So with a bit of effort I was able to track down the speaker at the end of the day during the post seminar cocktail hour and the issue was discussed and specific reference made to a couple of cases, including that the doctrine is discussed in McCarthy on Trademarks. In McCarthy's said treatise, he speaks of this doctrine with respect to the likelihood of confusion analysis as the "Picture-word equivalency" wherein he states, "A picture and a word mark may be confusingly similar in mental impression -- for example, ARROW and a picture mark of an arrow. (citing Arrow-Hart, Inc. v. Yazaki Corp., 169 U.S.P.Q. 249 (T.T.A.B. 1971). And perhaps the source of the term or doctrine, "Legal Equivalents" can be found in another TTAB case cited by McCarthy, namely, Squirrel Brand Co. v. Green Gables Inv. Co. 223 U.S. P.Q. 154 (T.T.A.B. 1984), wherein the Trademark Board stated: "It is established that where a mark comprises a representation of an animal or individual and another mark consists of the name of that animal or individual, such designations are to be regarded as legal equivalents in determining likelihood of confusion under the Trademark Act." (emphasis added).
Another example of this doctrine appears in
As it turns out, this doctrine is also set forth in the TMEP (Trademark Manual of Examining Procedure) published by the USPTO, as follows:
"1207.01(c)(i) Legal Equivalents – Comparison of Words and Their Equivalent Designs
This doctrine was discussed during the aforementioned seminar in relation to issues surrounding those recently faced by the Estate of Marilyn Monroe.
Stay tuned as this doctrine is discussed in the future.
William E. Maguire, Esq.
Santa Monica, Calif.