Winter 2000 Vol

NEW YORK INTERNATIONAL LAW REVIEW Winter 2000 Vol. 13, No. 1 Articles 1 Doctrine of Foreign Equivalents in Trademarks Of Growing Importance Resulting from Increase in International Trade Mark S. Mulholland 39 Treaty Implementation: Lessons Taught by U.S./U.K. Cooperation Under the NATO Status of Forces Agreement Michael Noone 91 A Peace Process Perspective Northern Ireland and the Agreement Reached in the Multi-Party Negotiations Belfast, April 10, 1998 Colleen J. O’Loughlin Recent Decisions 115 Haarhuis v. Kunnan Enterprises, Ltd., et al. District of Columbia Circuit Affirms in Case of First Impression that Jurisdiction of Bankruptcy Court Under 11 U.S.C. § 304 Does Not Require Presence of Assets Within the United States. 119 In re Application of Technostroyexport United States District Court Vacates Discovery Order and Subpoenas Issued Thereunder on Grounds that Judicial Interference in Foreign Arbitration Proceedings Is Not Permitted Absent the Express Authorization of Arbitrators. 123 In re Impounded Third Circuit Affirms District Court, Holding that the Existence of Facts Justifying Invocation of Fifth Amendment Privilege Based on Fear of Foreign Prosecution Is Not to Be Presumed but Is Within Discretion of Trial Court. 127 Yugoslavia v. United States of America International Court of Justice Rejects Yugoslavia’s Request For the Indication of Provisional Measures Against the United States of America, Citing Jurisdictional Barriers. 133 Mingtai Fire & Marine Insurance Co., Ltd. v. United Parcel Service & United Parcel International, Inc. Ninth Circuit Holds the Warsaw Convention Does Not Apply to Lost Cargo Shipped Between Taiwan and California because Taiwan Is Not a Signatory Thereto Although China Is. 137 Grupo Mexicano de Desarrollo, S.A. v. Alliance Bond Fund, Inc. Supreme Court Holds 5-4 that Today, As in 1789, Federal Courts May Not Interfere with a Debtor’s Property Prior to Judgment. NEW YORK STATE BAR ASSOCIATION INTERNATIONAL LAW & PRACTICE SECTION Published with the assistance of St. John’s University School of Law Winter 2000] Doctrine of Foreign Equivalents 1 Doctrine of Foreign Equivalents in Trademarks Of Growing Importance Resulting from Increase in International Trade Mark S. Mulholland* Foreign word marks have long been a part of America’s marketing landscape. GREY POUPON®, PERRIER®, ENTRE NOUS®, KIRIN®, TRESOR®, among countless other marks, are well recognized in our culture.1 The explosion of cyberspace and the expanded opportunities for international shopping brought about by the Internet will only increase the number of foreign tradenames washing up on our shores. As Web Sites proliferate offering wares from around the world, retailers will likely grow increasingly aggressive in adopting chic, exotic-sounding foreign names—in the relentless effort to uniquely “brand” their products. Against this backdrop, the “Doctrine of Foreign Equivalents”2 takes on added significance. Recent trademark controversies arising in New York highlight the potential issues in selecting foreign generic marks.3 Both the Second Circuit Court of Appeals and the federal district court for the Southern District of New York, analyzed below, recently reaffirmed the vital- ity of the Doctrine of Foreign Equivalents. 1. GREY POUPON®, French for “little baby,” is a registered trademark of Del Monte Corporation. The mark has been registered since 1986 for use in connection with prepared mustard (International Class 30) under U.S. Reg- istration No. 1,398,731. PERRIER®, French for “quarry man,” has been registered to Perrier Vittel S.A. under, among others, U.S. Registration No. 1,151,186 for use in connection with carbonated mineral table water since April 14, 1981. ENTRE NOUS®, French for “between us,” is registered to, among others, Paterno Imports, Ltd. for use in connection with wines (International Class 33) under Registration no. 2,051,400, dated April 8, 1997 and to S.L. Kaye Company, Inc. for use in connection with candy (International Class 30) under Registra- tion no. 1,865,371, dated November 29, 1994. KIRIN®, translated as “legendary animal” has been registered to Kirin Co., Ltd. of Korea since July 7, 1998 under U.S. Registration No. 2,171,389 for use in connection with foods and ingredients and ingredients of foods (International Class 30). TRESOR® French for “treasure,” has been registered for use in connection with body oils, sprays and powders since January 25, 1994 to Lancome Par- fumes et Beaute & Cie under U.S. Registration No. 1,817,658. 2. 