Lost in Translation: A Critical Examination of Conflicting Decisions Applying the Doctrine of Foreign Equivalent, 96 Trademark Rep. 1211

Elizabeth’s article presents a critical analysis of cases applying the doctrine of foreign equivalents.  The doctrine provides a guideline under which trademarks and service marks are analyzed under U.S. trademark law when they contain a foreign word or words.  However, courts, trademark examiners, and the Trademark Trial and Appeals Board (TTAB) have reached irreconcilable holdings when deciding cases by applying the doctrine.  As a result, the current state of the doctrine of foreign equivalents provides little guidance to owners of trademarks and service marks when choosing their marks, to trademark practitioners when advising clients, or to the TTAB and the courts when assessing a mark’s protectability and registrability or analyzing the likelihood of confusion.  Her article urges that certain enumerated tenets be adopted by either the U.S. legislature or the United States Supreme Court so that arbitrary and irreconcilable decisions are no longer reached, and so that registration applicants, trademark examiners, and the courts have a dependable standard upon which to rely.