Selecting a name for your product, service, or company is a difficult process. You want to send the right message and convey an intangible aspect of your business to potential consumers. You want the name to reflect your corporate values and mission. And you want to be creative and stand out. Many time businesses look to words from a foreign language to achieve these goals. But that decision can have disastrous affects on your ability to trademark your name due to the doctrine of foreign equivalents.
Summary of the Doctrine of Foreign Equivalents
In short, the doctrine is that a foreign word will be translated into English for an analysis of genericness, descriptiveness, and similarity of meaning and connotation to determine if the foreign word is confusingly similar to an existing trademark. The doctrine is applied when it is likely that “the ordinary American purchaser would stop and translate the foreign term into its English equivalent.” In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976).
Example of the Doctrine of Foreign Equivalents
For example, a jewelry company attempted to register LA PEREGRINA, which is Spanish for THE PILGRIM. At the time of the attempted registration of LA PEREGRINA, another jewelry company already registered THE PILGRIM in association with certain types of jewelry. As a result, the examining attorney refused to register LA PEREGRINA because it would create a likelihood of confusion with its English equivalent: THE PILGRIM. In re La Peregrina Limited, 86 USPQ2d 1645, 2008 WL 695794 (TTAB 2008).
Impact of the Doctrine of Foreign Equivalents
While the doctrine of foreign equivalents can act as a barrier to registration, the doctrine is not intended to be applied in a rigid formula, but instead, is a guideline. If your mark has been refused on this ground, you must respond to the office action arguing that consumers are unlikely to translate the term to English, but instead, will leave the term “as is.” Palm Bay Imports, Inc. v Veuve Clicquot Ponsardin Maison Fondee En 1172, 396 F.3d 1369 (Fed Cir 2005). Factors that could lead to this conclusion vary greatly depending on the facts, but could include the meaning and connotation behind the foreign word.
Further, the doctrine of foreign equivalents is but one of the many factors applied in any likelihood of confusion test. Applicants facing an office action would be wise to draw distinctions based on the comparative marks’ sight, sound, overall commercial impression, and the similarity of the underlying good and services.
Conclusion
When researching your corporate name, businesses should search relevant databases to determine if the English equivalent poses a risk to trademark registration. If you are unsure whether your proposed trademark will fall into this category, you should seek legal advice before sinking money into building a brand based on that term.
