The Trademark Doctrine of Foreign Equivalents

Under U.S. trademark law the doctrine of foreign equivalents requires the Courts and the United States Patent & Trademark Office ("USPTO") to translate foreign words from common modern languages into English. Translation is required to determine if such marks can be registered with the USPTO or to determine if such marks would cause a likelihood of confusion among consumers with an existing trademark. This legal principal is intended to protect consumers from confusion or deception in the marketplace. When the foreign word is translated into English it will take on the English meaning. For example, see In re Spirits Intern., N.V., 563 F.3d 1347, 90 U.S.P.Q.2d 1498 (Fed. Cir. 2005), where the Russian word MOSKOVSKAYA was translated and determined to mean "of or from Moscow" and was held primarily geographically deceptively misdescriptive for vodka not from Moscow.

This doctrine is applied more often than you would anticipate. The general rule states that the doctrine should apply when American buyers familiar with the foreign language upon hearing the foreign word would translate it into English or would immediately recognize the English equivalent. Although it is not viewed as an absolute rule but merely a guideline; it is often applied at the USPTO. However, the reverse is not true. If a word has a specific meaning in another country, it is not relevant to U.S. trademark review. For example, In Seiko Sporting Goods USA Inc. v. Kabushiki Kaisha Hattori Tokeiten, the Court ignored the Plaintiff's evidence that the term SEIKO is a generic term in Japanese. The Court held that in the U.S. the term SEIKO is arbitrary and fanciful.

Although the doctrine of foreign equivalents commonly arises in likelihood of confusion matters, descriptiveness cases and cases of generic terms, it also arises with geographic marks. See In re Joint- Stock Company Baik, 80 U.S.P.Q.2d 1305, 2006 WL 1706437 (TTAB 2006), where it was held that the term BIKALSKAYA was primarily geographically descriptive of vodka from Lake Baikal. The ordinary American purchaser includes all American purchasers including those proficient in a non-English language who would most likely translate words into English. It appears that it is much more likely that the USPTO will translate a foreign word if it has a geographic meaning rather than a descriptive meaning.

In addition, if the foreign language is obscure or dead then the doctrine of foreign equivalents should not apply. The reasoning is that American consumers will not translate the word if it is from an obscure or dead language. For example, Latin is considered by most to be a dead language. However, if there is evidence to show that a Latin term is still used by the relevant consuming public, then the term would not be considered dead. Often Examining Attorneys at the USPTO will conduct research in dictionaries, publications or news articles to make this determination.

An application to register a mark that includes non-English wording must include an English translation. If the mark comprises non-Latin characters, then the mark must include a transliteration of those characters and an English translation or a statement that the characters have no meaning in English. The Examining attorney will request this information from a trademark applicant if it is not provided initially with the application.

If any question arises as to the proper translation of a mark, the examining attorney may consult the Trademark Library or Translations Branch of the USPTO. Frequently, the appropriate translation will require the Examiner to consider the meaning of the foreign term in relationship to the goods or services. Therefore, if a trademark applicant knows the English translation of its foreign word, the applicant should include it in its application. Conversely, if the trademark applicant knows that there is no direct English translation for the foreign word, this can be communicated in the application by stating that the proposed mark/wording has no meaning in a foreign language. Failing to consider the meaning of a foreign word contained in a trademark may carry severe implications. Please feel free to contact our office and speak with one of our trademark attorneys for a courtesy consultation pertaining to a proposed mark containing a foreign term.