BarbriSFCourseDetails
  • videocam On-Demand
  • card_travel Trademark and Copyright
  • schedule 90 minutes

Trademark Doctrine of Foreign Equivalents: Prosecution, Clearances, Infringing Marks in Different Languages

$347.00

This course is $0 with these passes:

BarbriPdBannerMessage

Description

Under U.S. trademark law, the doctrine of foreign equivalents requires both the USPTO and the courts to translate foreign words into English to determine if the marks can be registered or if they would cause a likelihood of confusion with an existing mark. Recent Trademark Trial and Appeal Board (TTAB) decisions reaffirmed to trademark counsel that the doctrine of foreign equivalents must be considered when conducting trademark clearances and rendering trademark clearance opinions to clients.

In the recent decision In re Hop Daddy L.L.C., the TTAB reexamined the doctrine of foreign equivalents. In ruling the foreign doctrine equivalents inapplicable, the TTAB stated, "Although we have routinely applied the doctrine of foreign equivalents to Spanish language marks, … the absence of any actual dictionary translation from a recognized source for this common language raises some doubt as to whether "salty" is a direct and literal translation of SALAO. Moreover, according to the Cambridge and Collins dictionaries, the direct translation of "salty" from English to Spanish and vice-versa is "salado." The TTAB determined that the differences in overall appearance, sound, connotation, and commercial impression supported finding no likelihood of confusion between the marks.

Listen as our authoritative panel of IP attorneys examines the doctrine of foreign equivalents in the context of trademark prosecution and clearances, as well as trademark infringement in different languages. The panel will review recent cases and discuss their lessons.

Presented By

B. Brett Heavner
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Mr. Heavner's practice covers all aspects of trademark and unfair competition law, with a particular focus on trademark infringement, counterfeiting, and false advertising litigation. He assists clients in developing strategies for establishing and enforcing their trademark rights. Mr. Heavner counsels on issues regarding trademark clearance searching, trademark and copyright licensing, and certification mark programs.

Yinfei Wu
Attorney
Finnegan Henderson Farabow Garrett & Dunner LLP

Ms. Wu has significant experience in both United States and China trademark and copyright law. She advises clients and works closely with counsel around the world on trademark usage, clearance, prosecution, domestic and worldwide portfolio management, litigation, and enforcement matters. She also handles cancellation and opposition proceedings before the Trademark Trial and Appeal Board. She focuses on enforcing client rights against counterfeiters and manages anti-counterfeiting actions in China, crafting efficient solutions for each client. She also conducts searches on the Chinese trademark databases and manages Chinese trademark prosecution and enforcement matters for many publicly traded companies.

Yan Zhang
Partner
Beijing East IP

Ms. Zhang’s key practices focus on trademark prosecution, enforcement and litigation, copyright, anti-unfair competition, customs recordation and domain name disputes. Ms. Zhang has handled thousands of trademark prosecution matters before the Chinese Trademark Office (CTMO) and the Trademark Review and Adjudication Board (TRAB), hundreds of trademark court appeals and infringement lawsuits before Beijing Courts and other various Courts, and administrative complaints before Administration for Industry and Commerce (AIC) for Fortune 500 companies and leading multinationals. Ms. Zhang has also handled various other IP related matters such as domain name disputes before CIETAC and ADNDRC, unfair competition lawsuits and copyright infringement lawsuits. With many years of practices in this field of law, Ms. Zhang has successfully obtained well-known mark recognitions for Yahoo!, Ritz-Carlton, Adobe (Photoshop), McDonald’s (McDelivery; McFlurry), Cisco, among others, before the CTMO, the TRAB, the Beijing First Intermediate Court, the Beijing IP Court and the Beijing High Court.

Credit Information
  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.


  • Live Online


    On Demand

Date + Time

  • event

    Tuesday, September 14, 2021

  • schedule

    1:00 p.m. ET./10:00 a.m. PT

  1. Prosecution
    1. Likelihood of confusion considerations
    2. Confusingly similar marks
  2. Clearances
    1. Conducting trademark clearances
    2. Rendering trademark clearance opinions
  3. Infringing marks in different languages
  4. Recent decisions and their lessons

The panel will review these and other key issues:

  • What are the considerations related to foreign equivalents for trademark counsel when prosecuting a trademark application?
  • What lessons can be learned from recent decisions regarding the application of the doctrine of foreign equivalents?
  • What best practices should counsel employ when conducting trademark clearances in light of the doctrine of foreign equivalents?