Trademarks

• Author: International Law Group

Guadalajara, Inc. d/b/a Dulces Vero USA (hereinafter "Dulces Vero") is based in Mexico and manufactures lollipops for the U.S. and Mexican markets. One of its lollipops is yogurt flavored and sold under the name "Chupa Gurts." Enrique Bernat F., S.A. and S.A. Chupa Chups (jointly "Chupa Chups") are based in Spain and make lollipops in the U.S., Mexico, and other countries. Its best sellers are "ice cream flavored" lollipops sold under the name "Chupa Chups."

Chupa Chups brought an infringement action against Dulces Vero because it was marketing "Chupa Gurts" in the U.S. in violation of Chupa Chups' trademark. The district court found that Dulces Vero's mark "Chupa Gurts" was infringing the mark "Chupa Chups" and granted a preliminary injunction barring Dulces Vero from selling or marketing its "Chupa Gurts" in the U.S. Dulces Vero appealed the preliminary injunction.

The U.S. Court of Appeals for the Fifth Circuit reverses. The Court concludes that there is no likelihood of confusion between the marks "Chupa Gurts" and "Chupa Chups." The term "chupa" is a generic Spanish word used for lollipops. The district court erred in its likelihood-of-confusion analysis because it had focused on the generic segments of the marks ("Chupa", meaning "lollipop") instead of looking at the arbitrary parts of the marks ("Chups" and "Gurts").

"The parties agree that application of the doctrine of foreign equivalents governs the outcome of this dispute. This doctrine requires courts to translate foreign words into English to test them for genericness or descriptiveness. ... The act of translation, of course, can itself be an...