translation (Ricardo), the Board took a deep dive into the doctrine of foreign equivalents.
At its core, the doctrine of foreign equivalents requires foreign words from common languages to be translated into English when determining their similarity of connotation with English words. The doctrine is applied when the “ordinary American purchaser would stop and translate the term into its English equivalent.”
The Board began its analysis by noting that Spanish is the most commonly spoken language in the United States after English (over 12% of the population speaks Spanish, according to the Board), and, as such, the doctrine of foreign equivalents has been “routinely applied” to Spanish language marks. But the Board refused to apply it here as between the common English name “Richard” and its Spanish translation “Ricardo.” Why? Because this is not the first time the Board has compared English and Spanish name marks.
In In re Tia Maria, Inc., the Board evaluated the similarity between TIA MARIA for restaurant services and AUNT MARY’S (the English equivalent of “TIA MARIA”) for canned fruits and vegetables. 188 USPQ 524. 525-26 (TTAB 1975). The Board refused to apply the doctrine of equivalents in that case because it was unlikely to expect a person encountering AUNT MARY’S canned fruits and vegetables in a supermarket to translate AUNT MARY’S to TIA MARIA, let alone make the additional leap linking that translation to TIA MARIA restaurant services. Id. In so doing, the Board established the principle that there are “foreign expressions that even those familiar with the language will not translate, accepting the term as it is.” Id.
That principle, the Board held here, “applies with equal if not greater force to personal names” because they will “be perceived as identifying particular individuals, whether known or unknown, real or fictional.” Further, the Board noted that inconsistent use of personal name trademarks, including use in English in some contexts and Spanish in others, could risk consumer confusion by pointing to a different source in those differing contexts, making it even less likely that a consumer would translate such marks. Thus, the Board found that consumers generally would be unlikely to translate personal name marks, like “Richard” or “Ricardo” here, “because doing so would point to not only a different person or people (whether real or fictional), but also to a different source, and to the mark losing any ‘instant recognizability.’”
Having refused to translate RICARDO for purposes of the similarity analysis, the Board found the marks at issue dissimilar because they identify different people, with RICARDO identifying Opposer (or someone named “Ricardo” to those unfamiliar with Opposer) and RICHARD MAGAZINE identifying Applicant (or someone named “Richard” to those unfamiliar with Applicant). Although less important, the addition of the disclaimed term MAGAZINE in Applicant’s mark further distinguished the two marks. This factor weighted “heavily” against a likelihood of confusion.
The Board then turned to the similarity between the goods. Notably, the Board found that Opposer’s books and television programs had an “inherent relationship” to Applicant’s websites featuring photographic, prose, audio, and video content because books often feature photographic and prose content and television typically features audio and video content. And even though the actual content differed—Opposer was limited to the culinary field and Applicant was limited to the fashion, beauty, and lifestyle fields—evidence showing that numerous publications discussed both culinary and lifestyle/fashion/beauty topics convinced the Board that the parties’ services were related (but not “closely related”), weighing slightly in favor of finding a likelihood of confusion.
But the finding of lack of similarity between the marks won the day. Because the marks were “different in their entireties,” the Board found no likelihood of confusion and dismissed the opposition.
The case is Ricardo Media Inc. v. Inventive Software, LLC, Opposition No. 91235063 (TTAB 2019).