2 J. THOMAS MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION, § 23.36, at 23-82 (4th ed. 1996) (espousing a sound, sight and meaning trilogy of analysis under the doctrine). The doctrine operates so as to translate foreign words from common languages into English in order “to determine similarity of meaning and connotation in order to ascertain confusing similarity with English word marks.” Id. However, “[s]imilarity in meaning may well be outweighed by differences in sight and sound and other foundational factors. Id. See Charles E. Bruzga & Caterina Civera-Tomaselli, 76 J. PAT. & TRADEMARK OFF. SOC'Y 571, 571 (1994) (“The meaning of [a] proposed trademark is considered under the so-called doctrine of foreign equivalents, wherein foreign words, at least from non-obscure languages, are translated into their English equivalents and evaluated according to customary trademark standards.”); Frehling Enterprises, Inc. v. International Select Group, Inc., 1999 WL 828605, *9 (11th Cir. 1999) (“Under the ‘doctrine of foreign equivalents,’ a word from another language that is commonly used in that language as the generic name of a product cannot be imported into the United States and thereby transformed into a valid trademark.”) (quoting 2 J. THOMAS MCCARTHY, MCCAR- THY ON TRADEMARKS AND UNFAIR COMPETITION, § 12:41, at 12-83 (4th ed.1996)). 3. See, e.g., Otokoyama Co., Ltd. v. Wine of Japan Import, Co., 175 F.3d 266 (2d Cir. 1999); Orto Conserviera Cameranese D Giacchetti Marino & C.S.N.C. v. Bioconserve, S.R.L., and Penta International, Inc., 1999 WL 47258 (S.D.N.Y. 1999). * Mark S. Mulholland is Partner and Chairman of the Intellectual Property Practice Group at Ruskin, Moscou, Evans & Faltischek, P.C. The firm is located in Mineola, New York. Mr. Mulholland can be emailed at: mmul- [email protected]. 2 New York International Law Review [Vol. 13 No. 1 The Doctrine of Foreign Equivalents demands that foreign language marks be evaluated based on their accepted foreign usage.4 Domestically, trademark attorneys are familiar with the well-established principle that generic terms enjoy no trademark protection.5 Just as bestowing trademark protection for generic terms in English is impermissible because competitors will not be able to describe their goods as what they are, trademark protection for foreign generic words is also generally prohibited.6 As international boundaries continue to evaporate in the era of cyberspace, these principles will become increasingly familiar to attorneys and businesses merchandising foreign wares. This article examines the core operative language in the U.S. trademark law permitting registration of federal marks, be they foreign or domestic. Also covered are the basic categories of trademarks, arranged according to their relative strength or weakness. After providing a gen- eral overview of the American prohibition against registration of generic terms, the article examines closely the Doctrine of Foreign Equivalents. Opinions reviewed include early cases involving the Doctrine, and more recent cases such as the Southern District of New York’s decision in Orto Conserviera Cameranese D Giacchetti Marino & C.S.N.C. and Penta International, Inc. v. Bioconserve S.R.L. and Bella d Cerignola, Inc.,7 and the Second Circuit Court of Appeals’ related decision in Otokoyama Co. v. Wine of Japan Import Inc.8 Finally, the article considers cer- tain limitations on the Doctrine’s applicability, generated by surrounding case law. 4. See Michelle Belluzzi, Cultural Protection as a Rationale For Legislation: The French Language Law of 1994 and the European Trend Toward Integration in the Face of Increasing U.S. Influence, 14 DICK. J. INT’L. L. 127, 135 (1995) (explaining that a nation’s language is constantly evolving to incorporate new and useful foreign terms); see also J. Thomas Warlick IV, Of Blue Light Specials and Gray-Market Goods: The Perpetuation of the Parallel Importation Controversy, 39 EMORY L.J. 347, 408 (1990) (discussing that while authorization of foreign usage of a U.S. registered trademark occurs the U.S. markholder seeks to retain his original ownership rights). See generally John T. Cross, The Special Role of Trademarks, Trade Names, and Other Trade Emblems, 76 NEB. L. REV. 95 (1997) (describing that most courts apply the doctrine to borrowed foreign terms. Under this approach, the court trans- lates the word into English and then determines whether the English word qualifies for protection). 5. See Peter Sloane, Trademark Vigilance in the Twenty-first Century: A Pragmatic Approach, 9 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 823, 835 (1999) (“[U]nder foreign equivalents doctrine the rule is that a generic term is not entitled to trademark protection also a mark is not entitled to protection if the word designates the product in a language other than English”); Blinded Veterans Ass’n v. Blinded American Veterans Foundation, 872 F.2d 1035 (Fed. Cir. 1989) (holding the mark at issue to be generic, and therefore, not entitled to trademark protection). See generally Steven M. Auvil, Gray Market Goods Produced by Foreign Affiliates of the U.S. Trademark Owner: Should the Lanham Act Provide a Remedy?, 28 AKRON L. REV. 437, 448 (1995) (discussing the important role that trademarks perform and that they need legal protection in order to be effective at the task). 6. See, e.g., Paul B. Birden, Jr., Trademark Protection in China: Trends and Directions, 18 LOY. L.A. INT’L & COMP.

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