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[hockeydude34]

Hypothetically, Megacorp filed, and received registration for the TM "Rosanimales" for G&S IC X

Later, Littlecorp filed for TM "Animales Roso" for G&S IC X

The Examiner denied littlecorp because of Mega corps application (and maybe 1-2 other formalities), and the Littlecorp later abandoned.

During prosecution of Megacorp, the Examiner asked them to declare any foreign translations, and Mega corp said there are none becuase Rosanimales is a coined term.

I have now filed a TM for Red Animal for G&S IC X - am I screwed?

Forgive the symplicity involved - hope it makes sense.

as an aside, Megacorp is foreign, and I cannot find any commerical use of the TM since the date of registration (3 years ago).

[hockeydude34]

reading up on some case law...

apparently an applicant MUST provide an english translation, if there is one, or the application must not/should not/cannot be accepted.  Since Megacorp stated tehre was no english translation... because it is a coined term that isn't translatable... they didn't provide a translation.  Thus, I would think their registered mark shouldn't be given a broad enough scope to deny my registration.... but that's mere speculation.

I couldn't really find a case on point, and I couldn't find the TTAB case against Littlecorp

[JSonnabend]

If the registration was found to be obtained through fraud, you might have a point, otherwise, the chances of cancelling the registration due to a failure to file a statement concerning foreign equivalents are likely close to zero.

- Jeff

[hockeydude34]

Hhhmm, I don't think that was my question.

My question is: can I be registered?

I surmise the issue could come down to liklihood of confusion.

Based on the account of near-english translation of rosanimales, I could see liklihood of confusion on red anaimals (english translation of spanish words).  However, during prosecution, they disclaimed the english translation and stated the TM was a coined term.

THus, I could see protection given to things like brosanimales, rosonimales, rossanimales, etc.  But I would think prosecution history estoppel (does this apply in TM law?) would limit their protection to this extent and NOT to comparable near-english translations.

My point on the foreign equivalence is that if they didn't provide any, they shouldn't be extended any protection toward any.  If they're to be provided protection on foreign equivalnce, they should've been required to submit such documentation - but they did not.

[hockeydude34]

as a comparable matter, twist the "noir chat" case...

Megacorp submits "noirshat" or "noirchaty", states it is a coined term, and submits no foriegn equivlance/translation.

I submit "black cat"

[same goods and services/IC]

am i registerable?

[hockeydude34]

I take the silence to mean it's a stupid question... or that there's a discernable issue, and thus I would likely face the TTAB   

[JSonnabend]

I'm not sure what you are asking.  If you file an application and the examiner believes there is a likelihood of confusion with a senior mark (or application, in practical terms), he will refuse you registration. 

There is no "estoppel" from foreign equivalents for failure to include a statement of foreign equivalents (at least not that I've ever seen).  The mark in the senior registration is what it is, period.

Whether or not "Black Cat" is registerable in light of "Chat Noir", or any other hypothetical, is difficult to answer.  That said, I recently looked into a similar issue for a client, and it appears that while the TTAB has gone both ways in such cases, several recent decisions have compared the English with the foreign language, not its translation, for 2(d) purposes.

- Jeff

[hockeydude34]

I'm not sure what you are asking.  If you file an application and the examiner believes there is a likelihood of confusion with a senior mark (or application, in practical terms), he will refuse you registration. 

There is no "estoppel" from foreign equivalents for failure to include a statement of foreign equivalents (at least not that I've ever seen).  The mark in the senior registration is what it is, period.

Whether or not "Black Cat" is registerable in light of "Chat Noir", or any other hypothetical, is difficult to answer.  That said, I recently looked into a similar issue for a client, and it appears that while the TTAB has gone both ways in such cases, several recent decisions have compared the English with the foreign language, not its translation, for 2(d) purposes.

- Jeff

well, that's the sticking point... in the registration of the hypothetical TM "rosanimales," the applicant expressly stated that it's not a foreign word - that instead, it's a coined term that is made up, and so there is no foreign translation.

It would seem to me, then, that it would be improper for an examiner to provide protection to that TM by stating, well, it kind of looks like "red animals" when translated in view of a certain language, and so, there's liklihood of confusion.

More to the point:  pretend "guaca" and "amole" means Red Door when translated.   Someone registers "guacamole" and states it's not a foreign word; just a made up coined term.  If the TTAB gives protection to "guacamole" (coined term and near equivalents), "guaca" and "mole" (foreign words and equivalents), and also Red Door (translated equivalents)... well... seems like way too much protection.

I digress... it is what it is... if it's LofC, then it's LofC.  Can't do much about it.