Picasso ≠ Picaro

After a number of years, numerous court cases, and denied appeals, Europe has determined that "Picasso" is not similar to "Picaro." According to the People's Daily Online, the Picasso family has been vigorously defending their rights to the Picasso name. They had even licensed the name to Citroën to be used with cars. DaimlerChrysler came along and decided to use the name "Picaro." While I certainly understand the desire to protect brand names, I do not think that "Picaro" and "Picasso" are similar to the point of confusion. It appears that European courts agree with me. According to the article:

The judges conceded that both words contained three syllables and that both words did, indeed, have the same vowels, in the same order.

They also accepted that the consonants were pretty similar too, and they acknowledged that the first two syllables and the final letters of both words were identical. But the pronunciation of the two words was markedly different, they said there was a double "s" sounding utterly dissimilar to an "r" sound.

And the two words, the court heard, conjured up different images. "Picasso" brought to mind the beret-wearing painter, the lover of minotaurs, nude women and the colour blue, whereas "Picaro" was understood by native Spanish speakers to refer to a character from Spanish literature.

The two words "are not thus similar from the conceptual point of view" the judgement read. "Such conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs (words) concerned."

I couldn't have said it better myself. This is the type of analysis that is used to determine trademark infringement. Much of the determination of trademark infringement hinges upon showing different meanings. This can be quite exciting, as there is a lot of research into origins of words, opinions of people on the street, foreign language equivalents, etc. Then again, I'm a trademark attorney so I do find this quite exciting.

International trademarks

International trademarks

Before filing for an international trademark application, you will need to have a pending U.S. trademark application. Once you have your pending U.S. trademark application, you have several options for filing for international trademark protection. There are different reasons for choosing each option, and you should consult with a trademark attorney before proceeding.

• Within 6 months of filing date
• After 6 months from filing date, but before registration
• Filing after registration

Filing within 6 months of the filing date- If you file either an international trademark application using either the Paris Convention or Madrid Protocol within 6 months of your U.S. filing date, your international trademarks will have the same filing date as your U.S. application (this is often called a priority date.) This priority date will ensure that you have the earliest possible filing date abroad.

After 6 months from filing date, but before registration- You can still file trademark applications abroad after the 6 month filing deadline. This 6 month filing deadline is so that your foreign trademark application has the same filing date as your application in the United States. You can still file a Madrid Protocol application, which will reference your underlying U.S. trademark application. Your international trademark applications will have the filing date of your Madrid Protocol application. It is always good to file a trademark application in another country when your business expands to that country- either by providing services or selling products. The Madrid Protocol application will allow you add more countries later.

Filing after registration- Once you have received a U.S. trademark registration, you can file an application which relates back to your U.S. registered trademark. You will have to provide a copy of your U.S. registration. Review of this type of trademark application may proceed quicker than other applications, in light of the registration in the U.S.

For all international trademark applications, you will first need a valid pending U.S. trademark application. We advise using the services of a trademark attorney to prepare this application. If you have any errors in your U.S. application, you can encounter further problems when filing international trademark applications.