In the recent decision In re Hop Daddy LLC (Serial No. 88175921), the TTAB reexamined the contours of the doctrine of foreign equivalents.
The USPTO refused Hop Daddy’s application to register the mark SALTY BULL BREWING & Design (with “BREWING” disclaimed) for “Restaurant and bar services; Taproom services; Taproom services featuring beer brewed on premises,” based on a perceived likelihood of confusion with U.S. Trademark Registration No. 5150833 (the “‘833 Registration”) for the plain work mark TORO SALAO. The ‘833 Registration recites Class 043 services in the nature of “Restaurant services, including sit-down service of food and take-out restaurant services.”
In refusing registration of Hop Daddy’s mark, the examining attorney argued that the services at issue overlapped and that the earlier, registered mark TORO SALAO is Spanish for “salty bull.” Hop Daddy appealed the refusal of registration.
On appeal, the TTAB acknowledged substantial differences between the two marks in terms of appearance and sound, but noted, “[E]quivalency in meaning or connotation can outweigh the differences in marks.” [Decision, at p. 8]. Thus, the TTAB undertook a review of the examining attorney’s application of the doctrine of foreign equivalents.
At the outset, the TTAB noted that the doctrine is “not absolute” and “should be viewed merely as a guideline.” [Id., at pp. 8-9]. Further, the TTAB cautioned that examining attorneys should apply the doctrine “only when: (1) the relevant English translation is direct and literal and there is no contradictory evidence establishing another relevant meaning … and (2) “it is likely that the ordinary American purchaser would ‘stop and translate [the word] into its English equivalent.’” [Id.]. That said, the TTAB stated that the “ordinary American purchaser” includes “all American purchasers, including those proficient in a non-English who would ordinarily be expected to translate words into English.” [Id., at p. 9].
In support of the refusal of registration, the examining attorney submitted a webpage from an online language dictionary showing that the word “toro”, in Spanish, translates to “bull”, in English. Further, she provided a second webpage from the same website purportedly showing that the adjective “salao”, in Spanish, translates to “salty”, in English. [Id., at p. 10]. The examining attorney’s evidence relating to the term “salao”, however, consisted solely of two blog posts providing differing opinions on the possible meaning of “salao”, depending on the context in which the speaker used the word. [Id., at pp. 10-11]. Accordingly, the TTAB ultimately found that “there is no clear single translation and connotation provided for the term SALAO.” [Id., at p. 11].
In ruling the doctrine foreign doctrine equivalents in applicable, 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.”
[Id., at pp. 11-12 (internal citations omitted) (emphasis added)].
Having ruled the doctrine of foreign equivalents inapplicable, the TTAB reversed the examining attorney’s refusal registration, finding that significant differences in overall appearance, sound, connotation, and commercial impression strongly supported a finding of no likelihood of confusion between the marks. [Id., at p. 12].