Trademark Doctrine of Legal Equivalents

During the USF Law School - McCarthy Institute's annual trademark law seminar held yesterday at 20th Century Fox Studios in Los Angeles, a panel of commentators were discussing ways in which a mark might be enforced and/or defended.  One speaker made reference to a trademark doctrine of (legal) equivalents.  That got my attention as that was not something you hear every day nor did it ring a bell.  Please also note that I am not referring to the well known patent doctrine of equivalents either.

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 Beer Nuts, Inc. v. King Nut Co., 477 F.2d 326,  177 U.S.P.Q. 609 (6th Cir. 1973), cert. denied, 414 U.S. 858, 38 L. Ed. 2d 108, 94 S. Ct 66, 179 U.S.P.Q. 322 (1973), where in the King Nut stylized mark showing a picture of a stein of beer was held to infringe the word mark, BEER NUTS.

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

Under the doctrine of legal equivalents, which is based on a recognition that a pictorial depiction and equivalent wording are likely to impress the same mental image on purchasers, a design mark may be found to be confusingly similar to a word mark consisting of the design's literal equivalent. See, e.g., In re Rolf Nilsson AB, 230 USPQ 141 (TTAB 1986) (holding applicant’s mark consisting of a silhouette of a lion’s head and the letter “L,” for shoes, and registrant’s mark, LION, for shoes, likely to cause confusion); Puma-Sportschuhfabriken Rudolf Dassler KG v. Garan, Inc., 224 USPQ 1064 (TTAB 1984) (holding applicant’s marks featuring a design of a mountain lion, for clothing items, and opposer’s marks, a puma design and PUMA (with and without puma design), for items of clothing and sporting goods, likely to cause confusion); In re Duofold Inc., 184 USPQ 638 (TTAB 1974) (holding mark consisting of a design of an eagle lined for the color gold, for sports apparel, and mark consisting of GOLDEN EAGLE and design of an eagle, for various items of clothing, likely to cause confusion).

Where, however, a pictorial representation in a mark is so highly stylized or abstract that it would not readily evoke in the purchaser’s mind the wording featured in another mark, the marks may not be confusingly similar. See, e.g., In re Serac, Inc., 218 USPQ 340, 341 (TTAB 1983) (concluding that applicant’s design mark was “so highly stylized that an image of a ram’s head would not be immediately discerned and the connection with [the registered mark] ‘RAM’s HEAD’ would not be readily evoked with the resulting generation of a likelihood of source confusion”)."

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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.

Respectfully submitted,

William E. Maguire, Esq.
Santa Monica, Calif.
www.TrademarkEsq.com