Under U.S. trademark laws, there is a legal concept called the “Doctrine of Foreign Equivalence”(“DFE”). Essentially, the DFE prevents the registration of trademarks that violate U.S. trademark rules where foreign language words are used instead of English language words that have the same meaning. Thus, “blaue Milchviehbetriebe” and “fermes laitières bleues” are not registerable since they are just the German and French language versions of BLUE DAIRY FARM.

At the federal level, in the U.S., trademarks are registered by the U.S. Patent and Trademark Office (“USPTO”).

The DFE is a rule promulgated by the USPTO and has at least two aspects. First, the DFE recognizes that “a foreign word (from a language familiar to an appreciable segment of American consumers) and the English equivalent may be held to be confusingly similar.” Registration of a new trademark cannot be given if there is any “likelihood of confusion” in the minds of consumers between the new trademark and an already-existing trademark. Likelihood of confusion is one reason for the USPTO to deny a registration application. The USPTO translates the foreign word into English, and the issue of “likelihood of confusion” is evaluated based on the translation.

The second common issue evaluated by the USPTO is the lack of distinctiveness (or commonness) of the proposed trademark. Generally, a trademark must be distinctive. It cannot just be a description of the goods and services or a description of the type of business. Also, the proposed trademark cannot be a common, generic word for an industry. Lack of distinctiveness is another reason for the USPTO to deny a registration application. Thus, our example from above — BLUE DAIRY FARM — could not be registered as a trademark. The words are merely a description of the type of business using common words in the industry. The DFE requires the USPTO to translate foreign words into English and, then, evaluate the issue of distinctiveness based on the translation.

It should be said that the DFE is NOT limited to questions of confusion or of distinctiveness. Those just happen to be the most common ways in which the DFE results in the denial of an application for trademark registration. For example, generally speaking, registration will be denied if the proposed trademark contains offensive words. This generally means curse words. Foreign languages, of course, contain just as many curse words as English. Thus, as described above, pursuant to the DFE, the USPTO will translate the foreign words into English and then determine if the words are offensive based on the translation.

The DFE also applies to languages that use ideograms. Chinese is the most famous language that uses symbols representing words or concepts. However, the Koreans and Japanese also have similar writing systems (largely based on the Chinese system). Use of an ideogram in or as a trademark will trigger application of the DFE from the USPTO.

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The History and Purpose of the Doctrine

The Doctrine of Foreign Equivalents (DFE) was developed by the courts and the USPTO over more than a century of trademark law. The rationale is straightforward: trademark law protects consumers from confusion, and a consumer who speaks German is just as likely to be confused by two trademarks with the same meaning — one in German and one in English — as an English-speaking consumer would be confused by two identical English-language marks.

The DFE has been applied in both ex parte proceedings before the USPTO (in which an applicant’s trademark application is refused) and in inter partes proceedings (disputes between competing trademark holders). Courts have consistently held that the Doctrine advances the core policy of trademark law: preventing consumer confusion in the marketplace.

When the Doctrine Does NOT Apply

The DFE is not an absolute rule. Courts and the USPTO have identified several situations where the Doctrine should not be applied:

• Dead languages — the Doctrine does not apply to words from dead languages like Latin or ancient Greek, because ordinary American consumers would not stop and translate them
• Obscure languages — if the language is not commonly spoken or understood in the United States, the Doctrine may not apply because an “appreciable segment” of American consumers would not recognize the translation
• Invented words — a coined word in a foreign language that has no real meaning (like HÄAGEN-DAZS) is not subject to the Doctrine
• Strong secondary meaning — even if the Doctrine technically applies, a mark that has acquired very strong secondary meaning through long commercial use may overcome a descriptiveness or likelihood-of-confusion refusal

Practical Impact on Trademark Prosecution

When prosecuting a foreign language trademark application before the USPTO, applicants and their attorneys must be prepared to address the DFE proactively. If the examining attorney raises a DFE-based refusal — whether for likelihood of confusion or lack of distinctiveness — the applicant has several response options:

• Argue that the DFE does not apply because the language is not commonly spoken by an appreciable segment of American consumers
• Argue that even if the mark translates to a descriptive English term, the mark has acquired distinctiveness through long and substantially exclusive use in commerce
• Amend the application to seek registration on the Supplemental Register while building evidence of distinctiveness
• Provide evidence that the English translation of the mark is not descriptive of the goods or services in connection with which the mark is used

The DFE in Opposition and Cancellation Proceedings

The DFE also plays a role in Trademark Trial and Appeal Board (TTAB) proceedings. If a prior trademark holder believes that a newly registered or applied-for mark is the foreign equivalent of their mark, they can file an opposition to block registration or a petition to cancel an existing registration.

In In re Johanna Farms Inc., 8 U.S.P.Q.2d 1408 (T.T.A.B. 1988), the TTAB applied the DFE to hold that LA YOGURT was confusingly similar to the registered mark YOGURT, and denied registration. The TTAB analyzed whether “la” (a Spanish article) added enough distinctiveness to overcome the generic nature of the remainder of the mark.

Contact the Attorneys at Revision Legal

If you have questions or need legal advice, contact the experienced attorneys at Revision Legal. Our team handles trademark registration and protection matters for businesses and individuals nationwide. Call us at (855) 473-8474 or use the contact form on our website.