When entrepreneurs, technology startups, and other brand owners are considering a new brand name, failure to analyze the translation of a brand for potential likelihood of confusion may lead to a trademark lawsuit, as illustrated in Michael Jordan‘s long running legal battle in China in connection with this issue.
Under United States trademark rules, an application to register a mark that includes non-English wording must include an English translation of that wording. Similarly, an application for a mark that comprises non-Latin characters must include a transliteration of those characters, and either an English translation or a statement that this portion of the mark has no meaning in English. See 37 C.F.R. §2.32(a)(10). If an application for a mark comprising non-English wording or non-Latin characters does not include an accurate translation and/or transliteration, the examining attorney must require the applicant to submit a statement of translation/transliteration, and an office action may issue.
In other words, the translation of a term matters when it comes to likelihood of confusion claims in a trademark lawsuit.
Jordan translated in Chinese is Qiaodan. In Beijing, the famous basketball star Michael Jordan brought a trademark lawsuit for use of the term Qiaodan. Michael Jordan has long sought to prevent such unauthorized use of his name and likeness, which is also a registered trademark in the United States. After two lower courts ruled against Jordan, in 2020 the Supreme People’s Court in China overturned the two previous verdicts.
This landmark ruling in China in favor of a foreign trademark owner, in this case one of the most famous persons in the world, signals a change in intellectual property protection rules in China, and the ability for brand owners to enforce their rights through trademark lawsuits in China.
Brand owners, technology entrepreneurs, and other trademark applicants seeking new trademark registation are wise to consider the international markets during due diligence, analyze the translation and transliteration of a trademark, and be prepared to enforce their rights through trademark lawsuits worldwide as countries like China begin to recognize trademark rights of foreigners.
This is definitely another win for Jordan.