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John B.
Farmer

 

Lawrence E. Laubscher, Jr.

 

Ian D. Titley

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It’s Time to Think About Protecting Your Trademarks in Spanish

Wednesday, May 4th, 2016

Even if President Trump gets that wall built, you need to think about protecting your trademarks from infringement in Spanish.

Let’s say you own a long-standing real estate business called RIVERSIDE REALTY. You may be able to use trademark law to stop someone else from using the same name for the same type of business.

But what if someone starts a real estate business called REALTY LADO DEL RÍO, which is “Riverside Realty” in Spanish. Can you stop that? How would you even detect it?

If you own a business, you’re probably a trademark owner. A trademark is any distinctive company, product or service name. While registering a trademark strengthens trademark rights, you own common-law rights to a trademark just by using it to promote the sale of your goods or services.

When you have a trademark, generally you can stop someone from using the same trademark or a confusingly similar one to promote the sale of the same kinds of goods or services or even similar ones. Trademark infringement is like horseshoes and hand grenades – too close can kill you.

But what if a company tries to pass off itself, or its products or services, as yours, by using Spanish translations of your trademarks? Can you stop that?

And even if the infringement isn’t intentional, what if your trademarks get copied in Spanish?

There are things you can do now to prepare your company to have a better chance of winning such fights, and things you should do to nip any problem in the bud.

A Spanish equivalent of an English-language trademark isn’t automatically an infringement. Whether infringement is occurring depends upon differences in pronunciation, differences in visual appearance, and whether speakers of both languages would translate the Spanish version into English or just accept the Spanish version as is.

For example, a few years ago, the federal trademark office found there was no conflict between the name TIA MARIA for Mexican restaurants and AUNT MARY’S for canned vegetables, even though “Tia Maria” is Spanish for “Aunt Mary.” The court held that bilingual consumers wouldn’t mentally translate TIA MARIA to AUNT MARY.

Here are some things you can do now to prepare for a possible copying of your trademark in Spanish:

• If you are just starting your business, or launching a new product or service, consider giving it a name that can’t be translated into Spanish. For example, if you use a surname as your business name, the surname doesn’t really translate to Spanish because people generally leave surnames in their stated language, such as FITZGERALD FURS.

• Likewise, you could give your business, product or service a name that is a made up word, like VERIZON and SPEEDO. Those don’t translate either.

• If your trademark is translatable, think about whether you would be willing to sometimes use your trademark in Spanish when targeting the Spanish-speaking community. Such usage would give you trademark rights in the Spanish-language version. You should try to register such Spanish-language trademarks, just as you should register your English-language ones.

• If you use a logo containing your English-language trademark, you might be able to use your rights in the design of that logo to stop someone from mimicking the appearance of that logo even if the mimic uses Spanish words rather than English ones. Registering your English-language logo as a trademark will help you.

Regardless of whether you have done that preparation, be on the lookout for infringements of your trademark in Spanish. More tips:

• You must attack an infringement ASAP when it arises. If you don’t, you could lose the legal right to stop it. Also, it’s easier to persuade infringers to stop infringing when they’re not yet deeply invested.

• In legal terms, this is called “trademark-infringement watching and policing.” Explaining comprehensively how to do that would take far longer than this column, and it’s hard to do it yourself, but below are a few tips for this English-Spanish situation.

• Be on the lookout for any Spanish-language version of your trademark. Ask your employees and colleagues who have connections to the Spanish-speaking community to help.

• Get reliable English-to-Spanish translations of your business’s name and the names of its key products and services (if they are distinctive) and set up Google alerts to watch for use of Spanish versions of them.

• Watch out for anyone attempting to register your mark in Spanish with the federal trademark office or its state analog. In Virginia, this is the Virginia State Corporation commission. While those governmental trademark officials might refuse to register a direct Spanish translation of a registered English-language trademark, you can’t count on that. And that won’t happen if you haven’t registered your English-language trademark.

• If you make a tangible product and might face competition from knock-off imports, and if you have a federal trademark registration for the name of your product, look into having that trademark registration recorded with the U.S. Customs and Border Protection Service. That might be helpful in trying to block importation later of counterfeit goods bearing a Spanish-language translated name.

Like so many other things regarding trademark rights, those who prepare will fare better than those who just react when a crisis arises. The U.S. has a large Spanish-speaking community and that’s not going to change. Be prepared.

Written on April 19, 2016

by John B. Farmer

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