On 21 March 2006, Le & Le Law Firm, in representation of Hong Ha Stationery Joint Stock Company, filed a trademark registration for “HONG HA, device” at the USPTO for stationery in class 16 of the International classification.

On 13 September 2006, the USPTO issued a Notification of examination result indicating that “HONG HA, device” trademark would be refused to protect due to its confusing similarity to trademark “Red River” that was granted Trademark Registration Certificate no. 2096052 dated 9 September 1997 for goods in class 16.

In the Notification, the USPTO refused the registration of “HONG HA, device” trademark basing on the doctrine of foreign equivalents, according to which, foreign words or terms may not be registered as a trademark in US if the English-language equivalent has been previously registered for related goods and/or services, and the consumers would be likely to translate such foreign words or terms into its equivalent English equivalent.

In this case, the USPTO supposed “Hong Ha” was prominent element of the filed mark, it was the Vietnamese meaning of the words “ RED RIVER”. “ RED RIVER” was the trademark that had been granted certificate no, 2096052 dated 9 September 1997 for goods in class 16 under the name of RED RIVER PAPER, INC (US). Therefore, these two trademarks are similar because of the same “Hồng Hà ( RED RIVER)” meaning.

The USPTO has quoted some websites such as www.wikipedia.com, www.answers.com to prove the meaning of these words. According to the USPTO’s search on 2000 census in the whole US ( http://www.census.gov/population/cen2000/phc-t120/tab05.pdf), over 1 million people in the United States primarily speak Vietnamese at home and Vietnamese is one of the ten languages most spoken at home in US. Thus, consumers would be likely to translate the foreign words “HONG HA” into the English equivalent “ RED RIVER”.

Basing on the doctrine of foreign equivalents, these trademarks are considered confusingly similar to each other. Besides, the USPTO believed that although the filed mark contains a design element, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. Therefore, the word portion plays a more important role in considering and determining the likelihood of confusion.

Receiving the Notification from the USPTO, Le & Le’s Attorneys studied US Trademark Law and several equivalent cases handled by the USPTO and found some convincing arguments and evidence to appeal against the USPTO’s Notification.

On 13 March 2007, Le & Le file a response to the USPTO’s Notification basing on the following arguments:

• According to the US regulations on trademark examination, when determining the confusing similarity among trademarks, we need to consider, compare trademarks basing on comprehensive impression in respect of pronunciation, form of expression, connotation and commercial impression of the marks. Taking these into account, the filed mark differs from the cited mark thanks to its combination with the logo portion and other word elements

• The doctrine of foreign equivalents requires the foreign words translated into English must be common languages in US. The key element to determine a mark is widely known by US consumers (those who is knowledgeable, fluent in the foreign language) is whether consumers will translate the foreign words into its English equivalent as soon as they see such words. According to the USPTO, over 1 million people in the United States primarily speak Vietnamese at home, but it only accounts for 0,33% of the population of the US, which proves the insignificant number of consumers who know the English meaning of “Hồng Hà” is “Red River”.

• According to the US examination practice , even when a trademark comprises of foreign word that has its English equivalent to a registered trademark, this connotation similarity is one of many factors to examination. It is not important in determining the likelihood of confusing similarity among trademarks if they are different in form of expression, pronunciation or other factors. It is obvious that the cited mark only includes two words: “RED” and “RIVER” while the filed mark comprises both device element and word element consisting of a great number of words that are pronounced differently from the cited mark.

After considering Le & Le’s response, the USPTO was completely convinced and agreed that the filed mark “HONG HA, device” is not confusingly similar to the cited mark “ RED RIVER”. Therefore, the USPTO has withdrew its refusal of the registration of trademark “HONG HA, device” for stationery goods in class 16. Hong Ha Stationery Joint Stock Company has been approved to have its trademark “HONG HA, device” protected in US.