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Trademark and Translation Trademark

Discussion in 'Copyright, Trademark, Patent Law' started by matthewjmiller07, Mar 2, 2020.

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  1. matthewjmiller07

    matthewjmiller07 Law Topic Starter New Member

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    Would it violate the trademark of a company's name if the name is translated? I'm under the impression that translation is indeed protected, but my question revolves around whether or not a name can be translated.

    Example:
    Ben & Jerry's

    translated into Hebrew:
    Binyamin & Yirmiyahu
     
  2. flyingron

    flyingron Active Member

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    It would depend on whether the use imagined would cause a likelihood of confusion in the marketplace, or whether you are diluting a famous mark (though Ben & Jerry's has had their own run-ins on both sides of the issue, one suing other ice cream makers over similar flavor names and on the other hand being sued by Jerry Garcia's estate).

    So the answer is a qualified maybe.
     
  3. Michael Wechsler

    Michael Wechsler Administrator Staff Member

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    edit: I would say with caution that you might be able to proceed. First, in this case, the names might not be exactly translated even though they may be the usual equivalents of biblical Hebrew names. Second is that the trademark is for the mark itself and may not confuse the public with the longer version of each name and also in the Hebrew to boot. Trademark law exists to prevent confusion in the marketplace. The further you are away from creating confusion, the more likelihood that protection will not apply.
     
    Last edited: Mar 6, 2020
  4. PayrollHRGuy

    PayrollHRGuy Well-Known Member

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    Let's pull the translations part out completely. Would Benjamin and Jerald's Ice Cream be a trademark infraction?
     
  5. adjusterjack

    adjusterjack Super Moderator

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    You'd be in trouble
    Yes. A very obvious one.

    Maybe, if you were selling ice cream in Israel.

    Worse, if you were selling ice cream in Israel using the Hebrew letters Beth Nun for Ben and Gimel Resh Resh Yodh for Jerry, you would very likely be sued.

    (Yes, I have taken liberties with the Hebrew alphabet.)
     
    Michael Wechsler likes this.
  6. zddoodah

    zddoodah Well-Known Member

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    It depends. Similarity of marks is but one of several things that courts consider when determining whether or not a trademark has been infringed, and you provided no facts that would inform any other part of the analysis.
     
  7. Michael Wechsler

    Michael Wechsler Administrator Staff Member

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    Whoops, I didn't edit my answer which I posted prematurely while I was multitasking. With a good degree of confidence you might not have a problem if there isn't a likelihood of confusion in the marketplace along with a few assumptions. My original post was far too optimistic and inaccurate. With this specific example you might be able to proceed but literal translations can certainly get you in trouble - although I'm not sure that's the case here as I'll explain below.

    The equivalent English version of the name "Yirmiyahu" is actually Jeremiah. I didn't think of "Jerry" as being the abbreviated version. Neither did @PayrollHRGuy who equated Jerry as being short for Jerald - which can also be spelled Jerrold or Gerald - which was my impression and by far the most popular. Still, there probably are some people who go by "Jerry" as short for Jeremiah.

    @adjusterjack makes a great point. Benjamin & Jerald would present a very obvious problem, especially since the latter name is not the Hebrew equivalent, is not a name in Hebrew and is clearly very close to the mark.

    Second point @adjusterjack makes refers to two letters for Ben & Jerry. Using the two letters which would be closest to the first letter of each name which would be "bet" and "gimel". The "gimel" letter would also need a special accent mark, a modern Hebrew alteration, since there is no "J" in the traditional Hebrew alphabet and traditionally no words, used only for transliteration purposes. But the name "Yirmiyahu" in Hebrew uses a completely different letter - a "yud" - so it wouldn't resemble as clearly the actual name and mark and might not be perceived as causing confusion in the marketplace. My assumption originally was that Jerry was not the equivalent of the Hebrew but now, upon closer observation, I'm not sure.

    As to the assumptions I made when I was quick in responding:

    1) The principals are so named and the names weren't chosen to deliberately mimic another mark (and so as to be a sign of bad faith and it's clear you're anticipating there is confusion in the marketplace which is a bad sign);
    2) The names are being used in the alphabet of the other language and the other company is not using the foreign alphabet;
    3) The other company has not registered the proposed trade name in that country; and
    4) Your trade dress is not similar.

    Those were many assumptions and, in spite of them, my original intention was to be nowhere as optimistic and conclusive.

    I think @adjusterjack has hit the nail on the head regarding the most important point. What is the chance that you may be sued and would you be willing to defend a trademark lawsuit? I'd say that chances are pretty good that you'll be sent a cease and desist letter as Ben & Jerry's does sell their product in Israel (although I've only seen it using English letters.) And if you even catch a whiff of trading off of their mark, I don't doubt that they may be willing to go the distance. And that would be an expensive lawsuit to defend and one which is not an easy case to predict victory.
     

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