Doctrine of Foreign Equivalents Defeated, Leading to 2(d) Refusal Reversal

Overview

While the Board found that the goods (clothing and footwear) were related and shared trade channels, it ultimately determined that the marks themselves were sufficiently dissimilar. Notably, the Board declined to apply the doctrine of foreign equivalents, concluding that ordinary American consumers would not necessarily translate TERRA PLANA into english ("Flat Earth") and that the marks created distinct commercial impressions.

Background

The Applicant, Dean Severson, filed an application seeking to register the mark FLAT EARTH SURF CLUB in standard characters for "hats; shirts" in International Class 25. The term "SURF" was disclaimed.

The Examining Attorney refused registration under Section 2(d) of the Trademark Act, citing a likelihood of confusion with the registered mark TERRA PLANA. Both applications involve apparel-related goods, the cited mark specifically covers "footwear, namely, boots, shoes, sandals and slippers" in Class 25. The cited registration includes a translation statement noting that the foreign wording translates into English as "Flat Earth."

Following a final refusal, the Applicant appealed to the Trademark Trial and Appeal Board.

How the Board Analyzed the DuPont Factors

DuPont #2 & #3: Relatedness of the Goods, Trade Channels, and Classes of Consumers

The Board first addressed the second and third DuPont factors: the similarity of the goods and the overlap of trade channels and consumer classes. The Examining Attorney argued that hats, shirts, and footwear are inherently related apparel items, frequently produced by the same manufacturers and sold under identical marks. To support this position, the Examining Attorney submitted extensive evidence consisting of screenshots from various retail and manufacturer websites.

The Board credited this evidence, concluding that when these distinct goods are offered by a single source under the same mark, consumers are highly likely to perceive them as related.

Turning to the target consumer base, the Applicant argued that its purchasers were a distinct niche, specifically "beachgoers, surfers, and outdoor enthusiasts," whereas the Registrant’s target demographic remained unknown. The Board rejected this narrow interpretation. It noted that because neither the application nor the cited registration contained any such geographic or demographic limitations, the goods must be presumed to travel through all normal channels of trade to the general public. Relying on the Examining Attorney's website evidence, the Board found that the channels of trade and classes of consumers were similar and overlapping, ultimately weighing both DuPont factors in favor of a likelihood of confusion.

DuPont #1: Similarity or Dissimilarity of the Marks

The primary focus of the decision was the first DuPont factor. The Board analyzed the marks in their entireties, considering appearance, sound, connotation, and commercial impression. The Examining Attorney’s central argument was that the marks were confusingly similar because FLAT EARTH is the foreign equivalent of TERRA PLANA.

While the Board acknowledged that an appreciable number of Americans speak Portuguese, it found that the doctrine of foreign equivalents does not apply in this case because ordinary American purchasers would not stop and translate TERRA PLANA. The Board reached this conclusion based on several evidentiary points. First, it took judicial notice of English dictionary definitions showing that "terra" is a word familiar to English speakers, appearing in common phrases like "terra cotta" and "terra firma." This familiarity suggested that consumers would take the phrase at face value rather than translating it.

Second, the Board criticized the translation evidence as failing to show a "direct and literal" translation. The Examining Attorney provided evidence that included both "flat land" and "flat earth" as translations for TERRA PLANA. Meanwhile, the Applicant provided a Google Translate detection search showing that in Spanish, the phrase translates to "flat land."

The Board then analyzed the commercial impressions of the marks. It found that TERRA PLANA would likely be perceived as suggesting stability or "solid footing" in the context of footwear. In contrast, FLAT EARTH SURF CLUB would be perceived as a reference to a "scientifically-inaccurate cultural phenomenon" or a "nod to historical fringe beliefs." The inclusion of "SURF CLUB" was found to create an "incongruity and nonsense connotation" that was entirely absent from the cited mark. Finally, the Board noted that the marks were completely different in appearance and sound, as they shared no common words or letters. Consequently, the Board determined the first DuPont factor weighed heavily against a likelihood of confusion.

DuPont #4: Purchasing Conditions

The fourth DuPont factor considers the conditions of purchase and the degree of care exercised by consumers. While the Applicant raised the point of consumer sophistication, it failed to provide supporting evidence or fully develop the argument. Conversely, the Examining Attorney argued that the items in question were low-cost impulse purchases. The record itself demonstrated a wide range of pricing, including hats listed at $88 and boots priced as high as $230. However, because the product identifications in the application and registration were not limited by price point or consumer sophistication, the Board noted that the covered goods could encompass both high- and low-priced items. Ultimately, the Board found this factor to be neutral.

Board’s Decision

The TTAB reversed the refusal to register the mark FLAT EARTH SURF CLUB under Section 2(d) of the Trademark Act. The Board concluded that while the relatedness of the goods and the overlapping trade channels weighed in favor of confusion, the first DuPont factor was ultimately dispositive. The marks were found to be so fundamentally different in appearance, sound, and commercial impression that a likelihood of confusion was highly unlikely.

Specifically, the Board emphasized that the doctrine of foreign equivalents did not apply because the ordinary American consumer would not translate the cited mark. Furthermore, the overall commercial impressions engendered by the marks were distinct; the Applicant's mark contained a specific structural incongruity that the cited mark entirely lacked.

If you face an office action where the Examining Attorney wants to apply the doctrine of foreign equivalents, check the dictionary definitions. If the translation is not literal or direct, or if there are several dictionaries showing variations in English meaning, the doctrine may not be applied.

In this case, the Board was particularly moved by the fact that "terra plana" could translate to "flat land" rather than just "flat earth." Just because the Examining Attorney relies on one definition from one dictionary, doesn't mean you can't do your own searches to find alternative meanings. If the translation is not "direct and literal," the doctrine of foreign equivalents is much harder to apply. Use tools like Reverso to find example sentences where the term is used in a different context to show the Board that the connotation is not fixed.